CHAPTER 4 - § 4.02

• Jurisdiction: United States

§ 4.02 INHERENT DISTINCTIVENESS PRIOR TO TWO PESOS

The Chevron test originated in the Fifth Circuit, and courts there favored the concept of inherent distinctiveness over a blanket secondary meaning requirement. The Fifth Circuit's position at the time was that if trade dress served as a symbol of origin, it was considered distinctive and protectable; secondary meaning was necessary only if the trade dress was not deemed inherently or sufficiently distinctive.⁹

The Seventh and Eleventh Circuits also took the general position that if trade dress was inherently distinctive, there was no need to prove secondary meaning.¹⁰ In Blau Plumbing, the Seventh Circuit indicated that if inherent distinctiveness for trade dress could be shown, the plaintiff would not be required to show secondary meaning.¹¹ The trade dress at issue in Blau Plumbing was "location boxes" in a Yellow Pages advertisement. The "location boxes" showed the addresses and phone numbers for plumbers in each of a variety of locations (e.g., North, South, East, West):

The court in Blau Plumbing ultimately found that the claimed trade dress in the "location boxes" was not inherently distinctive and thus that secondary meaning must be shown. In addressing the plaintiff's arguments for finding inherent distinctiveness, the court opined that the features of the "location boxes" were too common to be deemed distinctive or brand-identifying on their own.¹² The court held that without proving secondary meaning, which was "not attempted" by the plaintiff, the location boxes were descriptive and thus not protectable as trade dress.¹³ The plaintiff also made the argument that the defendant's copying of the "location boxes" was itself proof of secondary meaning, but the court rejected this argument as well (due to the descriptive nature of the claimed trade dress).¹⁴

In the Eleventh Circuit, the issue of inherent distinctiveness was raised in the enforcement of trade dress rights claimed in the packaging for Klondike ice cream bars.¹⁵ To compete with the plaintiff's Klondike bars, the defendant (Kraft) introduced its "Polar B'ars," which adopted many features from the packaging for Klondike bars, including the silver wrapper and polar bear element.¹⁶ The competing trade dress is shown below.

In affirming that Kraft's Polar B'ars infringed the trade dress of Klondike ice cream bars, the Eleventh Circuit set out its own standard for inherent distinctiveness. The court began its analysis by clarifying that...