The same uniform, a different team: copycat's suit up for competition.

AuthorDufek, Erin S.
  1. Introduction

    In the competitive arena of the national market for consumer products, industry leaders have yet another force to contend with: private label companies which recognize the potential for market success and profitability through the appropriation of identifying features of already established national brands. These market vultures,(1) otherwise doomed to an existence marked by numerous uphill battles for a spot in the market, have swooped in and gained a competitive edge by cashing in on the goodwill and reputation of well-known brand name products, causing many national brands to fall prey to the imitator's lower prices and misleading pledges of quality.(2) The pirating of the success of others to provide consumers with cheaper versions of popular products, although not a new phenomenon,(3) has been heightened by technological advances and the growth of world trade.(4) Absent the adoption of regulatory and remedial measures, this practice promises severe repercussions for consumers,(5) industry leaders,(6) and the commercial life of our nation.(7)

    This phenomenon has been brought into existence by the formation of "knockoff companies"; i.e., companies which produce imitation products, better known as "knockoffs," which are packaged or designed strikingly similar to successful national brand name products and which survive and thrive on the reputation of those products. To counteract the success of many of these knockoff companies, corporate America desperately seeks protection for its many innovations and ingenious marketing and advertising techniques. The federal protection they are searching for is embodied in the Lanham Trade-Mark Act of 1946.(8) Unfortunately, however, over the years, judicial interpretation of this Act has stretched competitive immunity to its extreme, reaching its pinnacle in 1994 with the landmark ruling in Conopco, Inc. v. May Department Stores, Co.(9) In that landmark case, the judiciary raped Conopco's Vaseline Intensive Care lotion of its identity, paving the way for innovative stagnation and leaving corporate America without a kernel of protection for the fruits of its labor or the products of its livelihood.(10) After providing a brief overview of the history and statutory purpose of the Lanham Act(11) and discussing the Lanham Act's protection of a product's trade dress,(12) this Comment will: (1) examine the conflicting views surrounding the "prominent name brand" defense offered in trade dress infringement actions;(13) (2) examine the Federal Circuit's treatment of this defense in the notorious Conopco, Inc. v. May Department Store Co. case;(14) and (3) propose that the Conopco interpretation of this defense be rejected as injurious to both market participants and consumers.(15)

  2. The Evolution of the Lanham Act

    The resultant market tension caused by unfair competition amongst competitors led to the birth of Section 43(a) of the Lanham Act of 1946,(16) the statutory purpose of which was twofold: (1) "to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get";(17) and (2) to protect "the owner of a trade-mark [who] has spent energy, time, and money in presenting to the public the product ... in his investment from its misappropriation by pirates and cheats."(18) Section 43(a) was originally enacted to prohibit competitors from displaying on their products any "false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same . . ."(19) Accepting the judiciary's expansive interpretation of the Lanham Act and realizing its validity, Congress responded in 1988 by amending the protection afforded to an entity's trademark, currently defined as "any word, name, symbol, or device or any combination thereof,"(20) which is attached to the product of one retailer, lending to the identification of a product as originating from a specific commercial source and distinguishing it from products originating from all other commercial sources.(21) It is important to note, however, that to be afforded protection, the dress of a product need not reveal to the consumer the specific name of the commercial source; the consuming public need only recognize the dress of the package or label as emanating from a single source which is representative of consistent quality.(22)

    Unlike the obscure language of its predecessor, the language of Section 1125 clearly provides protection for a product's trade dress which "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."(23) Furthermore, the protection afforded the trade dress of a product encompasses both product configuration, a recent extension of protection alleged in the product itself,(24) and product packaging, which relates to the overall appearance of a product as embodied in its labeling, packaging and advertising.(25) This latter subset of trade dress will be the focus of this Comment.

  3. Laying the Foundation for Trade Dress Infringement Actions

    Before a product's trade dress may be protected by the Lanham Act, it must be demonstrated that "(1) the trade dress . . . is either (a) inherently distinctive, or (b) has acquired distinctiveness through secondary meaning";(26) (2) "a likelihood of confusion" exists between the trade dress of the original product and that of the knockoff product;(27) and (3) the trade dress employed serves no utilitarian or aesthetic functionality.(28) At the outset, however, it is of notable importance that not all trade dress is provided equal treatment with respect to protectability. Abercrombie & Fitch Co. v. Hunting World, Inc.(29) created a categorical hierarchy of protectable trade dress.(30) Rising to the top of the protectability hierarchy were "fanciful or arbitrary" marks which receive complete protection from imitators.(31) Next came "suggestive" marks which are also afforded complete protection with the caveat that this protection be surrendered when the mark crosses its categorical delineation and takes on a descriptive aura.(32) The third category encompasses "descriptive" marks which retain protection only where a secondary meaning has been acquired.(33) And lastly, at the end of the spectrum lies "generic" marks which retain no protectable qualities.(34) In placing a term within one of the classifications enumerated in Abercrombie, a court is to "examine[] the context in which the words constituting the mark are used"(35) with reference to the specific use seeking protection as well as the standards employed within the industry.(36) In addition to providing an initial determination of protectability, this test also aids a court in assessing the trade dress' distinctiveness. It is only after the trade dress has been categorized as one which is ripe for possible protection that an examination into the creation of confusion and functionality issues is proper or worthwhile.

    1. Distinctiveness

      1. Inherent Distinctiveness(37)

        For trade dress to attain the status of being inherently distinctive, it essentially must "serve[] no purpose other than to identify the commercial source of a product."(38) Inherent distinctiveness may be found where "(a) the design, shape or combination of features is unusual ...; (b) it is unique in the particular field; (c) it is not merely ornamentation or merely a refinement of a common form of ornamentation; or (d) it can create a commercial impression distinct from accompanying words."(39) Furthermore, the court is to assess a product's potential for inherent distinctiveness with an eye towards the "total impression that the dress gives to the observer," regardless of the generality of any one specific feature.(40) In the landmark case Two Pesos, Inc. v. Taco Cabana Int'l, Inc.,(41) the Supreme Court held that any mark or dress exuding inherent distinctiveness can be protected under the Lanham Act without proof of secondary meaning.(42) This holding recognized the judicial metamorphosis that was taking place surrounding the status of trade dress:

        Over time, judges have come to conclude that packages or

        images may be as arbitrary, fanciful, or suggestive as words

        or symbols, their numbers limited only by the human

        imagination .... A particular trade dress, then, is now

        considered as fully capable as a particular trademark of

        serving as a `representation or designation' of source under

        [sections]43(a). As a result, the first user of an arbitrary package,

        like the first user of an arbitrary word, should be entitled to

        the presumption that his package represents him without

        having to show that it does so in fact.(43)

        The Court's avowal of an inherently distinctive trademark or trade dress is consistent with the competing public policy concerns protecting consumers and innovation in the market and "acknowledges the owner's legitimate proprietary interest in its unique and valuable informational device, regardless of whether substantial consumer recognition yet bestows the additional empirical protection of secondary meaning."(44)

      2. Acquired Distinctiveness -- Secondary Meaning

        Where the trade dress of a product is not inherently representative of its commercial source, such distinctiveness may be acquired when the "mark or dress `has come through use to be uniquely associated with a specific source' ... [such that] in the minds of the public, the primary significance of a product feature ... is to identify the source of the product rather than the product itself."(45) This is not to say that in order to achieve distinctiveness the mark or dress of a product must, upon visual inspection by a consumer, direct him or her to the specific identity of the commercial source. Rather, it is enough that the consuming public associate the...

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