What is trade dress infringement?

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (2012), provides a federal cause of action [11]  for unprivileged imitation, including trade dress infringement. See, Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 1271 (10th Cir. 1988), cert. denied, 488 U.S. 908 (1988).  

The core concepts of trademark protection are that consumers not be confused, misled, or deceived as to whose product they are buying, that sellers’ goodwill--or investment in their reputation for quality--be protected, and that competition thereby be enhanced. See, Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995)(internal citations omitted). The protection of trademarks and trade dress under 43(a) serves the same statutory purpose of preventing deception and unfair competition.  Id.

Trade dress features are those comprising a product’s look or image. Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 517 (10th Cir. 1987) The trade dress of a product is its overall image and appearance, and may include features such as size, shape, color or color combinations, texture, graphics, and even particular sales techniques.”  Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10^th Cir. 2002).  Protection for trade dress may extend to a single feature or a combination of features in a trade dress. See, Vornado Air Circulation Sys., Inc., 58 F.3d at 1502. 

Importantly, trade dress can include the total image of a business.  See, Two Pesos v. Taco Cabana, 505 U.S. 763, 764 (1992)(upholding a jury instruction that defined “trade dress” as including the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniforms, and other features reflecting on the total image of the restaurant.”)   See also, Happy Sumo Sushi, Inc. v. Yapona, Inc., 2008 U.S. Dist. LEXIS 60887 (D. Utah Aug. 5, 2008).  The trade dress of a business is considered “product packaging” or akin to product packaging, as opposed to “product design.”  See, Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 215 (2000).

A plaintiff in a trade dress infringement case must make two showings in order to prevail. First, the plaintiff must show either (a) that its product’s [12]  trade dress features (or feature) are inherently distinctive or (b) that the trade dress has become distinctive through acquisition of secondary meaning. See, Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159(1995).  See also, Savant Homes, Inc. v. Collins, 2015 U.S. Dist. LEXIS 24084, *23 (D. Colo. Feb. 27, 2015). Second, a plaintiff must show that potential customers are likely to be confused by the defendant’s trade dress into thinking that the defendant is affiliated, connected or associated with the plaintiff or that the defendant’s goods originated with, or are sponsored or approved by the plaintiff. See, §15 U.S.C. 1125(a).

Additionally, the party asserting trade dress infringement bears the burden of demonstrating that the trade dress is not functional.  See, Savant Homes, Inc., 2015 U.S. Dist. LEXIS 24084 at *24.  See also, Samara Bros., 529 U.S. at 210.

A.    Inherently Distinctive/Secondary Meaning: 

A trade dress is inherently distinctive if its “intrinsic nature serves to identify a particular source.” Two Pesos, 505 U.S. at 768. Such trade dresses “almost automatically tell a customer that they refer to a brand and immediately signal a brand or a product source.” Samara Bros., 529 U.S. at 212-213 (citation, quotations, and alteration omitted).  Like trademarks, the inherent distinctiveness of a trade dress is categorized along the [25]  generic-descriptive-suggestive-arbitrary-fanciful spectrum. See, Two Pesos, 505 U.S.at 768.

In evaluating the inherent distinctiveness of trademarks, the Tenth Circuit has adopted the traditional categorical (or Abercrombie) approach where the trademark is determined to be either (1) generic, (2) descriptive, (3) suggestive, or (4) fanciful or arbitrary. See, Beer Nuts, Inc. v. Clover Foods Co., 711 F.2d 934, 939 n.5 (10th Cir. 1983) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2nd Cir. 1976)). This test is equally applicable to trade dress under section 43(a) of the Lanham Act, because "§43(a) provides no basis for distinguishing between trademark and trade dress.”  Stuart Hall Co. Inc. v. Ampad Corp., 51 F.3d 780, 785 (8th Cir. 1995) [25]  (quoting Two-Pesos, 505 U.S. a 773)). See also, Western Chemical Pumps, Inc. v. Superior Mfg., 989 F. Supp. 1112, 1119 (D. Kan. 1997); Winning Ways, Inc., 913 F. Supp. at 1463 (applying Abercrombie test to trade dress infringement cases).

The Tenth Circuit [26]  has defined each of these terms. A fanciful or arbitrary trademark “bears no relationship to the product or service with which it is associated.” Beer Nuts, Inc., 711 F.2d at 939. A suggestive trademark requires “imagination, thought and perception to reach a conclusion as to the nature of goods” Id. A descriptive trademark “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Id.  A generic mark refers to “a particular genus or class of which an individual article or service is but a member.  Id.   

A trademark (or trade dress) classified as suggestive, fanciful, or arbitrary is deemed inherently distinctive and is entitled to protection. Two Pesos, 505 U.S. at 768.  No proof is required that such trademark has acquired secondary meaning. See, Qualitex Co., 514 U.S. at 162-3.  Examples of these marks include, “arbitrary” word marks such as “Camel” cigarettes, “fanciful” word marks such as “Kodak” film, or “suggestive” word marks such as “Tide” laundry detergent.  See, Samara Bros., 529 U.S.at 210.

On the other hand, a trademark or trade dress that is classified as descriptive or generic is not considered inherently distinctive. Id.  A descriptive mark may acquire the distinctiveness, however, which will allow it to be protected under the Lanham Act. See, Two Pesos, 505 U.S. at 769.  This acquired distinctiveness is generally called “secondary meaning.” Id. A mark classified as generic is entitled to no legal protection. See, Beer Nuts, Inc., 711 F.2d at 939.

A trade dress which is not inherently distinctive, however, may acquire distinctiveness through secondary meaning. In other words, over time customers may associate the primary significance of a dress feature with the source of the product rather than the product itself. When a trade dress has become distinctive of a product’s source, courts have permitted protection under § 43(a) of the Lanham Act.

            “A trade dress acquires secondary meaning when its primary significance in the minds of potential consumers is no longer as an indicator of something about the product itself but as an indicator of its source or brand.  The ultimate inquiry is whether in the consumer's mind the mark denotes a single thing coming from a single source. That single source, however, need not be known by name by consumers.”  See, Sally Beauty Co., 304 F.3d at 978 (internal citations and quotations omitted).

“To establish secondary meaning, a plaintiff may present circumstantial evidence regarding: (1) the length and manner of its use; (2) the nature and extent of the advertising and promotion of the trade dress; and (3) the efforts made in the direction of promoting a conscious connection in the public’s mind between the trade dress and a particular product.”   See, Water Pik, Inc. v. Med-Sys., Inc., 848 F. Supp. 2d 1262, 1281 (D. Colo. 2012).  

B.     Likelihood of Confusion:

The factors underlying a likelihood of confusion analysis in a trademark infringement claim apply equally to trade dress infringement claims. See, Brunswick Corp., 832 F.2d at 521.  In the trade dress context, the relevant inquiry is “whether there is a likelihood of confusion resulting from the total image and impression created by the defendant’s product or package on the eye and mind of an ordinary purchaser.” McCarthy on Trademarks § 8:15. 

“In determining whether a party has shown likelihood of confusion, the Court must consider the following factors: (1) intent to copy; (2) similarity of products and manner of marketing; (3) degree of consumer care; (4) degree of similarity between the parties’ trade dress; (5) strength of the plaintiff’s trade dress; and (6) evidence of actual confusion.”  Sally Beauty, 304 F.3d at 979.