Trade Dress Protection for Product Designs

Most of us can recognize a garden variety trademark when we see one. A brand name such as “Coca Cola®” or “Nike®” immediately identifies the source of the product and represents the quality standards and good will of a particular company. But can the design of product, which appears to have only an aesthetic purpose, obtain the benefit of trade dress protection? The Court of Appeals for the Second Circuit says, in some circumstances, it can. In Samara Brothers Inc. v. Wal-Mart Stores, Inc.,¹ the Court of Appeals affirmed a jury’s finding that the design of Samara’s spring/summer seersucker children’s garments were protectable as trade dress and, subsequently, use of a confusingly similar design constitutes trade dress infringement.

Trade dress consists of the overall appearance of a product as it is packaged or presented and used to denote the source of the item. To obtain trade dress protection, the owner must prove that the trade dress is inherently distinctive, or that it has acquired distinctiveness by achieving a secondary meaning in the minds of consumers. “Inherent distinctiveness” means that the trade dress is arranged in such a unique manner that it requires the consumer’s imagination, thought and perception to reach a conclusion as to the nature of the goods. Because inherently distinctive trade dress is so unique, it is entitled to protection without any proof that the consuming public associates the trade dress with a particular source.²

Historically, trade dress protection had been afforded to a product’s packaging, which usually identifies the source of the goods. However, an owner seeking to obtain trade dress protection for a product design, as opposed to a label or packaging design, faces an increased burden since product designs are not normally utilized for purposes of identifying the maker of the goods, but instead are created to serve an aesthetic purpose. Accordingly, the Second Circuit has enunciated its rule that the relevant question in determining the inherent distinctiveness of a product’s design is whether or not the design is likely to be understood by consumers as an indicator of the product’s source. For instance in Landscape Forms Inc. v. Columbia Cascade Co.,³ the Court of Appeals found that the overall look of furniture (consisting of large 3-inch tubing, a powdered cosmetic finish, and bent, gentle turns that roll around the perimeter of the front of the furniture, in combination with certain seating services, supposedly giving the viewer a floating or suspended feeling) was not worthy of trade dress protection since the furniture’s look was not unique or likely to be perceived by consumers as a source indicator. Likewise, in Knitwaves Inc. v. Lollytogs Ltd.,⁴ autumn sweater designs, comprised of leaves and squirrels appearing on the front of the sweaters, did not warrant trade dress protection since the design served an aesthetic purpose, as opposed to a source-identifying purpose, and the design did not distinguish the owner’s goods from goods sold by others in the marketplace.

In Samara, however, a design for seersucker children’s clothing was perceived differently by the court. The clothing was comprised of seersucker fabric; large gold appliques; large collars; an absence of printed images, outlines and characters frequently used in children’s clothing; and full-cut, one piece conservative bodies. The jury relied on this description in determining that Samara’s product line was inherently distinctive.⁵ The Court of Appeals affirmed the jury’s finding, despite earlier stringent rulings in Knitwaves and Landscape Forms. It distinguished Samara from these prior cases, citing evidence that Samara’s designs were chosen for purposes of identifying Samara as the source of the product and for building brand loyalty. Additionally, Samara had produced these designs for years, and they represented the core of Samara’s business. The Court distinguished Knitwaves on the basis that the sweaters in Knitwaves were merely one part of a line of clothing which had existed for only a short period of time and did not represent the owner’s core product, and therefore, would not be recognized in the marketplace.

The Samara court did find certain similarities with Landscape Forms, but ultimately found that the testimony and the description of Samara’s designs were more specific than the outdoor furniture designs described in Landscape Forms and were sufficient to warrant a finding of inherent distinctiveness. Most importantly, unlike the evidence adduced in Landscape Forms, there was no evidence in the Samara case that the combination of elements forming the children’s clothing designs were common to other products in the industry. Since the defendant, Wal-Mart, “knocked off” Samara’s clothing line by sending actual samples of Samara’s products to factories for purposes of producing copies, the jury found that Wal-Mart intended to deceive consumers and, thus, Samara was entitled to monetary relief in the amount of $844,223.24. The Court of Appeals affirmed this finding as well, pointing to the vast extent of Wal-Mart’s copying and the close similarity of the products. The fact that Wal-Mart used completely different labels with its own brand name on the product could not insulate it from liability.

The Samara case does present a bit of a departure from Landscape Forms and Knitwaves which hold that it is very difficult to obtain trade dress protection for the design of a product. In his dissent to the Samara decision, Circuit Judge John O. Newman argued that “the high bar to trade dress protection for a product line that this Court so emphatically raised in [Landscape Forms and Knitwaves] has been unjustifiably lowered. . . .”⁶ But Samara was not a case involving an innocent copier who was unaware that a design belonged particularly to one manufacturer;. WalMart copied the designs using actual samples of the clothing, knowing full well that it was Samara’s exclusive design. Wal-Mart’s knock-offs were also practically identical to Samara’s clothing line. Courts will be more willing to protect a party’s product design in cases where a second comer knowingly pirates another’s design. The inference in such circumstances is that the second comer must have copied the product for the purpose of deceiving consumers as to source.

Justice Newman, however, has a point. There does not appear to be much of a difference between Samara and Landscape Forms or Knitwaves. There is a fine line between inherently distinctive product designs, worthy of trade dress protection, and designs which merely serve an aesthetic, rather than source-identifying, purpose. Accordingly, companies who wish to ensure trade dress protection for designs that do not fall within the traditional definition of a trademark would be wise to expressly indicate, by use of the “TM” symbol and/or the company’s name within the design, that the product design has a source-identifying purpose. Extensive advertising, featuring and highlighting the product design, is also helpful. By doing this, a trade dress owner has expressed an intent to use a product design as a source identifier, and the arbitrary findings of a court or a jury as to the existence of “inherent distinctiveness” or uniqueness as a source identifier may be avoided.