SUPREME COURT RULING IN CLOTHING KNOCK-OFF CASE ESTABLISHES TRADE DRESS TEST FOR FURNITURE INDUSTRY
On March 22, 2000, the United States Supreme Court handed down its ruling in Wal-Mart Stores, Inc. v. Samara Brothers Inc., and settled the controversial issue of when a product design's unregistered Trade Dress is protectable under the Trademark (Lanham) Act.
Samara Brothers Inc., of New York, designs and manufacturers children's clothing and sells its products through a number of chain stores including JC Penny. In 1996 Samara brought action against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills and Gaudy's for copyright infringement under federal law, consumer fraud and unfair competition under New York law, and infringement of unregistered Trade Dress under the Lanham Act. All of the defendants except Wal-Mart settled before trial.
On appeal of a $1.2 million award in favor of Samara, Wal-Mart claimed that there was insufficient evidence to support a conclusion that the designs could be legally protected as distinctive Trade Dress. The Supreme Court decision, written by Justice Scalia, stated in an action for infringement of unregistered trade dress under ß43(a) of the Lanham Act, a product's design is distinctive, and therefore protectable, only upon a showing of secondary meaning. The Court remanded the case back to the Second US Circuit Court of Appeals.
Trade Dress, a category of the marks registrable under the Lanham Act, refers to either a product's packaging or overall design. The courts have long held that Packaging Trade Dress constitutes a device that can be used to identify and distinguish the source of a product. The producer was required to show that the packaging was not "functional" and that it was "distinctive". Recently, the definition was expanded to include Design Trade Dress (see , e.g. Ashley Furniture Industries, Inc. v. Sangiacomo N.A., Ltd.) The ruling by the Supreme Court now requires a demonstration of a secondary meaning in order for Design Trade Dress to be protectable. The secondary meaning refers to the acquired, source-identifying characteristics of a design. In other words, it is not enough to show that the overall design is inherently distinctive, it must also have an acquired distinctiveness (a secondary meaning).
Susan E. Farley, Esq., an intellectual property attorney with Heslin & Rothenberg of Albany, NY, says that there are many factors one can utilize to demonstrate secondary meaning for a product design. For example: fame or renown of the product, advertising campaign, exclusive use for a period of time (five years is considered a presumption of secondary meaning in the US Patent and Trademark Office), intentional copying of the product by others, evidence of actual confusion by a third party, strong sales record, and unsolicited media coverage.
The FOUNDATION FOR DESIGN INTEGRITY has developed a program for product designers and manufacturers to follow that will aide them to demonstrate the acquired secondary meaning of their product designs:
| Document the design process with dated records, photographs and drawings. | |
| Keep accurate financial records of all direct expenditures for advertising, sampling, marketing materials and promotional events. | |
| Maintain a Publicity Journal (and include examples when possible) of all awards, editorial coverage, and unsolicited uses of the product such as: in a design showhouse, in a film, television or theatrical production, and in a book publication. | |
| Maintain an Exhibition Log that details the location and the time period that the product was displayed in all showrooms, trade shows and other marketing events. | |
| Keep an up-to-date resume of the designer. |
The FOUNDATION FOR DESIGN INTEGRITY is a not-for-profit organization dedicated to promoting the awareness of the need to protect original design from unauthorized copying. For more information contact FDI at www.ffdi.org; telephone 650-326-1867; or fax 831-449-7040.