Trade Dress William Fisher October 20, 2009

Controversy over “Inherent Distinctiveness” for Product Configurations Two Pesos (SCt 1992) –Stuart Hall (CA8) –Duraco Test (CA3) –Knitwaves/Landscape Forms Test (CA2) –I.P. Lund (CA1) Wal-Mart (SCt 2000)

Traditional Degrees of Distinctiveness Arbitrary or fanciful -- inherently distinctive Suggestive -- inherently distinctive Descriptive -- secondary meaning required Generic -- not protectable

Stuart Hall (CA8) Follows Two Pesos in adhering to traditional scheme

Duraco critique (CA3 1994) The difficulty is that... a product configuration differs fundamentally from a product's trademark, insofar as it is not a symbol according to which one can relate the signifier (the trademark, or perhaps the packaging) to the signified (the product). Being constitutive of the product itself and thus having no such dialectical relationship to the product, the product's configuration cannot be said to be 'suggestive' or 'descriptive' of the product, or 'arbitrary' or 'fanciful' in relation to it. The very basis for the trademark taxonomy--the descriptive relationship between the mark and the product, along with the degree to which the mark describes the product--is unsuited for application to the product itself.... One cannot automatically conclude from a product feature or configuration--as one can from a product's arbitrary name, for example--that, to a consumer, it functions primarily to denote the product's source.

Duraco test for inherent distinctiveness “To be inherently distinctive, a product configuration--comprising a product feature or some particular combination or arrangement of product features--for which Lanham Act protection is sought must be (i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to serve primarily as a designator of origin of the product.”

Knitwaves/Landscape (CA2 1995, 1997) Is it likely that consumers will understand the product’s design to be an indicator of product source Court retreated from the suggestion that manufacturer’s intent is relevant

I.P. Lund (CA1 1998) Largely track the CA2 Knitwaves test Inherent distinctiveness should be determined with reference to “whether [the design] was a ‘common’ basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words”

Wal-Mart (SCt 2000) Product Packaging –Traditional scheme continues to apply Product Configurations –Distinctiveness requires a showing of secondary meaning