Trade Dress Undressed: Wal-Mart v. Samara

Jeffrey M. Samuels, University of Akron School of Law
Linda B. Samuels

Abstract

Trade dress can be broadly defined as the overall appearance or image of goods or services. Over the years, courts have generally divided trade dress into two distinct categories: (1) product packaging (e.g., the labeling associated with a product); and (2) product design or configuration (e.g., the shape of a COCA-COLA bottle).

In March 2000, a unanimous United States Supreme Court ruled that unregistered product design trade dress is not subject to protection under U.S. trademark law unless it can be established that the design has acquired distinctiveness. Thus, product design trade dress can never be inherently distinctive. This decision will make it more difficult for businesses to protect new, innovative designs under federal trademark law and, as a result, may spark renewed interest in the enactment of a comprehensive federal design protection bill.

To succeed in an action for trade dress infringement under the federal trademark act, known as the Lanham Act, a plaintiff must establish several elements. [FN5] First, the plaintiff must prove that the trade dress is distinctive. The plaintiff establishes distinctiveness either by showing that the trade dress is inherently distinctive, or that it has acquired distinctiveness, which is also referred to as secondary meaning. Second, the plaintiff must show that a likelihood of confusion exists as a result of the defendant's use of its trade dress. The final element the plaintiff must show is that the trade dress in issue is nonfunctional. Pursuant to recently enacted legislation, where the trade dress is not registered, the party seeking protection has the burden of establishing nonfunctionality. Otherwise, where the trade dress is the subject of a federal trademark registration, the burden to prove that the trade dress is functional rests on the alleged infringer.