As mentioned in our post on Trade Dress Protection, to prove trade dress infringement or assert unfair competition, the plaintiff must show:

1. the inherent distinctiveness or secondary meaning of its trade dress,
2. the essential nonfunctionality of its trade dress, and
3. the likelihood of customer confusion as to its origin, sponsorship, or approval due to similarity between its and the defendant’s trade dress.

This blog will focus primarily on defining and explaining secondary meaning under the first prong of the three-prong test for trade dress infringement and unfair competition under section 43(a) of the Lanham Act. Exactly what is secondary meaning of trade dress?

What is Secondary Meaning?

Trade dress protection is known for its difficulty to prove because courts now require the original creator to show secondary meaning. Secondary meaning is defined as the “mental association by a substantial segment of consumers and potential consumers ‘between the alleged mark and a single source of the product.’” Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985).

Product Design/Product Packaging Distinction

Product packaging and product design, now known as trade dress, used to be classified separately by the courts. Product design trade dress used to require a showing of secondary meaning, but product packaging trade dress claims would survive if the trade dress was inherently distinctive. However, in Wal-Mart Stores Inc. v. Samara Brothers, Inc., the Supreme Court put to rest the issue of whether a product’s configuration or design can or should be deemed to be inherently distinctive by stating that a product design should never be found to be inherently distinctive. The Court held that a product’s design is protectable under the Lanham Act only upon a showing of secondary meaning. When it is unclear whether a particular trade dress should be classified as a product design or product packaging, courts should “err on the side of caution” and classify the trade dress as product design, requiring the stricter standard.

Secondary Meaning vs. Inherently Distinct

“The only guidance given in Wal-Mart by the Supreme Court in distinguishing between inherently distinctive and secondary meaning is that inherent distinctiveness for packaging will be found when it is ‘reasonable to assume consumer predisposition to take . . . packaging as indication of source.’” Id. at 213. In an earlier decision, the Supreme Court stated that a product has acquired secondary meaning when “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844, 851 n.11 (1982). The line between the two standards is thin at best. Therefore, since Wal-Mart, courts devote little time to establishing classifications as to product design or product packaging and instead, require a showing of secondary meaning.

Factors to Determine if Secondary Meaning Exists

Courts may consider various factors to determine whether secondary meaning exists. These factors include:

1. direct consumer testimony;
2. consumer surveys;
3. exclusivity, length, and manner of use;
4. amount and manner of advertising;
5. amount of sales and number of customers;
6. established place in the market; and
7. proof of intentional copying.

No single factor is dispositive. In evaluating secondary meaning, many courts place a higher weight on the presence or absence of surveys or quantitative evidence. Some courts also place a greater emphasis on whether the copying was intentional.

Why Acquire Trade Dress Protection if the Burden is so High?

Although the showing of secondary meaning under trade dress may be difficult, businesses prefer protection under trade dress, a form of trademark protection, over patent or copyright protection because trademark protection is perpetual, so long as the mark is in use.

For more information about the secondary meaning of trade dress, contact Revision Legal’s trademark attorney’s through the form on this page or call (855) 473-8474.