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As mentioned in our post on Trade Dress Protection, to prove trade dress infringement or assert unfair competition, the plaintiff must show:
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?
Photo Credit: Christopher Dombres
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 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.
“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.
Courts may consider various factors to determine whether secondary meaning exists. These factors include:
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.
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.
Courts do not find secondary meaning based on the trade dress owner’s subjective belief that consumers recognize the design. The evidentiary record must affirmatively demonstrate consumer association. Courts consistently point to the same categories of evidence: (1) direct consumer testimony or survey evidence; (2) duration and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) established place in the market; and (6) proof of intentional copying.
Consumer surveys have become the centerpiece of secondary meaning litigation. A properly constructed survey asks a representative sample of relevant consumers whether they associate the trade dress with a single source, and if so, whether they can identify that source. Survey methodology is frequently contested; defendants routinely challenge sample size, questionnaire construction, universe definition, and interviewer instructions. Hiring an expert survey methodologist is essential for any plaintiff that intends to rely on survey evidence to establish secondary meaning.
One of the most useful — and often underutilized — pieces of secondary meaning evidence is proof that the defendant intentionally copied the trade dress. If a defendant’s internal communications, product development records, or marketing materials show that it consciously sought to mimic the plaintiff’s trade dress, courts reason that the defendant must have believed the trade dress had significant consumer recognition worth copying. The Sixth Circuit articulated this principle clearly in Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 639 (6th Cir. 2002), noting that proof of intentional copying “is one of the most probative pieces of evidence in cases involving trade dress.”
Secondary meaning is not a national, all-or-nothing determination. A trade dress owner may establish secondary meaning in one geographic market but not another. A regional brand that has cultivated strong consumer recognition in the Midwest may be able to establish secondary meaning and bring a trade dress infringement claim against a copycat that enters that regional market, even if the brand’s trade dress is not recognized elsewhere. Conversely, a defendant that operates only in a market where the plaintiff has no secondary meaning may avoid liability even if the plaintiff’s trade dress is famous in other regions.
Secondary meaning is not static — it can be lost if the trade dress owner significantly changes the design or allows others to use the design without control. A brand that redesigns its core product appearance every few years may find that no single version of the trade dress has been used long enough or exclusively enough to establish the consumer association that secondary meaning requires. Similarly, a trade dress owner that licenses its distinctive design to multiple parties without quality control — a practice courts call “naked licensing” — risks losing trade dress rights alongside trademark rights because the design no longer reliably indicates a single source.
Establishing secondary meaning in a trade dress case requires a litigation strategy built on evidence gathered long before any lawsuit is filed. Revision Legal’s trademark attorneys advise clients on the evidentiary record needed to support a secondary meaning claim, the survey methodologies that courts find most persuasive, and the enforcement strategy most likely to succeed given the specific facts of your trade dress. Contact us today to discuss your trade dress protection options.
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