SW Legal Educational Publishing

Product Designs Must Have Secondary Meaning for Trade Dress Protection
Description Supreme Court reversed lower courts by holding that Wal-Mart was not liable for infringement for having made knock-off clothing based on designs by a clothing designer. Trade dress is protected if the design has acquired secondary meaning to the consumer.
Topic Intellectual Property
Key Words Trade Dress; Secondary Meaning
C A S E   S U M M A R Y
Facts Samara Brothers design and manufacture children's clothing. Wal-Mart had clothing made for it (knock-offs) based on photos of Samara's products. Samara sued for infringement of unregistered trade dress. The jury held for Samara. Wal-Mart moved for judgment as a matter of law, claiming that Samara's designs could not be legally protected under the Lanham Act as distinctive trade dress. The motion was denied; Wal-Mart appealed to the Supreme Court.
Decision Reversed. In an action for infringement of unregistered trade dress, a design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The Lanham Act protects registered trademarks and unregistered marks, including trade dress-the packaging of a product or its distinctive design. An unregistered mark can be distinctive, for purposes of the Lanham Act, if its intrinsic nature serves to identify a particular source, so that it is inherently distinctive, or if it has acquired a secondary meaning, so that, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself. Product design, like color, is not inherently distinctive so is not entitled to protection under the Lanham Act unless it can be shown that the trade dress has acquired secondary meaning.
Citation Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 120 S.Ct. 1339 (2000)

Back to Intellectual Property Listings

©1997-2000  South-Western, a division of Cengage Learning, Inc. Cengage Learning is a trademark used herein under license.