Sizing Up Trade Dress: New Era of Cases Tests the Limits of the Lanham Act
Usually manufacturers want customers to think of their products as better and
in some way different from their competitors' products. However, some
manufacturers would rather trade on the awareness and leadership position of
their competitors and therefore "dress" their products for the marketplace very
similarly. Most stop short of illegally appropriating other brands' trademarks,
but they sometimes emulate the leaders' package designs or other nonfunctional
features - their "trade dress" - to imply similar quality at a reduced price or
otherwise take advantage of the awareness the market leader enjoys among
consumers. Indeed, as competitive pressures increase along with the expense of
building one's own brand equity in the marketplace, companies in recent years
have tread ever closer to that fine line between a valid "knock off" and
outright infringement of their competitors' trade dress.
For example, In re Bristol-Myers Squibb v. McNeil-P.P.C., Inc., the
maker of Excedrin PM over-the-counter pain reliever sued the maker of Tylenol PM
over use of the "PM" aspect of its trade dress. The Second Circuit Court of
Appeals ruled that "PM" is a descriptive term and therefore not protectable.
Developments in 1988, 1992, and again in 1995 have expanded trade dress
protection and had a sweeping effect on subsequent trade dress litigation by
making it easier for certain plaintiffs to protect their trade dress. In
1988, amendments to the Lanham Act, the federal statute governing trademark
registration, protection and use, expanded its protection of trade dress, which
is a subset of trademark. Prior to the 1988 Amendments, often referred to as
43(a), federal law did not accord trade dress the same level of protection as
trademarks. Now it does.
In 1992, the U.S. Supreme Court changed the standard for whether trade
dress is protected under the Lanham Act in its unanimous landmark decision in
Two Pesos, Inc. v. Taco Cabana, Inc. Prior to Two Pesos, some courts
required plaintiffs to prove both that their trade dress was inherently
distinctive and that it had developed secondary meaning in the marketplace. The
Two Pesos decision stated: "Trade dress that is inherently distinctive is
protectable under 43(a) without a showing that it has acquired secondary
meaning (emphasis added)."
The Two Pesos decision also partially resolved a prior conflict among
federal Courts of Appeals regarding what types of trade dress are protected
under the Lanham Act. Prior to Two Pesos, the Fifth Circuit used a test that
required proof of secondary meaning only when a trade dress was not distinctive
enough to identify the producer of the product. In contrast, the Second
Circuit only protected unregistered trademarks and designs with a showing of
secondary meaning. In Two Pesos the Court granted protection to trade dress
that was unregistered without a showing of secondary meaning because the Court
found it to be inherently distinctive.
Furthermore, the Two Pesos decision interpreted the Lanham Act as applying
similarly to both trademark and trade dress. Until Two Pesos, the courts
interpreted the Lanham Act as giving trade dress less protection than trademark.
In 1995, the U.S. Supreme Court in another unanimous decision, Qualitex Co. v.
Jacobsen Products Co., Inc., pointed to the 1988 changes in the Lanham Act as
reasoning to strike down a long-standing precedent that had prohibited
protection of color alone as a trademark. Qualitex, a manufacturer of press
pads used in the dry cleaning industry, was the only manufacturer for years that
had constructed press pads in a particular green-gold color. When competitor
Jacobsen Products began manufacturing its press pads in a similar color,
Qualitex registered the color as a trademark and sued Jacobsen. The Ninth
Circuit interpreted the Lanham Act as not protective of color alone as a
trademark and ruled for Jacobsen. However, the U.S. Supreme Court reversed the
decision and held: "The Lanham Act permits the registration of a trademark that
consists, purely and simply, of a color."
In addition, the Qualitex decision clarified the "functionality doctrine"
in trademark law that prohibits protection of functional design features.
As stated in Qualitex: "The functionality doctrine prevents trademark law, which
seeks to promote competition by protecting a firm's reputation, from instead
inhibiting legitimate competition by allowing a producer to control a useful
Some legal scholars contend that the Two Pesos decision has created about
as many new questions as it has answered and that the Qualitex decision does not
resolve all the issues about protection of color as a trademark." They
argue that the courts have begun to interpret too broadly what actually
constitutes trade dress because of the Two Pesos definition of trade dress as
"the total image of a product and may include features such as size, shape,
color or color combinations, texture, graphics, or even particular sales
New cases have begun to test the expanding definition of trade dress,
particularly in the area of product configuration. For example, firms have
sought trade dress protection for the shape of a flower pot, the
configuration of a fan grill, and the design of a sweater. Others have
sought protection for the "look and feel" of computer user interfaces,
product color schemes, and the markings and colors of pharmaceuticals
with varying levels of success.
In the wake of Two Pesos, the federal Courts of Appeals remain divided
about the appropriate tests to apply to particular fact patterns in trade dress
cases. Also, legal scholars debate whether certain cases are really issues
of patent or copyright law rather than trade dress law. Meanwhile,
companies often do not know how closely they can emulate competitors' trade
dress or how well protected their own trade dress is until they wind up in
court. Indeed, trade dress has developed into the most hotly contested area of
trademark law today.
The U.S. government protects creative works, inventions, and the ability to
market them with distinctive marks and packaging under separate copyright,
patent, and trademark statutes. While so closely allied that some products
qualify for more than one type of protection, each statute has specific
applications. Trade dress falls within the scope of trademark law (the Lanham
Act), which seeks to eliminate confusion and unfair competition in the
marketplace by protecting marks that serve to identify a product's manufacturing
An important distinction between trademark, copyright and patent law is that
trademarks enjoy renewable protection as long as they remain in use. Copyrights
and patents have limited terms of protection.
Plaintiffs do not have to register trademarks in order to sue for
infringement. However, trademarks may be registered if they are distinctive
and not generic or merely descriptive and if they are non-functional.
How the courts interpret the requirements of inherent distinctiveness and
non-functionality are central issues in the debate over what types of trade
dress deserve protection.
The Lanham Act provides guidelines to the courts as to what factors they may
consider in determining whether a trademark is distinctive. However,
neither the Lanham Act nor the courts have adequately defined one of the key
factors, "inherent distinctiveness." Due to the lack of clear guidance, the
individual federal Courts of Appeals apply tests from prior case law to
determine whether a trademark is inherently distinctive. The federal Courts of
Appeals are not in agreement.
The purpose of this paper is to examine the impact of the 1988 Amendments
to the Lanham Act and the Supreme Court's decisions in Two Pesos and Qualitex on
trade dress litigation.
The following literature review will examine recent scholarship on trade
dress. Because legal scholars generally write about individual cases or
specific categories of trade dress, this literature review will be divided
similarly into the following categories: product configuration, private label
manufacturing, color, and computer software user interfaces. The purpose is to
underscore the key differences among types of cases, why legal scholars argue
for or against Lanham Act protection of trade dress in each and how they compare
and contrast different types of trade dress litigation.
Legal scholars agree that the 1988 amendments to the Lanham Act, followed by
the Two Pesos and Qualitex U.S. Supreme Court decisions, have ushered in a new
era of trade dress litigation. However, while some laud these developments as
settling several splits among federal circuits or better recognizing the
realities and competitive pressures of the marketplace, they also point out many
questions left unanswered. A large body of legal scholarship is devoted to
the complicated issues surrounding application of new trade dress law to product
configuration cases. A number of scholars argue that trade dress protection
has become too broad and oversteps patent law.
A host of product configuration cases that seek trade dress protection for the
shape or design of the products themselves rather than just their packaging have
emerged in recent years. These cases challenge established notions of how courts
should decide trade dress cases. They are more difficult than packaging and
other traditional trade dress cases for a number of reasons.
First, they often allege more than one type of infringement - trade dress and
patent or copyright - that the courts must rule on separately. As mentioned
previously, trade dress by its definition is non-functional. In product
configuration cases, the courts have the difficult task of trying to rule on
non-functional (trade dress) aspects of the product designs themselves.
For example, In re Knitwaves, Inc. v. Lollytogs Ltd. the Second Circuit had
to rule on whether a copyrighted sweater design was also protectable trade
dress. Knitwaves won on the issue of the copyright infringement, but did
not win protection of the sweater design as trade dress. The Second Circuit
said the "manufacturer's objective in the sweater designs was primarily
aesthetic, and . . . not primarily intended as source identification."
The federal circuits are also divided on which party bears the burden of
proving whether a trade dress is functional or non-functional.  The
Third, Eighth, Ninth, and Eleventh Circuits require the
plaintiff to prove that the trade dress in question is non-functional. The
Seventh Circuit  requires the defendant to prove that the trade dress is
functional. The Second and Tenth Circuits allow the defendant to use as
a defense proof that the trade dress is functional.
An unsigned article in the Harvard Law Review questioned the wisdom of
the 1995 Tenth Circuit decision in Vornado Air Circulation Systems, Inc. v.
Duracraft Corp. The Tenth Circuit held that when the disputed product
configuration is part of a claim in a utility patent and the configuration is an
aspect of the invention "so that without it the invention could not fairly be
said to be the same invention, patent law prevents its protection as trade
dress, even if configuration is non-functional." A utility patent protects
"any novel, non-obvious, and useful machine, article of manufacture, composition
of matter or process."
The Harvard Law Review argued that the Vornado test "obscures the crucial
issue of whether granting trade dress rights would prevent the patented
invention from entering the public domain upon the patent's expiration."
This is important because, as noted previously, patent rights have a finite
term, while trade dress protection is renewable indefinitely. Therefore, as
Eugene M. Gelernter and Andrew D. Schau recently pointed out in The New York Law
Journal, defendants argue that granting trade dress protection to a product
feature whose patent has expired is tantamount to giving a monopoly to an
invention that rightfully belongs in the public domain where others may legally
Furthermore, the Harvard Law Review noted that the Tenth Circuit test "does
not teach how to identify which product features for which utility patent
protection should bar trade dress rights." Gerlernter and Schau observed
that two recent decisions in the Southern District of New York have balanced
the requirements of patent and trade dress law. They noted that these decisions
are consistent with others on the same issue in the Sixth, Seventh, and Eighth
Circuits. William Bunker, writing in the Los Angeles Daily Journal, noted
that the Qualitex decision also addressed this "functionality doctrine" of
product configuration cases.
Private Label Manufacturers
The key issues in cases alleging trade dress infringement by private label
manufacturers of branded products are somewhat different from those in product
configuration cases. Here cases generally involve packaging (size, shape,
color, and labeling), rather than the design of the products themselves.
The courts usually must rule on whether the trade dress of the private-label
product is likely to cause consumers to confuse it with the brand name
Joseph Diamante and Darren W. Saunders explained in The National Law Journal
how discount retailers and large supermarket chains have gained market share in
recent years, not only with efficient distribution systems, but also by selling
their own privately labeled products alongside name brands but at lower prices.
As part of the strategy, they often dress their products very similarly to the
competing national brands. For example, the private label manufacturer may
package shampoo in a bottle of similar shape and color as a name brand, but use
a clear enough label to help consumers distinguish between the two products.
Private-label manufacturers argue they must do this to help consumers make
choices between high and low-priced alternatives. At the same time,
private-label manufacturers capitalize on the enormous advertising and
promotional expenditures of their name brand competitors.
On the other hand, Diamante and Saunders reported that name brands argue
that private-label manufacturers cross the line of fair competition when they
copy trade dress and use the brands' trademarks on their own labels for
comparison purposes. For example, In re Conopco, Inc. v. May Department
Stores Co., the manufacturer of Vaseline Intensive Care Lotion specifically
redesigned its packaging, including the bottle design, to differentiate itself
from others in the market. Venture Stores, Inc., owned by May Department
Stores, copied the Vaseline Intensive Care package for its house brand of skin
care lotion. Not only did Venture copy the color combinations on the label, but
also Vaseline's trademark as part of the statement "Compare to Vaseline
Intensive Care." In a surprising decision, the Federal Circuit did not
protect Vaseline Intensive Care's trade dress. Instead it ruled in favor of the
To make matters worse, Diamante and Saunders wrote, name brands are often
in the position of wanting to sue the very retailer that distributes their
products, a move that could have long-term negative repercussions. For this
reason, name brands often tolerate copying of their trade dress longer than they
would under different circumstances, even though the courts have traditionally
Diamante and Saunders wrote that courts have generally presumed that when a
private-label manufacturer copies the trade dress of a name brand, it intends to
cause confusion among customers. This presumption of intent to confuse is a key
factor in courts often deciding against private-label manufacturers.
In determining the merits of a trade dress claim, Andrew Corydon Finch observed
in The University of Chicago Law Review:
While each of these circuits recognizes a slightly different
set of factors, the list usually includes (1) the strength of the
plaintiff's trade dress; (2) the similarity of the plaintiff's and
the defendant's trade dresses; (3) the similarity of the plain
tiff's and the defendant's products; (4) the similarity of the
advertising media used by the parties; (5) the likely
sophistication and degree of care exercised by consumers; (6)
evidence of actual confusion; and (7) the defendant's intent in
adopting its trade dress.
Finch argued that the courts should not automatically presume a likelihood of
confusion upon showing an intent to copy on the part of the defendant.
Indeed, the circuits are divided on this issue as well.
One reason a competitor might copy the trade dress of another is because it
is the custom in the industry or for that class of product. An example given by
Finch is the packaging by many soft drink manufacturers of lime soda in green as
a common signal to consumers about the lime flavoring. Another reason to
copy, according to Finch, is to inform consumers about a legitimate lower-priced
alternative and to signal that quality is essentially the same. In both cases,
Finch argued, the courts should not presume "an intent to confuse or likelihood
of confusion from the mere fact of intentional copying."
Finch also noted two cases, one in the Third Circuit and one in the Seventh
Circuit, where the courts "have explicitly rejected the notion that either
an intent to copy or an intent to confuse should raise a presumption of a
likelihood of confusion." These examples also illustrate the application of
judicial reasoning across different categories of trade dress cases.
Samuel D. Rosen and Lisa M. Gigliotti analyzed the Conopco decision in
great detail. They explained the Federal Circuit's reasoning in allowing
the private-label manufacturer to copy the trade dress of Vaseline Intensive
Care Lotion as a "legitimate means to convey to the public a message of
However, Rosen and Gigliotti cautioned manufacturers about the implications
of this case: "To those few in the private label industry who believe Conopco
gives them a hunting license, they would do well to compute the probability of
their infringing activities being judged by the Federal Circuit or, indeed, a
particular panel of that court." They viewed the opinion as "an attack on
the importance of trade dress as a source identifier to consumers. . . .Not only
is the Federal Circuit's endorsement of commercial piracy wanting for any
support in Eighth Circuit law, it runs counter to established precedent from
other courts." Once again, the courts cannot agree on the application of
trade dress protection.
Prior to the Qualitex decision, Lawrence B. Ebert wrote about the courts' long
tradition of invoking the "color depletion theory" to rule against plaintiffs
who sought protection for color alone as a trade dress. The color depletion
theory was established in a 1949 Third Circuit decision against Campbell
Soup, which sought protection for the color red for the labels of its soup
cans. The court held that colors are in limited supply and that if they were
protectable as trademarks, manufacturers would soon run out of available colors
to use for packaging.
Ebert argued for the courts to "engage in a factual analysis of
functionality, secondary meaning, and competitive need to determine if
protection in color per se is warranted."  Indeed, other scholars agreed
that the time had come for the U.S. Supreme Court to consider this issue,
especially in light of a split between federal Courts of Appeals.
Thus scholars generally lauded the Qualitex decision because it allowed
protection of color alone as a trademark. However, Paul R. Morico wrote in
Journal of the Trademark and Patent Office Society that "many barriers to
obtaining and maintaining trademark rights in color per se remain."
Primarily, he noted, color marks are "rarely inherently distinctive, often
require substantial promotion to acquire secondary meaning, and even if capable
of serving as indicia of origin are often functional and hence
In addition, Jonathan Hudis noted in The Trademark Reporter that the U.S.
Supreme Court left an important question unanswered in the Qualitex decision as
to whether a color used as a trademark that was found to be inherently
distinctive is still protectable without a showing that it had acquired
secondary meaning in the marketplace. Hudis argued that by also applying the
Two Pesos decision, courts could find protection for color trademarks and trade
dress in such instances.
Interestingly, James Davey suggested in the Tennessee Law Review that the
Qualitex decision "could have a profound impact in the age of computers and the
information superhighway." He predicted that a reading of the decision could
prompt companies to seek trademark protection for the background colors of
Computer User Interfaces
Cases alleging trade dress infringement for computer software user interfaces
is an emerging area of litigation that touches upon patent, copyright, and trade
dress law. User interfaces are known more commonly as the "look and feel" of
the software product to the consumer, such as the icon-based environments of
MacIntosh and Microsoft Windows. A key issue in these cases is whether the
interface can really serve as an identifier of the source manufacturer, a
fundamental purpose of trade dress protection. Scholars are divided on
whether computer user interfaces deserve trade dress protection.
Mitchell Zimmerman, writing in The Computer Lawyer, argued that the goal of
plaintiffs is not necessarily to protect consumers from source confusion, but
rather to prevent newcomers to the market from getting a "free ride" on someone
else's recognition by the consumer. That said, he argued that patent and
copyright protection, not trade dress protection, are the appropriate legal
On the other hand, Lauren Fisher Kellner, writing in The University of Chicago
Law Review, argued in favor of using trade dress law to protect user interfaces
where copyright law fails. The key difference, Kellner noted, is that
copyright law protects computer programs as works of authorship, whereas trade
dress law could protect the combination of elements that add up to the "look and
feel" of the user interface.
To bolster this argument, Kellner cited a recent case in which the courts
considered protection for computer software user interfaces under copyright law
yet used language applicable to trade dress law. Kellner argued that had
the plaintiff sued under the Lanham Act as a trade dress infringement, it might
In two other cases where the same plaintiff did prevail on a claim of
infringement of its spreadsheet program, the courts applied copyright law.
However, Kellner noted that opinion relied on trademark rationale and extended
the scope of copyright to the "look and feel" of a computer software program.
For this reason, Kellner argued that the door is open for computer software
manufacturers to succeed in the future under the Lanham Act.
Legal scholars have addressed in detail various aspects of trade dress law.
Individually they have looked at cases involving product configuration,
private-label manufacturers, protection of color alone, and computer software
user interfaces. Often, cases in one category provide rationale for arguments
in cases of another category.
These scholars have noted how the circuits are divided on appropriate tests to
use in deciding trade dress cases. They have also vigorously debated the
tension between trade dress, patent, and copyright law and what should be the
reasonable limitations of each.
While a number of scholars have considered the importance of the 1988
Amendments to the Lanham Act and subsequent U.S. Supreme Court decisions in Two
Pesos and Qualitex, they have tended to look at the impact of these developments
on single cases or categories of cases. None to date have analyzed cases across
all categories to determine what impact these developments have had and to
identify trends or continued splits among the federal Courts of Appeals. This
paper will make such an analysis.
RESEARCH QUESTION & METHODOLOGY
This paper will address the following research question: How have the 1988
Amendments to the Lanham Act and the U.S. Supreme Court decisions in Two Pesos
and Qualitex affected the federal courts' interpretation and application of the
Lanham Act in trade dress infringement cases?
This paper will analyze the 38 federal Courts of Appeals cases alleging trade
dress infringement that have been decided since the 1992 Two Pesos decision.
Analysis of Cases
This analysis will show that even though the U.S. Supreme Court has expanded
the definition of trade dress through its decisions in Two Pesos and Qualitex,
the courts are not yet willing to allow protection of product configurations as
trade dress when this would conflict with patent or copyright law. Furthermore,
though the U.S. Supreme Court now allows protection of color alone as a
trademark, plaintiffs still find it difficult to meet the other burdens of proof
to exercise that right. Finally, this analysis will reveal that splits endure
between the federal circuits with regard to application of the Lanham Act, even
though the U.S. Supreme Court intended to settle them with the Two Pesos
Two Pesos, Inc. v. Taco Cabana, Inc. (1992)
To understand the impact Two Pesos has had on subsequent trade dress cases, it
is useful to consider in more detail the facts of this case and how they allowed
the U.S. Supreme Court to expand the definition of trade dress to include "the
total image of the business." In this particular case that meant "the
shape and general appearance of the exterior of the restaurant, the identifying
sign, the interior kitchen floor plan, the decor, the menu, the equipment used
to serve food, the servers' uniforms and other features."
Two Pesos and Taco Cabana operated competing chains of Mexican fast-food
restaurants in Texas. Taco Cabana began operation in 1978 and by 1985 had six
restaurants in San Antonio, each featuring "a festive eating atmosphere having
interior dining and patio areas decorated with artifacts, bright colors,
paintings and murals."
Two Pesos entered the Houston, Texas, market in 1985 and began expanding
throughout the state with a motif very similar to Taco Cabana's. In 1987, Taco
Cabana expanded to the Houston market and filed suit for, among other issues,
trade dress infringement of its motif. The jury in the U.S. District Court for
the Southern District of Texas held: "Taco Cabana has a trade dress, it is
non-functional, it is inherently distinctive, it has not acquired secondary
meaning in the Texas market, and the alleged infringement creates a likelihood
of confusion for ordinary customers as to the source or association of the
restaurant's goods or services." The jury found for Taco Cabana and awarded
Two Pesos appealed, arguing that the judge had incorrectly instructed the
jury. Two Pesos argued that if the jury did not find Taco Cabana's trade dress
had developed secondary meaning in the marketplace, it should not have protected
it. The Fifth Circuit Court of Appeals upheld the lower court's ruling,
following its own precedent In re Chevron Chemical Co. v. Voluntary Purchasing
Groups, Inc. The Fifth Circuit noted in its opinion that the precedent in
Chevron conflicted with other Courts of Appeals, specifically the Second
Circuit, which required proof that the trade dress was both inherently
distinctive and has acquired secondary meaning. As discussed earlier, the
U.S. Supreme Court stated that it granted certiorari to resolve this conflict
among the Courts of Appeals and ultimately affirmed the Fifth Circuit's
In addition to settling the requirement of secondary meaning, the Court
also held that Lanham Act protection applies in the same manner to trade dress
as it does to trademarks. Heretofore, the courts had not accorded trade dress
the same level of protection as trademarks. Because the Lanham Act seeks to
prohibit unfair competition, the Court explained its reasoning in terms of
effects on the competitive marketplace.
Product Configuration Infringement Cases
In addition to the broader language in the 1998 Amendments to the Lanham
Act, the expanded definition of trade dress in Two Pesos has opened a floodgate
of new cases, especially in the category of product configuration. The majority
(21 of 38) of the federal Courts of Appeals cases analyzed for this paper
alleged trade dress infringement of product configurations. This is a highly
contentious area of trade dress litigation because it brings into question the
proper limits of patent, copyright, and trademark law.
In general, the courts are not willing to allow trade dress protection,
which is renewable indefinitely, for product features that patent or copyright
law will only protect for a limited period of time. The expansion of the
definition of trade dress in Two Pesos has perhaps encouraged many plaintiffs to
seek trade dress protection for product configurations. However, the courts are
still very careful to not allow trade dress protection to become overbroad.
A key decision cited by legal scholars and in the opinions of many subsequent
cases was In re Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd. In
this action, Duraco alleged that Joy Plastic had infringed its design of a
Grecian-style plastic planter. The Third Circuit denied Duraco's claim,
concluding that traditional trade dress law as it applies to product packaging
"does not 'fit' a product configuration case." The court reasoned that
trade dress law applies to features which are "conceptually separate from the
product," not the product itself.
The Eighth Circuit takes the opposite view. In re Stuart Hall Co., Inc. v.
Ampad Corp. the Court of Appeals reversed and remanded the district court's
denial of a preliminary injunction against Ampad, which Stuart Hall claimed had
infringed upon the trade dress of its project planner and personal notebook.
The Eighth Circuit held: "'Trade dress' is a single concept encompassing both
product configuration and packaging, and either configuration or packaging can
be inherently distinctive, requiring no showing of secondary meaning to merit
Lanham Act protection."
Many product configuration cases hinge on whether the courts determine the
trade dress involved is functional. The federal Courts of Appeals do not agree
about which party has the burden of proof in this matter (see Table 2 in the
In the Vornado decision mentioned earlier and cited in many subsequent
opinions, the Tenth Circuit held that product features protected under a utility
patent, which will eventually expire and enter the public domain, cannot be
protected as trade dress. Interestingly, the court pointed out in the
Vornado opinion, which denied trade dress protection for a household fan grill:
"Neither the latest version of the [Lanham] statute nor the wording prior to the
1988 revision makes any mention of product shapes or configurations."
Accordingly, the court held that the freedom of competitors to copy features of
patented products after the patents expire supersede the desire by manufacturers
to trademark such features.
The Seventh Circuit, In re Thomas & Betts Corp. v. Panduit Corp., also dealt
with protection of product features, this time features disclosed in an expired
patent. The Court of Appeals reversed a district court ruling and denied
protection for Thomas & Betts' cable ties (small nylon belts used to bundle
wires) because it found the features in question were functional.
In 1995 alone, the Second Circuit decided seven trade dress cases involving
product configuration, several of which dealt with this issue of functionality.
Most important of these was Knitwaves, Inc. v. Lollytogs Ltd., in which the
Second Circuit abandoned its traditional test for whether a trade dress is
protectable and established a new one. In deciding Knitwaves the court did
not find the copyrighted sweater design at issue to be functional. However, the
court said it should look at "whether it was likely to serve primarily as
designator of origin of the product." In doing so, the court found for
Knitwaves in its copyright action, but denied it trade dress protection.
Interestingly, a few months prior to the Knitwaves decision, the Second Circuit
also spoke to this issue of copyright, patent, and trademark law being in
conflict with one another. In In re Jeffrey Milstein, Inc. v. Greger, Lawlor,
Roth, Inc., the court said it "should proceed with caution in assessing claims
to unregistered trade dress protections as not to undermine objectives of those
other laws." The Second Circuit denied trade dress protection for greeting
cards die-cut in the shapes of animals.
Packaging Infringement Cases
Aside from product configuration, most other trade dress cases deal with some
aspect of packaging. Thirteen of the cases included in this analysis fit into
this category. A key issue for these cases is whether the trade dress is likely
to cause confusion among ordinary customers as to the source of the competing
products. The Two Pesos decision spoke directly to this issue and is cited in
every opinion. These cases are harder to summarize regarding their outcome
because the facts are often so different and because the courts are split
concerning which party has the burden of proof for each factor of the
The types of infringement alleged in these cases also varies greatly - the "PM"
of over-the-counter analgesic Excedrin PM to packaging of L'eggs Sheer
Energy pantyhose, Merriam-Webster's dictionary, Werther's Original
butter candy or the Greek liqueur ouzo, among others. However, the
one thing they have in common is that the courts go through similar steps in
each to determine whether the trade dress has met the Two Pesos test.
Where these cases sometimes differ is in how their respective circuits arrive at
their conclusions and which tests they apply for the individual findings of
inherent distinctiveness, secondary meaning, likelihood of confusion, and
For example, the Second Circuit often applies a test for finding secondary
meaning from Centaur Communications, Ltd. v. A/S/M Communications, Inc. and
a test for likelihood of confusion from Polaroid Corp. v. Polarad Electronics
Corp. The Eighth Circuit uses a test from Co-Rect Prods, Inc. v. Marvy!
Advertising Photography, Inc., to determine whether a likelihood of confusion
These differences among the federal Courts of Appeals are significant,
especially for nationally branded and distributed products. The nature of
interstate commerce means that while products compete nationally, the
interpretation of the federal Lanham Act varies regionally. This leads to
inconsistencies in application of a federal statute designed to prevent unfair
competition and has the potential to encourage forum shopping, in which
plaintiffs seek the most sympathetic federal jurisdictions to sue for trade
There are obvious similarities between some tests, but the fact remains
that each federal circuit usually bases decisions on its own precedents. Many
times, the decision by the federal Courts of Appeals is to either deny or uphold
a preliminary injunction imposed by the district court on the infringing party
and then to remand the case for trial with specific instructions as to which
test to apply.
In the Excedrin PM case the Second Circuit denied Bristol-Myers Squibb Co.,
maker of Excedrin PM, a preliminary injunction granted by the lower court
against the maker of Tylenol PM after holding that "PM" is descriptive and
therefore not protectable. In the L'eggs pantyhose case the Fourth Circuit
applied its test to determine likelihood of confusion. The Fourth Circuit
then reversed and remanded the case with directions for the lower court to find
for Sara Lee, maker of L'eggs, because it found that Kayser-Roth's No Nonsense
pantyhose package had confusingly similar trade dress to the L'eggs Sheer Energy
In the Merriam-Webster case, the Second Circuit used its precedent in
Polaroid to determine whether Random House's trade dress for its dictionary
was likely to cause confusion among customers with Merriam-Webster's
dictionary. The Second Circuit reversed the finding by the lower court
against Random House, stating that Merriam-Webster's bull's-eye logo and the
very name Merriam-Webster "are neither strong nor distinctive."
In the Werther's Original candy decision, the Seventh Circuit reversed a
preliminary injunction granted by the lower court against Nabisco for making
comparative claims about Werther's on its Life Savers Delites candy package.
Werther's sought the injunction to stop Nabisco before it went to market with
this package, which is unusual. Most trade dress cases allege infringement that
has already occurred and seek damages for injury. Werther's lost, in part,
because the court held that comparative advertising was beneficial to
The Werther's case is somewhat reminiscent of the Conopco decision, in
which the Federal Circuit held that a private-label manufacturer had not
infringed the trade dress of Conopco's Vaseline Intensive Care Lotion. In both
cases, the Courts of Appeals have ruled that trade dress which incorporates
another product's trademark for comparative purposes does not infringe. Rather,
the courts have ruled that consumers' needs for comparative product information
outweigh the brands' needs to protect their trade dress.
Finally, the case involving the Greek liqueur ouzo perhaps best exemplifies
the importance of Two Pesos to trade dress litigation. In Paddington Corp. v.
Attiki Importers & Distributors, Inc., the district court decided - prior
to Two Pesos - against Paddington regarding the packaging of ouzo it imported.
The district court held that Paddington could not prove its trade dress had
acquired secondary meaning in addition to proving it was inherently distinctive.
By the time the case reached the Second Circuit Court of Appeals, the U.S.
Supreme Court had eliminated the requirement of proving secondary meaning in its
Two Pesos decision. Paddington won on appeal, illustrating how the courts
immediately embraced the Two Pesos test.
Color Infringement Cases
The federal Courts of Appeals have only decided three cases regarding
protection of color alone as trade dress since Two Pesos, one before and two
after the landmark Qualitex decision. None of the three indicate that
plaintiffs are finding it easy to qualify for protection of color alone as trade
Interestingly, In re Brunswick Corp. v. British Seagull, Ltd., which
was decided prior to Qualitex, the Federal Circuit had much to say about the
functionality of color and did not rely on the old "color depletion theory"
courts traditionally used to deny color protection before Qualitex.
In Brunswick, the Federal Circuit denied protection of the color black for
outboard motors as "de jure functional." It held: "De facto functional means
that the design of a product has a function, i.e., a bottle of any design holds
fluid. De jure functionality, on the other hand, means that the product is in
its particular shape because it works better in this shape." The Federal
Circuit affirmed the lower court finding that Brunswick's color black for its
outboard motors was de jure functional, meaning it had a competitive advantage
rather than was necessary to the design of the product, and therefore was not
protectable as trade dress.
However, as legal scholars have pointed out, the Qualitex decision has not made
it particularly easy for plaintiffs to protect color alone as trade dress. 
In re Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., the Second Circuit
did not allow protection of Mana's black makeup compact, holding that its trade
dress was neither inherently distinctive nor had it acquired secondary
meaning. In re Fabrication Enterprises, Inc. v. Hygenic Corp., the Second
Circuit did reverse the decision by a lower court that Hygenic's color system
for exercise bands was functional and remanded it for trial. However, the
Second Circuit also cited Qualitex and noted that a defendant can defeat a case
of alleged infringement by proving that the trade dress in question is
Computer User Interface Infringement Cases
A single case in the Fifth Circuit is the only one during the time period of
this analysis that deals with alleged trade dress infringement of computer user
interfaces. In re Engineering Dynamics, Inc. v. Structural Software, Inc., the
Fifth Circuit upheld the finding by the lower court that there was "little
likelihood of confusion among the relevant users of the computer programs at
issue." The case involved alleged infringement of a structural engineering
software program. In determining whether there was a likelihood of confusion,
the Court of Appeals considered testimony at the district court trial "that both
products were targeted at a fairly limited and sophisticated market. . .
Furthermore, these programs' trade dress is largely irrelevant when
sophisticated users decide which program to purchase."
Clearly the expansion of protection of trade dress in the 1988 Amendments to
the Lanham Act and subsequent interpretation by the U.S. Supreme Court in Two
Pesos and Qualitex has resulted in some unusual cases for trade dress
infringement. No longer do plaintiffs restrict their allegations of
infringement to traditional issues of packaging. They now seek protection for
the configurations of their products. Of the 38 cases considered in this
analysis, 21 alleged infringement of a product configuration, while only 13
alleged infringement of packaging. Three alleged infringement of color alone,
and one case alleged infringement of a computer software user interface (See
Table 1 in Appendix).
The courts must wrestle with the reasonable limits of trade dress protection,
particularly in the area of product configuration. Often these cases
simultaneously pursue protection under copyright and/or patent law as well as
trademark law. In some cases, plaintiffs seek protection under trademark law
when no remedy is available under copyright or patent law.
Upon early investigation of this topic, the expectation was to find that the
courts have embraced the expanded definitions of trade dress and given it
greater protection subsequent to the 1988 Lanham Act Amendments and U.S. Supreme
Court decisions in Two Pesos and Qualitex. It was a surprise to learn that, at
least in terms of product configuration cases, the federal Courts of Appeals are
very careful to uphold the spirit and intent of the copyright and patent laws
and their importance to free enterprise. In doing so, the courts are reluctant
to allow trade dress protection as a remedy for plaintiffs' product designs or
useful features that cannot otherwise qualify for patent or copyright protection
or as a way to extend such protection beyond the finite terms of those statutes.
Furthermore, the Qualitex decision may have officially enabled plaintiffs
to protect color alone as a trademark, but this analysis has supported the
prediction by legal scholars that the burdens of proof required for protection
remain prohibitively high for most plaintiffs. What will be interesting to see
is how the courts apply the Qualitex decision in cases where plaintiffs seek
protection of the colors of their computer monitors or software user interfaces.
Equally as interesting as the splits among federal Courts of Appeals regarding
how to decide certain trade dress issues is the split between lower courts and
their respective Courts of Appeals. In this analysis, many times the Courts of
Appeals overturned decisions by the lower courts or remanded them for trial with
specific instructions as to which test to apply. One message gleaned from this
analysis is that the parties, particularly defendants, that lose at the district
level often have good reason to consider appealing, as the Courts of Appeals may
very will reverse the decision.
Finally, most disturbing about this analysis is the fact that while interstate
commerce flourishes and the courts state their wishes to nurture a free and open
marketplace, application of the federal statute designed to do so is still
handled parochially. It appears inevitable that the U.S. Supreme Court will
again be called to settle splits among the federal circuits and establish a more
precise national standard regarding the protection of trade dress. For a
summary of tests and standards enunciated in the cases in this analysis, see
Table 2 in the Appendix.
Table 1. Tally of trade dress cases analyzed.
Court of Appeals
Computer Software Interface
*All Federal Circuit decisions apply the law in the circuit from which the case
Table 2. Summary of tests and standards enunciated in this analysis.
Court of Appeals
Standard or Test Enunciated
Atari, Inc: It applies laws of regional circuits from which cases arise.
Knitwaves: In determining whether each of manufacturer's sweater designs
could be protected as trademark, Court of Appeals could not ask whether design
was generic, descriptive, suggestive or arbitrary or fanciful; rather, court
would ask whether it was likely to serve primarily as designator of origin of
Centaur Communications: The elements are: (1) advertising expenditures, (2)
consumer studies linking the mark to the source, (3) unsolicited media coverage
of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6)
length and exclusivity of the mark's use. No single factor is determinative,
and every element need not be proved.
Likelihood of Confusion
Polaroid: (1) the strength of his mark; (2) the degree of similarity
between the two marks; (3) the proximity of the products; (4) the likelihood
that the prior owner will bridge the gap; (5) actual confusion; (6) the
reciprocal of defendant's good faith in adopting its own mark; (7) the quality
of defendant's product; and (8) the sophistication of the buyers.
Duraco: Product feature or combination or arrangement of features, i.e., a
product configuration, for which Lanham Act protection is sought must be unusual
and memorable; conceptually separate from the product; and likely to serve
primarily as designator of origin of the product.
Burden of Proof - Functionality
Merchants & Evans: Plaintiff must prove trade dress is non-functional.
Pizzeria Uno: (1) long use; (2) advertising; (3) sales volume; and (4)
identity of service or origin in the minds of the purchasing public.
Functionality; Product Configurations
Thomas & Betts: Even if product feature has acquired secondary meaning,
doctrine of functionality bars its protection as trade dress if feature is one
that is costly to design around or do without, rather than one that is costly to
have. Trade dress protection only extends to role of product features as
signifier of source.
Burden of Proof - Functionality
Computer Care: Defendant must prove trade dress is functional.
Likelihood of Confusion
Co-Rect: (1) the strength of the owner's mark; (2) the similarity between
the owner's mark and the alleged infringer's mark; (3) the degree to which the
products compete with each other; (4) the alleged infringer's intent to "pass
off" its goods as those of the owner; (5) incidents of actual confusion; and (6)
the type of product, its costs, and conditions of purchase.
Burden of Proof - Functionality
Woodsmith Publishing.: Plaintiff must prove trade dress is non-functional.
Likelihood of Confusion
E. & J. Gallo Winery: (1) strength of the allegedly infringed mark; (2)
proximity of relatedness of the goods; (3) similarity of the sight, sound, and
meaning of the marks; (4) evidence of actual confusion; (5) degree to which the
marketing channels converge; (6) type of goods and degree of care consumers are
likely to exercise in purchasing them; (7) intent of the defendant in selecting
the allegedly infringing mark; and likelihood that the parties will expand their
Burden of Proof - Functionality
Rachel: Plaintiff must prove trade dress in non-functional.
Burden of Proof - Functionality
Elmer: Plaintiff must prove trade dress is non-functional.
 Joseph R. Dreitler, Two Renegade Circuits Split Again on Trade Dress, 18
Nat'l L.J., May 20, 1996, at C16.
 Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir.
 Id. "PM" refers to the formulation of the analgesic taken at night.
 Barry Werbin & Darlene Fairman, 'Inherently Distinctive' Gains New
Clarification, Nat'l Law J., Feb. 12, 1996 at C30.
 15 U.S.C. _ 1125(a) (1988). The statute reads:
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person,
or as to the
origin, sponsorship, or approval of his or her goods, services, or commercial
by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
qualities, or geographic origin of his or her or another person's goods,
shall be liable in a civil action by any person who believes that he or she
is or is
likely to be damaged by such act.
 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
Trade that is inherently distinctive is protectable under _ 43(a) without a
that it has acquired secondary meaning, since such trade dress itself is
identifying products or services as coming from a specific source. This is
the rule gen
erally applicable to trademark, see, e.g., Restatement (Third) of Unfair
13, pp. 37-38, and the protection of trademarks and of trade dress under _
the same statutory purpose of preventing deception and unfair competition.
There is no
textual basis for applying different analysis to the two.
 Id. at 767.
 Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695,
702 (5th Cir. 1981).
 Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299 (1981), cert.
denied, 455 U.S. 909 (1982).
 See Two Pesos, 505 U.S. at 763.
 Qualitex Co. v. Jacobsen Products, Co., Inc., 115 S.Ct. 1300, 1301 (1995).
There is no theoretical objection to use of color alone as trademark, where
attained "secondary meaning," and therefore identifies and distinguishes
brand, and thus indicates source. . . Lanham Act's changes have left courts
free to ev
aluate preexisting legal precedent which had absolutely forbidden use of
color alone as
 Id. at 1304. "It is the province of patent law, not trademark law, to
encourage invention by granting inventors a monopoly over new product designs or
functions for a limited time, 35 U.S.C. __ 154, 173, after which competitors are
free to use the innovation."
 See, e.g., Harold Brown, The Protection or Abuse of Trade Dress, N.Y.L.
J., March 24, 1994, 3; Vincent N. Palladino, Trade Dress After Two Pesos, 84
Trademark Rep. (1994), 408-417; Melissa R. Gleiberman, From Fast Cars to Fast
Food: Overbroad Protection of Product Trade Dress Under Section 43(a) of the
Lanham Act, 45 Stan. L. Rev. (1993), 2037-65; Werbin & Fairman, supra note 4;
Paul R. Morico, Protecting Color Per Se in the Wake of Qualitex v. Jacobsen, 77
JPTOS (1995), 571-82.
 See Two Pesos, 505 U.S. at 764, quoting John H. Harland Co. v. Clarke
Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).
 Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431 (3d
 Vornado Air Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d 1498
(10th Cir. 1995), cert denied, 116 S.Ct. 753 (1996).
 Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995).
 Lauren Fisher Kellner, Trade Dress Protection for Computer User Interface
"Look and Feel," 61 U. Chi. L. Rev., 1011-36 (1994). See, e.g., Apple Computer,
Inc. v. Microsoft Corp., 799 F. Supp 1006 (N.D. Cal. 1992); Lotus Development
Corp. v. Borland Int'l, Inc., 799 F. Supp 203 (D. Mass 1992) ("Lotus II"); Lotus
Development Corp. v. Paperback Software Int'l, 740 F. Supp 37 (D. Mass 1990)
 Lawrence B. Ebert, Trademark Protection In Color: Do It By The Numbers! 84
TMR, n.4, 379-407. See, e.g., In re Owens-Corning Fiberglas Corp., 774 F.2d
1116 (Fed. Cir. 1985), revg 221 USPQ 1195 (TTAB 1984); NutraSweet Co. v. Stadt
Co., 917 F.2d 1024 (7th Cir. 1990), cert denied 111 S.Ct 1640 (1991); See
Qualitex, 115 S.Ct. at 1300.
 James B. McLaren, Jr., Lanham Act Protection From The Copying Of Trade
Dress By Generic Drug Manufacturers, 38 Wash. & Lee L. Rev., 1225-36.
 Dreitler, supra note 1.
 See, e.g., Intellectual Property - Patent and Trade Dress Law - Tenth
Circuit Applies "Significant Inventive Aspect" Test To Determine Whether Utility
Patent Precludes Trade Dress Protection, 109 Harv. L. Rev. 1457-62 (1996);
William B. Bunker, Dress Blues: Patent Protection for Product Features and
Configurations May Preclude Trade Dress Protection, L.A. Daily Journal, Dec. 1,
1995, 7; Eugene M. Gelernter & Andrew D. Schau, Trade Dress Law Meets Patent
Protection, New York Law Journal, Mar. 21, 1996 at 1; Palladino, supra note 18;
James P. Flynn & Brian Lee, Confusion Reigns Over 'Confusion' Standards, 141
N.J.L.J. 10 (1995); Gleiberman, supra note 18; Lawrence Freidman & Joshua
Rawson, Could Trade Dress Be Shrinking?, 214 N.Y.L.J. (Dec. 4, 1995), at S3.
 Dreitler, supra note 1; Werbin & Fairman, supra note 4.
 15 U.S.C. _ 1125(a) (1988), supra note 5.
 Jane C. Ginsburg et al. eds., Trademark and Unfair Competition Law (2d ed.
 Id. 15 U.S.C. _ 1059(a) (1988).
 15 U.S.C. _ 1052 (1988). The statute reads:
No trademark by which the goods of the applicant may be distinguished from the
goods of others shall be refused registration on the principal register on
account of its nature unless it . . .
(e) Consists of a mark which
(1) when used on or in connection with the goods of the applicant is merely
descriptive or deceptively misdescriptive of them . . .
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2d Cir. 1976).
A generic term is one that refers, or has come to be understood as referring,
genus of which the particular product is a species. The term "spoon" is
generic when it
identifies the article with which one eats soup. The term "deep bowl" is
the term "spoon" because it describes a significant characteristic of the
 Restatement of the Law (Third) of Unfair Competition _ 17 cmt. b, at 173.
A packaging or product feature is not functional merely because the feature
utilitarian purpose. The recognition of trademark rights is precluded only
particular design affords benefits that are not practically available through
designs. A bottle, for example, is a utilitarian element of the packaging
for wine, but
the design of a particular wine bottle is not functional under the rule of
unless the shape or other aspects of the bottle provide significant benefits
that are not
practically obtainable through the use of alternative bottle designs.
 See, e.g., Werbin & Fairman, supra note 4.
 15 U.S.C. _ 1125c(1) (1988). The statute reads:
The owner of a famous mark shall be entitled, subject to the principles of
equity and upon such terms as the court deems reasonable, to an injunction
against another person's commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes dilution of the
distinctive quality of the mark, and to obtain such other relief as is provided
in this subsection. In determining whether a mark is distinctive and famous, a
court may consider factors such as, but not limited to
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of the use of the mark in connection with the
services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is
(F) the degree of recognition of the mark in the trading areas and channels of
used by the marks' owner and the person against whom the injunction is
(G) the nature and extent of use of the same or similar marks by third
(H) whether the mark was registered under the Act of March 3, 1881, or the Act
February 20, 1905, or on the principal register.
 Werbin & Fairman, supra note 4.
 Dreitler, supra note 1, at C19.
 See, e.g., Dreitler, supra note 1; Werbin & Fairman, supra note 4; Brown,
supra note 18; Palladino, supra note 18; Gleiberman, supra note 18; James Davey,
Intellectual Property-Trademarks-The Lanham Act Permits The Registration of
Color Alone As A Trademark, 63 Tenn. L.R. (1995), 261-80; Morico, supra note 18;
Jonathan Hudis, Removing The Boundaries Of Color, 86 Trademark Rep. (1996),
 See, e.g., Harv. L. Rev., supra note 27; Bunker, supra note 27; Gelernter
& Schau, supra note 27; Palladino, supra note 18.
 Gleiberman, supra note 18; Flynn & Lee, supra note 27; Friedman & Rawson,
supra note 27.
 See Knitwaves, 71 F.3d at 996.
 Id. at 997.
 See, e.g., Harv. L. Rev., supra note 27; Gelernter & Schau, supra note 27;
Dreitler, supra note 1; Werbin & Fairman, supra note 4, Bunker, supra note 27;
Kevin F. Hormuth, Trade Dress Infringement In The Eighth Circuit: Stuart Hall
Co., Inc. v. Ampad Corp., 29 Creighton L. Rev., 1421-65 (1996).
 Merchants & Evans, Inc. v. Roosevelt Bldg. Prods. Co., 963 F.2d 628, 633
(3d Cir. 1992).
 Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994).
 Keystone Retaining Wall Systems, Inc. v. Westrock, Inc. (Fed. Cir. 1993).
 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995).
 Computer Care v. Service Sys. Enter., 982 F.2d 1063, 1068 (7th Cir. 1992).
 See Knitwaves, 71 F.3d at 1005. Quoting Villeroy & Boch v. THC, 999 F.2d
at 620 (2d Cir. 1993): "A defendant may avoid liability under _ 43(a) of the
Lanham Act if he or she is able to demonstrate that the allegedly similar trade
dress feature is 'functional.'"
 See Vornado, 58 F.3d at 1498.
 Harv. L. Rev., supra note 27.
 Id. At issue was the configuration of a household fan grill for which the
plaintiff, Vornado, held two utility patents. In copying Vornado's
configuration, the defendant, Duracraft, did not infringe upon the patents. So,
Vornado sued for trade dress infringement under the Lanham Act. The Tenth
Circuit, without considering the trade dress issue, reversed the district
court's ruling in favor of Vornado.
 Id. at 1499.
 Black's Law Dictionary 1125 (6th ed. 1990).
 Harv. L. Rev., supra note 27, at 1457.
 Gelernter & Schau, supra note 27.
 Harv. L. Rev., supra note 27, at 1459.
 See Krueger International Inc. v. Nightingale Inc., 1996 U.S. Dist. Lexis
930 (S.D.N.Y. 1996); Hubbell Inc. v. Pass & Seymour Inc., (S.D.N.Y. 1996).
 Gelernter & Schau, supra note 27, at 6.
 Bunker, supra note 27, quoting Qualitex, 115 S.Ct. at 1304.
 Joseph Diamante & Darren W. Saunders, Four federal court decisions have
limited the extent to which private-label manufacturers can copy the packaging
of their national-brand counterparts, Nat'l L. J., July 18, 1994, B5-6.
 See 15 U.S.C. _ 1125 (1988), supra note 5.
 See Diamante & Saunders, supra note 61, at B5; Andrew Corydon Finch, When
Imitation Is the Sincerest Form of Flattery: Private Label Products and the Role
of Intention in Determining Trade Dress Infringement, 63 U. Chi. L. Rev. (1996),
 Diamante & Saunders, supra note 61, at B5.
 Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. 1994),
cert denied, 115 S. Ct. 1724 (1995).
 Id. See also Diamante & Saunders, supra note 61.
 See Conopco, 46 F.3d at 1556.
 Diamante & Saunders, supra note 61.
 Finch, supra note 61, at 1248-49.
 Id. at 1244.
 Id. at 1253.
Almost every circuit recognizes the defendant's intent as a factor in
likelihood of confusion in the trademark context. Most of these circuits
the defendant's intent as a factor in determining trade dress infringement
under _ 43
(a). In some of these circuits, however the defendant's intent is more than
factor among many. Several circuits have held that intentional copying of
without more, raises a presumption of a likelihood of confusion. Other
held that, while mere intentional copying is not enough on its own, copying
intent to deceive or confuse consumers is sufficient to raise such a
presumption. A few
circuits, however, reject all such presumptions and recognize the defendant's
as only one factor among many to be considered in determining whether there
likelihood of confusion.
 Id. at 1255-56.
 In re American Home Products Corp. v. Barr Laboratories, Inc., the
plaintiff alleged that the defendant had infringed upon the brown trade dress of
Advil ibuprofen tablets (color).
 In re Versa Products v. Bifold Co. (Manufacturing) Ltd., the plaintiff
alleged copying of control valves used in offshore oil-drilling rigs (product
 Id. at 1260.
 Id. at 1260-61.
 See Conopco, 46 F.3d at 1556.
 Samuel D. Rosen & Lisa M. Gigliotti, Conopco Kaputco For Trade Dress
Plaintiffs? 85 The Trademark Rep. (1995), 135-60.
 Id. at 139.
 Id. at 136.
 Id. at 140.
 Ebert, supra note 24.
 Campbell Soup v. Armour & Co., 175 F.2d 795 (3rd Cir. 1949), cert denied,
338 U.S. 847 (1949).
 See Qualitex, 115 S.Ct. at 1305.
 Ebert, supra note 24. See also Campbell Soup, 175 F.2d at 795.
What the plaintiffs are really asking for, then is a right to the exclusive
labels which are half red and half white for food products. If they may thus
red in all of its shades the next manufacturer may monopolize orange in all
and the next yellow in the same way. Obviously, the list of colors will soon
 Craig Summerfield, Color As A Trademark And The Mere Color Rule: The
Circuit Split For Color Alone, 68 Chicago-Kent L.R. (1993), 973-1003. See
NutraSweet and Owens-Corning, supra note 13.
 Davey, supra note 38; Morico, supra note 18; Hudis, supra note 38.
 Morico, supra note 18, at 571.
 Hudis, supra note 38, at 9.
 Davey, supra note 38, at 27.
 Richard Armstrong Beutel, Trade Dress Protection for the "Look and Feel"
of Software: The Lanham Act as an Emerging Source of Proprietary Rights
Protection for Software Developers JPTOS (December 1989), 974, 987.
 Mitchell Zimmerman, Trade Dress Protection for User Interfaces Revisited
and Interred? 13 The Computer Lawyer (1996), 4-9.
 Id. at 5, 6. "Although software users may often be able to recognize a
product by its user interface or feature set, [software users] do not generally
consider interfaces or feature sets to be indicia of source, and hence should
not be considered to constitute trade dress at all."
 Kellner, supra note 23, at 1014. See also Richard Armstrong Beutel, Trade
Dress Protection for the "Look and Feel" of Software: The Lanham Act as an
Emerging Source of Proprietary Rights Protection for Software Developers, J.
Pat. [& Trademark] Off. Soc'y, (1989), 974-88.
 See Apple Computer, 799 F. Supp at 1006. Apple sought protection of the
entire Macintosh audio-visual display as a whole. Instead, the court considered
each element separately and would not protect them.
 Kellner, supra note 23, at 1016, 1017.
 See Lotus I, 740 F. Supp at 37; See Lotus II, 799 F. Supp at 203.
 Kellner, supra note 23, at 1017.
 See Two Pesos, 505 U.S. at 764.
 Id. at 765.
 Id. at 767.
 See Chevron, 659 F.2d at 695.
 See Two Pesos, 505 U.S. at 767. See also Vibrant Sales, 652 F.2d at 299.
 See Two Pesos, 505 U.S. at 767.
 Id. at 774.
 Id. at 775.
Denying protection for inherently distinctive nonfunctional trade dress until
secondary meaning has been established would allow a competitor, which has
not adopted a
distinctive trade dress of its own, to appropriate the originator's dress in
markets and to deter the originator from expanding into and competing in
 See Duraco, 40 F.3d at 1431.
 Id. at 1434.
 Id. at 1432.
It is not proper to transplant categorical distinctiveness inquiry developed
trademarks to product configurations, where alleged trade dress lies in very
itself. In order to be inherently distinctive, product feature or
combination or arrangem
ent of features, i.e., a product configuration, for which Lanham Act trade
protection is sought must be unusual and memorable; conceptually separate
product; and likely to serve primarily as designator of origin of the
 Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995).
 Id. at 782.
 See supra notes 43-50.
 See Vornado, 58 F.3d at 1498.
Where disputed product configuration is part of claim in utility patent, and
configuration is described, significant inventive aspect of the invention, so
without it the invention could not fairly be said to be the same invention,
prevents its protection as trade dress, even if configuration is
 Id. at 1504.
 Id. at 1508. "We conclude that the inability freely to copy significant
features of patented products after the patents expire impinges seriously upon
the patent system's core goals, even when those features are not necessary to
 Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995).
 Id. at 654. "Even if product feature has acquired secondary meaning,
doctrine of functionality bars its protection as trade dress if feature is one
that is costly to design around or do without, rather than one that is costly to
 See Knitwaves, 71 F.3d at 996.
 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.
1976). "Arrayed in an ascending order roughly reflecting their eligibility to
trademark status and the degree of protection accorded, the categories of terms
are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful,
but the lines of demarcation are not always bright."
 Id. "In determining whether each of manufacturer's sweater designs could
be protected as trademark, Court of Appeals could not ask whether design was
generic, descriptive, suggestive or arbitrary or fanciful; rather, court would
ask whether it was likely to serve primarily as designator of origin of
 Id. at 998.
 Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 28 (2d
Although trade dress law may supplement copyright and patent law by
unpatentable product configurations and novel marketing techniques,
trade dress protection can undermine restrictions in copyright and patent law
designed to avoid monopolization of products and ideas; consequently, courts
proceed with caution in assessing claims to unregistered trade dress
protections as not
to undermine objectives of those other laws.
 See Two Pesos, 505 U.S. at 763.
 See Bristol-Myers Squibb, 973 F.2d at 1033.
 Sara Lee v. Kayser-Roth, (4th Cir. April 17, 1996).
 Merriam-Webster v. Random House, 35 F.3d 65 (2d Cir. 1994).
 August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995).
 Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577
(2d Cir. 1993).
 See Two Pesos, 505 U.S. at 763.
 Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d
1217, 1222 (2d Cir. 1987).
The elements are: (1) advertising expenditures, (2) consumer studies linking
to the source, (3) unsolicited media coverage of the product, (4) sales
attempts to plagiarize the mark, and (6) length and exclusivity of the mark's
single factor is determinitive, and every element need not be proved.
 Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert
denied, 368 U.S. 820 (1961).
Where the products are different, the prior owner's chance of success is a
many variables: the strength of his mark, the degree of similarity between
the two marks,
the proximity of the products, the likelihood that the prior owner will
bridge the gap,
actual confusion, and the reciprocal of defendant's good faith in adopting
its own mark,
the quality of defendant's product, and the sophistication of the buyers.
 Co-Rect Prods, Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d
1324, 1330 (8th Cir. 1985).
The six factors are: (1) the strength of the owner's mark; (2) the similarity
the owner's mark and the alleged infringer's mark; (3) the degree to which
compete with each other; (4) the alleged infringer's intent to "pass off" its
those of the owner; (5) incidents of actual confusion; and (6) the type of
costs, and conditions of purchase.
 See Bristol-Myers, 973 F.2d at 1033.
 Pizzerio Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984).
To ascertain the likelihood of confusion between two trademarks, we consider
of factors. These factors include: (1) the distinctiveness of the senior
mark; (2) the
similarity of the two marks; (3) the similarity of the goods or services that
identify; (4) the similarity of the facilities employed by the parties to
business; (5) the similarity of the advertising used by the parties; (6) the
intent in adopting the same or similar mark; and (7) actual confusion.
may not be germane to every situation; moreover, though several factors are
simultaneously present, some factors may, depending on the case, be more
 See Sara Lee, 4th Cir. April 17, 1996.
 See Polaroid, 287 F.2d 492
 See Merriam-Webster, 35 F.3d at 70.
 Id. at 71.
 See August Storck K.G., 59 F.3d at 616.
 See Conopco, 46 F.3d at 1556.
 See Paddington, 996 F.2d at 577.
 See Qualitex, 115 S.Ct. at 1300.
 Brunswick Corp. v. British Seagull, Ltd., 35 F.3d 1527 (Fed. Cir. 1994),
cert denied, 115 S.Ct. 1426 (1995).
 See Qualitex, 115 S.Ct. at 1306. "To permit one, or a few, producers to
use colors as trademarks will 'deplete' the supply of usable colors to the point
where a competitor's inability to find a suitable color will put that competitor
at a significant disadvantage."
 See Brunswick, 35 F.3d at 1531.
 Morico, supra note 18.
 Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063 (2d
 Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53 (2d Cir.
 Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335
(5th Cir. 1994).
 Id. at 1350.
 Atari, Inc. v. JS&A Group, Inc., 747 F.2d 1422 (Fed. Cir. 1984).
 See Knitwaves, 71 F.3d at 996.
 See Centaur Communications, 830 F.2d at 577.
 See Polaroid, 287 F.2d at 492.
 See Duraco, 40 F.3d at 1431.
 See Merchants & Evans, 963 F.2d at 628..
 See Pizzerio Uno, 74 F.2d at 1527.
 See Thomas & Betts, 65 F.3d at 654.
 See Computer Care, 982 F.2d at 1063.
 See Co-Rect, 780 F.2d at 1330.
 Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir.
 E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.
 Rachel v. Banana Republic, 831 F.2d 1503 (9th Cir. 1987).
 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995).