[I]n an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
Plaintiff designed and manufactured children's clothing and sold it in various stores. Defendant Wal-Mart sent its supplier photos of plaintiff's clothing to base new clothes on. The supplier copied the photos and by extension 16 of plaintiff's garments, many of which had copyrighted elements. Defendant sold its knockoffs quickly, generating over $1 million in profit. Plaintiff sued for many things, including infringement of trade dress.
Jury found for plaintiff on all of its claims.
Defendant renewed a motion for judgment as a matter of law, but the district court denied the motion and awarded plaintiff almost $1.6 million in damages.
The Second Circuit affirmed the denial of the motion for judgment as a matter of law.
Is a product’s design protectable?
While design for the sake of function, including increasing the aesthetic attractiveness, is not inherently distinctive, if an aesthetic design is sufficiently distinctive, it can be trademarked.
Page 141, End
Reversed and remanded.