University of Baltimore Law Forum Volume 23 Article 13 Number 2 Fall, 1992 1992 Recent Developments: Two Pesos, Inc. v. Taco Cabana, Inc.: Protection of Inherently Distinctive Trade Dress under Lanham Act Does Not Require Proof of Secondary Meaning Susan L. Oliveri Follow this and additional works at: http://scholarworks.law.ubalt.edu/lf Part of the Law Commons Recommended Citation Oliveri, Susan L. (1992) "Recent Developments: Two Pesos, Inc. v. Taco Cabana, Inc.: Protection of Inherently Distinctive Trade Dress under Lanham Act Does Not Require Proof of Secondary Meaning," University of Baltimore Law Forum: Vol. 23 : No. 2 , Article 13. Available at: http://scholarworks.law.ubalt.edu/lf/vol23/iss2/13 This Article is brought to you for free and open access by ScholarWorks@University of Baltimore School of Law. It has been accepted for inclusion in University of Baltimore Law Forum by an authorized editor of ScholarWorks@University of Baltimore School of Law. For more information, please contact [email protected]. A jury in the Circuit Court for Bal­ Reddick requested that the court va­ from the sentence; otherwise, it would timore City convicted Raymond cate his entire sentence because of the imprison Reddick for a longer term Frances Reddick ("Reddick") and unconstitutional conditional offer to thana similarly situated defendant with Harvey Lee Southall of second degree suspend five years ofhis sentence ifhe the financial capability to make the murder and the unlawful use ofa hand­ paid the victim's family $3,000. payment. Id. at 274, 608 A.2dat 1248. gun. Although the sentencing guide­ The Court of Appeals of Maryland The court's holding effectively re­ lines suggested a twenty-five year sen­ rejected the State's characterization of stricts the ability of the sentencing tence, Judge Hammerman imposed a the sentence as an unconditional thirty judge to allow an indigent defendant thirty year sentence for the second de­ year term containing a provision of the opportunity to pay restitution for gree murder conviction and ten years certain conduct, compliance with which his victim's expenses in order to re­ for the handgun violation, to be served the defendant would encourage the trial duce the term of incarceration. Where concurrently. The Judge believed that judge to modify the sentence. Id. at the defendant's actions place heavy the sentence was justified in light of 273,608 A.2d at 1248. The court also financial burdens on a victim or his the degree ofviolence ofthe crime and refused to accept the State's alternative family, the court has an interest in the devastating impact the defendants' argument that the trial judge should seeing that the defendant take as much actions had on the victim's family. In simply strike the illegal language con­ responsibility as possible for those ex­ addition, Judge Hammerman was con­ taining the offer and allow the thirty penses. However, an offer ofa reduced cerned about the fmancial burden the year sentence to stand because pennit­ sentence in exchange for contribution defendants' actions had placed upon ting suspension of five years of the towards a victim's family's financial the victim's family. Medical and fu­ sentence conditioned upon payment of burden will run afoul of the Equal neral expenses amounted to $6,000. In the victim's medical and funeral ex­ Protection Clause of the Fourteenth light of this burden, the Judge offered penses was illegal and, thus, null and Amendment where the judge is faced each defendant the opportunity to re­ void. Id. with an indigent defendant. Thus, duce his sentence to twenty-five years Although the court ofappeals agreed despite a court's concern over expenses upon payment of $3,000 individually with Reddick's assertion that the offer imposed upon a victim's family, the to the victim's mother by February 2, constituted a violation ofhis rights, the court cannot offer a defendant the op­ 1991. court refused to vacate his entire sen­ portunity to pay restitution to his vic­ On appeal to the Court of Special tence. Id. at 274, 608 A.2d at 1248. tims at the expense of the defendant's Appeals ofMaryland, both defendants' Instead, the court simply struck the constitutional rights. convictions were affirmed in an unre­ illegal portion ofthe sentence and re­ - Paula L. Davis ported opinion. The Court of Appeals manded the case to the Circuit Court of Maryland granted Reddick's peti­ for Baltimore City with instructions to Two Pesos, Inc. v. TileD Cabana, Inc.: tion for certiorari. Reddick contended resentence Reddickto a tenn oftwenty­ PROTECTION OF INHERENTLY that because he is indigent, the offer to five years. Id. In holding that Judge DISTINCTIVE TRADE DRESS reduce his sentence upon making a Hammerman's offer to suspend part of UNDER LANHAM ACT DOES contribution toward the expenses the sentence in return for contribution NOT REQUIRE PROOF OF SEC­ placed upon the family of the victim to the victim's family's expenses was ONDARY MEANING. was unconstitutional. He asserted that unconstitutional, the court stated that In Two Pesos, Inc. v. Taco Cabana, this offer constituted an unlawful dis­ where a court has "detennined that a Inc., 112 S. Ct. 2753 (1992), the United tinction among sentences based on a fine or restitution is an appropriate States Supreme Court allowed protec­ defendant's wealth or poverty, and sentence, a court cannot then imprison tion of a restaurant's inherently dis­ therefore violated the Equal Protection a defendant solely because of his in­ tinctive trade dress under section 43(a) Clause ofthe Fourteenth Amendment ability to pay it." Reddick, 327 Md. at of the Trademark: Act of 1946, 15 to the United States Constitution and 273-74, 608 A.2d at 1248 (citing U.S.C. § 1125(a) (1982) (''Lanham Article 24 ofthe Maryland Declaration Beardenv. Georgia,461 U.S. 660,665 Act"), which provides protection to of Rights. To further illustrate his (1983». Applying this principle of businesses that are harmed by other position, Reddick argued that it was equal protection to the present case, the businesses using false representation ''unconstitutional to incarcerate an in­ Court of Appeals of Maryland charac­ or description in connection with any digent defendant fora term longer than terized Judge Hammerman's offer as a goods or services. Atfrrming the deci­ that imposed on a similarly situated chance to "buy" a suspended sentence. sion of the Court of Appeals for the nonindigent defendant who would be Reddick v. State, 327 Md. at 273, 608 Fifth Circuit, the Supreme Court re­ able to make the requisite monetary A.2d at 1248. The court concluded jected the assertion that secondary payment." Reddick, 327 Md., at 272, that equal protection required that the meaning ofthe trade dress was a requi­ 608 A.2d at 1248. Accordingly, unconstitutional portion be stricken site element of its protection under the 30 The Law For u m 123.2 --------------------------- Lanham Act. several circuits as to the requirement of a descriptive mark may be registered if In 1978, Taco Cabana, Inc., a fast­ secondary meaning, the United States it has acquired secondary meaning by food restaurant which served Mexican Supreme Court granted certiorari. becoming distinctive ofthe applicant's food, opened in San Antonio, Texas. The Court began its analysis by goods in commerce. Id. (citing § § 2( e), The restaurant consisted of an interior noting that the Lanham Act was in­ (t), 15 U.S.C. §§ 1052(e), (t) (1982». dining area and patio decomted in vivid tended to create a cause of action The rule regarding distinctiveness is colors and Mexican artifacts. Paint­ against deceptive and misleading use one in which "an identifying mark is ings, murals, bright awnings and um­ oftrademarks and to protect businesses distinctive and capable of being pro­ brellas created a festive, Mexican at­ againstunfaircompetition. Id. at 2757 tected if it either (1) is inherently-dis­ mosphere. The lively theme was en­ (citing § 45,15 U.S.C. § 1127 (1982». tinctive or (2) has acquired distinctive­ hanced by border paint, neon stripes A trademark consists of "any word, ness through secondary meaning." Id. and a stepped exterior. Two Pesos, name, symbol, or device or any combi­ at 2758 (citing Restatement (Third) of Inc., a Mexican restaurant with a motif nation thereof' used by any person ''to Unfair Competition § 13, pp. 37-38, very similar to that of Taco Cabana, identify and distinguish his or her and comment a (Tent. Draft No.2, opened in Houston in 1985. Two goods, includingauniqueproduct, from Mar. 23, 1990». Pesos rapidly expanded through Texas, those manufactured or sold by others Having assumed the jury was cor­ but did not enter San Antonio. The and to indicate the source of the goods rect in finding that Taco Cabana's trade next year, Taco Cabana entered Hous­ even ifthat source is unknown." Id. at dress was inherently distinctive, the ton and other cities where Two Pesos 2757 (citing 15 U.S.C. § 1127 (1982». Court directed its attention to whether was operating. The Court explained that a trademark proving the existence of a secondary In 1987, Taco Cabana sued Two must distinguish the particular product meaning would be required to allow Pesos in the United States District Court from others in order to be registered, protection of an inherently distinctive for the Southern District of Texas for which is significant because the prin­ trade dress under the Lanham Act. Id. trade dress infringement under section ciples qualifying a mark for registra­ Trade dress is the total image of the 43(a) of the Lanham Act. The court tion are applicable to the analysis of business, including the exterior ap­ instructed the jury that trade dress was whether an unregistered trademark is pearance ofthe restaurant, identifying protected if it was either inherently afforded protection under section 43 (a) sign, decor, menu, and equipment used distinctive or had acquired a secondary ofthe Lanham Act.