Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress

Chicago-Kent College of Law Scholarly Commons @ IIT Chicago-Kent College of Law All Faculty Scholarship Faculty Scholarship 1-1-1997 Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress Graeme Dinwoodie IIT Chicago-Kent College of Law, [email protected] Follow this and additional works at: https://scholarship.kentlaw.iit.edu/fac_schol Part of the Law Commons Recommended Citation Graeme Dinwoodie, Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress, 75 N.C. L. Rev. 471 (1997). Available at: https://scholarship.kentlaw.iit.edu/fac_schol/901 This Article is brought to you for free and open access by the Faculty Scholarship at Scholarly Commons @ IIT Chicago-Kent College of Law. It has been accepted for inclusion in All Faculty Scholarship by an authorized administrator of Scholarly Commons @ IIT Chicago-Kent College of Law. For more information, please contact [email protected], [email protected]. RECONCEPTUALIZING THE INHERENT DISTINCTIVENESS OF PRODUCT DESIGN TRADE DRESS GRAEME B. DINWOODIE* Traditionally, trademark rights subsisted in words or two- dimensionalpictoral images. Twenty years ago, courts recognized that a product's very design might also function as its trademark. To be accorded this status, however, the manufacturer must demonstrate that her product design identifies the source of her product-that the design is, in the trademark vernacular, "distinctive." In this Article, Professor Graeme Dinwoodie addresses the question of how to determine when a product shape or design identifies its source. In 1992, in Two Pesos v. Taco Cabana, the United States Supreme Court endorsed the assimilationof the principles governing the distinctiveness of word marks and non-verbal marks. But classical distinctiveness analysis was developed to adjudicate the protectability of verbal or pictorial marks, and it has proved inadequate to assist in the determination of the distinctiveness of a product design. Judicial efforts since Two Pesos to tackle this problem have misconstrued the concept of distinctiveness. Professor Dinwoodie suggests how courts might reformulate the concept of distinctiveness in terms that are not linguisticallyconditioned and that better reflect spatial or geometric subject matter. He contends that this reformulation requires the development of the concept of the "predictive inquiry," an inquiry into likely consumer associations in the marketplace. Such an approach would clarify the scope of * Assistant Professor of Law, University of Cincinnati College of Law; LL.B., Glas- gow University, 1987; LL.M., Harvard Law School, 1988. This Article is part of a larger study I have been conducting of intellectual property protection for industrial designs under U.S. and E.U. law, and was written in partial fulfillment of the requirements for the degree of Doctor of the Science of Law in the Faculty of Law, Columbia University. I am very grateful to Jane Ginsburg, Chair of my J.S.D. Committee at Columbia Law School, both for her support and encouragement of that project, and for her insightful comments on earlier drafts of this Article. I am also indebted to Jean Braucher, Tom Eisele, Brian Havel, Jerry Reichman and Michael Van Alstine for providing me with constructive sug- gestions on earlier drafts, and to my research assistant, Charles Sieving, for his invaluable help. Responsibility for the views expressed and any errors that remain is, of course, mine alone. NORTH CAROLINA LAW REVIEW [Vol. 75 protection for product design trade dress, an issue that within the last eighteen months has been the subject of six petitions for certiorarifiled with the Supreme Court and which continues to confound the courts. INTRODUCTION ............................................................................. 473 I. THE CONCEPT OF DISTINCIvENEss .......................................... 482 II. BASES FOR ESTABLISHING DISTINCTIVENESS AND THE ABERCROMBIE SPECTRUM ......................................... 485 III. THE POSSIBILITY OF INHERENTLY DISTINCTIVE SHAPES ................................................................... 488 IV. THE STANDARD FOR INHERENTLY DISTINCrIVE TRADE DRESS ........................................................ 500 A. Relevant Considerations: Likely Consumer Association, Not Competitive Impact ................................... 500 B. Pre-Two Pesos Tests ............................................................... 508 1. Chevron: Product/Mark .................................................. 508 2. Seabrook: Product/Similar Products ............................. 512 C. A Secondary Meaning Requirement for Product D esign....................................................................................... 516 1. Rationales (Before Two Pesos)...................................... 516 2. Effect of Two Pesos on Secondary Meaning Requirement for Product Designs ................................. 521 D. A Distinction between the Test Used for Product Design and That Used for Packaging................................... 529 1. Distinction Justified ......................................................... 529 2. The Tests Articulated: Duraco and Knitwaves............ 533 a. The Duraco Test ........................................................ 533 L Unusualand Memorable................................... 534 ii. ConceptualSeparability .................................... 539 iii. Primarilya Source-Designator........................ 541 b. The Knitwaves Test ................................................... 543 L Producer'sIntent ............................................... 545 ii. Primarilya Designatorof Origin..................... 550 3. Analysis of Duraco and Knitwaves Tests ...................... 553 4. Faith in the O ld ................................................................ 562 E. Some Suggested Analytical Modifications............................ 568 1. Significance of Classifications ......................................... 573 2. Which Evidence? ..................................... ......................... 585 a. Nature of the Design ................................................. 588 b. Contextual Marketplace Considerations ................ 589 c. Nature of the Product ............................................... 594 1997] PRODUCTDESIGN TRADE DRESS 473 d. The Need for Evidence ............................................. 595 3. Assessing Alternatives in Distinctiveness Inquiries ............................................................................ 597 CONCLUSION .................................................................................. 602 INTRODUCTION Traditionally, and still most typically, trademark disputes con- cern the use of words or two-dimensional pictorial images employed by manufacturers or service providers to identify their products.' In- creasingly, however, producers are invoking the federal trademark statute, the Lanham Act,2 to protect the design features of their product (including three-dimensional elements such as shape or size) against confusing imitation. Black & Decker would prefer that its newly-marketed Snakelight flashlight not be forced to compete against knock-offs;3 Ferrari dislikes the idea that cars other than its classic Daytona Spyder might possess the Spyder's well-known pro- file;4 Stickley seeks to enjoy the fruits of the resurgent market for Mission-style furniture5 without competition from cheaper imitation pieces;' and, the manufacturer of best-selling golf clubs wants to cur- tail the cottage industry of club manufacturers that simulate the shape and design features of its premium-priced products.7 It is now 1. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 cmt. g (1995) [hereinafter RESTATEMENT] ("Words remain the most common type of trademark .... ). The earliest forms of trademark were pictorial symbols, such as the silversmith's hallmark. See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7.06, at 7-33 (3d ed. 1995). 2. 15 U.S.C. §§ 1051-1127 (1994). 3. See Black & Decker Corp. v. Int'l Sales & Mktg., 36 U.S.P.Q.2d (BNA) 1851, 1853 (C.D. Cal. 1995). 4. See Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1237-38 (6th Cir. 1991); see also Chrysler Corp. v. Silva, 892 F. Supp. 321, 323-24 (D. Mass. 1995) (concluding that design of Dodge Viper was protected under Lanham Act, although infringement was not established). 5. Mission-style furniture is "'known for its severely plain and rectilinear style... visually enriched only by expressed structural features and the warm tones of the wood.'" L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d 258, 260 (2d Cir. 1996) (quoting DAVID M. CATHERS, FURNITURE OF THE AMERICAN ARTS AND CRAFTS MOVEMENT 1 (1981)). 6. See L. & J.G. Stickley, Inc., 79 F.3d at 264-65 (vacating preliminary injunction because not clear that consumers associated design with plaintiff, rather than with maker of the original furniture design); see also Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260, 1263-64 (Fed. Cir.) (protecting look of garden furniture), cert. denied, 116 S. Ct. 277 (1995). 7. See Callaway Golf Co. v. Golf Clean, Inc., 915 F. Supp. 1206, 1209 (M.D. Fla. 1995). NORTH CAROLINA LAW REVIEW [Vol. 75 the Lanham Acte under which each of these manufacturers seeks, and often obtains, redress.9 The Lanham Act provides protection, however, only for words, symbols or designs that identify the source of a product-that are, in trademark parlance, "distinctive."'0 Courts have

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