March 9 Reading Notes
What Counts as a Trademark?
Trademark registration has been obtained for smells (for perfumes) and sounds (the
famous NBC chimes), but tastes (for drinks) have been more difficult to register. The
trademark prosecution process requires that the mark be submitted and published.
How do you publish a taste?
Two Pesos, Inc. v. Taco Cabana, Inc.
Whether the trade dress of a restaurant may be protected under the Lanham act, based
on a finding of inherent distinctiveness, without proof that the trade dress has a
Trade dress is the total image of the business. Taco Cabana’s trade dress may include
the shape and general appearance of the exterior of the restaurant, the identifying sign,
the interior kitchen floor plan, the décor, the menu, the equipment used to serve food,
the servers’ uniforms and other features reflecting on the total image of the restaurant
Two Pesos adopted a motif very similar to the foregoing description of Taco Cabana’s
trade dress. Two Pesos restaurants expanded rapidly in Houston and other markets, but
did not enter San Antonio. In 1986, Taco Cabana entered the Houston and Austin
markets and expanded into other Texas cities, including Dallas and El Paso where Two
Pesos were also doing business.
Taco Cabana has a trade dress; taken as a whole, the trade dress is nonfunctional; the
trade dress is inherently distinctive; the trade dress has not acquired a secondary
meaning in the Texas market; and the alleged infringement creates a likelihood of
confusion on the part of ordinary customers as to the source or association of the
restaurant’s goods or services.
The trial court held that Two Pesos has intentionally and deliberately infringed Taco
Cabana’s trade dress
Taco Cabana’s trade dress was not descriptive but rather inherently distinctive, and it
was not functional
Trade dress should receive limited protection without proof of secondary meaning.
Petitioner argues that such protection should be only temporary and subject to
defeasance when over time the dress has failed to acquire a secondary meaning.
Unregistered marks did not enjoy the presumptive source association enjoyed by
registered marks and hence could not qualify for protection under Lanham without
proof of secondary meaning
There are plainly marks that are registrable without showing secondary meaning. These
same marks, even if not registered, remain inherently capable of distinguishing the
goods of the users of these marks.
Where secondary meaning does appear in the statute, it is a requirement that applies
only to merely descriptive marks and not to inherently distinctive ones.
Adding a secondary meaning requirement could have anticompetitive effects, creating
particular burdens on the startup of small companies. It would present special difficulties for a business, such as respondent, that seeks to start a new product in a
limited area and then expand into new markets. Denying protection for inherently
distinctive nonfunctional trade dress until after 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 other markets and to deter the
originator from expanding into and competing in these areas.
The first user of an arbitrary package, like the first user of an arbitrary word, should be
entitled to the presumption that his package represents him without having to show
that it does so in fact.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
Judy Philippine duly copied, with only minor modifications, 16 of Samara’s garments,
many of which contained copyrighted elements. In 1996, Wal-Mart briskly sold the so-
called knockoffs, generating more than $1.15 million in gross profits.
A buyer for JCPenney called a representative at Samara to complain that she had seen
Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to
charge under its contract with Samara
Nothing in Lanham explicitly requires a producer to show that its trade dress is
distinctive, but courts have universally imposed that requirement, since without
distinctiveness, the trade dress would not “cause confusion… as to the origin,
sponsorship, or approval of the goods.
With respect to at least one category of mark, colors we have held that no mark can
ever be inherently distinctive
A color could be protected as a trademark, but only upon a showing of secondary
Because a color, like a descriptive word mark, could eventually come to indicate a
product’s origin, we concluded that it could be protected upon a showing of secondary
In the case of product design as in the case of color, we think consumer predisposition
to equate the feature with the source does not exist. Consumers are aware of the reality
that, almost invariably, even the most unusual of product designs – such as a cocktail
shaker shaped like a penguin – is intended not to identify the source, but to render the
product itself more useful or more appealing.
Consumers should not be deprived of the benefits of competition with regard to the
utilitarian and esthetic purposes that product design ordinarily serves by a rule of law
that facilitates plausible threats of suit against new entrants based upon alleged
Competition is deterred, however, not merely by successful suit but by the plausible
threat of successful suit, and given the unlikelihood of inherently source-identifying
design, the game of allowing suit based upon alleged inherent distinctiveness seems to
us not worth the candle
The producer can ordinarily obtain protection for a design that is inherently source
identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design – as, indeed, a respondent did for