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Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

    Brief Fact Summary. Under the trademark Act of 1946, Samara Brothers, Inc. (Plaintiff) brought suit against Wal-Mart Stores, Inc. (Defendant) for, among other causes of action, infringement of an unregistered trade dress design.

    Synopsis of Rule of Law. Under § 43(a) of the Lanham Act, without a showing of a secondary meaning, an unregistered trade dress design is not distinctive and, therefore, not protected from infringement.

    Facts. Samara Brothers, Inc. (Samara) (Plaintiff) designs and manufacturers children’s clothing, with its main product being spring and summer one-piece seersucker clothes. Various stores sell this line of clothes. Wal-Mart Stores (Defendant) is one of the largest and most well-known retail stores in the United States. Defendant contracted with Judy-Philippine, Inc. (J-P), one of its suppliers, to manufacture a line of spring and summer children’s clothes, sending J-P photographs of various garments of Plaintiff’s upon which J-P was to base the clothes for Defendant. J-P then copied, with minor changes, 16 of Plaintiff’s garments, many of which contained elements that were copyrighted. Wal-Mart (Defendant) sold J-P’s garments and earned over $1.5 million in gross profits from those sales. Plaintiff sent cease-and-desist letters to Defendant, finally suing for copyright infringement. A jury found for Plaintiff on all its claims, and the court of appeals affirmed. The United States Supreme Court granted certiorari.

    Issue. Under § 43(a) of the Lanham Act, in an action for trademark infringement of an unregistered trade dress, is a product’s design distinctive on its own and, therefore, protected from infringement?

    Held. (Scalia, J.) No. Under § 43(a) of the Lanham Act, in an action for trademark infringement of an unregistered trade dress, a product’s design is not distinctive on its own and, therefore, is not protected from infringement. The relevant portion of § 43(a) gives a producer “a cause of action for the use by any person of ‘any word, term, name, symbol, or device, or any combination there-of . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . ‘†15 U.S.C. § 1125(a). Courts, in interpreting this section, have required a producer to show that a trade dress mark is distinctive. The producer can show distinctiveness in one of two ways: (1) that the mark’s intrinsic nature identifies the mark as being from a particular source, or (2) that in the minds of the general public, the mark has attained distinctiveness. This court has held that one category of trademark in particular—color—has no inherent distinctness, so color could only be protected if the producer demonstrated that the color had a secondary meaning. In the present case, Plaintiff’s product design can be equated to color and, therefore, a consumer is not predisposed to relate the product design feature to Samara (Plaintiff). Therefore, in an infringement of an unregistered trade dress suit, under § 43(a) of the Lanham Act, a product’s design is only distinctive and protected when the producer can show evidence that a secondary meaning is attached to that product. Samara (Plaintiff) did not adequately demonstrate any distinctiveness attributable to its line of children’s clothing. Reversed and remanded.

    Discussion. In its ruling, the Court wanted to avoid the lower courts having to evaluate differences with product design or packaging in future cases, which can sometimes be difficult to determine. Basically, the Court wanted to avoid a ruling that would lead to a “slippery slope†analysis when deciding if certain products are inherently distinctive.


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