Reexamining Two Pesos, Qualitex, & Wal-Mart: A Different Approach…Or Perhaps Just Old Abercrombie Wine in a New Bottle?

The Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. 23, p. 1249, 2012-13

New England Law | Boston Research Paper No. 12-06

65 Pages Posted: 7 Nov 2012 Last revised: 26 Sep 2013

Date Written: October 30, 2012

Abstract

In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the United States Supreme Court held that, in order for a product design to be protectable under § 43(a) of the Lanham Act, the product design must first acquire a secondary meaning. Writing for the Court, Justice Scalia, reasoned that consumers, as a rule, do not expect a product’s design to serve as an indicator of source. The Court stated that product designs, like colors, do not ordinarily operate as source indicators, and that is why the Court established its rule that a product design must acquire a secondary meaning as a precondition to receipt of trade dress protection.

The Wal-Mart case separates the universe of trade dress into at least two (and perhaps three) subcategories. The Court acknowledges that, as a rule, trade dress may be protectable without proof of secondary meaning. Furthermore, the Court distinguishes between two subcategories of trade dress: product design versus product packaging. Product packaging, according to the Court, may operate as protectable trade dress without a showing of secondary meaning because, like word trademarks, consumers are prone readily to associate the external accoutrements of a product’s package with source identification. On the other hand, the Court states that consumers do not readily associate a product’s design with source identification.

This Article questions the Wal-Mart case’s rule of law that the design of a product must acquire a secondary meaning in order to operate as protectable trade dress under § 43(a) of the Lanham Act. Part I of this Article examines the Wal-Mart decision in light of the general principles of trade dress law that the Court established in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) and Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), the two precedents that forged the Supreme Court’s general, pertinent doctrinal rules. Part II considers these cases using the conceptual tools of utilitarian functionality and aesthetic functionality, and suggests that these perspectives, coupled with traditional trademark analysis, offer a more effective and efficient method of analysis than the Court’s approach in Wal-Mart. Part III offers additional suggestions to improve the analysis in cases like Wal-Mart, explaining the similarities between the trademark doctrines of utilitarian functionality and aesthetic functionality and the copyright doctrines of conceptual separability and the idea-expression dichotomy. The Conclusion briefly summarizes the Wal-Mart holding, the reasons why it is preferable to analyze Wal-Mart in terms of traditional trademark categories along with utilitarian and aesthetic functionality, and why using the analogies of copyright’s conceptual separability and idea-expression analyses can simplify and improve decision-making in cases involving issues like those presented in Wal-Mart.

Keywords: Intellectual Property, Trademark, Trade Dress, Lanham Act, Secondary Meaning, Product Shape, Product Configuration, Functionality, Aesthetic Functionality, Copyright, Idea-Expression Dichotomy, Conceptual Separability

Suggested Citation

VerSteeg, Russ, Reexamining Two Pesos, Qualitex, & Wal-Mart: A Different Approach…Or Perhaps Just Old Abercrombie Wine in a New Bottle? (October 30, 2012). The Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. 23, p. 1249, 2012-13, New England Law | Boston Research Paper No. 12-06, Available at SSRN: https://ssrn.com/abstract=2168827

Russ VerSteeg (Contact Author)

New England Law | Boston ( email )

154 Stuart St.
Boston, MA 02116
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617-422-7264 (Phone)

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