Trade Distinctiveness: Solving Scalia's Tertium Quid Trade Dress Conundrum

66 Pages Posted: 18 Jul 2006

See all articles by Lars S. Smith

Lars S. Smith

University of Louisville Brandeis School of Law

Abstract

The article covers issues relating to protection of unregistered trade dress under Lanham Act section 43(a) in light of the Supreme Court's Wal-Mart Stores, Inc. v. Samara Bros. Inc. case. The article proposes a new system by which to determine whether trade dress should be protected from its first use in commerce, suggesting that a new category of distinctiveness for all trade dress be created, entitled "trade distinctiveness."

In Wal-Mart, the Supreme Court held that product design could never be inherently distinctive, but would always require proof of secondary meaning, also known as acquired distinctiveness. Unfortunately, this put the decision at odds with the Court's earlier Two Pesos decision, where the Court had determined that trade dress in the form of the design and décor of a restaurant could be inherently distinctive. Unable to fully reconcile the cases, Justice Scalia said that the trade dress in Two Pesos was either some form of packaging, or "tertium quid."

Criticism of the Supreme Court's trade dress doctrines has previously focused on whether the trade dress can function as an inherently distinctive trademark. Inherent distinctiveness is a concept which functions effectively with word marks, where a trademark's inherent meaning can be determined by reference to a dictionary. Since trade dress by its nature does not have an "inherent" meaning, the concept is ill suited to determine distinctiveness of trade dress. "Trade distinctiveness" replaces this analysis, substituting the meaning developed in the market place. If the design features claimed as trade dress have developed trademark significance by a custom in the trade, then the trade dress should be protected from its first use in commerce. This new category both reconciles these two Supreme Court cases, and provides a comprehensive system for evaluating the distinctiveness of trade dress generally.

Keywords: trademark, trade dress, tertium quid, Wal-Mart, Samara, distinctiveness, Seabrook, Lanham, Two Pesos, Taco Cabana

JEL Classification: O34, K39, K19

Suggested Citation

Smith, Lars S., Trade Distinctiveness: Solving Scalia's Tertium Quid Trade Dress Conundrum. Michigan State Law Review, Vol. 2005, 243, Available at SSRN: https://ssrn.com/abstract=916553

Lars S. Smith (Contact Author)

University of Louisville Brandeis School of Law ( email )

Wilson W. Wyatt Hall
Louisville, KY 40292
United States
502-852-7273 (Phone)

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