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

“A product’s design, standing alone, is not inherently distinctive — it must earn its identity with consumers.”

Short Description

The U.S. Supreme Court held that unregistered product-design trade dress under § 43(a) of the Lanham Act is not inherently distinctive. To be protected, a product’s design must have acquired secondary meaning (i.e. consumers must come to identify that design with a single source).

Facts

⦁ Samara Brothers, Inc. designs and manufactures children’s seersucker spring/summer one-piece outfits decorated with appliqués (hearts, flowers etc.).

⦁ Wal-Mart contracted a supplier to produce similar garments. Wal-Mart provided photographs of Samara’s garments; the supplier copied (with minor changes) 16 of Samara’s designs. Wal-Mart then sold them under its house label.

⦁ Samara found out about these “knock-offs” being sold, sent cease-and-desist letters, but then filed suit under multiple theories including unregistered trade dress infringement under § 43(a) of the Lanham Act.

⦁ At trial, a jury found in favor of Samara: Wal-Mart infringed Samara’s trade dress, awarded damages etc.

Issues / Findings / Reasoning

⦁ Issue: Is product design inherently distinctive for trade dress protection under § 43(a), or must distinctiveness always be acquired (through secondary meaning)?

⦁ The Court distinguished between product-design trade dress vs product packaging or décor. It held that while some trade dress (like décor or packaging) may be inherently distinctive, product design (the look of the goods themselves) is not inherently distinctive.

⦁ Because product design typically serves utilitarian or aesthetic functions besides identifying source, consumers are not assumed to perceive it as the source identifier.

⦁ Thus, for product design to get protection under § 43(a) without registration, there must be evidence that the design has developed secondary meaning — i.e. the public recognizes the design as pointing to a particular producer.

Suggestion / Implications

⦁ Designers claiming trade dress protection for unregistered product designs must gather and present evidence of secondary meaning (consumer recognition).

⦁ Mere copying of a design appearance or similarity is not enough unless the design has acquired distinctiveness in the market.

⦁ Courts should carefully delineate whether disputed trade dress is product design (which requires secondary meaning) or something more like décor / packaging (which might allow inherent distinctiveness).

⦁ This decision strengthens the burden on plaintiffs to show recognition in the marketplace, to avoid overbroad protection that could stifle competition over aesthetic or functional design features.

Judgment & Date

⦁ The Supreme Court reversed the Second Circuit’s decision and held that product design is not inherently distinctive under § 43(a) and thus must show secondary meaning.

⦁ Decision date: March 22, 2000.