Knock Off Items
By Los Angeles Trademark Lawyer Robert G. Klein, Esq.
How often do you see copies of a high fashion designer’s clothing or handbag line like Gucci or Prada appear in a discount store at significantly reduced prices? The fashion designer has used his or her creativity and intellectual capital to create unique product designs only to have that creation “knocked off” by apparently unscrupulous business people who take pictures of these masterpieces and have them copied in countries that supply low cost labor. These “knock offs” are then sold alongside the designer’s couture line for less than half the price.
The question becomes whether the fashion designer has any rights in his or her designs and what liability does the infringer have for selling “knock offs”? That question was addressed in a case called Wal-Mart Stores v. Samara Brothers.
In that case, Samara Brothers, Inc., designed and manufactured a line of children’s clothing. Wal-Mart Stores, Inc., contracted with a supplier to manufacture outfits based on photographs of Samara garments. After discovering that Wal-Mart and other retailers were selling the so-called knock offs, Samara brought an action for infringement of unregistered trade dress under § 43(a) of the Trademark Act of 1946 (Lanham Act).
The case went all the way to the United States Supreme Court. The Supreme Court held that in an action for infringement of an unregistered trade dress, a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.
While the holding seems simple enough, in order to understand exactly what it means, a brief tutorial on trademark law, trade dress, unfair competition, and the law of trademark infringement is necessary.
It is important to acknowledge the Wal-Mart case dealt with an unregistered trade dress. In addition to protecting registered trademarks, the Lanham Act, in § 43(a), gives a producer a cause of action for the use by any person of “any … symbol or device … likely to cause confusion … as to the origin … of his or her goods.”
The breadth of the confusion-producing elements actionable under § 43(a) has been held to embrace not just word marks and symbol marks, but also “trade dress”, a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many Courts of Appeals to encompass the product’s design.
These courts have correctly assumed that trade dress constitutes a “symbol” or “device” for Lanham Act purposes. Although § 43(a) does not explicitly require a producer to show that its trade dress is distinctive, courts have universally imposed that requirement, since without distinctiveness the trade dress would not “cause confusion … as to … origin,” as §43(a) requires.
In evaluating distinctiveness, courts have differentiated between marks that are inherently distinctive- i.e., marks whose intrinsic nature serves to identify their particular source-and marks that have acquired distinctiveness through secondary meaning- i.e., marks whose primary significance, in the minds of the public, is to identify the product’s source rather than the product itself.
Bottom line is a Gucci or Louis Vuitton bag that contains its recognizable symbol on the fabric has secondary meaning while a design of clothing that is not associated in the public’s mind as distinctive to a particular designer probably would not have secondary meaning and thus not be protectible.
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