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By: Los Angeles Intellectual Property Litigation Lawyer Robert G. Klein, Esq.

In cases of product design, the consumer normally does not equate the features of the product with the source of the product. For example, if a consumer is looking at a cocktail shaker, the penguin shape is not intended to identify the manufacturer. Instead the shape is designed to render the product itself more useful or more appealing. This is the crux of the issue when a party is claiming its product design or trade dress is a protectable under the Lanham Act.

The registration of symbols to identify ones goods and differentiate those goods from its competitors or trademarks, has been held to embrace not just word marks, such as Nike, and symbol marks, such as Nike’s -swoosh- symbol, 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 design of a product.

In order for a manufacturer of a product to receive protection from an infringement of its product’s design or trade dress, the source of the product must show that its packaging or design is not just functional, but that it is distinctive to tie the product to its source.

In evaluating the distinctiveness of a mark, courts have held that a mark can be distinctive in one of two ways. First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. In the context of word marks, courts have applied the now-classic test in which word marks that are “arbitrary” (“Camel” cigarettes), “fanciful” (“Kodak” film) or “suggestive” (“Tide” laundry detergent) are held to be inherently distinctive.

Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.

The phrase “secondary meaning” originally arose in the context of word marks, where it served to distinguish the source-identifying meaning from the ordinary, or primary, meaning of the word. Secondary meaning has since come to refer to the acquired, source-identifying meaning of a nonword mark as well. A better definition should refer to “acquired meaning” in both the word-mark and the nonword-mark contexts.

The courts have held that design, like color, is not inherently distinctive. The attribute of inherent distinctiveness derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.

Although the words and packaging can serve the function of invoking a positive connotation in the consumer’s mind, and a garish form of packaging (such as Tide’s squat, brightly decorated plastic bottles for its liquid laundry detergent) may attract an otherwise indifferent consumer’s attention on a crowded store shelf, their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols almost automatically tell a customer that they refer to a brand and immediately signal a brand or a product source.

The fact that product design almost invariably serves purposes other than source identification renders inherent distinctiveness problematic. It also harms the consumer. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and aesthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.

The courts need to devise a test in determining the inherent distinctiveness of a product’s packaging. Things to consider should be whether it was a common basic shape or design, whether it was unique or unusual in a particular field and whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.


Los Angeles intellectual property litigation attorney Robert Klein understands how many different factors contribute to your company’s livelihood. Attempts by other companies to cheapen your brand or leech off your success can damage your business’s image and economy. With over 25 years of experience, attorney Klein can assist businesses involved in conflicts about trade secretsrights of publicityunfair competition and many other business tortsContact Los Angeles business litigation lawyer Klein today by calling (323) 653-3900.

Klein Trial Lawyers

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(323) 653-3900