2753, 120 L. Ed. 2d 615 (1992). Prior to Two pesos, a plaintiff seeking trade dress protection in this circuit had to prove that the dress had acquired secondary meaning. Two Pesos, which unified the standard for trademark and trade dress law, held that protection for trade dress requires either inherent distinctiveness or secondary meaning, but not both. Two Pesos, 112 S. Ct. at 2760.
The general rules of trade dress protection had been long established. Section 43(a) of the Lanham Act protected the "trade dress" of a product, which is defined as the product's "total image," including "features such as size, shape, color or color combinations, texture, [or] graphics." LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir. 1985) (citations omitted). It was equally well settled that trade dress includes both product packaging and product design, and that trade dress is protected only when the infringer's product threatens to confuse customers about the source of the goods. Id. Two Pesos clarified the standard for trade dress protection as follows: a plaintiff must show (1) that its trade dress is distinctive, either because it is inherently so or because it has acquired secondary meaning, and (2) that there is a likelihood of confusion between its product and the defendant's product. Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967 (2d Cir. 1995) (citing Two Pesos, 112 S. Ct. at 2758). A defendant may avoid liability, however, by showing that the trade dress is functional. Two Pesos at 2758.
The classic test for determining the distinctiveness of a trademark was outlined in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), and the test has since been extended to trade dress as well. See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995); Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 583-84 (2d Cir. 1993); accord, Two Pesos, 112 S. Ct. at 2760. Under the Abercrombie test, marks are classified as either (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. Abercrombie, 537 F.2d at 9. Suggestive, arbitrary and fanciful marks and dresses are always considered inherently distinctive, in that their "intrinsic nature serves to identify a particular source of a product" or they are "capable of identifying a particular source of the product," whether or not the trade dress has acquired secondary meaning or a wide public association with the source. Two Pesos 112 S. Ct. at 2757, 2759 (emphasis added). Descriptive marks are protected only if they have acquired secondary meaning. Generic marks receive no protection. Id. at 2757-58.
But as many courts have observed in varying degrees of frustration, the Abercrombie classifications do not translate easily to the trade dress context. The problem is not severe when the trade dress involves product packages and labels, which, like trademarks, at least have the advantage of using words and symbols independent of the product to convey information to consumers. See, e.g., Paddington, 996 F.2d at 583-84 (holding No. 12 Ouzo label and bottle to be inherently distinctive). The problem is often daunting, however, when it comes to product designs. Does the shape of a chair seat "suggest" a chair seat? Does it "describe" a chair seat? Or is it just a chair seat? No matter how beautifully designed, an industrial product is what it is. This conundrum recently led the Second Circuit in Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1995 WL 673250 at *10 (2d Cir. 1995), to abandon the Abercrombie test for product design and announce a new test. I believe, however, that this new test is not particularly helpful because it does not clearly address the standards in this area as set by the Supreme Court.
In Knitwaves, this circuit announced a departure from its earlier approach to trade dress law. Knitwaves involved the design of children's sweaters, particularly the use of "leaf" and "squirrel" designs placed on the sweaters. The court stated (1) that the Abercrombie classifications "make little sense when applied to product features" and were therefore "inapplicable" to product designs, and (2) that henceforth the new test for inherent distinctiveness is whether the manufacturer "used" or "intended to use" the design "to identify the source and distinguish his or her goods." Knitwaves at *10-12 (citations omitted). In adopting this approach, the court cited approvingly to the Third Circuit decision in Duraco Prods., Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1440-41 (3d Cir. 1994). The Duraco approach, however, leaves much to be desired. Cf. Tough Traveler, 60 F.3d at 970 n.1 (Jacobs, J., concurring) ("Under no circumstances do I believe this appeal compels us to decide whether ... we should adopt the method of analysis" in Duraco). The Eighth Circuit instead has recently made a forceful and persuasive argument that the Supreme Court has not authorized us to abandon Abercrombie, no matter how much difficulty it causes. Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 788 (8th Cir. 1995). As the Eighth Circuit reasoned, Two Pesos was clearly a case of product design and it expressly approved the application of the Abercrombie classifications to the design of a Mexican restaurant chain. Two Pesos, 112 S. Ct. at 2670. Moreover, the entire thrust of Two Pesos was to unify the standards for trademark and trade dress, not to balkanize this complex field into yet more subcategories. I agree with the Eighth Circuit's conclusion that the Supreme Court envisions trade dress as a "single concept" with trademark law requiring a single test for inherent distinctiveness. Stuart Hall, 51 F.3d at 788.
Further, I believe that Knitwaves's new test for inherent distinctiveness confuses the analytical requirements for inherent distinctiveness with those of secondary meaning. Inherent distinctiveness cannot hinge on how a producer intends to promote a design. If such were the case, the evidentiary requirements for inherent distinctiveness would be almost identical to those for secondary meaning, and there would be no point in having two categories. A producer could only prove "intent" by producing evidence of how he or she has advertised (or positioned) the product, and by producing consumer surveys showing how well the advertising worked. This is precisely the kind of evidence required for a showing of secondary meaning. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982) ("To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature ... is to identify the source of the product rather than the product itself.") (emphasis added). An inherent quality, by contrast, is one which "inheres" in a product, regardless of what the producer intends, particularly if the product is too new to have acquired secondary meaning. Two Pesos created no such "intent" requirement, stating only that an inherently distinctive design is one that is "capable of identifying a particular source of the product." Two Pesos, 112 S. Ct. at 2759 (emphasis added). Furthermore, the Court explicitly cautioned that "engrafting onto § 43(a) a requirement of secondary meaning for inherently distinctive trade dress ... would undermine the purposes of the Lanham Act." Id. at 2760.
In fashioning its "intent" requirement, the Knitwaves court relied on dicta from the Supreme Court's opinion in Qualitex Co. v. Jacobson Products Co., 131 L. Ed. 2d 248, U.S. , 115 S. Ct. 1300, 1303 (1995), but Qualitex was a trademark case that hinged entirely on secondary meaning. In Qualitex, the issue was whether a color could serve as a registered trademark. Justice Breyer did quote directly from the Lanham Act, 15 U.S.C. § 1127, which does indeed define a trademark as any "word, name, symbol, or device" that a person "use[s]" or "intends to use ... to identify and distinguish his or her goods." Id. But his inquiry did not stop there. The Court then asked whether a color could be inherently distinctive. Upon determining that it could not, the Court proceeded to observe that "over time, customers may come to treat a particular color . . . as signifying a brand." Qualitex, 115 S. Ct. at 1303. This is secondary meaning. The Court concluded that the green-gold color at issue in Qualitex, although not inherently distinctive, had acquired secondary meaning and therefore could be registered as a trademark. Id. Hence, a close reading of Qualitex does not support the notion that the "use or intended use" language of the Lanham Act provides a definition of inherent distinctiveness.
Knitwaves, however, does provide some guidance for a workable approach to inherent distinctiveness, particularly when read in conjunction with efforts by other courts. The Fifth and Eighth Circuits offer particularly useful instruction. The Fifth Circuit's Chevron test, first developed for product packaging, states that "if the features of the trade dress sought to be protected are arbitrary and serve no function either to describe the product or assist in its effective packaging," the dress is inherently distinctive. Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 702 (5th Cir. 1981) (packaging of lawn and garden products), cert. denied, 457 U.S. 1126, 73 L. Ed. 2d 1342, 102 S. Ct. 2947 (1982). This is essentially a test of functionality. The Supreme Court explicitly approved the application of the Chevron test to product designs in its decision in Two Pesos. 112 S. Ct. at 2760.
The Eighth Circuit also emphasizes the issue of functionality, asking:
whether, and how much, the trade dress is dictated by the nature of the product. . . . If the specific design of the trade dress is only tenuously connected with the nature of the product, then it is inherently distinctive. ... If the design of the trade dress is dictated by the nature of the product, then secondary meaning must be proven.
Stuart Hall, 51 F.3d at 786.
A third test based on the Abercrombie classifications was developed 19 years ago by the Court of Customs and Patent Appeals:
In determining whether a design is arbitrary or distinctive this court has looked to whether it was a 'common' basic shape or design, whether it was unique or unusual in a particular field, [or] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods view by the public as a dress or ornamentation for the goods.