November, 6th, 2017

By Natasha Rodriguez

Most consumers recognize clothing brands by the company’s trademark, an identifying symbol or logo, located on the article. In addition to this traditional type of trademark, clothing designers may claim trade dress protection on the design of their product. For example, color (i.e., Christian Louboutin red-soled shoes), packaging (i.e., the shape of a Coca-Cola bottle), and design (i.e., an Hermès Birkin handbag) are distinctive apparel elements protectable by trade dress.

Section 43(a) of the Lanham Act provides trade dress protection for a product or design if the product or design is non-functional, and is inherently distinctive or has acquired a secondary meaning in the market. More specifically, there must be proof that consumers directly associate the company as the source of the product or design, and that extensive use and promotion of the mark is the reason for the association.

In the case of trade dress infringement, a plaintiff must plausibly allege that the trade dress is 1) non-functional, 2) has secondary meaning, and 3) there is a likelihood of confusion between the plaintiff’s good and the defendant’s. Courts generally rule in favor of trade dress protection for a design when there is evidence that the design is synonymous with the brand, which can be evidenced by a showing that the design has acquired a secondary meaning.

Recently, New York’s Southern District[1] dismissed a claim for trade dress infringement due to the Plaintiff’s failure to “allege sufficient facts to support a plausible inference that the trade dress has acquired a secondary meaning.” The court noted that there are many factors to consider in determining secondary meaning, including “(1) Plaintiff’s advertising expenditures, (2) consumer surveys linking the trade dress to a particular source, (3) sales success, (4) unsolicited media coverage, (5) attempts to plagiarize the trade dress, and (6) the length and exclusivity of the use.”

The Plaintiff, wedding apparel designer Jennifer Yoo, introduced convertible dresses with seamless blending where the straps can be rearranged in numerous ways to change the style of the dress. Despite the Plaintiff’s showing of a “radically different appearance” compared to traditional bridesmaid’s dresses in addition to its “instant success,” “consistent advertising,” and strong sales nationwide, the court focused on what the Plaintiff did not show. The court noted that the Plaintiff did not show advertising expenditures, evidence of consumers linking the trade dress to Plaintiff as the source, or any attempts to plagiarize Plaintiff’s trade dress.

Furthermore, pleadings typically require alleging facts that give rise to a plausible entitlement to relief. Detailed factual allegations are not required. However, the court required a heightened pleading standard, requiring Plaintiff to specifically allege each of the secondary meaning factors and the connection between the factors and the alleged trade dress. While the Plaintiff did allege facts in support of the secondary meaning factors, the Plaintiff did not “specifically allege” that the facts resulted from an association with the design itself. More specifically, the Plaintiff was required to factually support its allegations that its design has acquired a secondary meaning, something that is generally not required for the initial pleadings.

Practice Tip:

When filing for and registering trade dress, be prepared to show evidence of its inherent distinctiveness or acquired secondary meaning through surveys, number of sales, the amount spent on advertising, and any attempts to plagiarize the trade dress. In addition to the factors to consider for secondary meaning listed above, evidence of prior registrations can further strengthen a showing of acquired secondary meaning.

Further, when drafting a complaint for trade dress infringement, provide enough information to link the trade dress to the particular source.

[1] Jenny Yoo Collection, Inc. v. David’s Bridal, Inc. et al, Case No. 16-cv-02647 VSB (S.D.N.Y. October 20, 2017)

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