Zatarain's Inc. v. Oak Grove Smokehouse Inc. Page: 1 of 2 Citation: 698 F.2d 786 (5th Cir.

1983) Summary: Petitioner Zatarain's Inc. filed an action for trademark infringement and unfair competition by defendants under Lanham's Act. Facts: Zatarain's Inc. was the manufacturer and distributer of food products. Two of its products were "fish fri" and "chick fri". Zatarain's "chick fri" was a seasoned corn flour butter mix used for frying chicken and other foods. The "chick fri" package was similar to that used for "fish fri" that was a rectangular cardboard container labeled "wonderful chick-fri". Defendant Oak Grove marketed and sold its products under similar names as were marketed and distributed by Zatarain's Inc. Zatarain thereby claimed foul play and trademark infringement in its original complaint against defendant Oak Grove in the United States District Court. United States District Court found that Zatarain's trademark "fish fri" and "chick-fri" were descriptive terms and thereby ordered for cancellation of its trademark. Petitioner appealed. Issue: Whether the United States District Court was correct in cancellation of trademark held by petitioner? Holding: Yes, the United States Court of Appeals was correct in cancellation of trademark held by petitioner.

TWO PESOS INC. VS. TACO CABANA, INC. Respondent, the operator of a chain of Mexican restaurants, sued petitioner, a similar chain, for trade dress infringement under 43(a) of the Trademark Act of 1946 (Lanham Act), which provides that "any person who . . . uses in connection with any goods or services . . . any false description or representation . . . shall be liable to . . . any person . . . damaged by such use." The District Court instructed the jury, inter alia, that respondent's trade dress was protected if it either was inherently distinctivei.e., was not merely descriptive or had acquired a secondary meaningi.e., had come through use to be uniquely associated with a specific source. The court entered judgment for respondent after the jury found, among other things, that respondent's trade dress is inherently distinctive but has not acquired a secondary meaning. In affirming, the Court of Appeals ruled that the instructions adequately stated the applicable law, held that the evidence supported the jury's findings, and rejected petitioner's argument that a finding of no secondary meaning contradicted a finding of inherent distinctiveness. Held: Trade dress which is inherently distinctive is protectable under 43(a)

without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source. This is the rule generally applicable to trademark, see, e.g., Restatement (Third) of Unfair Competition 13, pp. 37-38, and the protection of trademarks and of trade dress under 43(a) serves the same statutory purpose of preventing deception and unfair competition. There is no textual basis for applying different analysis to the two. Section 43(a) mentions neither and does not contain the concept of secondary meaning, and that concept, where it does appear in the Lanham Act, is a requirement that applies only to merely descriptive marks and not to inherently distinctive ones. Engrafting a secondary meaning requirement onto 43(a) also would make more difficult the identification of a producer with its product and thereby undermine the Lanham Act's purposes of securing to a mark's owner the goodwill of his business and protecting consumers' ability to distinguish among competing producers. Moreover, it could have anticompetitive effects by creating burdens on the start-up of small business. Petitioner's suggestion that such businesses be protected by briefly dispensing with the secondary meaning requirement at the outset of the trade dress' use is rejected, since there is no basis for such requirement in 43(a). Pp. ____. Affirmed.

WAL-MART STORES INC. v. SAMARA BROS. INC. Facts of the Case Samara Brothers, Inc. designs and manufactures a line of children's clothing. Wal-Mart Stores, Inc., contracted with a supplier, Judy-Philippine, Inc. (JPI), to manufacture outfits based on photographs of Samara garments and to be offered under Wal-Mart's house label, "Small Steps." When JPI manufactured the clothes, it copied sixteen of Samara's garments with some small modifications to produce the line of clothes required under its contract with Wal-Mart. After discovering that Wal-Mart and other retailers were selling the so-called knockoffs, Samara brought an action for infringement of unregistered trade dress under section 43(a) of the Trademark Act of 1946. The jury found for Samara and awarded the company more than $1 million in damages. Wal-Mart then renewed a motion for judgment as a matter of law, claiming that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as distinctive trade dress for purposes of section 43(a). The District Court denied the motion and awarded Samara relief. The Court of Appeals affirmed the denial of the motion and concluded that "copyrights depicting familiar objects, such as the hearts, daisies, and strawberries in Samara's copyrights are entitled to very narrow protection. It is only the virtually identical copying...which will result in a successful claim of infringement of familiar objects." Question Is a product's design is distinctive, and therefore protectible, from "knockoffs"

in an action for infringement of unregistered trade dress under section 43(a) of the Trademark Act of 1946?

Conclusion No. In a unanimous opinion delivered by Justice Antonin Scalia, the Court held that "[i]n a section 43(a) action for infringement of unregistered trade dress, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent- distinctiveness principle more harmful to other consumer interests," Justice Scalia wrote for the Court. "Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic 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," Justice Scalia concluded.

Qualitex Co. v. Jacobson Products Co., Inc. From Wikipedia, the free encyclopedia Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), was a United States Supreme Court case in which the Court held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market. Synopsis of Rule of Law: There is no objection to the use of color alone as a trademark, when that color has attained a secondary meaning and therefore identifies and distinguishes a particular brand. Facts and Procedural History Plaintiff Qualitex Co. had used a green-gold color for the pads which it sold to dry cleaning firms to use in their dry cleaning presses. Defendant Jacobson Products Co. was a rival of Qualitex. In 1989, Jacobson began selling their own pads to dry cleaners which were a similar color to those of Qualitex. In response, Qualitex filed a lawsuit against Jacobson in the United States District Court for the Central District of California for unfair competition. In 1991, Qualitex registered the green-gold color of its pads with the United States Patent and Trademark Office as a trademark, and subsequently added a trademark infringement count to its lawsuit. The District Court found for Qualitex, but the United States Court of Appeals for the Ninth Circuit set aside the judgment, on the grounds that color alone could not be registered as a trademark.

Decision Justice Breyer, writing for a unanimous court, overturned the Ninth Circuits decision, holding that the Lanham Act was very broad in its definition of what a trademark could be. The definition section of the Lanham Act, 15 U.S.C. 1127, defines trademarks as including any word, name, symbol, or device, or any combination thereof. Breyer reasoned that colors could constitute descriptive trademarks, because while colors do not automatically evoke a connection to any product by themselves, they could take on secondary meaning over time, in the course of use in the marketplace. In this way, a color could serve the chief purpose of trademarks, that of identifying the source of a particular product. Breyer also determined that the functionality doctrine was no bar to the registration of the plaintiffs color as a trademark. He determined that a product feature is only functional if it is essential to the purpose of the article or if it affects the cost or quality of the article. 514 U.S. at 165. The color in this case acted purely as a symbol, and served no other purpose. Jacobson argued that there are only a limited number of colors that could be used for the products at issue here, and that many colors are very similar looking, but Breyer dismissed this concern, saying that if the defendants concerns were proven to be valid, the functionality doctrine would then come into play. Breyer further held that a color could be trademarked separately from any trade dress protection.

CHRISTIAN LOUBOUTIN, SA. V. YVES SAINT LAURENT AMERICA HOLDINGS, INC. CASE SUMMARY FACTS Christian Louboutin, S.A. ("Louboutin"), a renowned French designer of highfashion footwear and accessories, appealed a decision from the U.S. District Court for the Southern District of New York denying its motion to preliminarily enjoin Yves Saint Laurent America Holding, Inc. ("YSL"), a venerated French fashion institution, from selling red shoes with red soles as one color in a monochromatic-colored shoe collection launched early last year. Louboutin originally brought its action against YSL in April 2011, asserting claims under the Lanham Act for trademark infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution based on its federal registration for the color red for lacquered soles on footwear (the "Red Sole Mark" or "Mark"). In response, YSL asserted counterclaims to cancel Louboutin's Red Sole Mark, contending that the Mark lacked distinctiveness and/or was merely ornamental or functional. After a limited

and expedited discovery process, the district court denied the injunction, holding that Louboutin had not shown a likelihood of success on the merits of its claims because single-color marks in the fashion industry are inherently "functional," and, therefore, Louboutin's registered trademark would likely be held invalid. On appeal, the Second Circuit reversed the order of the district court insofar as it held that the fashion industry was "excepted" from the Supreme Court's holding on the protectability of a single color and thereby denied trademark protection to Louboutin's use of the Red Sole Mark for contrasting red lacquered soles. The Second Circuit affirmed the district court's denial to enjoin YSL from selling monochrome red shoes with red soles. ANALYSIS The Second Circuit first focused its review on whether YSL's affirmative defense of functionality rendered the Red Sole Mark incapable of trademark protection because of the fundamental principle that functional features of goods may only be protected through the patent system. Citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Second Circuit noted that the Supreme Court specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industryincluding the fashion industrybecause an analysis of functionality necessarily requires an individualized fact-based inquiry into the nature of the trademark. Next, the Second Circuit turned its review toward whether the Red Sole Mark merited protection as a distinctive mark that had acquired secondary meaning. The appeals court was quick to quash the notion of inherent distinctiveness as applying to the Red Sole Mark, reasoning that under Qualitex, a single color, standing alone, could almost never be inherently distinctive because such marks do not automatically tell a customer that it refers to a brand, but rather, over time, customers come to treat a particular product color as signifying a unique source. In analyzing secondary meaning, the Second Circuit considered several types of evidence, including consumer surveys from both parties, as well as Louboutin's extensive evidence of its advertising expenditures, media coverage, and worldwide sales success from over twenty years of commercial use of the lacquered red color for soles as its signature in women's high-fashion footwear, to determine that the Red Sole Mark had indeed acquired secondary meaning. Despite finding secondary meaning, the appeals court pointed to Louboutin's failure to show that the secondary meaning of its Red Sole Mark extended to uses in which the sole did not contrast with the upper part of a shoe (i.e., on monochromatic red shoes). For example, of the hundreds of pictures of Louboutin shoes submitted to the district court, only four were monochrome red. YSL, on the other hand, had produced evidence of its sale of monochromatic red shoes, as well as other monochromatic colored shoes

since the 1970s. Based on this evidence, the Second Circuit ordered the PTO to limit Louboutin's Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining "upper" of the shoe, finding that the Red Sole Mark was valid and enforceable only as modified. This limitation to Louboutin's registration also disposed of the Lanham Act claims brought by both parties in one clean sweep because the red sole on YSL's monochrome shoes was neither a use of, nor confusingly similar to, the Red Sole Mark as modified. CONCLUSION This case is one of the few appellate court decisions addressing whether a single color is capable of functioning as a trademark, and more specifically how fashion-industry participants may protect the distinctive features of their designs by establishing secondary meaning, even if the distinguishing feature is just one color.

Zazu Designs v. L'Oreal, S.A. Page: 1 of 2 Citation: 979 F.2d 499 (7th Cir. 1992) Summary: Appellee filed suit claiming that appellant was using its name unlawfully when appellee himself was selling his hair products under the same name. Appellant claimed that he was the first to sell the hair products under the name and hence he was entitled to the name ZAZU nationally. Facts: Cosmair Inc concluded that young women liked pink and blue hair color. For meeting the anticipated demand, Cosmair developed a line of hair cosmetics - hair coloring which flopped. Cosmair was the United States Licensee of Appellant L'Oreal, S.A, a French firm which specialized in perfumes, beauty products and other similar things. L'Oreal hired 'Word Mark' a consulting firm for finding a name for its new line of hair cosmetics. After checking the trademark register it suggested 250 names. Appellant shortened the list to three names. One of the names was registered with appellee. Appellant called appellee and told him that they did not have any hair products which were sold by them. Appellant got the name registered and sold its products nationally. Appellee filed suit to enjoin appellant from suing the name ZAZU. The district court held that since appellee sold its hair products nationally it was entitled for the name and hence it enjoined appellant from using the name. Appellant filed an appeal to the Seventh Circuit Appellate Court. Issue: Whether the district court was correct in holding that appellee had the right to use the name ZAZU and enjoining appellant from using the name?

Holding: No, the district court was not correct in holding that appellee had right to use the name ZAZU and enjoining appellant from using the name.

Park N Fly Inc.v Dollar Park and Fly Inc. Page: 1 of 2 Citation: Supreme Court of United States ,469 U.S 189 (1985) Summary: This case was to consider whether an action to enjoin the infringement of an incontestable trade or service mark might be defended on the grounds that the mark was merely descriptive. Facts: Petitioner operated long-term parking lots near airports. Petitioner applied to the United States Patent and Trademark Office (PTO) to register a service mark consisting of the logo of an airplane and the words "Park N Fly". Respondent was also providing long-term airport parking services. Respondent called its business "Dollar N Fly". Petitioner filed an infringement action against respondent in the United States District Court and requested the court to enjoin respondent from using the word "Park N Fly" in connection with its business. Respondent counter-claimed and sought cancellation of the petitioners mark on the grounds that it was a generic term. Respondent also argued that petitioner's mark was unenforceable because it was merely descriptive. Respondent maintained that it was in his privities that he had used the expression "Park N Fly" since the date prior to the registration of the petitioner's mark, and that he had not infringed the trademark as there was no likelihood of confusion .Appellate court held that without regard to incontestable status, a mark might be that had been registered for five years was protected from cancellation. Respondent appealed. Issue: Whether the Appellate Court was correct in determining incontestable right to a mark that was generic? Holding: Yes, the Appellate Court was correct in determining incontestable right to a mark that was generic.