Shearman & Sterling LLP | IP Blog | Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress<br >  
IP Litigation
This links to the home page
  • Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress

    On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress.  Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018).  The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration.  The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning. 

    On October 14, 2014, the Company filed a complaint with the ITC alleging that various respondents violated Section 337 by importing shoes that infringed its trade dress, which was protected under common law and a federal registration.  The factual nuance in this case was that the trade dress was registered on September 10, 2013, but the Company claimed that its mark was infringed both before and after that date.

    The Federal Circuit ruled that the ITC erred in two key ways.  First, the ITC erred by viewing the trade dress as two separate marks – a registered mark and a common-law mark.  In fact, the Federal Circuit found the trade dress to be one mark, to which different protections apply under common law and from federal registration.  The ITC also erred by allowing the presumption of secondary meaning afforded to registered marks to apply before the mark was registered.  The Federal Circuit found that the presumption of secondary meaning applies only as of the date of registration and does not apply before the date of registration.  The reason is a straightforward application of the Lanham Act, pursuant to which the U.S. Patent and Trademark Office (“PTO”) examines whether secondary meaning has been acquired at the time of registration.  Since, at the time of registration, the PTO is not asked to determine whether secondary meaning had been acquired at some previous date, registration cannot support a presumption for the period before registration.

    The Federal Circuit then clarified the proper test for determining whether secondary meaning applies: “(1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.”  The Federal Circuit stated that these six factors should be weighed together.  As to the second factor, the Federal Circuit noted that the most relevant evidence will be the use in the recent period before first use or infringement, and noted that the ITC should rely principally the timeframe of five years before the relevant date.

    Having corrected and clarified these issues, the Federal Circuit vacated and remanded to the ITC for further proceedings consistent with the opinion.