Summary: Registered trade dress carries a presumption of secondary meaning only prospectively from the date of registration. Prior to the date of registration, the mark owner must show acquired secondary meaning prior to the first infringing use for each accused infringer.
Converse filed an ITC action, asserting trade dress rights covering the design of its All Star shoes. Converse had used the trade dress since 1932, but the trade dress was not registered until 2013. Converse relied on both common-law rights and its trademark registration. The ITC held that Converse’s trademark was invalid because it had not acquired secondary meaning.
The Federal Circuit vacated the determination that Converse’s trade dress lacked secondary meaning. The Federal Circuit noted that trade dress in a product design can never be inherently distinctive, and that secondary meaning must be shown prior to the first infringing use by each alleged infringer. For infringing uses that began after the registration date, Converse is entitled to a presumption of secondary meaning. For uses that began prior to the registration of its trademark, Converse must show that it acquired secondary meaning prior to the first infringing use for each alleged infringer, without the benefit of the presumption.
To determine if trade dress has acquired secondary meaning, the Federal Circuit set forth a six factor test: (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. In assessing the length, degree, and exclusivity of use, the Federal Circuit stated that the most relevant evidence is the trade dress owner’s and third parties’ use in the five-year period before first use or infringement. The Federal Circuit remanded to the ITC to further analyze secondary meaning.
