The Federal Circuit ruled on October 30 that the International Trade Commission had applied the wrong analysis in adjudicating plaintiff Converse’s trademark claims against Skechers and New Balance arising from the design of an athletic shoe. The holding remands the case and keeps Converse’s suit against its competitors alive. But more usefully, the opinion offers a clarification—some might say a revision—in how courts will examine whether an alleged trade dress has acquired the requisite secondary meaning to make it enforceable.

While trade dress consisting of product packaging or service establishment décor may be inherently distinctive, and qualify for protection and registration immediately, trade dress that consists of product design is protectable only upon a showing of secondary meaning—that is, that the product design itself has brand significance and is recognized by a substantial portion of the marketplace as designating a proprietary design emanating for a single source.

The Federal Circuit opinion makes two important points of use to attorneys seeking to establish and protect their clients’ product-design trade dress. First the Court holds that secondary meaning attaches at the time of registration—the point at which the Trademark Office validates the claim or five-year presumption of acquired distinctiveness. That secondary meaning is not necessarily retroactive, and a trade dress owner seeking to recover for prior infringements must show that secondary meaning had attached as of the dates of those earlier infringing uses—a harder hurdle to overcome because market conditions may change and evidence of earlier uses is less likely to be available.

Secondly, the Court sets forth its test for secondary meaning, noting that each circuit has such a “factor-test” and that the tests vary somewhat, just as do the various Circuits’ tests for likelihood of confusion. The factors now prescribed by the Federal Circuit include a newly-added sixth factor. The factors to be weighed in determining whether secondary meaning in trade dress has been acquired are:

  1. Association of the trade dress with a particular source by actual purchasers (commonly measured by market surveys)
  2. Length, degree, and exclusivity of use of the trade dress
  3. Amount and manner of advertising—typically the extent of the owner’s efforts to promote association between the trade dress and the owner, as in so-called “look for” advertising (“look for the green stripe that tells you this product comes from our company”)
  4. Amount of sales and number of customers (a measure of the familiarity and exposure of the trade dress)
  5. Intentional copying by competitors (yes, imitation can be a sign of a successful acquisition of secondary meaning in trade dress)
  6. Unsolicited media coverage of the product embodying the trademark (the degree to which news and trade media recognize the owner’s exclusive use of design elements that brand its product as coming uniquely from the owner company)