Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), protects trade dress, which encompasses the design and appearance of a product along with all the elements that serve to identify the product to consumers. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001).

For a false designation claim under Section 43(a) based on trade dress, a plaintiff must establish that (1) its trade dress is “distinctive” as to the source of the goods, (2) there is a “likelihood of confusion” between the plaintiff's goods and the defendant's, and (3) the trade dress is “not functional.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001); see also Kaufman & Fisher Wish Co., Ltd. v. F.A.O. Schwarz, 184 F. Supp. 2d 311, 316 (S.D.N.Y. 2001), aff'd, 51 F. App'x 335 (2d Cir. 2002).

For product packaging, distinctiveness can be shown in one of two ways—either by establishing that the dress is inherently distinctive because it clearly identifies the source of the product, or by establishing that the dress has acquired secondary meaning because, in the mind of the general public, the “primary significance” of the dress is to identify the source of the product. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215 (2000); see also Eliya, Inc. v. Kohl's Dep't Stores, No. 06 CIV.195(GEL), 2006 WL 2645196, at *2 (S.D.N.Y. Sept. 13, 2006).

For product design, on the other hand, distinctiveness can only be established by showing that the dress has acquired secondary meaning. Samara, 529 U.S. at 215.

A plaintiff also must provide “a precise expression of the character and scope of the claimed trade dress.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997).

WONDERFUL Trade Dress

The Wonderful Company LLC (“TWC”) owns the WONDERFUL brand of pistachio and other nuts, which are heavily advertised online, on social media, in print media, and on billboards.

TWC filed suit against Nut Cravings, Inc., for trade dress infringement. Wonderful Co., LLC v. Nut Cravings, Inc., No. 21-cv-3960-MKV (S.D.N.Y. Sept. 29, 2022). TWC alleged in its Complaint that the WONDERFUL trade dress is “inherently distinctive” because of three elements:

• predominantly black packaging;
• use of a bright green accent color on the packaging; and
• the predominantly rectangular shape of the package.

Below are side-by-side images of TWC's packaging and Nut Craving's packaging.

The Court dismissed the case, finding that TWC did not plausibly allege unregistered trade dress infringement.

No Inherent Distinctiveness

With respect to inherent distinctiveness, the Court found that colors, such as black and green, are never inherently distinctive. See Samara, 529 U.S. at 211–12 (“[W]ith respect to at least one category of mark—colors—we have held that no mark can ever be inherently distinctive.”).

The Court also found the same for “common basic shape[s],” like rectangles. Shandong Shinho Food Indus. Co. v. May Flower Int'l, Inc., 521 F. Supp. 3d 222, 257 (E.D.N.Y. 2021) (quoting Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 382 (2d Cir. 2005)).

No Acquired Distinctiveness / Secondary Meaning

For acquired distinctiveness, trade dress acquires secondary meaning when the primary significance of the trade dress in the minds of the consuming public is not the product but the producer, such that the trade dress tends to be associated not just with the goods or services but with a single, though possibly anonymous, source. Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675, 698 (S.D.N.Y. 2014). Factors relevant to the secondary meaning analysis include: (1) advertising expenditures, (2) consumer studies, (3) unsolicited media coverage, (4) sales success, (5) attempts to plagiarize the dress, and (6) the length and exclusivity of the dress's use. See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 226 (2d Cir. 2012).

With respect to advertising expenditures, the Court found that general allegations of substantial expenditures, including an allegation that the WONDERFUL trade dress was used as the “centerpiece” of its marketing, were insufficient to indicate “that any of [the] advertisements . . . stressed or emphasized the alleged trade dress.”  Urb. Grp. Exercise Consultants, Ltd. v. Dick's Sporting Goods, Inc., No. 12 CIV. 3599, 2013 WL 866867, at *3 (S.D.N.Y. Mar. 8, 2013); see also Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586, 598 (E.D.N.Y. 2017) (“The Amended Complaint is also silent as to whether plaintiff's advertising stressed the elements of the trade dress.”).

Regarding sales success, TWC did not allege “how many of the units sold actually bear the alleged trade dress.” Urban Group, 2013 WL 866867, at *4.

With respect to the factor of plagiarism, the only alleged plagiarism was the alleged infringement. See Bubble Genius, 239 F. Supp. 3d at 600 (finding factor weighed against a finding of secondary meaning where the only alleged plagiarism was the conduct at issue).

The Court concluded that the asserted trade dress had not acquired secondary meaning. See also Eyal R.D. Corp. v. Jewelex N.Y. Ltd., 784 F. Supp. 2d 441, 445, 448, 449 (S.D.N.Y. 2011) (complaint did not plead secondary meaning despite alleging “exclusive and widespread use,” “enormous value and recognition,” and that trade dress was “well known to the consuming public”).

Other Actions

In addition, the Court noted in a footnote that, in other actions, TWC had alleged different elements of the trade dress as “inherently distinctive.” See Carruthers v. Flaum, 388 F. Supp. 2d 360, 370 (S.D.N.Y. 2005) (a court may take judicial notice of admissions in pleadings and other documents in the public record filed by a party in other judicial proceedings that contradict that party's factual assertions in a subsequent action).

For example, in an action filed in the Central District of California, TWC alleged that its trade dress was made distinctive in part because of the “semi-circle portion on each side of the packaging in the center area,” “the use of all capital letters” spelling the word “PISTACHIOS,” and “the use of sans serif font.” Berkowitz Declaration Exhibit 3 at 4–5 [ECF No. 22-3]. In an action in the Eastern District of California, Plaintiffs similarly alleged TWC's trade dress was made distinctive because of the “curved shaped sections on the packaging,” and “the use of all capital letters for the word ‘PISTACHIOS.'” Berkowitz Declaration Exhibit 4 at 4 [ECF No. 22-4]. None of these elements are present on Defendant's packaging, perhaps explaining why Plaintiffs neglect to mention them here.

Also, after reviewing the images provided in the Complaint, the Court was “unconvinced” that consumers are likely to be confused by similarities between the two packages.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.