When a retail brand wants a consistent, unique look and enforcement against overly similar competitors or brazen counterfeiters, trade dress protections under the Lanham Act provide that power. However, one of the things that makes trade dress difficult to enforce is that it often requires a secondary meaning.1 A product's unique features must be important in the eyes of consumers, as they help them identify the product. sauce It's not just the product itself, it's the product itself.2 In 2022, the Fifth Circuit issued the following opinion: Beatrice Ball LLC v. Barbagallo Company LLCThis included a discussion of how turnover acts as evidence in support of secondary meanings.3 This is important. This is because adequate evidence of secondary meaning, such as research evidence and unbiased customer testimonials, can be expensive or difficult to obtain. In contrast, sales data must already be stored in spreadsheets in the accounting department.
beatrice ball The focus was on the alleged trade dress called “organic pearls.” Beatrice Ball makes metal tableware polished to look as close to silver as possible. The “Organic Pearl'' design features pearls of various sizes around the edges to create unpredictable distortions. Beatrice Ball explained that these handmade pearls “deliberately have a slightly irregular shape and size to emphasize the quality of handmade craftsmanship.”Four The line generated $6.6 million in sales from 2009 to 2019.Five
Beatrice Ball sought to enforce these trade dress rights (along with copyright) against competitors who used products that were said to have a similar look and feel. A judge in the Eastern District of Louisiana ruled against Beatrice Ball after a jury trial.6 The ruling said Beatrice Ball had failed to prove that its “Organic Pearl” trade dress had acquired a secondary meaning among consumers and was therefore not protected under the Lanham Act. It involved judgment.7 On appeal, a panel of the Fifth Circuit reversed the lower court's decision on multiple grounds. A significant problem is that the lower court did not properly consider evidence of sale as an element supporting secondary meaning.8
5th Circuit uses seven-factor test to determine whether trade dress has acquired secondary meaning.
- Length and use of marks or trade dress.
- sales volume;
- The amount and method of advertising.
- the nature of the use of marks or trade dress in newspapers and magazines;
- Consumer research evidence.
- Direct consumer testimonials.and
- Defendant's intent to imitate trade dress.9
When the trial court discussed Beatrice Ball's “Organic Pearl'' design and its $6.6 million sales, the court actually misunderstood the presentation of that data. I believed these were Beatrice Ball's overall sales. In fact, this number specifically represents the sales of “Organic Pearls”. A panel of the Fifth Circuit identified this problem and ordered lower courts to reconsider their sale when reevaluating trade dress for “organic pearls.”
The committee ultimately did not determine whether sales of $6.6 million over 10 years supported secondary meaning, but the much higher sales figure of $93 million per year supported secondary meaning. and flagged Fifth Circuit precedent that discussed much lower sales figures.$470 million for his two films featuring trade dress in favor of secondary meanings, and in six and a half years he made $30,500 against secondary meaning.Ten
This question of how much turnover is required to prioritize secondary meanings remains elusive. On the other hand, there are also examples of large-scale sales that support secondary meanings. For example, in one year he sold 51 million Rubik's cubes and he sold $250 million of Care Bears.11 The sale of 2 billion orange pills also suggested that a secondary meaning had been established.12
In contrast, recent cases in the low $1 million range are less revealing. For example, the Federal Circuit recently upheld a holding that a pencil-shaped toy chalk holder failed to acquire secondary meaning.13 According to evidence submitted, between 2010 and 2016, sales of chalk holders were $2 million.14 However, the committee other Evidence was presented that when consumers see the shape of a pencil, their “mind jumps to the producer of the product rather than the product itself.” Essentially, the panel sidestepped the central question of whether those sales favored secondary meaning.
Even if a product's sales are highly successful, it may be explained or attributed to other sources. The 11th Circuit ruled that the rapid growth of one brand's running shoe sales from 400,000 pairs to more than 2.5 million pairs in two years was not related to the trade dress at issue, but rather that interest in jogging began in the late 1970s. He discounted this as being due to an explosive increase in sales.15 These additional sales do not imply that the customer has associated a particular design with a particular source. Instead, people just became obsessed with running. One footwear expert testified in court that overall sales of running shoes in that category nearly tripled during this period.16
In 2021, a judge in the Southern District of Florida used a similar logic to discount evidence that energy drink sales exceeded $1 billion. The court determined that the beverage's trade dress did not generate those sales.17 The judge noted that product sales remained flat for two years after the trade dress was introduced, then grew rapidly as demand for healthier energy drinks increased.
However, as the Fifth Circuit assessed, beatrice ballturnover remains a relevant factor when assessing secondary meaning.18 A recent district court decision regarding the design of competing children's swimming school facilities highlights this.19 Following the jury's verdict, the defendants objected to secondary meaning in an attempt to separate the competitors' sales from the disputed trade dress. He argued that the defendant had the burden of affirmatively proving that the plaintiff had sales from trade dress, but that he did not in fact do so. The judge simply answered, “No such requirement exists,” citing Fifth Circuit precedent.20
Instead, the plaintiffs presented “evidence of significant sales during the seven-year period prior to August 2020 when the trade dress was used,” so a reasonable jury could rely on this factor to determine secondary meaning. They may have found it advantageous.twenty one In this example, sales were one element of a larger body of evidence supporting secondary meaning. Sales volume is more likely to be explained if: only Evidence was presented.twenty two
For brands looking for quick answers in lieu of malleable elements that span multiple elements, simply pointing to product line sales may not be a silver bullet for trade dress protection under certain circumstances. there is. However, sales require consideration of larger secondary meaning calculations. Drawing on other evidence that is similarly available, such as duration of use and advertising activity, the argument that significant sales serve as a distinguishing feature that identifies the source in the public's mind. can generate strong evidence.
1 See Wal-Mart Stores vs. Samara Brothers.529 US 205, 215 (2000) (characteristic products) design Explaining product packaging and how a product's design cannot be inherently unique). See also “In re Chippendales USA, Inc.”622 F.3d 1346, 1351 (Fed. Cir. 2010) (discussing the uniqueness inherent in the “packaging” of exotic dance services: shirtless, consisting only of cuffs, collar, and bow tie) tuxedo costume).
2 See Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844, 851 n. 11 (1982).
3 Beatriz Ball, LLC v. Barbagallo Co., LLC40 F.4th 308 (5th Cir. 2022).
Four Same as above. At 313.
Five Same as above. At 318.
6 Beatrice Ball LLC v. BarbagalloNo. 18-cv-10214, 2020 WL 6938524 (ED La. November 25, 2020).
7 Same as above. *At 12.
8 beatrice ball, 40F.4th place. At 318.
9 Same as above. at 317 (emphasis added) (quote Amazing Spaces, Inc. vs. Metro Mini Storage608 F.3d 225, 248 (5th Cir. 2010)).
Ten Viacom International vs. IJR Cap. Invs., LLC891 F.3d 178, 190 (5th Cir. 2018). Nola Spice Designs, LLC v. Haydel Enterprises, Inc., 783 F.3d 527, 544 (5th Cir. 2015). Bd. Supervisor Agriculture at Louisiana State University. &Mecha. Col. v. Smack Apparel Company550 F.3d 465, 477 (5th Cir. 2008).
11 Ideal Toy Corp. v Plawner Toy Mfg. Corp.685 F2d 78 (3d Cir. 1982). morning. Greetings Corp. v. Dan-Dee Imports, Inc., 619 F. Supplement. 1204, 1212 (DNJ 1985).
12 Boehringer Ingelheim G. mb H. v Pharmadyne Laboratories532 F Supp 1040 (DNJ 1980).
13 Ranard Toys Limited v. Dolgencorp LLC958 F.3d 1337 (Fed. Cir. 2020).
14 Ranard Toys Ltd. vs. Toys R Us Delaware, Inc.No. 3:15-CV-849-J-34PDB, 2019 WL 1304290, *26 (MD FL, March 21, 2019).
15 Brooks Shoe Mfg. Co. v. Suave Shoe Corp.716 F.2d 854, 860 (11th Cir. 1983).
16 Same as above. At 860n. 14.
17 Vital Pharmaceuticals, Inc. vs. Monster Energy Company, 553F. supplement. 3d 1180 (SD Florida 2021).
18 beatrice ball, 40F.4th place. At 318.
19 Pengu Swim Sch., LLC v. Blue Legend, LLCNo. 4:21-cv-1525, 2023 WL 5598996, *4 (SD Tex. August 29, 2023).
20 Same as above. (Quote Nola Spice Designs, LLC v. Haydel Enterprises, Inc.783 F.3d 527, 544 (5th Cir. 2015)).
twenty one Same as above.
twenty two Example: See Lanard Toys2019 WL 1304290, *26.
