The United States Federal Circuit recently issued a precedential opinion addressing trade dress secondary meaning.  The decision establishes a six-factor test to determine whether trade-dress acquired secondary meaning and clarifies a variety of other, related matters.

Converse appealed a final determination of the International Trade Commission (“ITC”) that Converse’s U.S. trademark number 4,398,753 (“the ‘753 mark”) was invalid.  The ITC also determined that Converse could not establish the existence of common law trademark rights.

The ‘753 mark covers “the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements with each other.”  The ‘753 mark shows the mark as:

The issue turned on whether the ‘753 mark had acquired secondary meaning as “a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.”

First, the Court considered the relevant date for determining secondary meaning.  The ITC used 2003 as the ‘date of first infringement’ but also extensively cited evidence from after 2003.  The ITC argued that its finding means that Converse’s mark had not acquired secondary meaning at any time and Converse therefore had no enforceable rights.

Rejecting this argument, the Court stated “[b]ecause the relevant date is so important to the secondary-meaning analysis, we find that a specific determination of secondary meaning as of the relevant date must be made.”  Thus, “[i]n any infringement action, the party asserting trade-dress protection must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer.”

Registration of the ‘753 mark was important to determine at least one date for acquisition of secondary meaning.  After reciting the standard that “the Lanham Act entitles the owner of a registered mark to a presumption that the mark is valid”, the Court “join[ed] with the majority of circuits that have held that the presumption [of validity] shifts both burdens [of persuasion and initial burden of production] to the party challenging secondary meaning.”  The Court thus resolved a circuit split; the standard that applies in USPTO cancellation proceedings now applies in infringement litigation.

This determination only operates prospectively from the date of registration of a mark.  This is because “at the time of registration the [US]PTO is not asked to determine whether secondary meaning had been acquired at some previous date…”  In a case such as this, where there was a multiyear gap between infringement by some infringers and registration of the ‘753 mark, the Court determined “[the] registration cannot even be probative of secondary meaning at the time of infringement [by the earlier infringers].”

Next, the Court addressed infringers who infringed prior to registration of the ‘753 mark.  “[W]ith respect to infringement by those respondents whose first use came before the registration…Converse must establish without the benefit of the presumption that its mark had acquired secondary meaning before the first infringing use by each respondent.” (emphasis supplied).

The Court created a new six-factor test to determine the existence of secondary meaning:

  • association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
  • length, degree, and exclusivity of use;
  • amount and manner of advertising;
  • amount of sales and number of customers;
  • intentional copying; and
  • unsolicited media coverage of the product embodying the mark.

The Court determined that “[w]hile the ITC’s test set forth length, degree, and exclusivity as separate factors, we think that these considerations are substantially interrelated and should be evaluated together.”  While 11 separate circuits had addressed secondary meaning in some form, this is the first time the Federal Circuit has set forth a nationwide test for secondary meaning.

The Court also provided guidance on the second factor of its new test.  “While section 2(f) [of the Lanham Act] cannot be read as limiting the inquiry to the five years before the relevant date [of first infringement], it can and should be read as suggesting that this period is the most relevant.  As a result, in evaluating factor 2, the ITC should rely principally on uses within the last five years.”  The Court further clarified that “uses older than five years should only be considered relevant if there is evidence that such uses were likely to have impacted consumer’s perceptions of the mark as of the [date of first infringement].  For example, this might be the case where a particular advertising campaign has been in use for longer than five years.”  Finally, the Court held that while “evidence of the use of similar but not identical trade dress may inform the secondary-meaning analysis, we think such uses must be substantially similar to the asserted mark.”

As to the first factor (association of the trade dress with a particular source by actual purchasers), the Court clarified that “surveys are sometimes difficult to use as evidence of historic secondary meaning” because “’[t]he relevant consumer population for assessing consumer attitudes at a point in the past is a group of consumers at that point in the past’ and ‘[a] contemporaneous survey commissioned for litigation obviously cannot assess such a pool of respondents.’”  The Court again turned to a five-year period as a relevant time period to consider.

The key takeaways here are that the Converse decision did the following:

  • confirmed that registration of a mark on the Principal Register at the USPTO establishes secondary meaning of trade dress as of the date of registration and not earlier;
  • confirmed that secondary meaning must be established prior to first infringement;
  • harmonized the circuit courts by confirming that a registered mark shifts the burdens of persuasion and initial burden of production to the party challenging whether trade-dress enjoys secondary meaning;
  • set forth a new six-factor test to determine secondary meaning for trade dress; and
  • clarified that the most relevant time period for considering length, degree, exclusivity of use, and consumer surveys is the five year period prior to the date of first infringement.

Case: Converse, Inc. v. International Trade Commission, No. 2016-2497, Precedential (Fed. Cir. Oct. 30, 2018).

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