Legal Memorandum: Trade Dress Infringement Cases

Issue: What federal cases deal with claims under Section 43(a) of the Lanham Act?

Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063 (2d Cir. 1995):

In this case, the Second Circuit confirmed that in order to prevail on a trade dress infringement cause of action under section 43(a) of the Lanham Act, a plaintiff must first prove that an identifying mark is either inherently distinctive or that it has become distinctive through the establishment of a secondary meaning linking it to the plaintiff.  Id. at 1068  In addition, the plaintiff must also show that a likelihood of confusion exists between its product and the defendant’s, and that the product or feature to be protected is nonfunctional.  Id.  Therefore, where the plaintiff argued that the defendant unlawfully used the same color and design as it did in the manufacture of cosmetic compacts, but could not prove inherent distinctiveness or secondary meaning, there was no valid cause of action and the plaintiff’s complaint was properly dismissed.  Id. at 1071.

Trangso, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001 (9th Cir. 1985):

Plaintiff’s automatic transmission “Shift Kits” were copied by another company, Fairbanks, Inc., and were then “passed off” to the defendant company who sold them to unsuspecting customers who believed that they were buying the plaintiff’s product.  Id. at 1011-12.  The defendant’s catalog listed the Fairbanks’ kit components under the same numbers which identified the plaintiff’s components.  Id. at 1012. 

The court found that the term “Shift Kit” was a rightful […]