Two Pesos, Inc. v. Taco Cabana, Inc. – Oral Argument – April 21, 1992

Media for Two Pesos, Inc. v. Taco Cabana, Inc.

Audio Transcription for Opinion Announcement – June 26, 1992 in Two Pesos, Inc. v. Taco Cabana, Inc.

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William H. Rehnquist:

We’ll hear argument next in No. 91-971, Two Pesos, Inc. v. Taco Cabana.

Mr. Corson.

Kimball J. Corson:

Mr. Chief Justice, and Justices of the Court, good morning.

This is an intellectual property case.

It is a restaurant trade dress case under section 43(a) of the Lanham Act.

In broad terms, the issue before you this morning is not whether the Two Pesos restaurant chain copied the appearance of the Taco Cabana restaurant chain.

It is, instead, a different issue.

It is whether Taco Cabana has a publicly recognized and understood appearance that may not be copied.

It is a question of protectability under 43(a) of the Lanham Act.

If Taco Cabana does not have a protectable trade dress, the issue of copying is not involved, and there can be no actionable confusion under section 43(a) of the Lanham Act.

And the reason for this is that it protects an original, recognized source of origin.

That’s what 43(a) does.

If it is not recognized by the public, then there is no issue of confusion.

You do not reach the likelihood of confusion issue under section 43(a) of the Lanham Act.

Sandra Day O’Connor:

Mr. Corson, I think this case arose under a previous version of section 43(a) of the Lanham Act.

Kimball J. Corson:

That is correct.

Sandra Day O’Connor:

Now, it’s been revised.

Kimball J. Corson:

Yes.

Sandra Day O’Connor:

Do you think that under the revision of this statute that secondary meaning always must be shown?

Kimball J. Corson:

Yes.

And the reason for that is that the revisions of the act were largely in regard to the disparagement issue, and do not affect the language that is key and relevant to this case.

We still have, in the revised act, the language that says, any person who, or in connection with any goods or services… skipping some material… uses in commerce any false designation of origin… and that gets back to the issue.

If we’re talking about a false designation of origin, which is what was pled in this case, the infringement of which was the basis of the judgment, then we are still dealing with the issue of secondary meaning.

Anthony M. Kennedy:

If we think that secondary meaning is not required in a trade dress case, do you lose?

Kimball J. Corson:

Yes.

Anthony M. Kennedy:

So that the brief for the Private Label Association states the question accurately… it states it differently than you do… but it states accurately the question that’s before the Court?

Kimball J. Corson:

I believe it does, but with contextual variation.

It’s more general than we posit it.

Anthony M. Kennedy:

So we have to assume that this would be a protected trade dress if secondary meaning is not required?

Kimball J. Corson:

That is correct, sir.

Kimball J. Corson:

The issue of secondary meaning has historically been required for trade dresses.

That has been the rule for many, many years.

It was in the Chevron, Fifth Circuit case that that rule was changed.

And it was changed, interestingly enough, for a little, tiny label that really was quite unique.

It may well have been considered a trademark.

Anthony M. Kennedy:

Why was it changed?

What was the basis for changing it?

Kimball J. Corson:

The basis for changing it was not well articulated, sir; it was simply the judgment that on viewing it, it was arbitrary or fanciful.

Anthony M. Kennedy:

Was there some agency involved?

Kimball J. Corson:

No, sir.

William H. Rehnquist:

Well, who changed it?

Kimball J. Corson:

The Fifth Circuit… the judgment–

William H. Rehnquist:

Well, so it was changed within the Fifth Circuit then, is what you’re saying.

Kimball J. Corson:

–Yes, de novo, on de novo… basically under a de novo standard it was viewed.

It was determined to be inherently distinctive, and that was largely the end of the discussion.

The difficulty that crops up in making those judgments is that it is very difficult to look at a trade dress and be able to tell whether it is inherently distinctive.

This is a problem the United States Trademark–

Byron R. White:

Did it overturn any prior decision of the Fifth Circuit?

Kimball J. Corson:

–Not that I recall, sir.

I don’t think it had been–

Byron R. White:

It wasn’t based on any change in the statute?

Kimball J. Corson:

–No, sir.

It was based on a sentiment that it would be nice to bring trade dress law into conformity with trade law… trademark law.

Byron R. White:

And it recognized that it was in… contrary to other circuits, or not?

Kimball J. Corson:

It did not discuss that, sir.

Byron R. White:

Was it?

Kimball J. Corson:

Yes.

Sandra Day O’Connor:

But we didn’t take the case on the question of whether the restaurant is inherently distinctive in its trade dress, did we?

Kimball J. Corson:

No, I believe it’s on the question really of whether secondary meaning is required.

Sandra Day O’Connor:

Exactly, yes.

Kimball J. Corson:

And I think the notion–

Sandra Day O’Connor:

So we should just assume the inherently distinctive trade dress, for purposes of answering the secondary meaning issue?

Kimball J. Corson:

–That is a difficult proposition that has caused confusion in the case, Justice O’Connor.

Byron R. White:

Yeah, but I thought you said that you lose if we decide secondary meaning is not necessary.

Kimball J. Corson:

That is correct.

But there’s a problem of semantics.

Byron R. White:

Well, if it wasn’t inherently distinctive, you never even get to secondary meaning, do you?

Kimball J. Corson:

If it is not inherently distinctive, of necessity you have to address the question of inherent distinctiveness.

The argument would also be… and mine is a little different here… it is that even if it is inherently distinctive, all we are really saying when we use those words… and it’s a bad bit of nomenclature… is that we will, from its appearance only, presume that it is distinctive.

And the difficulty we have in this case is that that presumption was resoundingly defeated by the actual evidence.

Because the evidence came in and said, in the Texas market there is no recognition of this trade dress.

So we wind up, then, with a very nominal situation of a mark being by… as judged from its appearance, be inherently distinctive.

It has no distinctiveness at all.

Byron R. White:

Well, I would think… I would think here… I think any… based on trade dress would be almost impossible to prove if you require secondary meaning in the case of a new business.

Kimball J. Corson:

The difficulty, sir, is that–

Byron R. White:

Is that right?

It would be awfully hard.

Kimball J. Corson:

–Depending on–

Byron R. White:

Wouldn’t you hate to be recognized… trying to prove a secondary meaning on behalf of a restaurant chain that had just started out, or just one restaurant?

Kimball J. Corson:

–Yes.

Byron R. White:

It would be kind of tough.

Kimball J. Corson:

Yes.

And that’s why I address that issue as the incipiency problem.

And in that context, for a limited period of time… only for the time that’s reasonably necessary for that trade dress to become recognized if it will, there should be a recognition of the applicability of the Fifth Circuit rule.

Beyond that period of time, then the–

Byron R. White:

Do you see that… do you think that’s a–

Kimball J. Corson:

–The Second Circuit rule.

Byron R. White:

–the Fifth Circuit would be right for 6 months or so?

Kimball J. Corson:

Yes, sir.

But not for 11 years, as we have here.

Anthony M. Kennedy:

Do you have authority in trademark law where such temporal protection is granted in other instances?

Kimball J. Corson:

No, sir, no sir.

There is a practice in the Second Circuit district courts of attempting to develop a doctrine called secondary meaning in the making.

And it recognizes the sentiment that at the outset you have precisely this problem.

And that there should be some limited protection afforded.

So what they want to do is afford secondary meaning on a presumption basis for a limited period of time, after which secondary meaning must be proven.

Anthony M. Kennedy:

Well, it seems to me that your concession makes your case much more difficult.

Because as I think you will agree… maybe you won’t agree… that what we’re concerned here with is confusion, not copying.

Kimball J. Corson:

Yes, sir.

Anthony M. Kennedy:

And it seems to me… maybe I’m wrong… but the rationale of your temporal protection is to punish or prohibit copying.

Kimball J. Corson:

Sir, I believe the argument is a narrow one.

We do not reach the issue of confusion.

If there is not a determination that Taco Cabana’s restaurant chain trade dress, after 11 years of use in the marketplace, is not protectable.

You must make a determination of the protectability of that mark before you can ever reach the confusion issue.

That has to be done… unless there is some rule adopted, like is proposed here, that there be a limited incipiency trade protection.

Anthony M. Kennedy:

I understand that.

But I’m trying to explore the rationale for your concession that there is a limited period of protectability.

Kimball J. Corson:

The rationale for it is exactly the fact that if somebody comes into a market, they are fresh and new to the market, they develop a trade dress which is highly unusual, that for a limited period of time they should be afforded some protection.

Anthony M. Kennedy:

Why?

Kimball J. Corson:

Because they have spent time, and money, and energy in developing that… and because one of–

Anthony M. Kennedy:

But that’s a copying rationale, not a confusion rational.

It seems to me that I’m arguing your case in that respect.

Kimball J. Corson:

–And because, sir–

Anthony M. Kennedy:

And if I’m wrong, please advise me.

Kimball J. Corson:

–Okay, and because… I’m going to bring something else to it at this point… and because as looking at it from the appearance, a judgment can be reasonably made that it is arbitrary, fanciful, or suggestive.

And therefore, should be cloaked with the protection of a presumptive, inherent distinctiveness… or presumptive distinctiveness, for that limited period of time, to let itself get on its feet.

That’s the thrust of all the district court cases in New York that are trying to provide secondary meaning in the making.

Anthony M. Kennedy:

Well, then–

Kimball J. Corson:

This case is distinguished.

Byron R. White:

–it’s wrong to immediately copy a new trade dress that is highly unusual?

Byron R. White:

You can’t copy it for 6 months or 1 year, but right after that you can copy it?

Kimball J. Corson:

No, right after that there would be a requirement that secondary meaning be proved.

Anthony M. Kennedy:

Well, I know, but you can copy it unless you can prove secondary meaning.

Kimball J. Corson:

That’s right.

If the other side cannot prove secondary meaning, and you can disprove it, it’s had its chance in the marketplace and the time and effort and the–

Byron R. White:

What do you think secondary meaning means?

Kimball J. Corson:

–It means the public recognizes that the trade dress is a symbol of an exclusive origin for the goods and services sold in connection with it.

The public understands that.

Even a purely, inherently distinctive mark has to have that recognition at some point.

It has to be recognized by the public.

If it’s used and used and used, and the public doesn’t recognize it, it’s a real problem.

Here we have the difficulty that this trade dress is inherently descriptive.

You place any mortal in front of a Taco Cabana restaurant, and ask him what it is, he won’t tell you it’s a trademark.

He’ll tell you it’s a restaurant.

Its primary meaning is that it’s a restaurant.

Byron R. White:

It… and there’s a finding in this case that there is no secondary meaning?

Kimball J. Corson:

There is a finding in this case that there is no secondary meaning, sir, yes.

Byron R. White:

Was that in the district court?

Kimball J. Corson:

That was in the district court.

William H. Rehnquist:

Is the term inherently distinctive one that is found in the statute?

Kimball J. Corson:

No, sir, it’s judicial gloss.

William H. Rehnquist:

From the Fifth Circuit?

Kimball J. Corson:

Um… from trademark law and the common law that antedates the statute.

William H. Rehnquist:

Uh… and what does it mean?

Kimball J. Corson:

It means that we, from the appearance of this particular mark, trade dress, what you will, infer that it is arbitrary or fanciful, as those terms are used in trademark law, so that we will say it is inherently distinctive, or we will give it a presumption of distinctiveness.

Byron R. White:

Oh, when you said a while ago, you described it as highly unusual.

Kimball J. Corson:

That would be a way, too.

Byron R. White:

And highly unusual.

Kimball J. Corson:

There’s a problem with the language.

William H. Rehnquist:

You also say arbitrary or fanciful… all those could be included within the meaning of inherently distinctive?

Kimball J. Corson:

Technically it’s arbitrary, fanciful, or suggestive… those three are historically the ones that–

William H. Rehnquist:

And that’s what, by the common law?

Kimball J. Corson:

–That is common law heritage that’s been codified.

Antonin Scalia:

Mr. Corson, does any of these cases that involve trade dress involve restaurants as well?

I have… most trade dress serves no function except to… except to identify the product.

I’m not sure that’s the case.

In the case of a restaurant, the trade dress is the product, it’s not just an identification.

Kimball J. Corson:

That’s precisely the problem.

Antonin Scalia:

And you’re paying some money for the food, and you’re paying some money for the ambiance.

It’s… does that mean that it’s functional?

Is that the same thing as saying that it’s functional?

Kimball J. Corson:

It has functional characteristics.

The problem we have here is we’re dealing with a whole restaurant appearance.

We’re not dealing with a little logo, or a little mark, or a name, or what the public traditionally recognizes as an identifier.

We are dealing with a whole restaurant appearance.

And when you deal with a whole business appearance or with a whole product appearance, different rules apply.

Because then you have the problem of inherent descriptives.

Antonin Scalia:

Well, a whole business… I mean Macy’s might have a distinctive Macy’s look about the store.

But I’m not buying the store.

I don’t pay money to go and look at Macy’s.

I do pay money to go and sit in that restaurant, in that particular environment, right?

It’s called–

Kimball J. Corson:

The analogy is packaging, sir.

Antonin Scalia:

–Is… the analogy is–

Kimball J. Corson:

Packaging.

Antonin Scalia:

–Packaging.

Kimball J. Corson:

Packaging for the product.

Yes, I think this… the ambiance of the restaurant, the whole package there is analogous, as it were, to a wrapper on a, or a label on a fertilizer jar.

Byron R. White:

Well, then I don’t understand, again, your concession about a temporary protection… if it’s just descriptive or functional.

I would suppose you could copy it from the outset.

Kimball J. Corson:

That’s correct, because it would be denied the presumption on the basis of its appearance.

And in that instance it should not have an incipiency.

It has to pass first muster of being on the basis of its appearance, inherently capable of being presumed distinctive.

If it doesn’t pass muster, then–

Antonin Scalia:

I think you’re disagreeing.

You’re saying it is packaging?

I don’t think it is packaging.

I think you’re talking about the substance of what’s being sold.

You’re selling atmosphere and food, the two of them.

You can have wonderful food in a lousy atmosphere.

I’m not going to pay as much money.

Kimball J. Corson:

–If that’s the case–

Antonin Scalia:

This is not the package.

This is what I’m paying for.

Kimball J. Corson:

–If that’s the case, Justice Scalia, then what you are doing is protecting the delivery of a product, and making the provision of that particular product exclusive to one source so that the competitors may not sell that product.

And that is a fundamental, massive limitation on competition.

Consider an example: Let’s say you had McDonald’s, 15 or 20 years ago.

It had pretty much–

Byron R. White:

You can sell the same kind of a product, you just can’t copy the other fellow’s ambiance.

Kimball J. Corson:

–If you–

Byron R. White:

You can have your own.

Kimball J. Corson:

–If you take his position, you can’t sell that product.

If the product is the ambiance and all that’s included, the total commercial concept that a competitor is precluded from that market and a monopoly is afforded judicially, and circumstances that are contrary to congressional policy of allowing trademarks to aid competition and minimize monopoly.

So fundamental congressional purpose is destroyed there, if that’s the case.

And that’s the problem with protecting commercial concepts.

Sandra Day O’Connor:

Well, I suppose to have a Lanham Act recovery, you have to be sure that the item is nonfunctional.

Kimball J. Corson:

Yes.

Sandra Day O’Connor:

To which the trade dress is applied.

So really, your focus of how this concept should be limited turns on how you limit functionality.

Kimball J. Corson:

Yes.

Sandra Day O’Connor:

But we don’t have that issue here, do we?

Kimball J. Corson:

That is correct.

Sandra Day O’Connor:

We just took this to decide whether secondary meaning must be required.

Kimball J. Corson:

That is correct.

Sandra Day O’Connor:

So maybe we ought to talk about that a little bit.

Kimball J. Corson:

That is right.

Secondary meaning is necessary for trade dresses that have been in use.

Because otherwise, the Court, if it renders a decision to the contrary, would be in the business of protecting whole business images, whole product images which are not recognized by the public, and serve no identifying function at all.

And that has very serious competitive implications.

Anthony M. Kennedy:

Is the line that you draw between trade dress and other kind of trademarks what is registerable?

Kimball J. Corson:

No, sir.

Anthony M. Kennedy:

Are we going to have problems in drawing lines between what is a trade dress and what is some other type of protected mark?

Kimball J. Corson:

No, you can avoid that problem.

Anthony M. Kennedy:

How?

Kimball J. Corson:

In regard to trade dress, it is conceivable that there are some types of trade dress which can be registered.

So the line doesn’t need to get drawn there.

But the line ought to be drawn, very hard I believe… if the Court wants the narrowest possible decision… in regard to whole business image trade dresses and whole product image trade dresses.

Because they have the most serious consequences for competition.

Anthony M. Kennedy:

So then we have a subset of trade dresses.

And so this becomes just a restaurant case?

Kimball J. Corson:

This would become a whole business image trade dress case.

John Paul Stevens:

May I ask you… in your judgment, could your opponent have obtained a registration, have registered this trade dress?

Kimball J. Corson:

Not in a million years, sir.

John Paul Stevens:

It would not be subject to registration?

Kimball J. Corson:

It would not be subject to registration.

An examiner would look at it.

He would say it’s inherently distinctive, it’s loaded with functional features, it’s loaded with a Mexican decor which describes the food type and origin of the recipes.

And it has anticompetitive consequences, and you can’t prove to me it has secondary meaning.

John Paul Stevens:

Now, are you saying that about this particular trade dress, or are you saying no trade dress can be registered?

Kimball J. Corson:

No, this particular trade dress, sir.

John Paul Stevens:

Even if it were… even if it’s inherently distinctive, it cannot be… it could not be registered, and even if it’s nonfunctional and nondescriptive.

Kimball J. Corson:

If it were registered… assume it was inherently distinctive, and it was registered, there could be a litigation, immediately thereafter, which would rebut the presumption if it could be proved it had no secondary meaning.

John Paul Stevens:

Let me ask you one other sort of basic question.

This action is entirely under section 43(a) of the Lanham Act, correct?

Kimball J. Corson:

Correct, sir.

John Paul Stevens:

There is no… they did not allege a common law cause of action under a Texas common law?

Kimball J. Corson:

I believe they did, but it folded in under the 43(a) section.

And the focus has been on 43(a) because the common law brings nothing additional to it.

John Paul Stevens:

It’s at least theoretically possible in some States that even though there’s no remedy under 43(a) they might nevertheless recover if the State chose to give protection.

Kimball J. Corson:

That is correct, and New York would be an example.

John Paul Stevens:

Yeah, does any State… any circuit other than the Second Circuit follow this rule of incipient, secondary meaning or whatever… what, you know, developing secondary meaning, or whatever you call it?

Kimball J. Corson:

No, sir, the New York district courts are grappling with it; the Second Circuit does not know what it thinks of it very clearly just yet.

The Eight Circuit has said no to it, the others haven’t come to grips with it.

John Paul Stevens:

And you think it’s good law or bad law?

Kimball J. Corson:

I think for a trade dress that on the face of it qualifies as being arbitrary and fanciful for a limited period, some protection… not in the form of lost profits from diverted customers, but simply some portion of development costs might be reasonable.

But in this case where we have a trade dress used for 11 years, no way.

Byron R. White:

You say if it’s just a matter of business image there can be no protection.

What is having a business image?

How does that… is there any… does that mean anything other than what the public looks at?

Kimball J. Corson:

Yes, sir… no, technically, trade dress ought to be limited to appearance.

Byron R. White:

If you said what is your image, I would think it’s what people think of you, or what… how people look at you.

Kimball J. Corson:

Justice White, that is precisely a problem with the jury instructions in this case.

They dealt with image when trade dress has historically dealt with appearance.

And what we should be talking about is not somebody’s reputation, and not some business’s reputation, but the appearance.

Byron R. White:

You say if this chain of restaurants has an image in the public mind, what is it?

It’s–

Kimball J. Corson:

That’s a problem.

In fact, it has very many different–

Byron R. White:

–I know, but why isn’t it secondary meaning?

Kimball J. Corson:

–It doesn’t have secondary meaning because there’s too many images.

Kimball J. Corson:

You can look at it from the front; you can look at it from the side; you can look at it from the interior.

And in the McMillan Second Circuit case, the Second Circuit there said there was no protectability.

Byron R. White:

The Circuit looks at it in totality.

Kimball J. Corson:

Say again, sir?

Byron R. White:

The Fifth Circuit doesn’t just look at one thing or the other.

I think it’s the totality.

Kimball J. Corson:

That’s right.

But the problem here is it was in regard to a little, tiny label… all of which could be taken in at a glance.

Here you have an entire restaurant, that to be viewed by a human being has to be viewed from many different perspectives.

And the Second Circuit says if you’ve got too many images, you don’t know which one is going to serve as an identifier, and the public’s not likely to pick up on any one.

And that’s the Parone v. McMillan case, where they tried to deal with Babe Ruth’s photograph.

It was a registered mark.

And there were other photographs that they wanted to preclude use of without their consent.

And the court said no.

There’s too many images here for any one to be recognized by the public as an identifier.

And we’re not going to afford it protection.

And they’ve got the same problem with respect to restaurants.

An example I’d like to turn to now is the one involving McDonald’s that I mentioned earlier.

Consider it 15 or 20 years ago that McDonald’s had decided that it wanted to protect its total business image as a trade dress.

And assume further that the Second Circuit law did not apply, and that the law of the land was that in Chevron.

At that time, McDonald’s had pretty much covered the United States.

It was in the process of filling in in geographical locations, but it hadn’t done it all.

Its competitors, on the other hand, Burger King, Jack-in-the-Box, and others, were coming after.

And they were coming into new territories at that juncture.

Now, if McDonald’s had a protectable business image trade dress in regard to its restaurant appearance… and let’s say it had gotten some for some of its products as well, whole product image trade dresses, and it had protection for those… can you imagine what it could have done for its competition?

Anthony M. Kennedy:

Well, you say they have that protection for 6 months, or 9 months, or a year.

Kimball J. Corson:

Oh, but this–

Anthony M. Kennedy:

I just don’t understand that.

Kimball J. Corson:

–They’re well past that, sir.

They’re well beyond it.

Kimball J. Corson:

I mean if we’re talking 15 or 20 years, we’re past that period of time.

That would be only for the start-up.

They’re there.

They would be able, in that instance, because others would be coming new to the marketplace, let’s say moving into Kansas, to be totally precluded.

Antonin Scalia:

It doesn’t seem… I think what Justice Kennedy’s saying is it doesn’t seem any more reasonable to protect it for 6 months than it does for a longer period.

Kimball J. Corson:

That’s a fair judgment.

Antonin Scalia:

I mean… yeah, but the problem you’re addressing, as Justice O’Connor pointed out is, it seems to me, a problem of functionality.

The reason it seemed bad is that you’re talking a functional characteristic.

Kimball J. Corson:

Also a descriptive–

Antonin Scalia:

But that’s out of this case.

Kimball J. Corson:

–No, and also descriptive characteristics.

Those are the essences of what’s required to not be in the appearance in order for it to be inherently distinct.

It can’t be descriptive.

It can’t be identifiable as something else.

And here it’s identifiable as a restaurant.

It can’t be identifiable–

John Paul Stevens:

Yes, but in your McDonald’s case, suppose they have the golden arch.

And the other people didn’t put up the golden arch.

And your opponent here has this stripe, and the bunch of plants out in front and some other things that are the substitute for the golden arch that make it distinctive.

So I don’t think you can… he isn’t just relying on the fact that they sell tacos, or whatever it is, instead of hamburgers.

Kimball J. Corson:

–Sir, McDonald’s did it differently.

John Paul Stevens:

I mean, the golden arch is a big part of their unique picture.

Kimball J. Corson:

Very much.

They did not try to protect their image as a business.

They said we’re going to go get some separate and distinct identifying feature.

And they used the golden arches… which were originally part of the sides of the restaurant.

And they pulled them out front, turned them into a big M, made them as large as zoning ordinances will allow.

And that is their identifying symbol.

They wanted some protection in regard to their identity.

They wanted recognition in regard to their identity.

Kimball J. Corson:

And that’s what they did.

They didn’t rely on their business/restaurant image, which is what Taco–

John Paul Stevens:

No, but here, under the findings of the jury, as I understand it, they, in effect, said that the stripes and the plants, and the way they have the carports and so on are the equivalent of a golden arch.

Kimball J. Corson:

–But they’re not.

John Paul Stevens:

Is that–

Kimball J. Corson:

The public–

John Paul Stevens:

–But then you’re arguing it’s not inherently distinctive.

Kimball J. Corson:

–The public doesn’t recognize the appearance of their restaurant.

The public recognizes the golden arches.

And it is public recognition which is essential to the protectability.

For a trade dress, there has to be public recognition before there’s anything to protect.

If the public doesn’t recognize it, it’s not protectable.

John Paul Stevens:

Different from a trademark.

Kimball J. Corson:

Because it doesn’t serve.

Antonin Scalia:

Why is it different from a trademark in that regard?

And why do you propose that we adopt some initial 6-month protectability for new trade dress, although we don’t do that for trademarks.

I mean, we protect them indefinitely, not just for 6 months.

Kimball J. Corson:

You have two questions.

Antonin Scalia:

Right.

Kimball J. Corson:

I’ll answer the last one first.

The last one, basically is that you can challenge a trademark as not having secondary meaning and knock it out of the water.

And in regard to the… the first one, could you repeat it, sir?

Antonin Scalia:

Well, I… you’re proposing a system for protecting trade dress to handle the incipient trade dress.

You say it should get some imperfect kind of protection for 6 months or some short period?

We don’t do that for trademarks.

Why should we read that difference into the Lanham Act?

It doesn’t treat trade dress any differently from the other two.

Kimball J. Corson:

That’s a fair criticism.

Antonin Scalia:

It is a fair criticism.

Kimball J. Corson:

Yes, sir.

Byron R. White:

Of course, we don’t have to decide whether there would be a 6 months when… all you want us to say it can’t be 11 years.

Kimball J. Corson:

That’s correct, sir.

That’s exactly right.

Thank you.

William H. Rehnquist:

Thank you, Mr. Corson.

Mr. Taranto, we’ll hear from you.

Richard G. Taranto:

Mr. Chief Justice, and may it please the Court:

In 1983, Taco Cabana created and adopted an inherently distinctive trade dress so that consumers would come to recognize it and associate it with Taco Cabana.

In 1985, before Taco Cabana had opened anywhere outside San Antonio, Two Pesos came along and deliberately took the trade dress and used it to identify its competing restaurants to its consumers.

The central, legal issue here is whether the Lanham Act allowed Two Pesos–

Byron R. White:

–your client?

Richard G. Taranto:

–Absolutely.

Byron R. White:

Where?

Richard G. Taranto:

In Houston, Dallas, El Paso, and cities all over the State… as Taco Cabana moved into exactly the same markets that Two Pesos opened in.

Two Pesos opened in Houston knowing even before they opened the restaurant that Taco Cabana was prepared to move into that market.

John Paul Stevens:

May I just ask one factual… you said 1983?

Richard G. Taranto:

That’s right.

The first Taco Cabana restaurant was 1978.

But that was before it became a chain at all.

It was a converted–

John Paul Stevens:

They used the same inherently distinctive design?

Richard G. Taranto:

–No, it was a converted Dairy Queen restaurant that was not pink, that didn’t have the garage doors, didn’t have the two-box structure.

It was only with the opening of the second restaurant in 1983… also in San Antonio… that this trade dress, which has now been consistently used on its couple of dozen restaurants, was adopted.

John Paul Stevens:

Is it critical to your case that there was competition?

Supposing they had opened up in California, Alaska, or someplace?

Could you have enjoined them from opening in remote, noncompetitive areas?

Richard G. Taranto:

The traditional rule, which has also been applied under 43(a) is that if a competitor innocently adopts a similar trademark or trade dress, in a remote area–

John Paul Stevens:

Suppose they travel through San Antonio and say boy, that’s a good-looking plan.

And they go to San Francisco and they open a carbon copy?

Richard G. Taranto:

–I think we could have enjoined them.

John Paul Stevens:

You think you could.

Richard G. Taranto:

Yes.

John Paul Stevens:

Is that essential to your case that you could?

Richard G. Taranto:

Not at all, because as the Fifth Circuit specifically said in this case, what we are talking about here is the zone of the natural expansion of Taco Cabana’s business.

So that we are not talking about geographically remote areas where an entirely separate, completely nonoverlapping consumer class would be shopping at that particular restaurant.

And therefore, there was no conceivable possibility of–

John Paul Stevens:

So the heart of your case does not turn on copying.

It turns on consumer understanding of the source.

Richard G. Taranto:

–That’s right, the intent of Two Pesos is not essential to a violation of 43(a).

The intent may well be, and traditionally has been an important element in deciding on the available relief.

And it is in that respect that the question whether we could get an injunction would, I think, turn on whether Two Pesos just happened upon a look-alike trade dress, or deliberately took the plans and made it as close as possible, with the exception of changing the color.

John Paul Stevens:

One other question, and then I’ll let… could you have registered your trade dress?

Richard G. Taranto:

I think we could.

It wasn’t done so.

There have been restaurant designs, complete architectural plans that have been registered as trademarks.

That has not been a traditional thing to do.

And I suspect one reason is that when you register something, you are registering something very precise.

And there are always dangers after that that you are frozen into exactly what has been registered, and can’t change anything… even at the margins beyond something unnoticeable and trivial.

I do think that this could have been registered, traditional… and as far as I know all of the courts that have talked about the issue have said that trade dress, which is not a statutory term, is in general… does, in general, qualify as a trademark.

And there is, therefore, no reason why it shouldn’t be subject to registration.

Sandra Day O’Connor:

Well, some courts have found that restaurants just can’t be covered.

Isn’t that right?

Richard G. Taranto:

I don’t think that’s… no, I don’t think that’s right, Justice O’Connor.

The Eighth Circuit Proofrock case specifically applied the functionality requirement and said that what was just the so-called down-home country style was part of what was being sold.

There was no suggestion there that a more distinctive restaurant design that did serve the purpose of a trademark… namely to identify the brand… that that couldn’t be a trademark.

The Ninth Circuit case in Fuddruckers simply found that that particular trade dress was not inherently distinctive.

I think, in fact, inappropriately so, since it did not have a jury finding on that question.

But even the Ninth Circuit didn’t say that restaurants, somehow, were incapable of having a distinctive trade dress.

And that would, I think, be really counter to common experience, from Howard Johnsons to the International House of Pancakes… there are a lot of restaurant trade dresses where the appearance, the image, in that sense, of appearance is, in fact, a very powerful identifier of the particular brand to consumers.

Antonin Scalia:

I know if I go into a Howard Johnsons it’s likely to look a certain way.

Antonin Scalia:

But I wouldn’t… if I walk into another restaurant that looks somewhat like it, I wouldn’t say boy, they have stolen this from Howard Johnsons.

I mean, that’s the difference.

Suppose I’m a restauranteur and I find that people eat a lot, and really like to eat in a room that’s entirely orange, all right?

[Laughter]

So I do that, and I set up a restaurant, and it turns out I’m right.

People really… it just makes food taste better.

Other restaurants begin to open.

It attracts people.

They buy the orange restaurant.

Richard G. Taranto:

Right, then–

Antonin Scalia:

That is a, somehow, a Lanham Act violation?

Richard G. Taranto:

–I think probably not.

Because what you would have there is a very powerful argument that that color scheme was functional, it served a function as part of the product being sold to the consumers.

That was an issue in this case, carefully instructed to the jury, and the jury specifically found that this look of Taco Cabana was not functional.

That issue was carefully reviewed by the Fifth Circuit, and it’s not before this Court.

What was protected in this case was not any right to monopolize a product, anything that competitors… competing Mexican restaurants need in order to compete with Taco Cabana, nor was anything protected that restricted other Mexican restaurants’ ability to communicate with their customers, to say we have a Mexican restaurant, this is what you can expect in this restaurant.

The functionality standard and the standard that the trade dress not be merely descriptive… the latter not even argued to the jury by Two Pesos in this case… were presented to the jury.

And there are jury findings on those precise questions.

Antonin Scalia:

Did they mean by functionality exactly what I mean, that is that people go to the restaurant just because they like that decor?

Richard G. Taranto:

The jury instruction on functionality is, in fact, a fairly length one, and allowed Two Pesos to argue that what was… what Taco Cabana was claiming protection for served any significant function as part of what it was selling to the public, that competitors and other Mexican restaurants needed, or reasonably needed this feature… whatever it was… or this combination in order to offer a substitute product.

And I think that that’s exactly what you’re talking about when you talk about ambiance.

If another restaurant needs a particular design in order to offer the same ambiance, and will lose customers because customers think there’s… I want a certain atmosphere tonight, there’s only one place I can get it, it’s in the orange room, nobody has an orange room… then there’s a strong argument for functionality.

That’s nothing like what we’re talking about here.

There–

Byron R. White:

Well, why would your client spend all this money on a so-called trade dress if people didn’t really… if it really didn’t think people… it was going to attract people and it would mean that they would come there rather than someplace else?

Richard G. Taranto:

–Well, because the reason a trade dress, like a trademark, is adopted is not to attract people, but to identify the business to the customer, to consumers.

So that when people drive by and see this image they say I know what I get there.

I’ve heard about it.

I’ve been there before.

That’s where I can go to get this kind of Mexican–

William H. Rehnquist:

Well, isn’t that secondary meaning, though, in a sense if you say I’ve been there before, and–

Richard G. Taranto:

–Secondary meaning… we have to, I think, be careful about this… secondary meaning is a concept of widespread recognition throughout a market, here throughout Texas.

Any… with respect to any particular customer who has been to the restaurant, that image, if it is distinctive, inherently distinctive, will register.

But as we have talked about earlier, a new product, one by one, as customers come to notice it, will have… will make an impression.

But for a new product you can’t possibly achieve market-wide recognition.

That’s what secondary meaning is.

That the entire market in significant numbers, when it sees this image, has some association of that image with the particular restaurant.

William H. Rehnquist:

–It’s a very esoteric distinction.

Richard G. Taranto:

Well, the statute, in section 2 of the Lanham Act makes a very… makes exactly this distinction, even though it doesn’t use these terms.

The statute says that you can register, you can protect any mark, device, symbol, combination of devices, by which your product may be distinguished from other products.

That is what inherent distinctiveness is.

Anything that–

John Paul Stevens:

Well, that goes to whether you can register or not.

Richard G. Taranto:

–That’s right.

John Paul Stevens:

Those words aren’t in section 43(a).

Richard G. Taranto:

No, that’s right.

Section 43(a)–

John Paul Stevens:

If your whole… the whole statutory issue, as I understand it, is whether your opponent has provided the public with a false designation of origin.

Richard G. Taranto:

–Or a false description or a false representation.

Byron R. White:

Which do you rely on mostly in 43?

What particular words do you think support your case?

Richard G. Taranto:

Well, in fact, I think all of them do.

I’m not… I wouldn’t insist on calling it a false designation of origin because in its original meaning, that phrase may well–

Byron R. White:

And you wouldn’t insist on saying it tends falsely to describe or represent the same?

Richard G. Taranto:

–Well, I think it does that.

It falsely represents that Two Pesos is in some way affiliated with Taco Cabana; it falsely represents when Two… when Taco Cabana came into Houston, a few months after Two Pesos opened, that Taco Cabana was the copycat rather than the other way around.

Byron R. White:

It falsely represents… representing it to somebody.

And I take it you would be talking about some section of the public.

It may not be market-wide.

But to some people, it would be a false representation.

Richard G. Taranto:

That’s exactly right.

There will be some consumers in the markets where Taco Cabana and Two Pesos are both selling their services who will be confused about whether the two restaurants are affiliated with one another.

Byron R. White:

I’m not sure, then, why you’re so terribly harmed by our adopting the requirement that a secondary meaning is required.

Richard G. Taranto:

This case, I think, exactly illustrates why that doesn’t make any sense.

In 1985 when Two Pesos opened its restaurant, Taco Cabana couldn’t have achieved State-wide recognition.

It had five restaurants in San Antonio.

People in Houston, and Dallas, and El Paso and other places, by and large, never would have heard of Taco Cabana.

What… and then when Taco Cabana did come into Houston, and El Paso and other cities, it’s hard to see… and this is exactly what Two Pesos said to the jury… it’s hard to see how people would have recognized this trade dress as Taco Cabana’s… Two Pesos already had it.

So it was the lack of exposure, of State-wide exposure, and Two Pesos’ preemptive copying of the trade dress that prevented its lack… that prevented it from acquiring State-wide, widespread recognition.

Anthony M. Kennedy:

But isn’t that… isn’t that some evidence, or grounds for an inference that the reason the competitor adopted the trade dress was because it sold… not because it was attempting to confuse?

Richard G. Taranto:

No, some evidence… yes, I think it is probably some evidence.

And that went to the issue of functionality that was presented to the jury.

Is it sufficient basis for an inference that Taco Cabana’s trade dress couldn’t be recognized as the symbol of its origin?

I think inconceivably… this is not a case where you have market-wide, long, unimpaired exposure of a borderline distinctive trade dress/trademark and people still don’t recognize it.

We had less than 3 years of very narrow exposure in one city in Texas before–

John Paul Stevens:

Yes, but couldn’t you have registered during those 3 years?

Richard G. Taranto:

–As I say, I–

John Paul Stevens:

And then have gotten your protection?

Richard G. Taranto:

–As I say, I think we could have.

John Paul Stevens:

Isn’t that perhaps the mistake that was made, that you should have registered?

Richard G. Taranto:

I… well, I don’t think it was a mistake.

As far as I’m aware, as Congress specifically provided when it amended the 1988… amended the statute in 1988… all of the courts, for 25 years now, uniformly recognized that there is Federal protection under the Lanham Act for unregistered marks.

Even the Second Circuit doesn’t apply its secondary meaning rule to verbal marks.

And there’s no reason for a distinction between verbal marks and nonverbal marks if what we are talking about is the basic requirement of section 43(a), that there’s been a deceptive and misleading representation to consumers, likely to confuse consumers, and likely to lead to harm… harm of the–

Byron R. White:

Is there some requirement in trademark law that the mark acquire a secondary meaning?

Richard G. Taranto:

–Let me try to be careful about this.

Byron R. White:

If I… say… may I attack a registered mark on the ground that it does not have a secondary meaning?

Richard G. Taranto:

Not if it’s inherently distinctive.

The Lanham Act at section 2 makes absolutely clear that inherent distinctiveness or secondary meaning… one or the other is required… but not both.

You can attack a trademark, even a registered trademark, as lacking secondary meaning only if it is descriptive, and therefore not inherently distinctive.

Richard G. Taranto:

And the category of descriptiveness, as this Court said long ago in the Beckwith case is a very narrow category.

Byron R. White:

What is the… what does inherently distinctive mean?

Do you agree then in this case that… that, or in a case like this the trade dress must be inherently distinctive?

Richard G. Taranto:

Yes, absolutely.

And all that means is, I think, something very common sensical.

It must be noticeable by consumers, and able… by virtue of being different from the way other businesses sell themselves to be–

Byron R. White:

But to win under this–

Richard G. Taranto:

–recognized.

Byron R. White:

–statute, this section, you’ve got to prove that it’s a false representation to people.

Richard G. Taranto:

That’s right.

And I think when a competitor comes along and takes a confusing… uses a confusingly similar brand identifier, whether it’s a trade dress or a trademark, what that does is convey a deceptive and misleading… there’s a false message of affiliation.

Byron R. White:

And it also makes it impossible for you to acquire a secondary meaning.

Richard G. Taranto:

That’s right.

In a way, we–

Byron R. White:

So I take it you don’t challenge… wasn’t there a finding that you had… your client had never acquired a secondary meaning in this–

Richard G. Taranto:

–Throughout the State of Texas, that’s exactly right.

But that finding, as I said, really has no bearing on whether it was capable of acquiring that secondary meaning had it been around for a long time and not been preempted by Two Pesos’s confusingly similar trade dress.

So those two–

David H. Souter:

–Well, that finding, then, was that it simply hadn’t acquired the meaning throughout the State, not that it hadn’t acquired the meaning anywhere in the State.

Richard G. Taranto:

–That’s exactly right.

David H. Souter:

Yeah.

Richard G. Taranto:

I think if the question had been put to the jury, has Taco Cabana’s trade dress acquired secondary meaning in San Antonio, I suspect we would have gotten a quite different answer.

But the question was put on the State-wide market basis.

And Two Pesos said to the jury, you can’t possibly find Taco Cabana is recognized State-wide.

They haven’t been anywhere except San Antonio.

And we got to the other cities first.

John Paul Stevens:

Yes, but the way we granted certiorari, maybe you’re entirely right.

But we sort of assumed that the way the question arises, there’s no secondary meaning, but there is inherent distinctiveness.

He doesn’t like the inherent distinctiveness part; you don’t like the secondary meaning.

But the legal question we sort of plan to address here is an assumption there is no secondary meaning at all, that seems to me.

John Paul Stevens:

Because you haven’t proved secondary… I mean, you may be right.

But the record doesn’t establish that there wasn’t secondary meaning even for a small neighborhood in San Antonio.

Richard G. Taranto:

That’s right.

Sandra Day O’Connor:

Well, as it comes to us, I assume that we take the case on the assumption that there is an inherently distinctive trade dress, that it is nonfunctional, and there is no secondary meaning.

Now, do we assume all those things to be a given?

Richard G. Taranto:

Yes, I think that is the legal question that this Court took to decide.

And what inherent distinctiveness… what the inherent distinctiveness finding establishes is that the trade dress can, and does, serve the function of designating the origin of the goods as a branded identifier.

It plainly can do that.

That’s why Two Pesos, when it took it, wrote into its franchise agreement that this trade dress, its look-alike trade dress was a distinctive and identifying trade dress.

Now the reason that’s enough, and you don’t need widespread recognition throughout whatever market you’re talking about… be it State-wide or elsewhere… simply follows from the reasons that protection is offered in the first place.

Protection of a trade dress or a trademark of any brand identifier serves two important functions: it protects consumers’ ability to distinguish goods so that they can select the ones they like and the ones they don’t like; and because it protects consumers’ ability to distinguish goods, it protects businesses’ ability to identify themselves to the public and to maintain, control, and build their own reputations based on their own quality without consumers being confused.

By protecting brand identifiers, you therefore serve the goal of competition on the merits among clearly distinguished brands.

What happens when somebody like… a competitor like Two Pesos comes along and copies, or uses a confusingly similar dress is that you replace competition in the merits by competition by deception.

You send a false message of affiliation to consumers.

And the harms that the Lanham Act… that any kind of protection of brand identifiers are designed to prevent… start from the beginning.

Consumers, one by one, as they come to know Taco Cabana, will be confused, and inhibited in their ability to know that there are two genuine competitors… two unrelated restaurants.

John Paul Stevens:

May I ask you kind of a basic question of approach to the case?

This statute was enacted when, 194–

Richard G. Taranto:

6.

John Paul Stevens:

–1946… and it’s kind of a common law statute.

I mean, it kind of picked up the common law, and the common law has developed since.

And it sort of affects how we address statutes.

There’s some disagreement within the Court on questions of this kind.

Do you think that the law in 1946 had developed to the point where you would have prevailed, or do you rely largely on common law… what I might call common law developments of this statute subsequently?

Richard G. Taranto:

I think… let me try to answer that this way.

The common law categories in 1946 were sufficiently vague and amorphous that we would have had an argument that on these facts, the common law should say that inherent distinctiveness was enough.

That is simply because the common law recognized two somewhat distinct causes of action… a so-called technical trademark cause of action, and the broader, kind of residual, unfair competition cause of action.

As it happens, the technical trademark cause of action was more or less defined by the presence of inherent distinctiveness.

It hadn’t come to be applied to something that we’re calling a trade dress here.

But we would have had an argument that it could have been.

Richard G. Taranto:

And what the Fifth Circuit said in the Chevron case was there’s no reason why we shouldn’t.

Anything including what we call a trade dress that serves to identify the brand, rather than to describe the product, serves the same functions and should be protected on the same standard.

Now secondary meaning, in the end, has nothing to do with what we’re talking about here.

The harm to consumers’ ability to choose between competing brands is present one by one as consumers come to be aware of Taco Cabana.

The harm to Taco Cabana’s ability to identify itself to consumers, and to control its reputation, unimpaired by confusion, as a result of Two Pesos was there from the beginning.

And if, from a systemic point of view, you had a rule that said secondary meaning, market-wide, widespread recognition was required, what you would have is a perilous situation for any new product.

By definition, a new product cannot have market-wide recognition immediately.

If, in the interim, a competitor could… like Two Pesos… could come along and simply take the trade dress, the goodwill that the new company was trying to build up, customer by customer, would be immediately threatened.

And what you would have is a serious inhibition on the creation of new brand identifiers, possibly an inhibition on the creation of new business, and certainly a depravation of the informational benefits to consumers that having more clearly distinguished brand identifiers provide to consumers.

Byron R. White:

Suppose all you had… suppose there wasn’t any distinctive trade dress, but you had distinctive food in the sense that it was awfully good Mexican food.

And people got to know that the taco chain had good food.

And the… your competitor came along and copied every recipe.

Richard G. Taranto:

Well, aside from trade secret claims, the Lanham Act would say nothing whatsoever about that.

Byron R. White:

So I–

Richard G. Taranto:

The product is unprotected.

Byron R. White:

–So they could steal… they could steal all your recipes and copy your recipes?

Richard G. Taranto:

Well, as I–

Byron R. White:

And you would have no protection for it?

Richard G. Taranto:

–No protection under the Lanham Act.

Yes, I think we would, as we did in this case, have a common law trade secret claim, and possibly some other claims.

Byron R. White:

Oh, I know, but… you’re not talking about a trade secret.

They… they just happened to have hired your chef.

Richard G. Taranto:

That’s right.

Byron R. White:

With whom you didn’t have a contract not to compete.

Richard G. Taranto:

As I say, the Lanham Act does not restrict competitor’s right to sell, essentially, the same product… assuming it gets that product.

Byron R. White:

But that is if you sell it… if you sell it in the context of a… of a trade dress that is uniquely–

Richard G. Taranto:

Well, what it protects is the trade dress.

Two Pesos can change the trade dress so that it doesn’t look like ours, and consumers are not confused, and try to sell as close a product as possible in order to compete for the same consumers.

What they can’t do is say to consumers through their image, through their trade dress, we are probably affiliated with those other guys.

And there was plenty of evidence here of actual confusion among consumers.

William H. Rehnquist:

–What if Taco Cabana has a mariachi band?

Can Two Pesos put in an identical mariachi band without infringing?

Richard G. Taranto:

I think the answer to that is yes.

But the place in the analysis that that would come in would be in the… would be with respect to functionality… presumably Two Pesos would say, and have a pretty good claim, that when you put a band in a restaurant you are now selling food and entertainment.

And that’s the product.

And we have no right to monopolize the product.

All we have a right to do is to insist that the way we identify ourselves to the consuming public, others cannot confusingly copy.

David H. Souter:

But if they had the band in front of the door, and they all wore orange uniforms and orange hats, your answer would be different?

Richard G. Taranto:

It might well be different.

It all depends whether, again, the look was, in any way, needed by competitors in order to sell the same product… whether it was functional, in that sense.

David H. Souter:

It also assumes that these bands don’t always wear orange.

And I assume that’s true.

Richard G. Taranto:

I assume that’s true, too.

John Paul Stevens:

Earlier I asked you about registration.

You pointed out you’d be frozen to a particular concept.

Over a period of years, can the concept vary from time to time in minor degrees… like you change the uniform on the band and you change the plants in front and move them around?

And are all of the different patterns that you’ve used throughout the period inherently distinctive and entitled to protection?

Richard G. Taranto:

Well, what–

John Paul Stevens:

Or do they have to be just copying the one you’re using at the particular time?

Richard G. Taranto:

–What we have to show, in order to become entitled to protection, is that they came confusingly close to an image that the consuming public can and does, in small or large numbers, identify itself… our restaurants with.

We have had minor variations, depending on certain zoning restrictions since the second restaurant.

A restaurant in San Diego used white instead of pink.

John Paul Stevens:

But you then… you do take the position you must put on some consumer testimony to win your case?

You couldn’t just let the jury look at the two designs and say they’re exactly alike?

Richard G. Taranto:

You could, but it would be risky.

It seems to me what you do in order to avoid that risk is to put on the testimony of restaurant experts, as we did; Taco Cabana employees who have received repeated complaints from people who had gone to Two Pesos and called up to say something at your restaurant up in Houston, or in Dallas, I liked or didn’t like… whatever it was.

But they were clearly associating the two restaurants.

It seems to me there are a lot of different kinds of evidence to establish that the trade dress is capable of being identified with Taco Cabana if only it wasn’t copied, and therefore subject to confusion.

If the Court has no further questions, I respectfully ask that the judgment be affirmed.

William H. Rehnquist:

Thank you, thank you, Mr. Taranto.

William H. Rehnquist:

Mr. Corson, you have 3 minutes remaining.

Could I ask if you agree that a trademark to be challenged after it’s registered, yet you have to prove that it’s… that there’s… has neither secondary meaning or is not… and is not inherently distinctive?

Kimball J. Corson:

Sir, if it’s inherently distinctive, it may be challenged on the ground that it’s functional or descriptive and contains those elements.

If it is not inherently distinctive, but registered, it may be challenged on the grounds that it has not secondary meaning.

Byron R. White:

Well, here’s… did you answer my question, really?

I didn’t think you did.

Kimball J. Corson:

I’ll try again.

[Laughter]

Byron R. White:

Well, here’s a mark; here’s a mark; and somebody wants to challenge it.

And he proves that it doesn’t have any secondary meaning.

Now, that isn’t enough, is it?

Kimball J. Corson:

That should be enough, yes.

Byron R. White:

Well, I thought… I thought… I thought he also had to prove that it didn’t… that it wasn’t inherently distinctive.

Kimball J. Corson:

No, if you prove it has second… if you prove it has no secondary meaning, what you have proved is that the public doesn’t recognize this as a mark.

Byron R. White:

Then you disagree with your colleague on the other side.

Kimball J. Corson:

I do, I do.

I think there has to be recognition.

There’s a fundamental disagreement–

Anthony M. Kennedy:

And you give that answer with respect to trade dress or all trademarks?

Kimball J. Corson:

–Certainly as to trade dress; and with respect to trademarks I can go that far, also, sir.

I think–

Anthony M. Kennedy:

I didn’t hear the answer–

Kimball J. Corson:

–I think I’d go that far, also.

You’ve got nothing to protect.

There’s a fundamental disagreement here.

He’s arguing that all you need to get to is to show that there is some possibility here that the trade dress has become confusingly close.

That’s not the issue.

The primary issue is you must show that you have a protectable trade dress, and you can’t do that if it isn’t recognized, because the language of the act under which this case was brought is false designation of origin.

And if the original origin isn’t recognized, then there can be no misstatement about it.

If none of you know about something and I make a statement to you about it, it can’t be judged true or false.

Kimball J. Corson:

That’s the point.

This protects against false designation of origin.

And if the–

Byron R. White:

–Well, what if it’s a… there’s a false representation to maybe 100 people, but no more?

It isn’t secondary meaning, but it’s 100 people.

Kimball J. Corson:

–I think… no, it has to be recognized… recognition generally in the marketplace.

It’s not limited just to a few people who have happened to patronize the unit.

Byron R. White:

So here… but there is nothing in 43 that even mentions secondary meaning.

All it says is it has to be a false representation.

It doesn’t say how many, State-wide, or for a block–

Kimball J. Corson:

Two points… it’s judicial gloss, in part; and also, if you look to section 2 of the act, they clearly preclude the registration of a mark without proof of secondary meaning unless it’s–

Byron R. White:

–Well, this isn’t a mark.

That doesn’t have to be a mark.

Kimball J. Corson:

–That’s true.

Byron R. White:

This is a trade dress and that says… I gather you agree a trade dress can be protected under 43?

Kimball J. Corson:

Yes.

But it cannot be an inherent… it cannot be a descriptive mark or a functional mark, or it’s not entitled to registration under the act because it doesn’t have secondary meaning in those instances.

William H. Rehnquist:

Thank you, Mr. Corson.

The case is submitted.