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

PETITIONER: Two Pesos, Inc.
RESPONDENT: Taco Cabana, Inc.
LOCATION: Two Pesos' first restaurant

DOCKET NO.: 91-971
DECIDED BY: Rehnquist Court (1991-1993)
LOWER COURT: United States Court of Appeals for the Fifth Circuit

CITATION: 505 US 763 (1992)
ARGUED: Apr 21, 1992
DECIDED: Jun 26, 1992
GRANTED: Jan 27, 1992

ADVOCATES:
Kimball J. Corson - on behalf of the Petitioner
Richard G. Taranto - on behalf of the Respondent

Facts of the case

Taco Cabana, a fast food Mexican restaurant chain in San Antonio, Texas, had a specifically-designed look or “trade dress”. Two Pesos, another similar restaurant chain based in Houston, Texas, opened a few years later with a remarkably similar look. Taco Cabana sued Two Pesos for trademark infringement under the Lanham Act. Two Pesos allegedly copied Taco Cabana’s distinctive trade dress. The judge instructed the jury that trade dress must be inherently distinctive of have acquired a secondary meaning. The jury found that Taco Cabana’s trade dress was inherently distinctive, but had not acquired a secondary meaning. The U.S. Court of Appeals for the Fifth Circuit affirmed. The court rejected Two Pesos argument that a finding of no secondary meaning necessarily means the trade dress is not inherently distinctive and is not protected under the Lanham Act.

Question

Is proof of a secondary meaning required to show that trade dress is inherently distinctive and protected by the Lanham Act?

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

Audio Transcription for Oral Argument - April 21, 1992 in Two Pesos, Inc. v. Taco Cabana, Inc.

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

Byron R. White:

The second case is 91-971 Two Pesos against Taco Cabana International.

The judgment of the Fifth Circuit in this case is affirmed.

Justice Scalia has filed a concurring opinion.

Justices Stevens and Thomas have filed opinions concurring in the judgment.