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

Why is the case important?

Taco Cabana, Inc. (Plaintiff) sought to assert trademark protection for its trade dress, despite such dress not having acquired a secondary meaning.

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.


Is trade dress that is inherently distinctive subject to trademark protection even if it has not acquired a secondary meaning?


(White, J.) Yes. Trade dress that is inherently distinctive may be subject to trademark protection even if it has not acquired a secondary meaning. A mark may be trademarked if it is distinctive, per the Lanham Act. A mark is distinct if it is either (1) inherently distinctive, or (2) has acquired a secondary meaning. Secondary meaning refers to that situation where an aspect of a product that is not necessarily distinctive on its own has, either through successful marketing or some other mechanism, become associated in the public mind with that product. As a consequence of these definitions, a mark cannot be both inherently distinctive and have secondary meaning at the same time. From the above it follows that, to the extent that trade dress is inherently distinctive, it is not required to have secondary meaning to be subject to trademark law. In this case, the jury found Taco Cabana’s (Plaintiff) trade dress to be inherently distinctive, and this was sufficient to bring it within the Lanham Act. Affirmed.


The Court held that the appellate court correctly rejected the argument raised by petitioner, Two Pesos, Inc., that a finding of no secondary meaning contradicted a finding of inherent distinctiveness. The Court held that proof of secondary meaning was not required to prevail on a claim, where the trade dress at issue was inherently distinctive. Specifically, there was no persuasive reason to apply to trade dress a general requirement of secondary meaning which would be at odds with the principles generally applicable to infringement suits under 15 U.S.C.S. § 1125(a) . Moreover, the Court posited that adding a secondary meaning requirement could have anticompetitive effects, creating particular burdens on the startup of small companies.

  • Case Brief: 1992
  • Petitioner: Two Pesos, Inc.
  • Respondent: Taco Cabana, Inc.
  • Decided by: Rehnquist Court

Citation: 505 US 763 (1992)
Argued: Apr 21, 1992
Decided: Jun 26, 1992
Granted Jan 27, 1992