Trade Dress and the Checklist Trap for Lawyers

Los Angeles Daily Journal

September 12, 2025

Lists are beautiful things. Most people need them, especially for shopping. One purpose of lists is to keep track of things. Another purpose is analytical: to make elements pertinent to certain concepts or principles. This function requires careful thought.

Lists are part of the rhythm of American jurisprudence. The United States Supreme Court determines principles of justice. Then various courts of appeals analyze these principles, breaking them down into constituent elements. This is an important process that requires rigorous analysis. The division of principles into elements, or lists, guides attorneys and other courts about how to apply these principles and what they mean. However, lists can cause lawyers and judges to lose the forest for the trees.

One subject with many lists is trade dress. Trade dress is part of trademarks. Trademarks communicate to consumers the source of a product or service and a level of quality. Trademarks are typically words, designs, logos, colors, or a combination. Trade dress is typically a combination of visual features on a product or packaging that makes the same communication (about source and quality) to consumers. “Trade dress is the non-functional physical detail and design of a product or its packaging, which identifies the product’s source and distinguishes it from the products of others.” Ninth Circuit Manual of Model Civil Jury Instructions, instruction 15.3

Trade dress cannot be merely decorative. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1262 (9th Cir. 2001). Nor can trade dress be functional. However, some parts of trade dress can be functional, provided the entire trade dress is not. Blumenthal v. Herman Miller, 963 F3d 859, 866 (9th Cir. 2020). To determine if trade dress is functional, there is a list: whether the design yields a utilitarian advantage, whether the trade dress helps the product perform better; whether alternative designs are available; whether advertising touts the utilitarian advantages of the design and whether the particular design results from a comparatively simple or inexpensive method of manufacture. Id at 865. If the trade dress passes this list, there is yet another step: whether protection of the feature as trade dress would impose a significant non reputation related competitive disadvantage. Automotive Gold v. Volkswagen of America, 457 F3d 1062, 1072 (9th Cir. 2006).

These tests may prevent the plaintiff from having trade dress rights. There is even a new category of functionality that applies to the defendant’s use of its mark: expressive functionality. Hara v. Netflix 146 F. 4th 872 (9th Cir. 2025). If this functionality applies, a defendant may not be liable. Trade dress may be registered with the Patent and Trademark Office. If it is registered, it is presumed to be nonfunctional. Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603, 605 (9th Cir. 2003).

Whether trade dress is on the packaging or on the product determines whether there is another list to pass. If it is on the packaging, it is unnecessary to prove secondary meaning. But if it is on the product, and not registered with the Patent and Trademark Office, it is necessary for the plaintiff to prove secondary meaning. To have “secondary meaning,” the trade dress must be recognized by consumers as coming from one source. This can be proved by a consumer survey or by using a list which includes sales, marketing expenditures, the kind of marketing, market share, length of use, exclusivity of use, consumer confusion, media coverage, public display and whether there has been intentional copying.

If trade dress is registered with the Patent and Trademark Office, there is a rebuttable presumption that it has secondary meaning. Quiksilver, Inc. v. Kymsta Corp., 466 F3d 749, 760 (9th Cir. 2006).

Most trademark cases are disputes between the parties about which has superior right to use a particular mark. Secondary meaning cases are different. They are focused on the plaintiff’s position in the market: the rights, not just of the other party, but against all other market participants. In the typical trade dress case, the focus is on plaintiff proving its market reputation for its trade dress. It is the plaintiff’s burden to show that there is a market reputation for its trade dress. But there is a flip side: if another business has used the same or similar trade dress, that may defeat plaintiff’s claim.

A third-party user of the trade dress will not intervene in the case (or even know about it). But the rights of that third party may prevent the plaintiff from proving it has achieved secondary meaning. For example, if another company has substantial use of the trade dress as shown by advertising or media coverage or market share. The defendant can try to defeat the trade dress claim by offering evidence of use by a third party market participant.

When a defendant attacks a trade dress claim based on secondary meaning, the defendant is not limited to the list of criteria for proving secondary meaning, such as market share and length of use. It may use other tools which would defeat a trademark claim. One of those tools is to show that another market participant, with the same product, used the trade dress before the plaintiff. When evidence of prior use is offered by a defendant to defeat a trade dress claim, the immediate reaction of the plaintiff will be to argue that first use of trade dress by another is not one of the required elements (the list) for proving secondary meaning. This is correct. That list is focused only on points related to plaintiff’s proof of its trade dress – plaintiff’s sales, marketing, etc. This argument has convinced judges. Naturally, they rely on the secondary meaning elements established by a court of appeals. First use is not on the list.

But rejection of a defendant’s offer of first use by another is a mistake. Trade dress lists take lawyers and judges away from the roots of trade dress: it is a type of trademark protection and is subject to the general rules that apply to trademarks. Most federal trade dress claims are brought under section 43(a) of the Lanham Act (15 U.S.C. Section 1125(a)). In a product trade dress case, the Supreme Court reminded jurists and practitioners that the core trademark principles apply to trade dress: "the general principles qualifying a mark for registration under section 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under section 43(a)." Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 US 205, 210 (2000, cleaned). The Ninth Circuit identified one of those principles. "It is axiomatic in trademark law that the standard test of ownership is priority of use.” Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996), cert. denied, 521 U.S. 1103 (1997).

The Ninth Circuit has repeatedly recognized that first use by another may be a key factor in defeating a secondary meaning claim. In Secular Organizations for Sobriety, Inc. v. Ullrich, 213 F.3d 1125 (9th Cir. 2000), the plaintiff claimed superior rights to descriptive terms, including “SOS” for alcohol and drug dependency meetings. Since it was a descriptive term, secondary meaning was required. The court held that “[i]n order for SOS Inc. to prevail on its trademark claim, it must demonstrate that it was the first user of the disputed marks . . .” Id at 1130. While this was not the only factor, exclusivity and length of use were also important, it was a significant factor.

The prior user in Secular Organizations was the other party. This was not the situation in Carter-Wallace, Inc. v. Procter & Gamble Company, 434 F. 2d 794 (9th Cir. 1970). The case involved another descriptive mark (“sure” for deodorants) for which secondary meaning was required to establish trademark rights. A key factor in rejecting secondary meaning was market uses by seven non-parties. Id at 802 - 803. The opinion pointed out that four of those first uses predated that of plaintiff. Id at 802. Secondary meaning was not established.

Lawyers and judges should not allow lists to lull them into forgetting underlying principles. Elements not on the list may be as important as elements on the list.

Antonio R. Sarabia II practices law in Torrance with a focus on restitution, contracts, trademarks, copyrights and the apparel business. He also testifies as an expert witness.