Duraco Prod. Inc. v. Joy Plastic Ent.

• Court: Court of Appeals for the Third Circuit
• Decided: November 15, 1994
• Docket: 94-3323
• Status: Unknown

Opinion

Opinions of the United 1994 Decisions States Court of Appeals for the Third Circuit

11-15-1994

Duraco Prod. Inc. v. Joy Plastic Ent. Precedential or Non-Precedential:

Docket 94-3323

Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_1994

Recommended Citation "Duraco Prod. Inc. v. Joy Plastic Ent." (1994). 1994 Decisions. Paper 190. http://digitalcommons.law.villanova.edu/thirdcircuit_1994/190

This decision is brought to you for free and open access by the Opinions of the United States Court of Appeals for the Third Circuit at Villanova University School of Law Digital Repository. It has been accepted for inclusion in 1994 Decisions by an authorized administrator of Villanova University School of Law Digital Repository. For more information, please contact Benjamin.Carlson@law.villanova.edu. UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT

_____________________

No. 93-3323 _____________________

DURACO PRODUCTS, INC.,

Appellant v.

JOY PLASTIC ENTERPRISES, LTD., d/b/a BACKYARD PRODUCTS; TRAVIS PRODUCTS, INC.

_________________________________________________________

On Appeal From the United States Court of Appeals for the Western District of Pennsylvania (D.C. Civil No. 92-00270E) _________________________________________________________

Argued: February 17, 1994

Before: BECKER, HUTCHINSON, and COWEN, Circuit Judges

(Filed November 15, 1994)

JAMES R. KYPER (Argued) MARK R. LESLIE Kirkpatrick & Lockhart 1500 Oliver Building Pittsburgh, PA 15222 Attorneys for Appellant

CRAIG A. MARKHAM (Argued) HARRY D. MARTIN Elderkin, Martin, Kelly, Messina & Zamboldi 150 East Eighth Street Box 1819 Erie, PA 16507 Attorneys for Travis Products, Inc., Appellee

JOHN B. FESSLER (Argued) Marsh, Spaeder, Baur, Spaeder & Schaaf 300 State Street, Suite 300 Erie, PA 16507

W. PATRICK DELANEY MacDonald, Illig, Jones & Britton 100 State Street, Suite 700 Erie, PA 16507

Attorneys for Joy Plastic Enterprises, Ltd., d/b/a Backyard Products, Appellee

______________________________________

OPINION OF THE COURT ______________________________________

BECKER, Circuit Judge.

This is a trade dress infringement action brought under

section 43(a) of the Lanham Act, 15 U.S.C.A. § 1215(a) (Supp.

1994). Plaintiff Duraco Products, Inc. ("Duraco") appeals from

an order of the district court denying its motion for a

preliminary injunction against defendants Joy Plastic

Enterprises, Ltd. ("Joy"), d/b/a Backyard Products, and Travis

Products, Inc. ("Travis"). Duraco, a manufacturer of plastic

planters for use in gardens, claims that Joy has infringed the

trade dress of Duraco's most popular product by marketing a

planter with a similar shape and texture, and that Travis is

liable for manufacturing the molds for Joy's planter. Because

Duraco's claim is predicated upon infringement of the trade dress

of the product itself, the appeal requires us to confront a

difficult area of trade dress law -- that dealing with the

circumstances under which product configurations, in contrast to product packaging, can, in Lanham Act parlance, constitute

inherently distinctive trade dress thus serving as a designator

of origin that will protect the plaintiff's product design

features against copying.

We conclude that traditional trade dress doctrine does

not "fit" a product configuration case because unlike product

packaging, a product configuration differs fundamentally from a

product's trademark, insofar as it is not a symbol according to

which one can relate the signifier (the trademark, or perhaps the

packaging) to the signified (the product). In other words, the

very basis for the trademark taxonomy -- the descriptive

relationship between the mark and the product, along with the

degree to which the mark describes the product -- is unsuited for

application to the product itself.

However, we also think that there is a proper set of

circumstances for treating a product configuration as inherently

distinctive. These circumstances are characterized by a high

probability that a product configuration serves a virtually

exclusively identifying function for consumers -- where the

concerns over "theft" of an identifying feature or combination or

arrangement of features and the cost to an enterprise of gaining

and proving secondary meaning outweigh concerns over inhibiting

competition, and where consumers are especially likely to

perceive a connection between the product's configuration and its

source. We conclude that, to be inherently distinctive, a

product feature or a combination or arrangement of features, i.e,

a product configuration, for which Lanham Act protection is sought must be (i) unusual and memorable; (ii) conceptually

separable from the product; and (iii) likely to serve primarily

as a designator of origin of the product.

The district court applied a different standard, and in

the ordinary course we might remand for reconsideration under the

proper test. However, our examination of the record persuades us

that, under the standard we adopt, no factfinder could reasonably

conclude that Duraco has demonstrated a likelihood of success on

the merits by meeting the threshold distinctiveness requirement

of section 43(a) either through a showing of inherent

distinctiveness or, failing that, by establishing secondary

meaning. We will therefore affirm the district court's order.

However, the district court will have to conduct a final hearing

at which it will apply the newly announced standard. In view of

our disposition, we need not reach the other grounds that the

district court gave for its denial of a preliminary injunction,

i.e., non-functionality of the trade dress and failure to show a

likelihood of confusion. I. FACTS AND PROCEDURAL HISTORY

A. The Relevant Facts

Duraco's most profitable products, its "Grecian Classics"

plastic planters, account for one tenth of its nearly $35 million

in annual sales. These planters, shaped like a Grecian urn, are

made in two sizes, with diameters of twelve and eighteen inches

and heights of ten and fifteen inches, respectively. Their

plastic construction makes them inexpensive and durable. But the

key to their considerable success, according to Duraco, is that a

careful combination of ornamental features creates in them the

illusion of marble, cement, or stone construction.

The stimulus for the Duraco urn's design was a suggestion

by Robert Armstrong, a Senior Buyer at K-Mart, Duraco's largest

retailer customer. Armstrong had run across urn-shaped planters

similar in appearance to the eventual design of the Grecian

Classics at a trade show in the Federal Republic of Germany

sometime in 1984. Realizing that like products were not then

available in the United States, Armstrong met with Duraco

officials to describe his fortuitous discovery and to encourage

Duraco to manufacture such an item. Duraco, in turn, set about

to satisfy Armstrong's interest. It surveyed Grecian urns at

statuary stores and explored its own archives. As it happened,

in the late 1970s Duraco had tried to market the "Cotswold

Planter," an English-made Grecian plastic planter. Poor sales,

perhaps attributable to its relatively high retail price tag --

$14.99 compared to under $5.00 for the Grecian Classics -- caused

Duraco to drop the product two years later. The Cotswold may have survived in United States commerce for some time thereafter,

but was no longer available at the time of the Armstrong-Duraco

conference.

The Grecian Classics are much like, but not clones of,

the Cotswold. Both planters have an hourglass-like design and

fluting, though the Cotswold has a higher base (hence a higher

center of gravity), softer lines, and a less realistic texture.

Despite the differences, Armstrong would have been pleased with a

replica of the Cotswold urn.

Once Duraco showed Armstrong its prototype, K-Mart

committed itself to purchase 100,000 Grecian Classics planters

from Duraco. With no competing plastic urn in the United States

sporting a similar, detailed design, sales of the eighteen-inch

Grecian Classics planter reached 460,000 the first year, making

it Duraco's leading seller. This overwhelming success persuaded

Duraco to manufacture a twelve-inch cousin; sales continued to

soar.

Today, Duraco markets the bulk of its planter wares

directly to large retailers, primarily large discount department

stores; some distributors are directly supplied. Advertising is

typically done cooperatively with the retailers: the parties

share costs, and Duraco allows the retailer to use two percent of

sales receipts for advertising, redeemable in cash or credit.

The media generally relied upon for consumer advertising are

Sunday newspaper fliers, magazines, circulars, and newspaper ads.

In those types of advertising, the planters are generally

depicted in juxtaposition with other outdoor garden products, such as plant food and watering cans. Duraco also solicits

retailers with brochures and trade advertisements.

In its marketing endeavors, Duraco encourages, but does

not contractually require, its retailer customers to place either

the Duraco tradename or its registered trademark "Garden Scene"

logo in their advertisements. Although a retailer's failure to

display Duraco's logo results, at worst, in an admonition, half

of the planter advertisements contain the logo. Nevertheless,

brand-name awareness in the outdoor garden products area is

slight -- less than 0.5 percent of consumers in Duraco's survey

recognized the Duraco name. This is probably so because planters

are inexpensive and are typically bought as an impulse item.

A number of enterprises compete with Duraco in the

plastic planter market, amongst them the defendant Joy. Joy,

also known by its "Backyard Products" logo, calls its planters

"Ultimate Urns." Defendant Travis manufactures the molds for the

plastic planters; Joy markets them. The interest of Joy's

President Thomas Gay in producing a planter configured like a

classic Grecian urn had been piqued by a color brochure depicting

the Cotswold urn. In 1987 and 1988, he approached buyers at K-

Mart and another retailing chain, both of which already stocked

Duraco's Grecian Classics, to elicit information regarding the

potential for a competitor to Duraco in the plastic urn market.

Having received favorable feedback, Gay undertook the development

of the Backyard Products urn.

During the development phase Gay had access to various

urns in the market, including the Grecian Classics. His considered observation and analysis of all those urns' features

convinced him to design one with a deeper bowl -- to hold more

soil and water for enhanced root development -- and with a lower

center of gravity -- because some other urns, such as the Duraco

urns, were too top-heavy and subject to tipping over. After

completing his design, Gay engaged defendant Travis to create the

plastic injection mold for the Ultimate Urns. Joy's Ultimate

Urns are strikingly similar in appearance to Duraco's Grecian

Classics. Both planters have a similar construction, and both

are structured in two parts, a top "bowl" section that connects

at a joint with the "base" or "pedestal" of the planter. Like

Duraco, Joy offers a twelve-inch, reduced-scale version of its

eighteen-inch model.

According to Richard Husby, Duraco's Vice President of

Marketing and Sales, the Ultimate Urns cannot truly compare to

the Grecian Classics by virtue of Joy's failure to match Duraco's

punctilious quality control. Joy's planters, of comparatively

poor quality according to Husby, can be found in the market with

drooping flash, poor color, and sharp edges and ridges. The

inferior coloring is said to stem from Joy's reliance on a less

expensive coloring process, and Husby testified that Joy's

inferior molding technique causes blotching on the urns' bottoms.

The uneven edges of Joy's planters are caused by Joy's cutting

away, rather than sanding off, the flashing.1

1. A significant drawback of the injection molding process, the technique Duraco uses to manufacture the planters, is that strips of plastic, called "flashing," sometimes form on the planters' sides as a result of cracks in the molds or excessive Other differences between the Grecian Classics and

Ultimate Urns, unrelated to quality, can be noted, though only in

a sharply focused side-by-side comparison. The Duraco planter

has higher fluting (used on the bowl and pedestal of the planters

to create the illusion of an actual marble or alabaster planter)

and a wider "landing" on the lip between each flute; the Backyard

Products urn has a broader base, a lower center of gravity

(causing it to withstand tipping better), and a twenty percent

greater fill capacity. The side of the Backyard Products urn's

bowl is straight-edged, whereas the Grecian Classics' curves in

an arc. Visual coincidence in detail can be noted in the "egg

and dart" patterns, used primarily for decoration and

subsidiarily to strengthen the rim, on the lips of the planters'

bowls.

Duraco inadvertently became aware of Joy's competition

when Duraco's President and Chief Executive Officer John Licht

stumbled across a Backyard Products planter while shopping in a

New Jersey retail store. He saw a defective urn -- one side of

it was flattened, apparently because it had been removed from the

mold and laid on its side in a shipping carton while still hot --

and purchased it, thinking it to be a defective Duraco urn. He

turned the urn over to Duraco's vice president, demanding to know

how a defective urn could have slipped through Duraco's quality (..continued) production rates. Flashing can be sharp, threatening injury to someone handling the planter, and unsightly, detracting from the aesthetics of the planter. To combat this irregularity Duraco employs quality control workers for the purpose, inter alia, of carefully sanding away any flashing from completed planters. control safety net into the marketplace. When the vice president

returned with news that the urn was Joy's, not Duraco's, Licht

phoned Duraco's attorney.

Duraco claims that its "trade dress" differs

significantly from the designs of all other competitors save Joy.

Duraco does not claim that any of the classical elements in its

urn's design is protectable; rather, Duraco defines the

uniqueness of its trade dress according to the total composition

of all the elements of its urns' configuration, including the

rim, the finish, the joining of the top and bottom halves, and

the color results. Duraco not only adduced evidence that other

competitors had come up with patently different designs for

plastic planters, but also presented five designs by its expert

designer that, according to the expert, could compete effectively

in the market for "contemporary interpretations of neoclassic

planters using modifications of classical motifs." Mem. op. at

9. His five designs assertedly achieved the desired motif

through variations on sundry classical elements, including the

fluting, rims, radii, pedestals, and egg-and-dart design on the

bowl's rim. Thus, in Duraco's submission, Joy could have

competed effectively without infringing Duraco's trade dress.2

2 . Duraco alleges that Joy's competition has negatively affected Duraco's pricing power in the retailer market, costing it an estimated $600,000 in profits. K-Mart threatened a switch to Ultimate Urns unless the price of Grecian Classics planters were lowered; the savings, however, apparently were absorbed by the retailer and not passed through to the final consumer. Moreover, despite losing some retail accounts to Joy, Duraco's sales slightly improved in 1992. B. The District Court's Disposition

The district court's denial of Duraco's motion for a

preliminary injunction was based on several grounds. First, it

concluded that Duraco had failed to show a likelihood of success

on the merits. The court disagreed with Duraco that the design

of the Grecian Classics was distinctive. According to the court,

"[a]ny consumer looking at the Duraco, Backyard [Products], and

Cotswold planters would say that all three are Grecian urn

planters." Mem. op. at 8-9. It continued, remarking that "[t]o

this observer, all of the urns introduced as exhibits, including

plaintiff's, defendants' or others', looked about the same, as

did those presented in drawings by Mr. Hart, the designer." Id.

at 10.3

3 . The court facetiously crowned its comparison with the adapted aphorism, "[a]n urn is an urn is an urn." Id. Cf. Gertrude Stein, Sacred Emily (1913) ("Rose is a rose is a rose is a rose."), in GEOGRAPHY AND PLAYS 178, 187 (1922). That characterization of modern plastic urns is, of course, a far cry from the eloquent words of Keats, who, saluting a Grecian urn of a far more exquisite nature, and lacking the prescience to foresee the commercialization of the classical Grecian form, penned these timeless words of adulation:

Thou still unravish'd bride of quietness, Thou foster-child of silence and slow time, Sylvan historian, who canst thus express A flowery tale more sweetly than our rhyme: What leaf-fring'd legend haunts about thy shape Of deities or mortals, or of both, In Tempe or the dales of Arcady?

John Keats, Ode on a Grecian Urn (excerpt from first stanza). Applying a taxonomy of trademark distinctiveness

consisting of generic, descriptive, suggestive, and arbitrary or

fanciful marks, the court found that the Grecian Classics

planters were descriptive at best: "The Duraco urn is clearly

just that, an urn. When purchased or inspected, the consumer

immediately knows the nature of the good before them [sic]: a

plastic planter." Id. at 13. The court further found that the

planters' descriptive trade dress had not acquired secondary

meaning in the market, as [t]here was no evidence that consumers, whether K-Mart buyers or retail customers, perceived that the product emanates from a single source, or, for that matter, that the public identified the Duraco planter with the Duraco or Garden Scene name. The consumer does not appear to be moved in any degree to buy the Duraco planter because of its source. Buyers for the K-Mart stores seemed to be motivated largely by their profit margin.

Id. at 15. Alternatively, the court found the trade dress to be

"generic."

The court also thought the design to be functional,

"because [all the design elements are] necessary for classically

styled urns, [and] in combination create the illusion of an

alabaster chiseled urn." Id. at 17. Furthermore, the court

found that there was no likelihood of consumer confusion, both

because consumers are disinterested in the identity of the

manufacturer and because there was no evidence of actual consumer

confusion (neglecting that of Duraco's president, who is not

truly a consumer) that Joy's product was Duraco's.4 4 . As to the other requirements for a preliminary injunction, the court held: (i) that there was no merit to Duraco's claim of irreparable harm due to lost profits, C. Jurisdiction and Standard of Review

The district court had original jurisdiction pursuant to

28 U.S.C.A. § 1338 (West 1993) (granting district courts original

jurisdiction over trademark cases). Appellate jurisdiction is

invoked pursuant to 28 U.S.C.A. § 1292(a)(1) (West 1993)

(granting courts of appeals jurisdiction over certain

interlocutory orders, including denials of preliminary

injunctions).

Duraco appeals the denial of its motion for a preliminary

injunction in its action under section 43 of the Lanham Act, 15

U.S.C.A. § 1125(a) (Supp. 1994).5 We explained the requisites

(..continued) likelihood of confusion, and the lower quality of Joy's products, because Duraco's sales have remained at healthy levels; (ii) that the balance of hardships favored Joy, since an injunction would destroy its entire business whereas Duraco carried multiple product lines, had increased its sales, and had shown no likelihood of confusion, loss of consumer good will, or detriment to reputation; and (iii) that the public interest favored healthy competition over trade dress protection because there had been no showing of a likelihood of confusion. Because we resolve this case on the likelihood of success on the merits prong, we will not review these other conclusions. 5 . That section now provides:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or for the issuance of a preliminary injunction as well as the

nature of our review in such appeals in Merchant & Evans, Inc. v.

Roosevelt Building Products Co., 963 F.2d 628 (3d Cir. 1992): In ruling on a motion for a preliminary injunction, the district court must consider: (1) the likelihood that the plaintiff will prevail on the merits at [the] final hearing; (2) the extent to which the plaintiff is being irreparably harmed by the conduct complained of; (3) the extent to which the defendant will suffer irreparable harm if the preliminary injunction is issued; and (4) the public interest. Opticians Ass'n v. Independent Opticians, 920 F.2d 187, 191-92 (3d Cir. 1990). The injunction should issue only if the plaintiff produces evidence sufficient to convince the district court that all four factors favor preliminary relief. Id. at 192. The decision whether to enter a preliminary injunction is committed to the sound discretion of the trial court, and will be reversed "only if the court abused its discretion, committed an obvious error in applying the law, or made a serious mistake in considering the proof." Loretangeli v. Critelli, 853 F.2d 186, 193 (3d Cir. 1988). However, "[a]lthough terms of an injunction are normally reviewed for abuse of discretion, any determination that is a prerequisite to the issuance of an injunction . . . is reviewed according to the standard applicable to that particular determination." John F. Harkins Co. v. Waldinger Corp.,

(..continued) (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another persons's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C.A. § 1125(a)(1) (Supp. 1994). With the Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, Congress amended § 43(a) to codify existing constructions of that section, see S. REP. No. 515, 100th Cong., 2d Sess. 40 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603, so we will draw heavily on precedent decided under the previous version of § 43(a). 796 F.2d 657, 658 (3d Cir. 1986), cert. denied[,] 479 U.S. 1059, 107 S. Ct. 939 (1987).

Id. at 632-33 (parallel citation omitted) (emphasis, and first and final alterations, supplied). Thus, we exercise plenary

review over the district court's conclusions of law and its

application of the law to the facts, see Marco v. Accent

Publishing Co., 969 F.2d 1547, 1548 (3d Cir. 1992), but review

its findings of fact for clear error, see Oberti v. Board of

Educ., 995 F.2d 1204, 1220 (3d Cir. 1993), which occurs when we

are "left with a definite and firm conviction that a mistake has

been committed," Anderson v. Bessemer City, 470 U.S. 564, 573, 105 S. Ct. 1504, 1511 (1985).

II. THE APPLICABLE LAW

A. Trade Dress Law in General

"Trade dress" originally referred to the packaging or

displays associated with trademarked goods. In the leading case

of Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659

F.2d 695, 700-02 (5th Cir. 1981), for example, the Court of

Appeals for the Fifth Circuit held that the defendant had

unfairly competed with the plaintiff by utilizing the same design

and colors as the plaintiff for packaging its lawn and garden

products, even though the defendant prominently employed a

different brand name.

That principle of trade dress law grounded in design

protection has since been extended to the design of a product

itself. "Section 43(a) of the Lanham Act proscribes not only trademark infringement in its narrow sense, but more generally

creates a federal cause of action for unfair competition. In

particular, § 43(a) provides a cause of action for unprivileged

imitation, including trade dress infringement [of unregistered

trade dress]." American Greetings Corp. v. Dan-Dee Imports,

Inc., 807 F.2d 1136, 1140 (3d Cir. 1986) (citations omitted).

That is, while it was once "well-settled that shapes of products

in the public domain may be freely copied," id. at 1145 (citing

cases),6 the same no longer holds true, as federal trademark law

under the Lanham Act may protect "product configurations," see,

e.g., Merchant & Evans, 963 F.2d at 633-34; cf. Aromatique, Inc.

v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994) (per curiam)

(plurality opinion by Morris Sheppard Arnold, J.) (noting that

trade dress may now be registered on the Principal Register of

the United States Patent and Trademark Office). In Merchant &

Evans, we reaffirmed that trade dress protection extends beyond a

product's packaging or labeling to include "`the appearance of

the [product] itself.'" Merchant & Evans, 963 F.2d at 633

(quoting American Greetings Corp., 807 F.2d at 1140).

The Lanham Act protection of product configurations

extends to "the total image of a product, including features such

as size, shape, color or color combinations, texture, graphics,

6 . See JAMES L. HOPKINS, THE LAW OF TRADEMARKS, TRADENAMES AND UNFAIR COMPETITION § 47 (2d ed. 1905) ("It is obvious that if a commercial article itself could constitute a trademark, there would be little use for patent laws. As Judge Carpenter said, `in the very nature of the case . . . the trademark must be something other than, and separate from, the merchandise.'") (quoting Davis v. Davis, 27 F. 490, 492 (C.C. Mass. 1886)). or even particular sales techniques." Computer Care v. Service

Sys. Enters., Inc., 982 F.2d 1063, 1067 (7th Cir. 1992) (internal

quotation marks omitted); accord International Jensen, Inc. v.

Metrosound U.S.A., Inc., 4 F.3d 819, 822-23 (9th Cir. 1993);

Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247

(8th Cir. 1990); Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d

971, 974 (2d Cir. 1987); Ambrit, Inc. v. Kraft, Inc., 812 F.2d

1531, 1535 (11th Cir. 1986); John H. Harland Co. v. Clarke

Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). "`Trade dress

is a complex composite of features' and `[t]he law of unfair

competition in respect to trade dress requires that all of the

features be considered together, not separately.'" American

Greetings Corp., 807 F.2d at 1141 (quoting SK&F, Co. v. Premo

Pharmaceutical Labs., 481 F. Supp. 1184, 1187 (D.N.J. 1979),

aff'd, 625 F.2d 1055 (3d Cir. 1980)). Thus, for example, a

product configuration may be distinctive although no particular

individual element or feature would be considered distinctive in

isolation.

In this case we deal exclusively with trade dress said to

inhere in the product itself, rather than trade dress alleged in

a product's packaging. Because the legal doctrines in these two

very different situations will substantially diverge in various

incidents, we will employ the designation "product configuration"

to refer to trade dress alleged in the product itself, whether in

a specific feature or in some combination or arrangement of

features, and to distinguish that type of trade dress from

"product packaging." Cf. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 2760 (1992) ("[T]he protection of trademarks and

trade dress under § 43(a) serves the same statutory purpose of

preventing deception and unfair competition. There is no

persuasive reason to apply different analysis to the two. . . .

It would be a different matter if there were textual basis in

§ 43(a) for treating inherently distinctive verbal or symbolic

trademarks differently from inherently distinctive trade

dress.").

In Merchant & Evans, we held that in order to qualify for

trade dress protection, the plaintiff must show: (1) that the imitated feature is non-functional, (2) that the imitated feature has acquired a "secondary meaning," and (3) that consumers are likely to confuse the source of the plaintiff's product with that of the defendant's product.

Merchant & Evans, 963 F.2d at 633 (citing American Home Prods. Corp. v. Barr Labs., Inc., 834 F.2d 368, 370 (3d Cir. 1987));

accord American Greetings Corp., 807 F.2d at 1141; Standard Terry

Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 780 (3d Cir. 1986).

The intervening decision in Two Pesos, Inc. v. Taco Cabana, Inc.,

112 S. Ct. 2753, 2758 (1992), has, however, overruled one aspect

of that formulation, eliminating the need for the plaintiff to

prove secondary meaning in order to receive protection for

"inherently distinctive" trade dress. See Two Pesos, 112 S. Ct.

at 2760. Hence a plaintiff proceeding under section 43(a) must

now only prove that (i) the trade dress is distinctive, either

because it is inherently distinctive or because it has acquired

distinctiveness; (ii) the trade dress is nonfunctional; and (iii) the defendant's use of plaintiff's trade dress is likely to cause

consumer confusion. See id.

As just stated, the Supreme Court in Two Pesos used

"distinctive" in a dual sense, meaning either inherently

distinctive or having acquired distinctiveness through secondary

meaning. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 (Tent.

Draft No. 2, Mar. 23, 1990),7 cited in Two Pesos, 112 S. Ct. at

2758. Because the Supreme Court in Two Pesos did not decide the

question whether trade dress, and in particular trade dress in a

product configuration, can actually ever be considered inherently

distinctive -- for purposes of that case, the Court assumed that

the restaurant decor at issue was so -- we must first embark on a

journey to delineate when, if ever, product configurations should

be deemed inherently distinctive.

7 . Although the American Law Institute adopted the entire Restatement of the Law of Unfair Competition in May 1993, the final version is not yet available, and hence we will cite herein to the second Tentative Draft. B.The Problems With The Trademark Taxonomy Duraco argues that the design of its Grecian Classics

planters is inherently distinctive because it is "suggestive."

Duraco borrows the term "suggestive" from trademark law, as

trademarks have long been classified according to whether they

are generic, descriptive, suggestive, arbitrary, or fanciful.

See Two Pesos, 112 S. Ct. at 2757 (citing Abercrombie & Fitch Co.

v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly,

J.)). In trademark law, marks belonging to the latter three

categories of the taxonomy -- suggestive, arbitrary, or fanciful

-- are deemed inherently distinctive and are automatically

entitled to protection. See id.; Fisons Horticulture, Inc. v.

Vigoro Indus., Inc., 30 F.3d 466, 478 (3d Cir. 1994); A.J.

Canfield Co. v. Honickman, 808 F.2d 291, 296-97 (3d Cir. 1986).

Marks falling within the first category -- generic marks -- are

never subject to trademark protection, because to tolerate their

monopolization would preclude competitors from accurately and

efficiently describing their products and hence unduly hobble

them in competition. See Two Pesos, 112 S. Ct. at 2757; Kellogg

Co. v. National Biscuit Co., 305 U.S. 111, 116-19, 59 S. Ct. 109,

112-14 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 186, 16 S. Ct. 1002, 1008 (1896). The marks falling within the

remaining category -- descriptive -- acquire distinctiveness only

if they come to identify and distinguish the producer's goods,

i.e., if they acquire secondary meaning. See 15 U.S.C.A.

§§ 1052(e)-(f), 1127 (Supp. 1994); Two Pesos, 112 S. Ct. at 2757.

To have acquired secondary meaning, "in the minds of the public,

the primary significance of a product feature or term [must be] to identify the source of the product rather than the product

itself." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,

851 n.11, 102 S. Ct. 2182, 2187 n.11 (1982) (dicta).

Thus, Duraco seeks to latch onto the suggestive trademark

category to avoid having to demonstrate secondary meaning. Some

courts have nonchalantly applied the trademark

generic/descriptive/suggestive/arbitrary/fanciful taxonomy in the

product configuration context (though none of them has inquired

whether it makes sense to do so), see, e.g., Braun, Inc. v.

Dynamics Corp. of America, 975 F.2d 815, 825 n.18 (Fed. Cir.

1992) (design of a blender); cf. Paddington, 996 F.2d at 583

(product packaging); Computer Care, 982 F.2d at 1069 (same);

Ambrit, Inc., 812 F.2d at 1537 (same), and both parties here

assume that it provides the proper framework for our analysis,

see Br. of Appellant at 22-32; Br. of Appellee at 22-30; Reply

Br. of Appellant at 2-12. But we do not think it helpful or

proper to transplant the categorical distinctiveness inquiry

developed for trademarks to product configurations, where the

alleged trade dress lies in the very product itself. See Martin

P. Hoffman, Trade Dress/Product Simulation Overview, C913 ALI-ABA 219, 222 (1994) ("The [trademark distinctiveness] categories do

not fit trade dress considerations very well . . ..").

The difficulty is that, perhaps unlike product packaging,

a product configuration differs fundamentally from a product's

trademark, insofar as it is not a symbol according to which one

can relate the signifier (the trademark, or perhaps the

packaging) to the signified (the product). Being constitutive of the product itself and thus having no such dialectical

relationship to the product, the product's configuration cannot

be said to be "suggestive" or "descriptive" of the product, or

"arbitrary" or "fanciful" in relation to it. See Jay Dratler,

Jr., Trademark Protection for Industrial Design, 1988 U. ILL. L.

REV. 887, 903 ("Unlike verbal marks, industrial designs do not

describe anything; they `just are.'"); Ralph S. Brown, Design

Protection: An Overview, 34 U.C.L.A. L. REV. 1337, 1380 (1987)

(same); Melissa R. Gleiberman, Note, From Fast Food to Fast Cars:

Overbroad Protection of Product Trade Dress Under Section 43(a)

of the Lanham Act, 45 STAN. L. REV. 2037, 2042-43 (1993)

[hereinafter Gleiberman, Note, Overbroad Protection of Product

Trade Dress] (same); cf. WILLIAM H. BROWNE, A TREATISE ON THE LAW OF

TRADE-MARKS § 130, at 87 (1873) ("A trademark is nothing more nor

less than one's commercial signature to his goods; and the mark

and the goods bear the same relation to one another as do the

positive and the negative forces of electricity to each other;

and in their opposition they mutually uphold and sustain."). The

relationship between the mark and the product, along with the

degree to which the mark describes the product -- is unsuited for

Moreover, insofar as consumer motivation to purchase a

product will much more likely be predicated on an appreciation of

a product's features than on an appreciation of a product's name,

assuming no secondary meaning attached to either, one cannot

automatically conclude from a product feature or configuration -- as one can from a product's arbitrary name, for example -- that,

to a consumer, it functions primarily to denote the product's

source. Cf. RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 16 cmt. b

(Tent. Draft No. 2, Mar. 23, 1990) ("[I]t is less common for

consumers to recognize the design of a product as an indication

of source."). As Judge Nies wrote, concurring in In re DC

Comics, Inc., 689 F.2d 1042, 1050-51 (C.C.P.A. 1982): There are different considerations where one seeks protection of a product design itself, and I have found no precedent in decisions of this court, or others, which recognizes the protectability of any product design as a trademark for that product without proof of distinctiveness, that is, distinctiveness as an indication of origin, not simply that it is a distinctive design in the sense of being unusual. The semantics, in referring to a design as "distinctive," impedes clarity in analysis.. . . Descriptive designations are not presumed to function as indications of origin immediately upon first use, unlike arbitrary word marks or arbitrary logo designs, but rather must be used from some period of time before acquiring the status of a trademark.

Thus, a fanciful or arbitrary mark, having had no

established meaning prior to its adoption as a trademark and

serving no apparent purpose other than to identify (signify) the source, is legally presumed to achieve customer recognition and

association immediately upon its adoption and use. In contrast,

a product configuration can not generally give rise to a similar

presumption, as consumers usually appreciate a product's

configuration for its contribution to the inherent appeal of the

product, not (in the absence of secondary meaning) its signifying

function. If one felt compelled to apply the trademark taxonomy,

one could at best say that a product configuration is descriptive

of (because identical with) the product itself. This case illustrates the point rather clearly: whether or not the Grecian

Classics are "suggestive" of a marble construction or anything

else, we think it quite improbable that a consumer upon seeing

Joy's plastic planter in a store would reasonably associate its

specific configuration with a particular source, even if the

consumer had repeatedly before seen a Duraco plastic planter.

Accordingly, for all the aforementioned considerations,

we conclude that the trademark taxonomy, carefully and precisely

crafted through a long succession of cases to accommodate the

particularities of trademarks, does not fit the quite different

considerations applicable to product configurations.8 See Hanig

& Co. v. Fisher & Co., No. 92-C-1779, 1994 WL 97758, at *4 (N.D.

Ill. Mar. 24, 1994); Martin P. Hoffman, Trade Dress/Product

Simulation Overview, C913 ALI-ABA at 222.

Although Two Pesos made extensive reference to the

discrete trademark categories, that decision does not foreclose

our refusal to embrace the trademark distinctiveness taxonomy in

product configuration cases. In Two Pesos the Supreme Court

specifically stated that the sole issue before it was whether

secondary meaning must be proven for an inherently distinctive

trade dress vel non, see 112 S. Ct. at 2757 & n.6, and hence the applicability of the Abercrombie & Fitch classifications to trade

dress was not at issue, see Paddington, 996 F.2d at 583.

8 . We do not suggest that the same taxonomy might not be efficacious in the context of product packaging. Moreover, Two Pesos dealt with a restaurant's decor, more akin to

product packaging than product configuration.

Of course, the rationales supporting the trademark

distinctiveness taxonomy may sometimes be fruitfully applied to

trade dress when speaking of the product itself. For example,

consider the trademark distinctiveness inquiry. What is

"generic" in trademark law is a word with so few alternatives

(perhaps none) for describing the good that to allow someone to

monopolize the word would debilitate competitors. A descriptive

trademark is one that leaves a larger but finite set of

equivalent alternatives, and therefore still can be protected

(because there are adequate alternatives for competitors) but

only if it has acquired secondary meaning (so that it

demonstrably functions as a source indicium). Finally, the

suggestive, arbitrary, or fanciful mark is entitled to automatic

protection, as there exists a vast universe of equivalent

alternatives (or, in the case of a suggestive mark, at least a

vast number of passable alternatives) to choose from, and the

consumer will reasonably immediately identify the mark for what

it is -- a source indicium and no more. As noted supra at typescript Error! Bookmark not

defined., a plaintiff alleging trade dress infringement must

prove that the dress is non-functional.9 In trade dress law, the

9 . Although various forms of the inquiry have been articulated, the essence of the question is whether a particular feature of a product is substantially related to its value as a product or service, i.e., if the feature is a part of the "function" served, or whether the primary value of a particular feature inquiry into functionality resembles the genericness inquiry in

trademark law; the two doctrines share essentially the same

underlying rationale, preserving competition. But cf. Dratler,

Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.

at 951-52 (arguing that the genericness doctrine and the

functionality doctrine -- in form substantially narrower than this Circuit has adopted, see supra at n.Error! Bookmark not defined. -- serve different purposes). Thus, just as generic

trademarks may be copied freely, functional trade dress may also

be copied freely -- because both are important for preserving

effective competition. Similarly, just as descriptive

trademarks, which are neither generic nor inherently distinctive,

may be protected upon proof of secondary meaning, trade dress

that is not functional (and thus leaves a satisfactory number of

competitively viable alternatives, see Merchant & Evans, 963 F.2d

at 634-35 & n.4) but not inherently distinctive (and thus not a

presumptive source indicium) may be protected, but only if secondary meaning is shown, see supra at typescript Error! Bookmark not defined.. Finally, just as inherently distinctive

trademarks are protected because presumptively they identify the

(..continued) is the identification of the provider.. . . Several courts have noted that the key policy served by barring the use of functional features for identification is the policy favoring competition, and that the "functionality" inquiry must be addressed in light of this policy.

United States Golf Ass'n v. St. Andrews Sys., 749 F.2d 1028, 1033-34 (3d Cir. 1984) (footnote and citations omitted), quoted in Merchant & Evans, 963 F.2d at 634. product's source, inherently distinctive trade dress is protected

because presumptively it primarily identifies the product's

source. C. Distinctiveness in the Law of Unfair Competition Having rejected the transplantation of the trademark

distinctiveness categories to product configurations, the next

question we must address is whether a product configuration can

ever be inherently distinctive. Before the Supreme Court's

decisions in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,

84 S. Ct. 784 (1964), and Compco Corp. v. Day-Brite Lighting,

Inc., 376 U.S. 234, 84 S. Ct. 779 (1964), unfair competition law

was essentially state law. Sears and Compco created a federal

unfair competition law. See Two Pesos, 112 S. Ct. at 2763

(Stevens, J., concurring in the judgment) ("`Section 43(a) . . .

has been widely interpreted to create, in essence, a federal law

of unfair competition.'") (quoting The United States Trademark

Ass'n Trademark Rev. Comm'n Report and Recommendations to USTA

President and Board of Directors, 77 TRADEMARK RPTR. 375, 426

(1987)); American Greetings Corp. 807 F.2d at 1140 ("Section

43(a) . . . creates a federal cause of action for unfair

competition."); Kohler Co. v. Moen, Inc., 12 F.3d 632, 646 (7th

Cir. 1993) (Cudahy, J., dissenting) ("[T]he Lanham Act

(comprising the federal law of trademarks and unfair competition)

essentially federalizes the common law of trademarks and unfair

competition."); id. at 647; cf. Kohler Co., 12 F.3d at 640 n.10 (recognizing relationship between Lanham Act and state common law

of unfair competition but emphasizing that they are not

identical). Congress approved that development in the 1988

amendments to the Lanham Act. See Two Pesos, 112 S. Ct. at 2765

(Stevens, J., concurring in the judgment) ("Congress codified the

judicial interpretation of § 43(a), giving its imprimatur to a growing body of case law . . .."); Kohler Co., 12 F.3d at 636

("[The 1988 Lanham Act amendments] as a codification of prior

case law . . . validate the uniform preamendment interpretation

of § 45 [of] the Act."); S. REP. No. 515, 100th Cong., 2d Sess.

40 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603. Thus, it

will be instructive to commence our inquiry with a survey of the

common law tort of unfair competition.

1. State Unfair Competition Law

Under state unfair competition law, a product

configuration could obtain protection from copying only if it

first had acquired secondary meaning. See, e.g., Gum, Inc. v.

Gumakers of America, Inc., 136 F.2d 957, 958 (3d Cir. 1943);

American Fork & Hoe Co. v. Stampit Corp., 125 F.2d 472, 474 (6th

Cir. 1942); Lewis v. Vendome Bags, Inc., 108 F.2d 16, 18 (2d Cir.

1939); Sinko v. Snow-Craggs Corp., 105 F.2d 450, 452 (7th Cir.

1939); Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 300

(2d Cir. 1917); Rathbone, Sard & Co. v. Chamption Steel Range

Co., 189 F. 26, 30-32 (6th Cir. 1911); 1 HARRY D. NIMS, THE LAW OF

UNFAIR COMPETITION AND TRADE-MARKS § 134(a), at 370, 378-79 (4th ed.

1947) [hereinafter NIMS, LAW OF UNFAIR COMPETITION]; see also Two Pesos, 112 S. Ct. at 2762 (Stevens, J., concurring in the

judgment); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141, 158, 109 S. Ct. 971, 981 (1989); 1 J. THOMAS MCCARTHY,

TRADEMARKS AND UNFAIR COMPETITION § 7:23, at 227, § 8:2, at 285 (2d ed.

1984). The concept of an inherently distinctive product

configuration was, in other words, alien to the common law. Secondary meaning in the product configuration context

was then, as it is now, defined to "attach[] to a given shape or

form of article when that form is associated in the minds of

prospective customers with the source from which the article came

to such an extent that demand for the particular article depends

upon the business reputation or standing of its maker." American

Fork & Hoe, 125 F.2d at 475; see Kellogg Co., 305 U.S. at 118,

120, 59 S. Ct. at 113-14 (explaining that secondary meaning has

not been established when the form of the article, in the minds

of the public, is primarily associated with the article rather

than a particular producer); supra at typescript 22 (quoting

Inwood Labs.). The Court of Appeals for the Seventh Circuit

succinctly expounded the persuasive rationale for this doctrine

in Sinko, which involved the defendant's copying of plaintiff's

successful knobs for automobile steering wheel spinners: Sinko created a desire on the part of the public for one of two things, either for knobs made by Sinko, above all other knob makers, or for knobs made in a particular manner regardless of who made them. If it is the first situation, the law of unfair competition gives Sinko the right to monopolize or to exclude other makers from copying the product. If it is the latter situation, Sinko receives no such right to monopolize, even though he might have been the first one to make the article in the particularly desirable manner.

Sinko, 105 F.2d at 453; accord 1 NIMS, LAW OF UNFAIR COMPETITION

§ 134, at 373 (citing Diamond Expansion Bolt Co. v. U.S.

Expansion Bolt Co., 164 N.Y.S. 433 (App. Div. 1917)). Similarly,

then-District Judge Learned Hand, sitting by designation, wrote

for the Second Circuit: The cases of so-called "nonfunctional" unfair competition . . . are only instances of the doctrine of "secondary meaning." All of them presuppose that the appearance of the article, like its descriptive title in true cases of "secondary" meaning, has become associated in the public mind with the first comer as manufacturer or source, and, if a second comer imitates the article exactly, that the public will believe his goods have come from the first, and will buy, in part, at least, because of that deception. Therefore it is apparent that it is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person -- the plaintiff may not be individually known -- makes them, and that the public cares who does make them, and not merely for their appearance and structure. It will not be enough only to show how pleasing they are, because all the features of beauty or utility which commend them to the public are by hypothesis already in the public domain. The defendant has as much right to copy the "nonfunctional" features of the article as any others, so long as they have not become associated with the plaintiff as manufacturer or source. The critical question of fact at the outset always is whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes that source.

Crescent Tool Co., 247 F. at 300 (emphasis supplied).

Finally, Chief Justice Holmes, then sitting on the

Supreme Judicial Court of Massachusetts, also explained the

irreproachable rationale sustaining the prerequisite of secondary

meaning before affording protection to product configurations: In the absence of a patent the freedom of manufacture cannot be cut down under the name of preventing unfair competition. All that can be asked is that precautions shall be taken, so far as are consistent with the defendant's fundamental right to make and sell what it chooses, to prevent . . . deception . . .. It is true that a defendant's freedom of action with regard to some subsidiary matter of ornament or label may be restrained, although a right of the same nature with its freedom to determine the shape of the articles which it sells.. . . [T]he instrument sold is made as it is [by defendant], partly at least, because of a supposed or established desire of the public for instruments in that form. The defendant has the right to get the benefit of that desire even if created by the plaintiff. The only thing it has not the right to steal is the good will attaching to the plaintiff's personality, the benefit of the public's desire to have goods made by the plaintiff.. . . [T]he plaintiff's right can be protected sufficiently by requiring the defendant's [products] to be clearly marked so as to indicate unmistakably that they are the defendant's and not the plaintiff's goods.. . . To go further is to save the plaintiff from a competition from which it has no right to be exempt.

Flagg Mfg. Co. v. Holway, 59 N.E. 667, 667 (Mass. 1901)

(citations omitted).

Thus, traditional unfair competition law would not

mandate a copier to take positive steps to avoid confusion unless

"the existence of secondary meaning . . . plainly appear[ed]."

American Fork & Hoe, 125 F.2d at 475. If a product feature had

obtained secondary meaning, but was functional, all a defendant

had to do, to avoid competing unfairly, was to "use reasonable

care to inform the public of the source of its product." Gum,

Inc., 136 F.2d at 960 (citing Kellogg Co., 305 U.S. at 120, 59 S.

Ct. at 114); see Vaughan Novelty Mfg. Co. v. G.G. Greene Mfg.

Corp., 202 F.2d 172, 176 & n.11 (3d Cir.) (citing RESTATEMENT OF

TORTS § 741, cmt. j (1938)), cert. denied, 346 U.S. 820, 74 S. Ct. 34 (1953); American Fork & Hoe, 125 F.2d at 475; Crescent

Tool Co., 247 F. at 301; 1 NIMS, LAW OF UNFAIR COMPETITION § 134, at

371; cf. J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d

949, 955-56 (8th Cir. 1941). This latter doctrine survives

intact today. See American Greetings Corp., 807 F.2d at 1141

("When a feature or combination of features is found to be

functional, it may be copied and the imitator may not be enjoined

from using it . . .. Nevertheless, if the functional feature or combination is also found to have acquired secondary meaning, the

imitator may be required to take reasonable steps to minimize the

risk of source confusion.") (citations omitted); id. at 1144-45 &

n.4. A defendant could be completely barred from copying a

product configuration only if the configuration both was

nonfunctional and had acquired secondary meaning.

In short, the common law did not find any "unfairness,"

as concerns the law, in someone's copying a design -- even if it

was originally produced through great expenditures of labor,

effort, talent, and capital -- if the design was unprotected by

patent or copyright. See, e.g., Zangerle & Peterson Co. v.

Venice Furniture Novelty Mfg. Co., 133 F.2d 266, 269 (7th Cir.

1943). What the courts of equity condemned was not bare-knuckled

competition, but fraud and deceit, which are worked when one

"palms off" one's goods as those of another, see, e.g., Zangerle

& Peterson, 133 F.2d at 269-70; J.C. Penney, 120 F.2d at 953-54;

Lewis, 108 F.2d at 18; Sinko, 105 F.2d at 452; Rathbone, Sard &

Co., 189 F. at 30-31; EDWARD S. ROGERS, GOOD WILL, TRADE-MARKS, AND

UNFAIR TRADING 212 (1914); cf. 1 NIMS, LAW OF UNFAIR COMPETITION § 134,

at 374 ("The fact that the defendant may have deliberately copied

the appearance of the plaintiff's goods and that in doing so may

have gained an advantage, is not enough. The imitating must have

been done with the expectation of obtaining some unfair

advantage."); see also Two Pesos, 112 S. Ct. at 2762 & n.5 (Stevens, J., concurring in the judgment); Bonito Boats, 489 U.S.

at 157, 109 S. Ct. at 981; that is, when one deceives the

consuming public and misappropriates -- trades upon -- the good will of another. Exploiting the "goodwill of the article,"

Kellogg Co., 305 U.S. at 121, 59 S. Ct. at 115 -- the attractive

features, of whatever nature, that the product holds for

consumers -- is robust competition; only deceiving consumers, or

exploiting the good will of another producer, is unfair

competition.

2. Precedent Under Section 43(a)

Besides having no foothold in the common law, recognizing

the existence of inherently distinctive product configurations is

arguably inconsistent with precedent in this Circuit. As we have

mentioned, in Merchant & Evans we held that a feature of the

product itself qualifies for trade dress protection only if the

plaintiff proves that the imitated feature is nonfunctional, that

it has acquired secondary meaning, and that consumers are likely

to confuse the source of the plaintiff's products with that of

the defendant's. Merchant & Evans, 963 F.2d at 633. This might

be read as an implied holding that trade dress in the product

itself can never be inherently distinctive. But the panel did

not advance this proposition in Merchant & Evans, and, especially given the Supreme Court's intimations in the intervening Two

Pesos decision, we do not read Merchant & Evans in that fashion.

As already stated, Two Pesos poses a problem with

adhering to Merchant & Evans insofar as the Supreme Court's

decision eliminated the secondary meaning prong for inherently

distinctive trade dress. Of course, Two Pesos only answered the question "whether trade dress which is inherently distinctive is protectable under § 43(a) without a showing that it has acquired

secondary meaning," 112 S. Ct. at 2757 (emphasis supplied); it

did not define what makes trade dress inherently distinctive and,

more importantly for our purposes, did not decide whether a

product configuration could ever be inherently distinctive, cf.

Kohler Co., 12 F.3d at 641 n.11 (dicta) ("[A] product's shape is

never inherently distinctive."). And Two Pesos, which dealt with

the decor of a Mexican restaurant, is a product packaging, not a

product configuration, case. See 112 S. Ct. at 2755 & n.1. See

also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b (Tent. Draft

No. 2, Mar. 23, 1990) ("Product designs are . . . not considered

inherently distinctive; such designs are protectable only upon

proof of secondary meaning."); MCCARTHY, TRADEMARKS AND UNFAIR

COMPETITION § 7.31 n.1 (citing conflicting sources).

Nevertheless, we do read Two Pesos as giving an

imprimatur to finding trade dress in a product configuration to

be inherently distinctive under certain narrow circumstances.

Cf. id. at 2759 (not distinguishing among "a verbal or symbolic

mark or the features of a product design"); id. at 2760

(discussing protectability of "design[s]" and "shape[s]"). The

Supreme Court provided two strong competition-based rationales

why at least some trade dress should be deemed inherently

distinctive.

First, the Court noted that protection of trade dress

along with trademarks could further the Lanham Act's purpose to

"`secure to the owner of the mark [or dress] the goodwill of his

business and to protect the ability of consumers to distinguish among competing producers.'" Two Pesos, 112 S. Ct. at 2760

(quoting Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S.

189, 198, 105 S. Ct. 658, 663 (1985)). "By making more difficult

the identification of a producer with its product," the Court

explained, "a secondary meaning requirement for a non-descriptive

trade dress would hinder improving or maintaining the producer's

competitive position." Id. We think that such an overly

rigorous uniform requirement for product configurations would

have a similar deleterious effect.

Second, the Court reasoned that always requiring

secondary meaning would not protect the developer of a "fanciful"

or "arbitrary" trade dress from "theft" while the developer tries

to acquire secondary meaning for its trade dress. See id. at

2758-59; cf. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822,

825 (3d Cir. 1981). In particular, the Court was concerned about

the "anticompetitive effects [of] particular burdens on the

start-up of small companies." Two Pesos, 112 S. Ct. at 2761.

Always requiring secondary meaning would burden fledgling

companies seeking to expand into new markets because established

competitors could "appropriate the originator's [inherently

distinctive nonfunctional trade] dress in other markets and . . .

deter the originator from expanding into and competing in these

areas." Id. This rationale also would seem to apply whether the

trade dress is alleged in a product packaging or a product

configuration.

Of course, it is not the purpose of unfair competition

law, under the guise of either consumer protection or the protection of business good will, to implement a policy of

encouraging innovative designs by protecting them once

designed.10 See Gleiberman, Note, Overbroad Protection of

Product Trade Dress, 45 STAN. L. REV. at 2056-57; cf. Dratler,

Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.

at 909 ("[F]ostering innovation is only a minor and incidental

purpose of trademark protection."). Those issues are the

province of copyright and patent laws. Moreover, design

protection laws (which have repeatedly been introduced in

Congress during virtually every session since 1917) have not once

been enacted. See In re Nalbandian, 661 F.2d 1214, 1218-19 & n.1

(C.C.P.A. 1981) (Rich, J., concurring) (recounting the history of

efforts to pass design protection legislation); Esquire, Inc. v.

Ringer, 591 F.2d 796, 800 n.12 (D.C. Cir. 1978) (observing that

since 1914 none of the approximately 70 design protection bills

introduced in Congress had passed); Brown, Design Protection: An

Overview, 34 U.C.L.A. L. REV. at 1395 ("Beginning in 1957, a

[design protection] bill has been introduced in probably every

Congress . . .."); Dratler, Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV. at 888 & n.4, 904 & n.94 (stating 10 . The two principal purposes of the trademark statute are to avoid consumer confusion and to protect a trademark owner, which has invested "energy, time, and money in presenting to the public the product, . . . from [the trademark's] misappropriation by pirates and cheats." S. REP. No. 1333, 79th Cong., 2d Sess. 3 (1946), reprinted in 1946 U.S. Code Cong. Serv. 1274, 1274; see S. REP. No. 515, 100th Cong., 2d Sess. 4 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5605 (1988 amendment); Park 'N Fly, Inc., 469 U.S. at 198, 105 S. Ct. at 663; Inwood Labs., 456 U.S. at 854 n.14, 102 S. Ct. at 2188 n.14; see also 15 U.S.C.A. § 1127 (Supp. 1994) (identifying five purposes of the amended Lanham Act). that the history of the effort to have Congress enact industrial

design legislation takes up 160 pages in a Copyright office

bibliography, and that between 1914 and 1945 at least 45 such

bills were introduced in Congress); A. Samuel Oddi, The Functions

of "Functionality" in Trademark Law, 22 HOUS. L. REV. 925, 951 &

n.147 (1985); Gleiberman, Note, Overbroad Protection of Product

Trade Dress, 45 STAN. L. REV. at 2070 & nn. 251-52; cf. Bonito

Boats, 489 U.S. at 167-68, 109 S. Ct. at 986 ("It is for Congress

to determine if the present system of design and utility patents

is ineffectual in promoting the useful arts in the context of

industrial design.").

Under the laws that are on the books, Congress has

repeatedly chosen not to protect designs unless they meet certain

strict requirements, catalogued in Merchant & Evans, 963 F.2d at

638-40; see also Dratler, Trademark Protection for Industrial

Designs, 1988 U. ILL L. REV. at 923-35; Gleiberman, Note,

Overbroad Protection of Product Trade Dress, 45 STAN. L. REV. at

2055-65, and then Congress has only given them protection of

circumscribed duration, cf. U.S. CONST. art. I, § 8, cl. 8

(authorizing Congress to grant patents of limited duration). We

believe that courts should exercise restraint so as not to

undermine Congress's repeated determinations not to afford

virtually perpetual protection to product configurations with an

expansive construction of section 43(a). What Congress has, for

the great span of this century, been unwilling to do, see supra at n.Error! Bookmark not defined., should not be effected by the

judiciary. Thus Duraco's suggestion, based on its reading of

Paddington, 996 F.2d at 582-83, that the capacity of the

product's configuration to distinguish the plaintiff's goods from

others suffices to establish inherent distinctiveness, is grossly

overinclusive. It is also circular: clearly any perceptible

product feature or combination or arrangement of features can

distinguish goods, and perhaps is likely to do so if, as a rule,

nobody else were allowed to copy it.11 That is, provided that no

one besides the originator is allowed to use a particular

feature, it would be difficult to conjure up any perceptible

feature that users can train upon that is not capable of

distinguishing the originator's goods from those of others. For

11 . In Paddington, an importer of the anise liqueur ouzo under the label "No. 12 Ouzo" brought a trademark and trade dress infringement suit against a rival ouzo importer using the label "#1 Ouzo." The importers' bottle designs, labeling, and gift boxes were strikingly similar in appearance, containing similar design elements and "using identical shades of red, white and black." Id. at 586. The court of appeals concluded that

[t]he No. 12 Ouzo bottle is inherently distinctive.. . . There is nothing descriptive about the bottle and label design that conveys anything about its particular contents, except for the use of the trademark "No. 12 Ouzo," . . . and the fact that the bottle . . . indicates to the observer that it contains a liquid that probably is potable. The tone and layout of the colors, the style and size of the lettering, and, most important, the overall appearance of the bottle's labeling, are undeniably arbitrary. They were selected from an almost limitless supply of patterns, colors and designs.

Id. at 584 (emphasis supplied). Therefore, a secondary meaning inquiry was unnecessary, id., and after reversing the district court by finding a likelihood of confusion, the court reinstated the trade dress claim that the district court had dismissed. Id. at 588. example, even the basic design of a light bulb is "capable of

identifying a particular source of the product," Paddington, 996

F.2d at 582-83, assuming that only one manufacturer produces the

basic design, a fact which would be assured, of course, if the

design were protected against copying.

Duraco's proposal to treat any product feature or

configuration as inherently distinctive if it were merely capable

of identifying the source of the product would therefore

eviscerate the requirement for showing secondary meaning. Cf.

Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp. 1314, 1321

(N.D. Ill. 1991) ("Presumably, it could be said about the trade

dress of any new product that no competitive product combines

precisely the same elements in its trade dress.. . . However,

that fact alone does not make the product's trade dress

inherently distinctive. Any other rule essentially would require

a finding of inherent distinctiveness whenever a new product

enters the market."). This is so even though the design is not

at all deserving of such protection because, leaving aside the

question of functionality, a consumer seeing another good

incorporating the same design feature or features would not

reasonably believe the first manufacturer to be its source.

Moreover, contrary to Duraco's understanding, Paddington did not read Two Pesos as establishing the "capable of

identifying" standard for inherent distinctiveness. In the Two

Pesos passages cited in Paddington, the Supreme Court was simply

establishing that inherently distinctive trade dress need not

acquire secondary meaning before obtaining protection under the Lanham Act. Thus, the Supreme Court stated that no secondary

meaning would be required for "inherently distinctive trade dress

. . . capable of identifying a producer's product." 112 S. Ct.

at 2760 (emphasis supplied). That statement explains what is

necessary, but not what is sufficient, to make trade dress

inherently distinctive. Paddington, alert to this qualification,

simply held that a feature's capacity to distinguish the goods is

a prerequisite to trademark protection, not a sufficient

condition. See 996 F.2d at 582-83. Indeed, the Court of Appeals

for the Second Circuit in Paddington -- a product packaging case

-- went further and distinguished between merely descriptive

trade dress, for which the plaintiff had to prove secondary

meaning, and suggestive, fanciful, or arbitrary trade dress, for

which no secondary meaning was required. See 996 F.2d at 583;

see also Nancy D. Chapman, Trade Dress Protection in the United

States After the Supreme Court Decision in Two Pesos, 387 PLI/PAT

7, 13-16, 40-42 (1994) [hereinafter Chapman, Trade Dress

Protection] (criticizing the "capable of identifying" standard).

In any event, the analysis appropriate for a product's

packaging, at issue in Paddington, is not necessarily appropriate for a product's configuration. Product packaging designs, like

trademarks, often share membership in a practically inexhaustible

set of distinct but approximately equivalent variations, and an

exclusive right to a particular overall presentation generally

does not substantially hinder competition in the packaged good,

the item in which a consumer has a basic interest. A product

configuration, contrariwise, commonly has finite competitive variations that, on the whole, are equally acceptable to

consumers. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b

(Tent. Draft No. 2, March 23, 1990) (contrasting product

configurations and product packagings based on the availability

of alternatives). Moreover, because of consumers' common

abundant experience with similar goods being sold in differing

packaging, a consumer is substantially more likely to trust a

product's packaging, rather than its configuration, as an

indicium of source. Accordingly, we reject the misreading of

Paddington advanced by Duraco.

It is not ipso facto "unfair competition," we believe,

for one boldly to copy a competitor's product; it is only "unfair

competition" to trade off another's good will and in the process

dupe consumers into mistaking one's products for another's. A

proper approach to inherent distinctiveness must distinguish

between nonfunctional but desirable designs -- which, absent

secondary meaning, unfair competition law has no interest in

precluding others from copying -- and nonfunctional designs

representing to consumers the source of the goods -- which unfair

competition law does and should forbid others from copying.

3. The Standard for Inherent Distinctiveness of Trade Dress in Product Configurations

Synthesizing the principles explored in the preceding

sections, we think that there is a proper set of circumstances

for treating a product configuration as inherently distinctive.

These circumstances are characterized by a high probability that a product configuration serves a virtually exclusively

identifying function for consumers -- where the concerns over

"theft" of an identifying feature or combination or arrangement

of features and the cost to an enterprise of gaining and proving

secondary meaning outweigh concerns over inhibiting competition,

and where consumers are especially likely to perceive a

connection between the product's configuration and its source.

In particular, we think that, to be inherently distinctive, a

product configuration -- comprising a product feature or some

particular combination or arrangement of product features -- for

which Lanham Act protection is sought must be (i) unusual and

memorable; (ii) conceptually separable from the product; and

(iii) likely to serve primarily as a designator of origin of the

product.

For a product configuration to have the capacity to

distinguish goods in a consumer's mind -- the first prerequisite

for inherent distinctiveness -- it must be unusual and memorable.

It must partake of a unique, individualized appearance, so that a

consumer informed of all the options available in the market

could reasonably rely on it to identify a source. See Computer

Care, 982 F.2d at 1069; Hoffman, Trade Dress/Product Simulation

Overview, C913 ALI-ABA at 222 (asserting that trade dress is

inherently distinctive only if "so unique, . . . in a particular

market, that one can assume, without proof, that it will

automatically be perceived by customer[s] as an indicia [sic] of

origin -- a trademark") (omission in original) (citing MCCARTHY,

TRADEMARKS AND UNFAIR COMPETITION and Ambrit, Inc. v. Kraft, Inc., 805 F.2d 974, opinion superseded by 812 F.2d 1531 (11th Cir. 1986)).

"Manifestly, if the plaintiff's trade dress is not sufficiently

distinctive to allow consumers to identify the [source] from the

trade dress, then the dress does not inherently serve as an

indication of origin . . .." Ambrit, Inc., 812 F.2d at 1536,

quoted in Nexxus Prods. Co. v. Bertle Concepts, Inc., 28

U.S.P.Q.2d 1257, 1266 (M.D. Fla. 1993).

Moreover, unless the trade dress is memorable -- that is,

striking or unusual in appearance, or prominently displayed on

the product packaging, or otherwise somehow apt to be impressed

upon the minds of consumers, so that it is likely to be actually

and distinctly remembered -- it cannot serve as a designator of

origin. See Stuart Hall Co. v. Ampad Corp., 31 U.S.P.Q.2d 1468,

1470 (W.D. Mo. 1994); id. at 1471 ("The trade dress must be

remembered before it can be confusing."); cf. Ambrit, Inc., 812

F.2d at 1536 (setting forth criterion to measure

distinctiveness); Computer Care, 982 F.2d at 1069 (holding that

sales brochures are inherently distinctive if consumers can

identify the product from the trade dress and the trade dress is

arbitrary or suggestive). Thus, for example, designs customary

in the industry can not be inherently distinctive (nor for that

matter can they acquire secondary meaning). See Paddington, 996 F.2d at 583-84; Hanig & Co., 1994 WL 97758, at *6-*7; 1 NIMS, LAW

OF UNFAIR COMPETITION § 134a, at 379 (citing Rathbone, Sard & Co.,

189 F. 26); cf. Aromatique, 28 F.3d at 869-70 (per curiam)

(plurality opinion by Morris Sheppard Arnold, J.) (holding that the plaintiff's pillow-shaped cellophane packages were not

inherently distinctive, because commonplace).

But the uniqueness of a product configuration is not

enough by itself to make the configuration inherently

distinctive. To be inherently distinctive, a product

configuration must also be conceptually separable from the

product, so that a consumer will recognize its symbolic

(signifying) character. This requirement ensures that consumers

unaware of any association of the product with a manufacturer

(i.e., where a configuration has no secondary meaning) will not

become confused about whether a particular configuration may be

trusted as an indicium of origin. To be conceptually separable,

the product configuration must be recognizable by the consumer

"as an indicium of source, rather than a decorative symbol or

pattern.. . ." Stuart Hall, 31 U.S.P.Q.2d at 1471 (internal

quotation marks omitted); see Hoffman, Trade Dress/Product

Simulation Overview, C913 ALI-ABA at 223 (contending that trade

dress is inherently distinctive only if "one can assume, without

proof, that it will automatically be perceived by customers as an

indicia [sic] of origin"); cf. MCCARTHY, TRADEMARKS AND UNFAIR

COMPETITION § 7.26, at 248 (suggesting that features perceived as

"merely ornamental" cannot serve as trademarks).

As with trademarks, an inherently protectable product

configuration must, at least conceptually, be "something other

than, and separate from, the merchandise." Davis v. Davis, 27 F.

490, 492 (C.C. Mass. 1886). That is, the configuration for which

protection is sought must not appear to the consumer as a mere component, or the essence, of the product gestalt, but rather

must appear as something attached (in a conceptual sense) to

function in actuality as a source designator -- it must appear to

the consumer to act as an independent signifier of origin rather

than as a component of the good. See, e.g., In re General Tire &

Rubber Co., 404 F.2d 1396, 1398-99 (C.C.P.A. 1969) (affirming

denial of injunction because consumers would probably think of

product feature as ornamentation rather than as indicium of

source).

Third, to be inherently distinctive, it must be likely

that the product configuration will primarily serve as a

designator of the source of the product. See Chapman, Trade

Dress Protection, 387 PLI/PAT at 32 ("`Unique' is not by itself

equivalent to inherently distinct, but a unique design may be so

if it also functions as a source indicator."); supra at typescript Error! Bookmark not defined.-Error! Bookmark not

defined. (rejecting Duraco's reading of Paddington). If the

configuration itself, separate from the product, is likely to serve some substantial purpose other than as a designation of

origin -- that is, besides to set it apart from other sources'

products in consumers' minds -- then it cannot be inherently

distinctive, but must acquire secondary meaning before becoming

entitled to protection against copying. In this regard, a

source's intent in adopting the particular configuration is

highly probative. See Stuart Hall, 31 U.S.P.Q.2d at 1470 & n.2;

RESTATEMENT OF TORTS § 719 cmt. a (1938) ("[D]esigns intended solely as ornamentations are not trade-marks . . .."); Joan L. Dillon, Two Pesos: More Interesting for What It Does Not Decide, 83

TRADEMARK RPTR. 77, 85 (1993) (defining protectable trade dress as

"a combination of elements selected to identify origin, rather

than to serve as mere decor"); NIMS, LAW OF UNFAIR COMPETITION, at 370

("Peculiar and arbitrary features in the form, structure,

arrangement of parts, and general appearance of an article are

often devised, in large part to distinguish it -- to give it

individuality.").

The inquiry here does not duplicate that employed for

secondary meaning; instead of focusing on consumers' actually

acquired mental associations, the inquiry focuses on whether a

consumer would likely perceive the feature or combination or

arrangement of features as something that renders the product

intrinsically more desirable regardless of the source of the

product, or primarily as a signifier of the product's source.

Protecting a product configuration without a showing of secondary

meaning because the configuration is pleasant rather than because

it identifies the source of the product would risk seriously

transgressing the protective zones mapped by the patent laws.12

12 . In the design protection area, our construction of the Lanham Act is informed to some degree by the concurrent existence of the patent laws. See Digital Equip. Corp. v. Desktop Direct, Inc., 114 S. Ct. 1992, 2002 (1994) (invoking the "familiar principle of statutory construction that, when possible, courts should construe statutes . . . to foster harmony with other statutory and constitutional law"); cf. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b (Tent. Draft No. 2, Mar. 23, 1990) ("Rigorous application of the requirements of distinctiveness . . . is essential in order to avoid undermining the carefully circumscribed statutory regimes for the protection of useful and ornamental designs under federal patent and copyright law."). It would not be politic to enable easy circumvention of the strict This is not to say that a configuration must be undesirable to be

eligible as an inherently distinctive product configuration; we

refer here only to the source-designating function of the

Thus, if the feature as to which Lanham Act protection is

sought is likely to be notably desirable to consumers for some

reason other than its function as a source designator, it cannot

be considered inherently distinctive. Like a descriptive

trademark, such a nonfunctional product configuration would be

protectable only if the source-designating function of the

configuration is factually demonstrated with proof of secondary

meaning. So if the consumer is likely to be motivated, in some

more than incidental part, to buy a product because of a

particular combination or arrangement of features, other than

because that configuration signifies a source of the product, the

penumbra of the patent laws -- granting others a right to copy

what has been donated to the public domain -- will deny

protection unless secondary meaning is first shown.

The primarily source-designating inquiry is different

from the functionality inquiry in trade dress law, although it is (..continued) rules governing the grant of a patent by injudiciously affording similar protections without even a showing of secondary meaning. Cf. Keene Corp., 653 F.2d at 824, 827-28 (affirming an injunction requiring only labeling, but not precluding copying, of a functional design with secondary meaning -- relying on discussion of the patent laws in Sears, Roebuck, 376 U.S. at 231-32, 84 S. Ct. at 788-89); American Greetings Corp., 807 F.2d at 1147 (holding that an injunction must be "sufficiently narrow to avoid affording underserved patent protection") (quoting Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 (3d Cir. 1982)) (internal quotation marks omitted). motivated by similar concerns. Both are intended to protect

competition -- and hence consumers -- by restricting the types of

product features that may be insulated from copying.

Nevertheless, the primarily source-designating inquiry is

different from the functionality inquiry, for it limits

inherently distinctive product configurations not to those that

are not important for competitors to be able to copy, but rather

to those whose primary significance is as an intrinsic indicator

of the product's source.

We acknowledge that, to a large extent, how courts

resolve the inherent distinctiveness inquiry could, theoretically

at least, cause a snowballing effect. If product configurations

are easily protected, consumers might learn to rely on

configurations as source designators; if protection is rare,

consumers will disregard product configurations as source

designators, and no confusion will result. But partial

protection, if not carefully circumscribed, may eventually cause

even greater consumer confusion, as consumers will face

difficulties determining what features are legitimate source

designators (because inherently distinctive) and which are not.

The narrow test that we adopt encourages consumers to rely on a

product's configuration as a source designator only when it

rather plainly serves an identifying function.

We believe that the aforementioned requirements for

inherent distinctiveness, while nascent and in need of caselaw

development, allow a source genuinely intent upon using a

particular feature or configuration of its product to signify itself as the source to do so -- at no meaningful cost to free

competition -- without having to prove consumer association

(secondary meaning). We turn to the application of this standard

to the facts of this case.

III. THE LAW APPLIED

Because the district court applied the Abercrombie &

Fitch trademark taxonomy (generic, descriptive, suggestive,

arbitrary, or fanciful) instead of the above standard, see mem.

op. at 12-14, we cannot let its finding of non-distinctiveness

stand. While this would normally result in a remand, we need not

remand if, with the evidence viewed in the light most favorable

to it, Duraco has failed to demonstrate a likelihood of success

on the merits. See In re Molded Acoustical Prods., Inc. (Fiber

Lite Corp. v. Molded Acoustical Prods., Inc.), 18 F.3d 217, 222 &

n.7 (3d Cir. 1994). We conclude that this is the case, for

Duraco's Grecian Classics planters plainly are not inherently

distinctive, and it has not shown the acquired distinctiveness

(secondary meaning) that it would otherwise need to establish in

order for its product configuration to be protectable.

A. Inherent Distinctiveness

We do not gainsay that the particular configuration of

Duraco's urn may be memorable and unusual. In this regard, we

disagree with the district court's conclusion that "all of the

urns introduced as exhibits . . . looked about the same, as did

those presented in drawings," mem. op. at 10. Instead, after viewing most of the plastic planter designs introduced in the

district court, including the physical exhibits and drawings, we

believe that some definitely have a look that consumers could not

reasonably confuse with the Grecian Classics, Backyard Products,

or Cotswold planters. While mere distinguishability without more

is, as we have explained, insufficient to establish that a

product configuration is memorable and unusual in the sense that

it could be an inherently distinctive indicium of source, we

cannot say with certainty that Duraco's planters were not

memorable and unusual at the time that Joy introduced the

Ultimate Urns into interstate commerce.

Our review of course is deferential. But we need not run

out the string in our review of the district court's fact finding

in this respect for, at all events, we are satisfied that the

Grecian Classics' design rather clearly falls outside the

inherently distinctive category.

First, it is beyond peradventure that Duraco's alleged

protectable product configuration is not conceptually separable

from its plastic planters. Unlike an arbitrary carving etched

into the back of a chair to identify the source, for example, the

features of the Grecian Classics for which Duraco seeks

protection are designed to achieve the goal of having the planter

appear as if constructed of marble or stone, and thus constitute

part and parcel of the overall product.13

13 . It is apparent at this point that the definition of the product market will have an important bearing on whether a feature or combination or arrangement of features is conceptually separable from the product. Here the district court impliedly Second, consumers are likely to appreciate the Grecian

Classics' design, as the district court found to be the case,

primarily as an inherently attractive aspect of the product, not

as a source-indicator. Abundant and uncontroverted testimony

established that Duraco adopted its features to create the

appearance of a marble, stone, or cement Grecian or classical-

style urn, not to identify itself as the source. Indeed, Duraco

itself admits that consumers are largely motivated to purchase

Grecian Classics because of the aesthetic advantages of the

precise configuration for which it seeks protection. Moreover,

Joy imitated the Grecian Classics' design because of its

aesthetic appeal to consumers.

In sum, two of the requirements for inherent

distinctiveness not having been satisfied, we easily conclude

that Duraco's planter is not inherently distinctive.

B. Acquired Distinctiveness (Secondary Meaning)

The absence of inherent distinctiveness means that to

establish a likelihood of success on the merits of its trade

dress infringement claim, Duraco must prove secondary meaning,

which the district court found it had not done. See mem. op. at 14-16. Although the point is without difficulty, we will briefly

review it for clear error. (..continued) found that the appropriate product category was plastic "classically styled urns" for plants, see mem. op. at 17, and, no party having challenged that finding, we are not called upon to review it or to provide the appropriate standards for ascertaining it. If a product's configuration is not inherently

distinctive, the plaintiff must prove acquired distinctiveness

via a showing of secondary meaning. Factors relevant to a

finding of secondary meaning in a product configuration include:

(1) plaintiff's advertising expenditures, measured primarily with

regard to those advertisements which highlight the supposedly

distinctive, identifying feature, see First Brands Corp. v. Fred

Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987); (2) consumer

surveys linking the distinctive product configuration to a

particular, single source (although the identity of the source

need not be known); and (3) length and exclusivity of use.

Consumer surveys and testimony are probably the only direct

evidence of secondary meaning; the other sources are

circumstantial, though the plaintiff may rely solely on them.

See Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by

Morris Sheppard Arnold, J.) (secondary meaning for trade dress);

Woodsmith Publishing Co., 904 F.2d at 1249 (same); International

Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086 (7th

Cir. 1988) (secondary meaning for trademark).

Sales success by itself will typically not be as

probative of secondary meaning in a product configuration case as

in a trademark case, since the product's market success may well

be attributable to the desirability of the product configuration

rather than the source-designating capacity of the supposedly

distinguishing feature or combination of features. And unlike

with a trademark, where repeated purchases of a product support

an inference that consumers have associated the mark with the producer or source, one can much less confidently presume that a

consumer's repeated purchase of a product has created an

association between a particular product configuration and the

source. Cf. International Jensen, 4 F.2d at 824 (product

configuration) ("While evidence of a manufacturer's sales,

advertising and promotional activities may be relevant in

determining secondary meaning, the true test of secondary meaning

is the effectiveness of this effort to create it."); Braun, Inc.,

975 F.2d at 826-27 (product configuration) (same); First Brands

Corp., 809 F.2d at 1383 (product packaging) (same); American

Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d

Cir. 1979) (trademark) (same).

The very fact that a consumer could identify the source

based on the product's configuration implies that the

configuration is at least somewhat unusual, and this

"distinctiveness" of the product itself may be the source of the

motivation to purchase if a consumer does not care about who the

source is. In this respect product configuration again differs

dramatically from trademark and from product packaging, since the

success of a particular product -- especially if similar

competing products exist -- does not readily lead to the

inference of source identification and consumer interest in the

source; it may well be that the product, inclusive of the product

configuration, is itself inherently desirable, in a way that

product packagings and trademarks are not. Similarly,

unsolicited media coverage may reflect interest more in an

unusual product than in the source of the product. Analogously, attempts to copy a product configuration

will quite often not be probative: the copier may very well be

exploiting a particularly desirable feature, rather than seeking

to confuse consumers as to the source of the product. See

Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by

Morris Sheppard Arnold, J.); Braun, Inc., 975 F.2d at 827; supra at typescript Error! Bookmark not defined.-34; cf. Brown, Design

Protection: An Overview, 34 U.C.C.A. L. REV. at 1384-85

(observing that the act of copying a product configuration does

not ipso facto involve false representation). The inference of

unfair competition will be even weaker where the copier takes

conspicuous steps -- whether in packaging, trademark, marketing

techniques, or otherwise -- to distinguish its product from its

competitor's.

In sum, secondary meaning in a product configuration case

will generally not be easy to establish. We note, however, that

in certain circumstances, e.g., with respect to drugs or pills

with unusual colors and/or shapes, a consumer may be more likely

to rely on the product's configuration as a source designator,

and the consumer may thereby have become sensitized, so that

secondary meaning will be easier to establish. This may be the

case if the good is one with some features of importance to a

consumer's choice that a consumer ordinarily cannot recognize in

the market (such as the safety and efficacy of a drug) and one in

which, because of the nature of the product's use or consumption,

identifying source designations might not readily be prominently

displayed. Cf. Sinko, 105 F.2d at 453 (stating that with products like drugs, where the efficiency of the product depends

greatly upon the maker's capacity, consumers would care more

about the pills' manufacturer than the appearance of the drug

itself).

With respect to Duraco's Grecian Classics, we fully

concur in the district court's finding of no secondary meaning.

Duraco in its survey has not shown any consumer association

between the Grecian Classics planters and a particular source;

instead, its plastic planters are purchased because consumers

(whether retail or wholesale) find them innately desirable,

probably because of their pleasing "attic shape."14 Moreover,

the evidence indicates without contradiction that Joy emulated

Duraco's design because Joy believed it to be a superior one, not

to trade on Duraco's non-existent good will in the Grecian

Classics' configuration.

In addition, Duraco has not emphasized its alleged trade

dress in its advertising, relying instead primarily on small

depictions of the entire product. Finally, Duraco exclusively

sold planters with the "Grecian Classics look" for at most five

years, not so long a time as to raise a strong inference of

consumer association with a single source. Therefore, because

14 . O Attic shape! Fair attitude! with brede Of marble men and maidens overwrought, With forest branches and the trodden weed; Thou, silent form! dost tease us out of thought As doth eternity: Cold Pastoral!

John Keats, Ode on a Grecian Urn (excerpt from last stanza). the district court was correct and a fortiori not clearly

erroneous, we will affirm its finding of no secondary meaning.

IV. CONCLUSION

Applying the standard that this opinion has articulated

for determining whether product configurations are inherently

distinctive, we have concluded, viewing the evidence in the light

most favorable to Duraco, that Duraco's Grecian Classics plastic

planters are not inherently distinctive. We have further

concluded that the district court was not clearly erroneous in

finding that Duraco has failed to show secondary meaning. Thus,

having demonstrated neither inherent nor acquired

distinctiveness, Duraco has not established a likelihood of

success on the merits of its Lanham Act action for trade dress

infringement. For the foregoing reasons, we will affirm the

district court's order denying Duraco's motion for a preliminary

injunction. The district court's further proceedings resolving

the case on final hearing will, of course, be conducted

consistently with this opinion.