TWO PESOS INC PETITIONER v TACO CABANA INC No 91 971 SUPREME COURT OF THE UNITED STATES 505 U S 763 112 S Ct 2753 120 L Ed 2d 615 1992 U S LEXIS 4533 60 U S L W 4762 23 U S P Q 2D BNA 1081 92 Cal Daily Op Service 5571 92 Daily Journal DAR 8910 6 Fla L Weekly Fed S 643 April 21 1992 Argued June 26 1992 Decided SUBSEQUENT HISTORY As Amended July 2 1992 PRIOR HISTORY ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT DISPOSITION 932 F 2d 1113 affirmed View References Turn Off Lawyers Edition Display DECISION Inherently distinctive trade dress held protectable from infringement under federal trademark law 15 USCS 1125 a without proof of secondary meaning SUMMARY A fast food Mexican restaurant chain alleging that a second chain which had opened restaurants with a very similar motif had thereby infringed the first chain s trade dress in violation of 43 a of the Trademark Act of 1946 Lanham Act 15 USCS 1125 a later amended which provided that any person who used in connection with any goods or services any false description or representation was liable to any person damaged by such use brought an action against the second chain in the United States District Court for the Southern District of Texas The District Court instructed the jury that trade dress that is the total image and appearance of a business was protected under 43 a if it either was inherently distinctive or had acquired a secondary meaning that is a unique association with a specific source The jury found that the first chain s trade dress was inherently distinctive but had not acquired a secondary meaning and the District Court entered a judgment for the first chain In affirming the United States Court of Appeals for the Fifth Circuit 1 ruled that the District Court s instructions had adequately stated the applicable law and that the evidence supported the jury s findings and 2 rejected the second chain s argument that a finding of no secondary meaning contradicted a finding of inherent distinctiveness 932 F2d 1113 19 USPQ2d 1253 On certiorari the United States Supreme Court affirmed In an opinion by White J joined by Rehnquist Ch J and Blackmun O Connor Scalia Kennedy and Souter JJ it was held that the trade dress of a business may be protected under 43 a based on a finding of inherent distinctiveness without proof that the trade dress has secondary meaning because 1 recovery for trademark infringement under 43 a was generally available without proof of a secondary meaning 2 there was no persuasive reason to apply different principles to trade dress since a the protections of trademarks and trade dress under 43 a served the same statutory purpose of preventing deception and unfair competition b there was no textual basis in 43 a for different treatment and c requiring a secondary meaning for inherently distinctive trade dress would undermine the purposes of the Lanham Act 15 USCS 1051 et seq and could have anticompetitive effects and 3 there was no basis in 43 a to support the suggestion that the requirement of a secondary meaning for a trade dress came into being after some unspecified time Scalia J concurring expressed the view that 1 Thomas J was correct in stating that the language of 43 a and its common law derivation were broad enough to embrace inherently distinctive trade dress but 2 this analysis was complementary to rather than inconsistent with the opinion of the court Stevens J concurring in the judgment expressed the view that the conclusion that a secondary meaning was not required to establish a trade dress violation under 43 a was supported by the principle of stare decisis in light of 1 the general consensus among the Federal Courts of Appeals that had addressed the question and 2 Congress codification of that consensus Thomas J concurring in the judgment expressed the view that 1 it followed from the language of 43 a that the first user of an arbitrary package like the first user of an arbitrary word should be entitled to a presumption the package represented the first user without having to show that it did so in fact and 2 this rule applied under 43 a without regard to the rules that applied under the sections of the Lanham Act dealing with registration LEXIS HEADNOTES Classified to U S Digest Lawyers Edition HN1 TRADEMARKS AND TRADENAMES 7 protectability Lanham Act inherently distinctive trade dress lack of secondary meaning Headnote 1A 1B 1C 1D 1E 1F The trade dress of a business that is the total image and appearance of a business may be protected under 43 a of the Trademark Act of 1946 Lanham Act 15 USCS 1125 a later amended without proof that the trade dress has a secondary meaning that is a unique association with a specific source because 1 recovery for trademark infringement under 43 a is generally available without proof of a secondary meaning 2 there is no persuasive reason to apply to trade dress a general requirement of secondary meaning which is at odds with the principles generally applicable under 43 a to trademark infringement suits concerning distinctive words symbols or devices capable of identifying a producer s product since a the protections of trademarks and trade dress under 43 a serve the same statutory purpose of preventing deception and unfair competition b there is no textual basis in 43 a for treating inherently distinctive verbal or symbolic trademarks differently from inherently distinctive trade dress given that 43 a does not mention trademarks trade dress or secondary meaning and c engrafting onto 43 a a requirement of secondary meaning for inherently distinctive trade dress i would undermine the purposes of the Lanham Act 15 USCS 1051 et seq to secure to business owners the goodwill of their businesses and to protect the ability of consumers to distinguish among competing products by making more difficult the identification of a producer with its product and ii could have anticompetitive effects by creating particular burdens on the startup of small companies and 3 there is no basis in 43 a to support the suggestion that the requirement of a secondary meaning for a trade dress comes into being after some unspecified time since to terminate protection for failure to gain secondary meaning after some unspecified time could only be based on the failure of the user of the trade dress to be successful enough in the marketplace which is not a valid basis for finding a trade dress or a trademark to be ineligible for protection thus a
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