WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

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205 OCTOBER TERM, 1999
Syllabus
WAL-MART STORES, INC. v. SAMARA BROTHERS,
INC.
certiorari to the united states court of appeals for
the second circuit
No. 99–150. Argued January 19, 2000—Decided March 22, 2000
Respondent Samara Brothers, Inc., designs and manufactures a line of
children’s clothing. Petitioner Wal-Mart Stores, Inc., contracted with a
supplier to manufacture outfits based on photographs of Samara gar-
ments. After discovering that Wal-Mart and other retailers were sell-
ing the so-called knockoffs, Samara brought this action for, inter alia,
infringement of unregistered trade dress under § 43(a) of the Trademark
Act of 1946 (Lanham Act). The jury found for Samara. Wal-Mart then
renewed a motion for judgment as a matter of law, claiming that there
was insufficient evidence to support a conclusion that Samara’s clothing
designs could be legally protected as distinctive trade dress for pur-
poses of § 43(a). The District Court denied the motion and awarded
Samara relief. The Second Circuit affirmed the denial of the motion.
Held: In a § 43(a) action for infringement of unregistered trade dress, a
product’s design is distinctive, and therefore protectible, only upon a
showing of secondary meaning. Pp. 209–216.
(a) In addition to protecting registered trademarks, the Lanham Act,
in § 43(a), gives a producer a cause of action for the use by any person
of “any . . . symbo[l] or device . . . likely to cause confusion . . . as to the
origin . . . of his or her goods.” The breadth of the confusion-producing
elements actionable under § 43(a) has been held to embrace not just
word marks and symbol marks, but also “trade dress”—a category that
originally included only the packaging, or “dressing,” of a product, but
in recent years has been expanded by many Courts of Appeals to encom-
pass the product’s design. These courts have correctly assumed that
trade dress constitutes a “symbol” or “device” for Lanham Act purposes.
Although § 43(a) does not explicitly require a producer to show that its
trade dress is distinctive, courts have universally imposed that require-
ment, since without distinctiveness the trade dress would not “cause
confusion . . . as to . . . origin,” as § 43(a) requires. In evaluating distinc-
tiveness, courts have differentiated between marks that are inherently
distinctive—i. e., marks whose intrinsic nature serves to identify their
particular source—and marks that have acquired distinctiveness
through secondary meaning—i. e., marks whose primary significance,
in the minds of the public, is to identify the product’s source rather than

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Syllabus
the product itself. This Court has held, however, that applications of
at least one category of mark—color—can never be inherently distinc-
tive, although they can be protected upon a showing of secondary mean-
ing. Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 162–163.
Pp. 209–212.
(b) Design, like color, is not inherently distinctive. The attribution
of inherent distinctiveness to certain categories of word marks and
product packaging derives from the fact that the very purpose of attach-
ing a particular word to a product, or encasing it in a distinctive pack-
age, is most often to identify the product’s source. Where it is not
reasonable to assume consumer predisposition to take an affixed word
or packaging as indication of source, inherent distinctiveness will not be
found. With product design, as with color, consumers are aware of the
reality that, almost invariably, that feature is intended not to identify
the source, but to render the product itself more useful or more appeal-
ing. Pp. 212–214.
(c) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, does not fore-
close the Court’s conclusion, since the trade dress there at issue was
restaurant de´ cor, which does not constitute product design, but rather
product packaging or else some tertium quid that is akin to product
packaging and has no bearing on the present case. While distinguish-
ing Two Pesos might force courts to draw difficult lines between
product-design and product-packaging trade dress, the frequency and
difficulty of having to distinguish between the two will be much less
than the frequency and difficulty of having to decide when a prod-
uct design is inherently distinctive. To the extent there are close
cases, courts should err on the side of caution and classify ambiguous
trade dress as product design, thereby requiring secondary meaning.
Pp. 214–215.
165 F. 3d 120, reversed and remanded.
Scalia, J., delivered the opinion for a unanimous Court.
William D. Coston argued the cause for petitioner. With
him on the briefs were Kenneth C. Bass III and Martin L.
Saad.
Deputy Solicitor General Wallace argued the cause for
the United States as amicus curiae urging reversal. With
him on the brief were Solicitor General Waxman, Acting
Assistant Attorney General Ogden, Edward C. DuMont,
Barbara C. Biddle, Alfred Mollin, Albin F. Drost, and
Nancy C. Slutter.

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Opinion of the Court
Stuart M. Riback argued the cause for respondent. With
him on the brief was Mark I. Levy.*
Justice Scalia delivered the opinion of the Court.
In this case, we decide under what circumstances a prod-
uct’s design is distinctive, and therefore protectible, in an
action for infringement of unregistered trade dress under
§ 43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat.
441, as amended, 15 U. S. C. § 1125(a).
I
Respondent Samara Brothers, Inc., designs and manufac-
tures children’s clothing. Its primary product is a line of
spring/summer one-piece seersucker outfits decorated with
applique´ s of hearts, flowers, fruits, and the like. A number
of chain stores, including JCPenney, sell this line of clothing
under contract with Samara.
Petitioner Wal-Mart Stores, Inc., is one of the Nation’s
best known retailers, selling among other things children’s
clothing. In 1995, Wal-Mart contracted with one of its sup-
pliers, Judy-Philippine, Inc., to manufacture a line of chil-
dren’s outfits for sale in the 1996 spring/summer season.
Wal-Mart sent Judy-Philippine photographs of a number of
garments from Samara’s line, on which Judy-Philippine’s gar-
ments were to be based; Judy-Philippine duly copied, with
*Briefs of amici curiae urging reversal were filed for the International
Mass Retail Association by Jeffrey S. Sutton and Robert J. Verdisco; for
the Private Label Manufacturers Association by Arthur M. Handler; and
for Scott P. Zimmerman by Charles W. Calkins.
H. Bartow Farr III, Richard G. Taranto, and Stephen M. Trattner filed
a brief for Ashley Furniture Industries, Inc., et al. as amici curiae urg-
ing affirmance.
Briefs of amici curiae were filed for the American Intellectual Property
Law Association by Sheldon H. Klein, Michael A. Grow, and Louis T.
Pirkey; for the International Trademark Association by Theodore H.
Davis, Jr., Morton D. Goldberg, and Marie V. Driscoll; and for Payless
Shoesource, Inc., by William A. Rudy and Robert Kent Sellers.

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only minor modifications, 16 of Samara’s garments, many of
which contained copyrighted elements. In 1996, Wal-Mart
briskly sold the so-called knockoffs, generating more than
$1.15 million in gross profits.
In June 1996, a buyer for JCPenney called a representative
at Samara to complain that she had seen Samara garments
on sale at Wal-Mart for a lower price than JCPenney was
allowed to charge under its contract with Samara. The
Samara representative told the buyer that Samara did not
supply its clothing to Wal-Mart. Their suspicions aroused,
however, Samara officials launched an investigation, which
disclosed that Wal-Mart and several other major retailers—
Kmart, Caldor, Hills, and Goody’s—were selling the knock-
offs of Samara’s outfits produced by Judy-Philippine.
After sending cease-and-desist letters, Samara brought
this action in the United States District Court for the South-
ern District of New York against Wal-Mart, Judy-Philippine,
Kmart, Caldor, Hills, and Goody’s for copyright infringement
under federal law, consumer fraud and unfair competition
under New York law, and—most relevant for our purposes—
infringement of unregistered trade dress under § 43(a) of
the Lanham Act, 15 U. S. C. § 1125(a). All of the defendants
except Wal-Mart settled before trial.
After a weeklong trial, the jury found in favor of Samara
on all of its claims. Wal-Mart then renewed a motion for
judgment as a matter of law, claiming, inter alia, that there
was insufficient evidence to support a conclusion that Sama-
ra’s clothing designs could be legally protected as distinctive
trade dress for purposes of § 43(a). The District Court de-
nied the motion, 969 F. Supp. 895 (SDNY 1997), and awarded
Samara damages, interest, costs, and fees totaling almost
$1.6 million, together with injunctive relief, see App. to Pet.
for Cert. 56–58. The Second Circuit affirmed the denial of
the motion for judgment as a matter of law, 165 F. 3d 120
(1998), and we granted certiorari, 528 U. S. 808 (1999).

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Opinion of the Court
II
The Lanham Act provides for the registration of trade-
marks, which it defines in § 45 to include “any word, name,
symbol, or device, or any combination thereof [used or in-
tended to be used] to identify and distinguish [a producer’s]
goods . . . from those manufactured or sold by others and to
indicate the source of the goods . . . .” 15 U. S. C. § 1127.
Registration of a mark under § 2 of the Lanham Act, 15
U. S. C. § 1052, enables the owner to sue an infringer under
§ 32, 15 U. S. C. § 1114; it also entitles the owner to a pre-
sumption that its mark is valid, see § 7(b), 15 U. S. C.
§ 1057(b), and ordinarily renders the registered mark incon-
testable after five years of continuous use, see § 15, 15
U. S. C. § 1065. In addition to protecting registered marks,
the Lanham Act, in § 43(a), gives a producer a cause of action
for the use by any person of “any word, term, name, symbol,
or device, or any combination thereof . . . which . . . is likely
to cause confusion . . . as to the origin, sponsorship, or ap-
proval of his or her goods . . . .” 15 U. S. C. § 1125(a). It is
the latter provision that is at issue in this case.
The breadth of the definition of marks registrable under
§ 2, and of the confusion-producing elements recited as ac-
tionable by § 43(a), has been held to embrace not just word
marks, such as “Nike,” and symbol marks, such as Nike’s
“swoosh” symbol, but also “trade dress”—a category that
originally included only the packaging, or “dressing,” of a
product, but in recent years has been expanded by many
Courts of Appeals to encompass the design of a product.
See, e. g., Ashley Furniture Industries, Inc. v. Sangiacomo
N. A., Ltd., 187 F. 3d 363 (CA4 1999) (bedroom furniture);
Knitwaves, Inc. v. Lollytogs, Ltd., 71 F. 3d 996 (CA2 1995)
(sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F. 3d 780
(CA8 1995) (notebooks). These courts have assumed, often
without discussion, that trade dress constitutes a “symbol”
or “device” for purposes of the relevant sections, and we con-
clude likewise. “Since human beings might use as a ‘symbol’

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or ‘device’ almost anything at all that is capable of carrying
meaning, this language, read literally, is not restrictive.”
Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 162
(1995). This reading of § 2 and § 43(a) is buttressed by a
recently added subsection of § 43(a), § 43(a)(3), which refers
specifically to “civil action[s] for trade dress infringement
under this chapter for trade dress not registered on the prin-
cipal register.” 15 U. S. C. § 1125(a)(3) (1994 ed., Supp. V).
The text of § 43(a) provides little guidance as to the
circumstances under which unregistered trade dress may
be protected. It does require that a producer show that
the allegedly infringing feature is not “functional,” see § 43
(a)(3), and is likely to cause confusion with the product
for which protection is sought, see § 43(a)(1)(A), 15 U. S. C.
§ 1125(a)(1)(A). Nothing in § 43(a) explicitly requires a pro-
ducer to show that its trade dress is distinctive, but courts
have universally imposed that requirement, since without
distinctiveness the trade dress would not “cause confusion
. . . as to the origin, sponsorship, or approval of [the] goods,”
as the section requires. Distinctiveness is, moreover, an
explicit prerequisite for registration of trade dress under
§ 2, and “the general principles qualifying a mark for regis-
tration under § 2 of the Lanham Act are for the most part
applicable in determining whether an unregistered mark
is entitled to protection under § 43(a).” Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U. S. 763, 768 (1992) (citations
omitted).
In evaluating the distinctiveness of a mark under § 2 (and
therefore, by analogy, under § 43(a)), courts have held that a
mark can be distinctive in one of two ways. First, a mark
is inherently distinctive if “[its] intrinsic nature serves to
identify a particular source.” Ibid. In the context of word
marks, courts have applied the now-classic test originally
formulated by Judge Friendly, in which word marks that are
“arbitrary” (“Camel” cigarettes), “fanciful” (“Kodak” film), or
“suggestive” (“Tide” laundry detergent) are held to be inher-

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ently distinctive. See Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F. 2d 4, 10–11 (CA2 1976). Second, a mark
has acquired distinctiveness, even if it is not inherently dis-
tinctive, if it has developed secondary meaning, which occurs
when, “in the minds of the public, the primary significance
of a [mark] is to identify the source of the product rather
than the product itself.” Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U. S. 844, 851, n. 11 (1982).*
The judicial differentiation between marks that are inher-
ently distinctive and those that have developed secondary
meaning has solid foundation in the statute itself. Section 2
requires that registration be granted to any trademark “by
which the goods of the applicant may be distinguished from
the goods of others”—subject to various limited exceptions.
15 U. S. C. § 1052. It also provides, again with limited ex-
ceptions, that “nothing in this chapter shall prevent the reg-
istration of a mark used by the applicant which has become
distinctive of the applicant’s goods in commerce”—that is,
which is not inherently distinctive but has become so only
through secondary meaning. § 2(f), 15 U. S. C. § 1052(f).
Nothing in § 2, however, demands the conclusion that every
category of mark necessarily includes some marks “by which
the goods of the applicant may be distinguished from the
goods of others” without secondary meaning—that in every
category some marks are inherently distinctive.
Indeed, with respect to at least one category of mark—
colors—we have held that no mark can ever be inherently
distinctive. See Qualitex, supra, at 162–163. In Qualitex,
*The phrase “secondary meaning” originally arose in the context of
word marks, where it served to distinguish the source-identifying meaning
from the ordinary, or “primary,” meaning of the word. “Secondary mean-
ing” has since come to refer to the acquired, source-identifying meaning
of a nonword mark as well. It is often a misnomer in that context, since
nonword marks ordinarily have no “primary” meaning. Clarity might
well be served by using the term “acquired meaning” in both the word-
mark and the nonword-mark contexts—but in this opinion we follow what
has become the conventional terminology.

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petitioner manufactured and sold green-gold dry-cleaning
press pads. After respondent began selling pads of a simi-
lar color, petitioner brought suit under § 43(a), then added
a claim under § 32 after obtaining registration for the
color of its pads. We held that a color could be protected
as a trademark, but only upon a showing of secondary mean-
ing. Reasoning by analogy to the Abercrombie & Fitch test
developed for word marks, we noted that a product’s color is
unlike a “fanciful,” “arbitrary,” or “suggestive” mark, since
it does not “almost automatically tell a customer that [it]
refer[s] to a brand,” 514 U. S., at 162–163, and does not
“immediately . . . signal a brand or a product ‘source,’ ” id.,
at 163. However, we noted that, “over time, customers
may come to treat a particular color on a product or its
packaging . . . as signifying a brand.” Ibid. Because a
color, like a “descriptive” word mark, could eventually “come
to indicate a product’s origin,” we concluded that it could be
protected upon a showing of secondary meaning. Ibid.
It seems to us that design, like color, is not inherently
distinctive. The attribution of inherent distinctiveness to
certain categories of word marks and product packaging
derives from the fact that the very purpose of attaching a
particular word to a product, or encasing it in a distinctive
packaging, is most often to identify the source of the product.
Although the words and packaging can serve subsidiary
functions—a suggestive word mark (such as “Tide” for laun-
dry detergent), for instance, may invoke positive connota-
tions in the consumer’s mind, and a garish form of packaging
(such as Tide’s squat, brightly decorated plastic bottles for
its liquid laundry detergent) may attract an otherwise indif-
ferent consumer’s attention on a crowded store shelf—their
predominant function remains source identification. Con-
sumers are therefore predisposed to regard those symbols
as indication of the producer, which is why such symbols
“almost automatically tell a customer that they refer to a
brand,” id., at 162–163, and “immediately . . . signal a brand

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or a product ‘source,’ ” id., at 163. And where it is not rea-
sonable to assume consumer predisposition to take an affixed
word or packaging as indication of source—where, for exam-
ple, the affixed word is descriptive of the product (“Tasty”
bread) or of a geographic origin (“Georgia” peaches)—inher-
ent distinctiveness will not be found. That is why the stat-
ute generally excludes, from those word marks that can be
registered as inherently distinctive, words that are “merely
descriptive” of the goods, § 2(e)(1), 15 U. S. C. § 1052(e)(1), or
“primarily geographically descriptive of them,” see § 2(e)(2),
15 U. S. C. § 1052(e)(2). In the case of product design, as in
the case of color, we think consumer predisposition to equate
the feature with the source does not exist. Consumers are
aware of the reality that, almost invariably, even the most
unusual of product designs—such as a cocktail shaker shaped
like a penguin—is intended not to identify the source, but
to render the product itself more useful or more appealing.
The fact that product design almost invariably serves pur-
poses other than source identification not only renders inher-
ent distinctiveness problematic; it also renders application of
an inherent-distinctiveness principle more harmful to other
consumer interests. Consumers should not be deprived of
the benefits of competition with regard to the utilitarian and
esthetic purposes that product design ordinarily serves by a
rule of law that facilitates plausible threats of suit against
new entrants based upon alleged inherent distinctiveness.
How easy it is to mount a plausible suit depends, of course,
upon the clarity of the test for inherent distinctiveness, and
where product design is concerned we have little confidence
that a reasonably clear test can be devised. Respondent and
the United States as amicus curiae urge us to adopt for
product design relevant portions of the test formulated by
the Court of Customs and Patent Appeals for product pack-
aging in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F. 2d 1342 (1977). That opinion, in determining the inherent
distinctiveness of a product’s packaging, considered, among

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other things, “whether it was a ‘common’ basic shape or de-
sign, whether it was unique or unusual in a particular field,
[and] whether it was a mere refinement of a commonly-
adopted and well-known form of ornamentation for a par-
ticular class of goods viewed by the public as a dress or orna-
mentation for the goods.” Id., at 1344 (footnotes omitted).
Such a test would rarely provide the basis for summary dis-
position of an anticompetitive strike suit. Indeed, at oral
argument, counsel for the United States quite understand-
ably would not give a definitive answer as to whether the
test was met in this very case, saying only that “[t]his is
a very difficult case for that purpose.” Tr. of Oral Arg. 19.
It is true, of course, that the person seeking to exclude
new entrants would have to establish the nonfunctionality of
the design feature, see § 43(a)(3), 15 U. S. C. § 1125(a)(3) (1994
ed., Supp. V)—a showing that may involve consideration of
its esthetic appeal, see Qualitex, supra, at 170. Competi-
tion is deterred, however, not merely by successful suit but
by the plausible threat of successful suit, and given the un-
likelihood of inherently source-identifying design, the game
of allowing suit based upon alleged inherent distinctiveness
seems to us not worth the candle. That is especially so since
the producer can ordinarily obtain protection for a design
that is inherently source identifying (if any such exists), but
that does not yet have secondary meaning, by securing a
design patent or a copyright for the design—as, indeed, re-
spondent did for certain elements of the designs in this case.
The availability of these other protections greatly reduces
any harm to the producer that might ensue from our conclu-
sion that a product design cannot be protected under § 43(a)
without a showing of secondary meaning.
Respondent contends that our decision in Two Pesos fore-
closes a conclusion that product-design trade dress can never
be inherently distinctive. In that case, we held that the
trade dress of a chain of Mexican restaurants, which the
plaintiff described as “a festive eating atmosphere having

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interior dining and patio areas decorated with artifacts,
bright colors, paintings and murals,” 505 U. S., at 765 (inter-
nal quotation marks and citation omitted), could be protected
under § 43(a) without a showing of secondary meaning, see
id., at 776. Two Pesos unquestionably establishes the legal
principle that trade dress can be inherently distinctive, see,
e. g., id., at 773, but it does not establish that product-design
trade dress can be. Two Pesos is inapposite to our holding
here because the trade dress at issue, the de´ cor of a restau-
rant, seems to us not to constitute product design. It was
either product packaging—which, as we have discussed, nor-
mally is taken by the consumer to indicate origin—or else
some tertium quid that is akin to product packaging and has
no bearing on the present case.
Respondent replies that this manner of distinguishing
Two Pesos will force courts to draw difficult lines between
product-design and product-packaging trade dress. There
will indeed be some hard cases at the margin: a classic glass
Coca-Cola bottle, for instance, may constitute packaging for
those consumers who drink the Coke and then discard the
bottle, but may constitute the product itself for those con-
sumers who are bottle collectors, or part of the product itself
for those consumers who buy Coke in the classic glass bottle,
rather than a can, because they think it more stylish to drink
from the former. We believe, however, that the frequency
and the difficulty of having to distinguish between product
design and product packaging will be much less than the
frequency and the difficulty of having to decide when a prod-
uct design is inherently distinctive. To the extent there are
close cases, we believe that courts should err on the side of
caution and classify ambiguous trade dress as product de-
sign, thereby requiring secondary meaning. The very close-
ness will suggest the existence of relatively small utility in
adopting an inherent-distinctiveness principle, and relatively
great consumer benefit in requiring a demonstration of sec-
ondary meaning.

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* * *
We hold that, in an action for infringement of unregistered
trade dress under § 43(a) of the Lanham Act, a product’s de-
sign is distinctive, and therefore protectible, only upon a
showing of secondary meaning. The judgment of the Sec-
ond Circuit is reversed, and the case is remanded for further
proceedings consistent with this opinion.
It is so ordered.