## Facts

- Ashley Furniture Industries manufactured and sold mid-priced bedroom furniture suites nationwide; SanGiacomo designed, imported, and marketed competing furniture in the same market segment.
- Retailers typically did not prominently display manufacturer identifiers on bedroom furniture; any tags or emblems were often inconspicuous and not consistently used at the point of sale.
- In March 1996, Ashley introduced “Sommerset,” a neoclassical-style bedroom suite featuring a high-gloss, marble-like finish and classical motifs (including fluted columns, arches, and entablatures), sold at about $2,500.
- Less than a year later, SanGiacomo introduced “La Dolce Vita,” a similarly styled suite with comparable motifs and finish, sold at about $1,800.
- Ashley alleged La Dolce Vita was designed to copy Sommerset’s overall appearance to benefit from Sommerset’s distinct look in the marketplace.
- Ashley also asserted breach of an earlier oral settlement agreement arising from prior litigation between the companies, alleging SanGiacomo promised not to copy Ashley’s designs.
- The district court granted partial summary judgment to SanGiacomo on the Lanham Act § 43(a) trade-dress claim, concluding Sommerset was not inherently distinctive absent proof of secondary meaning, and dismissed the individual claim against SanGiacomo’s CEO.
- Ashley appealed the adverse ruling on the trade-dress claim.

## Issues

1. Whether a product’s configuration can be inherently distinctive trade dress under Lanham Act § 43(a) without proof of secondary meaning, and what standard governs inherent distinctiveness for product design.
2. Whether the record created a triable issue that the Sommerset suite’s overall configuration was capable of functioning as a source identifier, making summary judgment improper.

## Decision

- The court held that product configuration can be inherently distinctive trade dress if it is capable of functioning as a designator of a single source.
- The court rejected an approach that effectively barred inherent distinctiveness for product design merely because constituent elements are drawn from familiar design vocabularies.
- The court concluded Ashley produced evidence from which a factfinder could determine Sommerset’s overall appearance was inherently distinctive.
- The court reversed the grant of summary judgment for SanGiacomo on the § 43(a) trade-dress claim and remanded for further proceedings.

## Legal Principles

- Trade dress under § 43(a) may include product configuration (the design or shape of the product itself), not only packaging or labeling.
- A product configuration is inherently distinctive if the overall design is capable of functioning as a designator of an individual source.
- The inherent-distinctiveness inquiry focuses on the total image created by the arrangement and combination of features, not on whether individual elements are common when viewed in isolation.
- Whether a particular product design is inherently distinctive is commonly a fact-intensive question; summary judgment is improper where evidence could support a finding of source-identifying capability.

## Conclusion

The court reinstated Ashley’s federal trade-dress claim, holding that product design can be inherently distinctive when its overall configuration is capable of identifying a single source, and that Ashley’s evidence created a factual dispute requiring further proceedings.


Ashley Furniture Indus., Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363 (4th Cir. 1999)