## Facts

- Samara Brothers, Inc. designed and sold children’s spring/summer seersucker outfits featuring appliqués (e.g., hearts, flowers, fruits) through retailers including JCPenney.
- Wal-Mart contracted with a supplier to produce a children’s clothing line for the 1996 season.
- Wal-Mart provided the supplier with photographs of Samara garments; the supplier copied 16 designs with minor modifications, including elements that were copyrighted.
- Wal-Mart sold the copied garments and earned more than $1.15 million in gross profits.
- After learning that similar garments were being sold at Wal-Mart at lower prices, Samara investigated, issued cease-and-desist demands, and sued.

## Issues

1. In a Lanham Act § 43(a) claim for infringement of unregistered trade dress, can a product’s design be inherently distinctive without proof of secondary meaning?
2. If product design is asserted as trade dress, must the plaintiff prove secondary meaning to obtain protection?

## Decision

- The Supreme Court unanimously reversed the Second Circuit and remanded.
- The Court held that product-design trade dress cannot be inherently distinctive under § 43(a).
- A product’s design is protectable as unregistered trade dress only upon a showing of secondary meaning.
- Samara’s asserted trade dress was treated as product design, so secondary meaning was required; the lower court’s approach allowing protection without that showing was improper.

## Legal Principles

- Unregistered trade dress under Lanham Act § 43(a) must be distinctive to be protectable, because distinctiveness is necessary to support likely confusion as to source.
- Product packaging trade dress may, in some circumstances, be inherently distinctive.
- Product design “almost invariably” serves aesthetic or utilitarian purposes rather than source identification; treating it as inherently distinctive risks granting broad trademark-like exclusivity over design features.
- Secondary meaning requires that the primary significance of the design to consumers is identifying the producer, not the product itself.
- Courts should classify ambiguous trade dress claims as product design when the claimed features are part of the product itself, triggering the secondary-meaning requirement.

## Conclusion

The Court limited unregistered trade dress protection for product design by requiring proof that consumers associate the design with a single source, thereby preventing trademark law from giving automatic exclusivity over product aesthetics absent demonstrated source-identifying meaning.


Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000)