## Facts

- Wallace sold sterling silver products and introduced its GRANDE BAROQUE flatware pattern in 1941, achieving substantial commercial success.
- Wallace held a federal registration for the name “GRANDE BAROQUE,” but not for the pattern; the design was not patented, and an application to register the pattern was pending.
- The GRANDE BAROQUE design featured ornate Baroque elements (including indented roots, scrolls, curls, and floral arrangements).
- Godinger manufactured lower-priced, silver-plated serving pieces and marketed a line named “20TH CENTURY BAROQUE,” intending to showcase it at a major industry trade show.
- Godinger’s design incorporated typical Baroque ornamentation and approximated Wallace’s arrangement in multiple respects, though it differed in dimensions and overall configuration (including a longer decorated portion and a bulkier handle profile).
- Wallace sued under Lanham Act § 43(a), alleging trade dress infringement, and sought to stop Godinger from marketing the allegedly infringing pieces.

## Issues

1. Whether Wallace’s GRANDE BAROQUE product design was nonfunctional trade dress protectable under Lanham Act § 43(a), or instead a functional feature of Baroque-style silverware.
2. Whether Wallace showed a likelihood of success on the merits sufficient to warrant a preliminary injunction against Godinger’s marketing of its 20TH CENTURY BAROQUE line.

## Decision

- The court affirmed the denial of Wallace’s motion for a preliminary injunction.
- The court agreed that the GRANDE BAROQUE design was functional in the relevant trademark sense because it reflected common Baroque-style ornamental features competitors need to use.
- Because nonfunctionality is required for trade dress protection, Wallace failed to show a likelihood of success on the merits.

## Legal Principles

- Trade dress claims under Lanham Act § 43(a) require, at minimum, protectable (nonfunctional) trade dress; functionality defeats protection.
- “Functionality” includes aesthetic functionality: a design feature may be functional if exclusive rights would significantly hinder competition by limiting competitors’ ability to offer products in a desired style.
- Trademark law cannot be used to secure perpetual exclusivity over product-design features that are important to effective competition, even when the features are ornamental and commercially attractive.
- If the asserted trade dress is functional, a court may deny preliminary relief without reaching full analysis of secondary meaning or likelihood of confusion.

## Conclusion

The court held that Baroque-style ornamental elements used in Wallace’s GRANDE BAROQUE design were aesthetically functional and therefore not protectable trade dress, so Wallace could not establish likelihood of success on the merits and was not entitled to a preliminary injunction.


Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76 (2d Cir. 1990)