Following is a guest post from my former student and recent UWSL LL.M. graduate, Pongtawat (“Val”) Uttravorarat, on “secondary meaning in the making,” a doctrine he argues would help startups like new restaurants protect their creative trade dress.
Imagine you open a new restaurant with unique décor that you’ve been refining for months. Right of the bat, someone is so impressed with your design that he or she opens a restaurant with a very similar design. What can you do?
Normally, a trade dress owner has to prove its trade dress is inherently distinctive or has acquired secondary meaning through length of use, number of sales, and advertising expenditures. However, after the Supreme Court’s decision in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), there is no bright line defining whether trade dress is deemed inherently distinctive. Confusingly, subsequent courts have applied inconsistent tests.
If you fail to show the distinctiveness, you are left with one option: to show that consumers have associated the unique décor with a single source of restaurant services. Establishing secondary meaning takes time…. Not just few months; it takes years. What if you are a startup? How can you show you have acquired a secondary meaning in only a few months and a modest amount of money spent promoting your new restaurant? If you cannot, should you lose your design to a copycat? This is one of the problems many startup restaurants face: they cannot protect their trade dress against intentional copiers.
Since design patent protection is costly – and stopping copying through copyright in this situation can be difficult – I suggest courts adopt a “secondary meaning in the making” doctrine to loosen the burden of proving secondary meaning. Such a doctrine existed in the 1980s, particularly in the Second Circuit, but it was pretty well eroded by the early 1990s. In my view, the doctrine still has merit in connection with startups.
The secondary meaning in the making doctrine protects trade dress that has not fully developed secondary meaning, but is in the process of doing so through the owner’s advertising and efforts to protect it from being deliberately appropriated or copied in bad faith. The doctrine would help startup restaurants protect their valuable trade dress against intentional copycats by showing that consumers have begun to recognize particular décor with a particular restaurant.
However, courts would need to set a clear standard for determining what evidence is required to prove secondary meaning in the making, while remaining flexible enough to make such determinations on a case-by-case basis. Allowing startup restaurants to prove secondary meaning in the making would promote new innovation because competitors would not be allowed to copy original trade dress and instead would be forced to create their own original designs. In the end, consumers would benefit.
Mr. Uttravorarat’s thesis on the doctrine of secondary meaning in the making, “Resounding Secondary Meaning in the Making Doctrine: Solution for a Startup Restaurant with Non-Distinctiveness Trade Dress,” is available here.