LEDA at Harvard Law School LEDA at Harvard Law School
By
The copying of fashion design originals – “knocking off” or “affordable interpretation,” depending on your point of view – is a practice that designers may have grudgingly accepted in the past, when less expensive copies took some time to reach stores and only those consumers who could afford the designer-label originals could be the first to follow a trend. This practice is now costing designers dearly as more advanced technology makes it possible to see high-quality copies appear in stores before the original has even hit the market. While it has long been the practice of the American fashion industry to knock off European designs, American designers traditionally did not copy one another. They registered their original sketches with a trade group called the Fashion Originators Guild, an organization that urged retailers to boycott styles known to be knockoffs.[1] In 1941, the Supreme Court held that the Guild was an unreasonable restraint-of-trade;[2] the end of the Guild marked the beginning of the knocking off “free-for-all” that we are familiar with today began. It is now common for imitators to photograph the clothes in a designer’s runway show, send the photo to a factory (often in Asia) to be copied, and have a sample ready within a couple of days for retail buyers to order.[3] Since fashion collections are displayed in runway shows approximately four to five months before they are available to the public, this leaves the fashion copycat plenty of time to get the copies to stores at the same time, if not earlier, than the originals.
Designers claim that design piracy cuts into their longstanding franchise of exclusivity, lowers their sales volume, and ultimately removes incentives for creativity.[4] Sometimes the same department stores that carry the higher-priced designer version of a garment will also sell the lower-priced knockoff, often under the store’s private label.[5] Knocking-off is rampant in the fashion industry and even those designers who fume over being copied are not above doing it themselves.[6] Because of the speed with which designs can be recreated, it is not even always clear which designer created the original and which designer merely copied it.[7] This essay will explore how protection of fashion works fits – or does not fit – into the current intellectual property law framework in the United States. The overall organization of this essay is a systematic consideration of possible protection for works of fashion under copyright, patent, and trade dress (a trade symbol similar to trademark) law, as well as the limitations of these doctrines when applied to clothing design. This discussion will encompass not only the current state of the law, but also proposals for reform, such as an amendment to the Copyright Act to specifically protect fashion works. At the end, I will reconsider the desirability of extending intellectual property protection to works of fashion.
Under the current U.S. Copyright Act, copyright protection is denied to fashion works on the ground that they are “useful articles.” Copyright does protect those design elements of a useful article that are separable and independent of the utilitarian function of the article. Separability can be either physical separability or conceptual separability. The prevailing opinion is that fashion designs in apparel (as opposed to accessories) cannot be copyrighted because they are neither physically nor conceptually separable from the useful article, i.e. the clothing.
Under the 1976 Copyright Act, any design with “an intrinsic utilitarian function” seeking copyright protection must pass either the test of physical or conceptual separability.[8] Useful articles can be copyrighted to the extent that their “design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[9] What renders an object “useful” and thus subject to these tests is a controversial question, but most judges who have confronted the question agree that the role of fashion in clothing the body is a utilitarian one and thus qualify works of fashion as “useful” articles.[10] For an item to pass the test of “physical separability” simply means that the functional part of the object is physically separable from the artistic part; this is generally not the case in fashion works. The test of “conceptual separability,” on the other hand, is less clear and has engendered a fair amount of debate over what exactly it requires. The basic idea is that the artistic features can be imagined separately and independently from the useful article without destroying the basic shape of the useful article.[11]
In sum, a fashion designer seeking copyright protection must convince a judge that either the item of clothing is not functional or that its artistic design is separable from its utilitarian part. How likely a judge is to be convinced of such an argument seems to depend most heavily on the Circuit in which the judge sits. For example, the Ninth Circuit has granted copyright protection to costumes, reasoning that the function of costumes has little to do with their design.[12] The Second Circuit, on the other hand, has denied copyright protection to clothing, stating that “clothes are particularly unlikely to meet ... [the test for conceptual separability] – the very decorative elements that stand out being intrinsic to the decorative function of the clothing,”[13] but has granted it to fabric design, which it considered are “‘writings’ for purposes of copyright law and are accordingly protected.”[14] In any case, the copyright protection would never apply to the garment as a whole, only to the conceptually separable design elements.[15]
Despite the apparent unsuitability of copyright protection to works of fashion, commentators are often perplexed by the anomalies in copyright law under which fashion accessories, works of architecture, and computer chip designs are eligible for copyright protection. Some argue that since copyright has already been extended to protect the aforementioned items, copyright may be the best legal tool that fashion designers have when combating design piracy. For example, Robert Denicola has argue that it would be more consistent with the legal principles of intellectual property law to draw the line of copyrightability with respect to arguably “useful articles” by determining whether, in the process of creating the item, the designer focused primarily on aesthetic or utilitarian considerations.[16] Such a test would greatly improve the odds that works of fashion would be granted copyright protection, as most fashion designers are concerned with the aesthetic rather than the functional aspects of their clothing.
Other commentators advocate, rather than creating another potentially ambiguous “test” like Denicola’s, that an amendment to the Copyright Law be made for fashion designs, comparable to the provision for other useful articles – architecture and computer chip design. The Semiconductor Chip Protection Act of 1984 was enacted to protect the designs of computer chip faces from unauthorized copying.[17] This law marked the first time Congress has enacted a specialized, explicit “copyright-like” provision to protect an item with largely utilitarian functions.[18] In 1990, the Architectural Works Copyright Protection Act, an amendment to the copyright statute itself, was enacted.[19] This act is revolutionary in that it provides explicit copyright protection for the original aesthetic aspects of architectural designs as embodied in “useful articles,” namely buildings.[20] Leslie Hagin proposes that fashion works, like architectural works, be given specific protection under the Copyright Act.[21] She has proposed taking the language of the Architectural Works Copyright Protection Act of 1990 and substituting the terms “architecture” and “architects” with the terms “fashion” and “designer.”[22] Such an amendment would allow fashion works to by-pass the usual physical or conceptual separability tests.
The specific extension of copyright to fashion works would have numerous advantages for designers. First, a copyright owner may seek an injunctive remedy to prevent the imitator of his or her design from making and selling copies of the original.[23] Second, copyright law allows for the imposing and disposal of the infringing items.[24] Third, the copyright owner can recover damages, either actual or statutory, and profits.[25] Finally, the copyright owner may be able to recover court costs and attorney’s fees.[26] This last remedy is especially important in fashion design cases, as it allows small new designers to take on big manufacturers whose greater power and financial resources would otherwise be an insurmountable obstacle.
Despite these advantages to fashion designers, an amendment to the Copyright Act for works of fashion is not likely to be passed anytime soon. As one commentator concisely stated the current situation: “legislators and courts have a great deal of trouble seeing past the utilitarian function of a piece of clothing.”[27] While industrial designs have been the subject of repeated bills, Congress has explicitly excluded fashion works from these bills.[28] For example, while the Design Anti-Piracy Act of 1989 would have protected original designs of useful articles against unauthorized copying, the bill would have excluded apparel designs composed of three-dimensional shapes and surfaces with respect to apparel.[29] According to one commentator, “[t]his exclusion has no basis in any discernable principle. It was added ... to help still the vociferous opposition of retailers to the bill.”[30] In this current climate of judicial and legislative hostility, copyright protection will probably not be extended to specifically protect fashion works.
At first glance, patents seem a promising way to protect fashion designs. Design patents are a type of patent that protects the inventor of “any new, original and ornamental design for an article of manufacture” for fourteen years.[31] While in theory design patents seem suited to fashion designs, in reality they are not. To be eligible for a patent, a work must be a new invention and must advance beyond the prior art in a way that is non-obvious.[32] Courts have generally not considered works of fashion to meet these criteria.[33] Second, compared to the relevant life span of most fashion works, patents take a long time to obtain and, for small designers, are prohibitively expensive.[34] The Patent and Trademark Office takes an average of eighteen months to review each design patent after application, and then rejects roughly half the applications.[35] The relevant stylistic life span of most fashion designs is one season, approximately three to six months. Finally, even if designers secure patent approval in the Patent and Trademark Office, the courts often find design patents invalid; even if the design patent is deemed valid, patent infringement is found in only about half the cases brought to court.[36] Because of all the obstacles that patent law faces when applied to fashion works, fashion designers do not normally seek patents for their designs.
The remainder of this essay will explore the application of the law of trade dress to fashion designs. I will argue that, barring an amendment for fashion designs similar to that for architectural works to the Copyright Act, trade dress is the best legal theory for designers seeking to challenge knockoffs of their work.
Trade dress, like trademark, is a trade symbol and is protected by the Lanham Act.[37] A trademark is defined as “any word, name, symbol, or device, or combination thereof” that is adopted and used by a manufacturer or merchant “to identify his goods and distinguish them from those manufactured and sold by others.”[38] Trademark tends to work best for words, emblems, logos or symbols; thus, it works well to protect designers against counterfeiters and gray marketeers. For example, imitation Chanel handbags copying the “double-C” logo or imitation Izod Lacoste shirts copying the alligator logo would be violations of trademark law. Trade dress, on the other hand, refers to a product or service’s overall appearance and its total image presented to consumers, either of the product itself or its packaging. Trade dress is a much broader concept than trademark, embracing such aspects as the product’s size, shape, color, graphics, packaging, label, advertising techniques, and marketing techniques.[39] Courts have granted trade dress protection to items as diverse as a china pattern, fishing reel design, a restaurant’s ambience, a television commercial’s theme, and a the style of a rock group’s musical performance.[40]
If trade dress can protect items as varied as the aforementioned, surely there must be a place in trade dress law for fashion works? Before we can determine the suitability of trade dress to fashion, let us take a closer look at what is involved in a suit for trade dress infringement. To show a violation of trade dress under §43(a) of the Lanham Act, a plaintiff designer must prove that his or her trade dress is (1) nonfunctional, (2) distinctive, and (3) likely to be confused by consumers with the defendant’s imitative trade symbol, thus creating a misunderstanding as to the origin of the defendant’s product.[41] The first criterion, of non-functionality, is not as lethal to fashion as was the above-mentioned “useful articles” exception under copyright law. A functional feature is one essential for a product to fulfill its purpose or one which “affects the cost or quality of the article.”[42] Courts consider a trade symbol to be functional, and thus unprotectable, if it “confers competitive advantage upon its user” in addition to identifying the producer.[43] For example, Fotomat’s distinctive yellow roof and kiosk design has been provided trade dress protection even though it functions as shelter in addition to identifying the photo developer.[44] Because Fotomat’s roof was no better than any other at providing shelter and, therefore, conferred no competitive advantage on Fotomat, the yellow roof design was protectable because its primary function was to identify Fotomat. Under this standard, clothing design could be considered “nonfunctional,” since the shape, proportions, color, and ornamentation of a piece of clothing are not likely to make it more suitable as protection for the body against the elements.
The second thing that must be shown in a trade dress suit is that the product is distinctive. Distinctiveness can be satisfied in either of two ways: the product can be “inherently distinctive” or it can have acquired “secondary meaning.”[45] Secondary meaning refers to a product’s ability to distinguish a particular business or product from that of another; a trade dress with secondary meaning must fulfill the primary function of identifying the purveyor of the product. This is a very high standard for a product to meet, especially a work of fashion.[46] A designer’s mere association with the trade dress is not sufficient to establish secondary meaning. Secondary meaning usually takes a long time to establish and thus is not a relevant concept for fashion works.
What is more relevant for fashion works is the idea of “inherent distinctiveness.” A design that is inherently distinctive need not have acquired secondary meaning to be protectable trade dress.[47] “Inherent distinctiveness” means that a trade dress is so uncommon, creative, and unique that it may be presumed to identify the product’s source.[48] This concept originated in trademark law and remains somewhat murky when applied to trade dress law. The doctrine of inherent distinctiveness originated because of a concern by the courts that small producers would be financially unable to establish secondary meaning with consumers before competition arrived.[49] Because the rationale behind the inherent distinctiveness doctrine is to protect a producer whose competitors can knock off his or her product before secondary meaning can be established, this doctrine seems particularly well suited to fashion design, where the short life span of most designs makes the acquisition of secondary meaning unrealistic.
Determining when a product design is “inherently distinctive” is “one of the most difficult analytical issues in trade dress law”[50] and one that the Supreme Court did not resolve, or even address, in its recent landmark trade dress case.[51] One author states the test as: “trade dress is inherently distinctive if the design, shape, or combination of elements is so unique in a particular market, that one can assume, without proof, that they could automatically be perceived by the customer as indicia of origin.”[52] There are a variety of different circuit court tests used to determine when trade dress is inherently distinctive.[53] Despite the multiplicity and dissimilarity of the tests employed by the courts, the tests set forth by the Second Circuit in Knitwaves, Inc. v. Lollytogs Ltd.[54] and by the District Court for the Southern District of New York in Krueger International, Inc. v. Nightingale[55] deserve a closer look by anyone desiring to use trade dress to protect fashion designs. These two cases are particularly important for fashion design because many cases involving fashion design trade dress infringement would presumably originate in New York City – the “fashion capital” of the United States – which is within the jurisdiction of the courts that decided these two cases.
In Knitwaves, the Second Circuit was faced with the question of whether a line of children’s knitwear featuring fall and ecological motives was inherently distinctive. Knitwaves began producing such a collection in 1990, and two years later Lollytogs created a competing line of children’s clothing that featured some designs very similar to those of Knitwaves.[56] The court rejected the its own traditional test[57] for determining whether trade dress is inherent distinctive, reasoning that this test was suited to product packaging only and did not make sense when applied to product design.[58] In its place, the court created a new test for product configuration that turns on the intent of the manufacturer. The central question in this test is whether the manufacturer “used” or “intended to use” the design to “identify the source and distinguish his or her goods.”[59] For example, on the facts of Knitwaves, the court found that the sweater designs did not qualify for trade dress protection because they were not “used as a mark to identify or distinguish the source."[60]
The Knitwaves decision has not been very influential outside the Second Circuit[61], and even within the Second Circuit, the District Court for the Southern District of New York has rejected the Knitwaves test. This rare departure from “binding” precedent illustrates the difficulty courts have had in developing the proper test to determine the inherent distinctiveness of product configuration trade dress. The Southern District of New York in Krueger rejected the Knitwaves test for a variety of reasons. Most relevant for our discussion, the Krueger court rejected the presumption in Knitwaves that the primary purpose of a design is either aesthetic or source identification, but cannot be both.[62] After rejecting the Knitwaves test, the Krueger opinion set forth its own test for determining whether product configuration is inherently distinctive: whether it “is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indici(um) of origin.”[63] While under Krueger fashion designers have at least some hope that their designs will be “unique, unusual or unexpected” enough to be a priori indicators of origin, it bears emphasizing that most courts do not follow the liberal Krueger approach to analyzing inherent distinctiveness. One commentator explained this widespread rejection of Krueger as follows:
... [P]roduct configurations in certain industries employ uncommon design elements and still do little or nothing to identify the producer. ... Certain markets are highly dependent on the development of creative and innovative designs. In fact, at the extreme are products whose commercial success is determined largely by the continual introduction of imaginative designs. These include clothing, tableware, furniture and eyewear. It is less likely that the configuration of a product in markets such as these will act as a designator of source.[64]
In sum, even though fashion works are more likely to be deemed “inherently distinctive” than to have acquired “secondary meaning,” both requirements remain quite difficult for works of fashion to meet. This difficulty is only exacerbated by the fact of judicial disagreement over the proper test for distinctiveness in product configuration cases.
The third and final thing that a designer seeking protection of his or her design under trade dress law must prove is that consumer confusion between the original and the knockoff is likely to result. This requirement is not discussed in length in most of the relevant opinions. It seems that once a plaintiff has cleared the very high hurdle of proving that his or her design is inherently distinctive, the likelihood of customer confusion is not nearly as difficult to show. In theory, therefore, if a fashion designer can prove his or her trade dress is nonfunctional, distinctive, and likely to be confused by consumers with the defendant’s imitative trade symbol, he or she can seek an injunction against further marketing by the defendant of the knockoff product and sometimes claim damages.
While in theory dress trade protection could be used by fashion designers to protect their designs from imitation, the reality is that many courts are hostile to the application of trade dress law to clothing. In fact, the Third, Seventh and Tenth Circuits have expressed their unwillingness to apply trade dress to product configurations in general, not just fashion design.[65] This unwillingness is partly rooted in the perceived conflict between trade dress protection and patent protection as applied to product configuration. For example, the Third Circuit found that “where product configurations are concerned, we must be especially wary of undermining competition. Competitors have broad rights to copy successful product designs when those designs are not protected by (utility or design) patents.”[66] As one commentator observed: “For now, judicial views of trade dress are too hostile for trade dress to be an attractive alternative to either the confusion of conceptual separability or the uncertainty of design patent protection. ... This hostility appears to be primarily directed at product configuration trade dress.”[67]
So where does this leave fashion works? Those in favor of stronger legal protection for fashion designs clearly see the current state of the law as woefully inadequate. As someone who has worked in the fashion industry in France, I found myself in sympathy with this viewpoint. In France, as in England, fashion designs receive much more protection than they do in the United States. The current French copyright system makes specific provisions for fashion works; this protection traces its origins back to the Copyright Act of 1793, which classified fashion as applied art.[68] In France, fashion – especially haute couture – is still considered more of an art form than of a functional way of clothing the body, which seems to be the more prevalent notion in the United States. I was somewhat surprised by the hostility to the protection of fashion works expressed by my colleagues when I presented this paper in our seminar. Their comments made me seriously re-examine my point of view.
As I consider now what degree of protection the law should provide against fashion design piracy, my main concern is how such a law would be implemented in practice. Fashion seems to be an industry particularly ill-suited to legal prohibitions against copying. Copying – or “borrowing” or “reinterpreting” – is prevalent at every level of the fashion industry. When a lower-priced designer knocks off a higher-priced designer’s clothing, the copy may be a huge success because it offers more value for the price. But very often it is the higher-priced designers who are copying each other. For example, in 1994, Yves Saint Laurent was awarded $383,000 by a French court that agreed that Polo/Ralph Lauren had copied Saint Laurent’s distinctive tuxedo dress.[69] But in 1985, Saint Laurent was fined $11,000 for copying a toreador jacket from designer Jacques Esterel.[70] Even thornier is the fact that very often, if not most of the time, it is impossible to know who came up with the idea in the first place. “Any claim to originality can be problematic today, as fashion has become increasingly derivative and designers all feed at the same trough.”[71] It is not at all uncommon to find striking resemblances among the collections of different designers for the same season. It is obviously more than coincidence when this happens – the fashion world is a small one and the design process is porous. The convergence toward a small group of short-lived trends is the reality of the fashion industry today. When one considers the peculiarities of this industry, the reluctance of the courts and Congress to provide more protection for works of fashion becomes more understandable.
[1] See Teri Agins, Copy Shops: Fashion Knockoffs Hit Stores before Originals As Designers Seethe, THE WALL STREET JOURNAL, August 8, 1994, at A1.
[2] See Fashion Originators’ Guild of America v. Federal Trade Commission, 312 U.S. 457 (1941).
[3] See Agins, supra note 1.
[4] See id.
[5] See id.
[6] See id.
[7] See id.
[8] See Richard G. Frenkel, Intellectual Property in the Balance: Proposals for Improving Industrial Design Protection in the Post-TRIPS Era, 32 Loy. L.A. L. Rev. 531, 541 (1999).
[9] 17 U.S.C. 101 (1994)
[10] See Frenkel, supra note 8, at 542.
[11] See Leslie J. Hagin, A Comparative Analysis of Copyright Laws Applied to Fashion Works: Renewing the Proposal for Folding Fashion Works in the United States Copyright Regime, 26 Tex. Int’l L.J. 341, 350 (1991).
[12] See National Theme Productions, Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348 (S.D. Cal. 1988).
[13] Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989)
[14] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995).
[15] See id. at 455.
[16] See Robert Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 MINN. L. REV. 707, 748 (1983).
[17] See Semiconductor Chip Protection Act of 1984, 17 U.S.C. §§901-914 (1988).
[18] See Hagin, supra note 11, at 377.
[19] The Architectural Works Copyright Protection Act, Title VII of the Judicial Improvements Act of 1990, Pub. L. No. 101-650, 104 Stat. 5089, 5132.
[20] See Hagin, supra note 11, at 377.
[21] See id. at 378.
[22] Such a substituted amendment would read as follows: “creativity in fashion frequently takes the form of a selection, coordination, or arrangement of unprotectable individual elements into an original, protectable whole, and that [a designer] may incorporate new, protectable design elements into otherwise standard, unprotectable fashion features. In both cases, what is protected is only the designer’s original contribution. ... By creating a new category of protectable subject matter, and, therefore by not encompassing fashion works as pictorial, graphic, or sculptural works .. the copyrightability of fashion works will not be evaluated under the separability test applicable to pictorial, graphic, and sculptural works embodied in useful articles .... It is not to be suggested, though, that in evaluating the copyrightability or scope of protection for a fashion work, the courts and the Copyright Office should ignore the functionality. A two-step process is envisioned. First, a fashion work should be examined to determine whether there are original, artistic elements present, including overall shape. If so, a second stop is reached to examine whether the original, artistic elements are functionally required. If the elements are not functionally required, the work is protectable .... Functional considerations may, for example, determine only particular design elements. In such a case, protection would be denied for the functionally determined components, but would be available for nonfunctionally determined design elements.” Id. at 378-79.
[23] See 17 U.S.C. §502(a) (1994). “Any court having jurisdiction of a civil action arising under this title may ... grant temporary and final injunction on such terms as it may deem reasonable to prevent or restrain infringement of copyright.”
[24] See id. §503 “(a) At any time while an action under this title is pending, the court may order the impounding, on such terms as it may deem reasonable, of all copies ... claimed to have been made or used in violation of the copyright owner’s exclusive rights ... . (b) As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies ... found to have been made or used in violation of the copyright owner’s exclusive rights ... .”
[25] See id. §§504(b)-(c).
[26] See id. §505.
[27] S. Priya Bharathi, There is More than One Way to Skin a Copycat: The Emergence of Trade Dress to Combat Design Piracy of Fashion Works, 27 TEX. TECH. L. REV. 1667, 1679 (1996).
[28] See Hagin, supra note 11, at 347.
[29] See 135 Cong. Rec. E3484 (daily ed. Oct. 19, 1989).
[30] Brown, Design Protection: An Overview, 34 UCLA L. REV. 1341, 1397 (1987).
[31] 35 U.S.C. §§ 171, 173 (1988).
[32] See id. §103.
[33] See, e.g., Vanity Fair Mills, Inc. v. Olga Co., 510 F.2d 336 (2d Cir. 1975) (Second Circuit reversed the District Court’s grant of design patent protection for women’s panty briefs that provided sufficient elastic strength to flatten the abdomen without causing discomfort, solving a long-standing problem in the industry. The Second Circuit explained that “the difference between the patents in suit and the prior art is not substantial enough to be termed ‘invention.’”)
[34] See Hagin, supra note 11, at 355.
[35] See Frenckel, supra note 8, at 555.
[36] See id.
[37] Lanham Trademark Protection Act, §45(a), as amended, 15 U.S.C. §1125(a) (1994). Prior to the development of product design protection under the Lanham Act, producers were protected against competitors’ confusing or deceptive use of product design features under the common-law principles of unfair competition. See, e.g., Dior v. Milton, 155 N.Y.S. 2d 443 (Sup. Ct. 1956).
[38] Michele A. Shpetner, Determining a Proper Test for Inherent Distinctiveness in Trade Dress¸8 Fordham Intell. Prop. Media & Ent. L.J. 947, 948.
[39] See Bharathi, supra note 27, at 1679.
[40] See id., at 1679-1680.
[41] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
[42] Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982).
[43] Daniel J. Gifford, The Interplay of Product Definition, Design and Trade Dress, 75 MINN. L. REV. 769, 781 (1991) (stating that a design is not functional, and is therefore protectable, if it “performs an intended utilitarian function, but not significantly better than alternative designs.”)
[44] See Fotomat Corp. v. Cochran, 437 F.Supp. 1231, 1235 (D. Kan. 1977).
[45] See Two Pesos, 505 U.S. 763.
[46] See Bharathi, supra note 27, at 1691.
[47] See Two Pesos, 505 U.S. 763.
[48] See id. at 773-74.
[49] See id. at 775; see also Knitwaves 71 F.3d at 1007.
[50] Shpetner, supra note 38, at 974.
[51] See Two Pesos, 505 U.S. 763.
[52] Shpetner, supra note 38, at 974.
[53] See id. at 982.
[54] 71 F.3d 996 (2d Cir. 1995).
[55] 915 F. Supp. 595 (S.D.N.Y. 1996).
[56] Lollytogs’ designers even admitted that these designs were copied from Knitwaves.
[57] Known as the “Abercrombie classifications”, see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d. Cir. 1976) (classifies trademarks and trade dress symbols as either generic, descriptive, suggestive, arbitrary or fanciful; as a rule, suggestive, arbitrary, and fanciful marks are considered to be inherently distinctive while generic or descriptive marks are not).
[58] See Knitwaves, 71 F.3d at 1013-14.
[59] Shpetner, supra note 38, at 994.
[60] Knitwaves, 71 F.3d at 1006.
[61] However, the Third Circuit also found the Abercrombie classifications inapplicable to product configuration. See Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431 (3d. Cir. 1994).
[62] See Krueger, 915 F. Supp. at 606.
[63] J. MCCARTHY, TRADEMARK AND UNFAIR COMPETITION, §8.02(4) (3d ed. 1994)
[64] Hermenegildo A. Isidro, The Abercrombie Classifications and Determining the Inherent Distinctiveness of Product Configuration Trade Dress, 62 Brook. L. Rev. 811, 850 (1996) (emphasis added).
[65] See Versa Products Co. v, Bifold Co., 50 F.3d 189 (3d Cir. 1995); Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376 (7th Cir. 1996); Vornado Air Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995).
[66] Versa Products, 50 F.3d at 207.
[67] Frenkel, supra note 8, at 565 and fn. 232.
[68] See Hagin, supra note 11, at 373.
[69] See Agins, supra note 1.
[70] See id.
[71] Id.