Taco Cabana had several restaurants with a certain theme. Several years later petitioner opened up his chain of restaurants copying the same theme of respondent. Respondent filed suit against petitioner for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a), without a showing that it had acquired secondary meaning.
- HELD: Yes because the court held that proof of secondary meaning was not required to prevail on a claim under 15 U.S.C.S. § 1125(a), where the trade dress at issue was inherently distinctive. Specifically, there was no persuasive reason to apply to trade dress a general requirement of secondary meaning which would be at odds with the principles generally applicable to infringement suits under 15 U.S.C.S. § 1125(a). Moreover, adding a secondary meaning requirement could have anticompetitive effects, creating particular burdens on the startup of small companies.
- You cannot protect a functional trade dress (things you absolutely need in order to convey it is a Mexican restaurant) only a non-functional (Our menu is green with jokes on it for example)
- The line between functional and non-functional are pretty fuzzy…. You need secondary meaning to keep people form getting screwed on not being able to use something