Can you "steal" a "feel"? (Gap, FYI: the answer is "sometimes.")

Posted by Charles Colman

(As a warning, this post delves fairly deeply into trademark law; perhaps save it until you have a few minutes to read and reflect.)


As LOF readers likely know already, "trademarks" and "logos" are often one in the same. Think of the iconic red-and-white "Coca-Cola" script, a mark/logo that contains text, or the McDonald's golden arches, a mark/logo without any words at all.


Logos, however, are just the "inner circle" of trademark protection. The federal Lanham Act goes much further, protecting "any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion" as to source (subject to several caveats we'll discuss later.) In essence, this means that almost anything can function as a trademark, including, say, the "feel" of a clothing store. This "feel" falls under the umbrella of so-called "trade dress," which "refers to 'the image and overall appearance of a product' [and] embodies 'that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, [that] make[s] the source of the product distinguishable from another and ... promote[s] its sale.'"


As explained below, trade dress claims are hard to win, but costly to fight, so companies should make a conscious effort to differente their stores' "look and feel" from that of competitors -- especially competitors who were in the marketplace first.


But perhaps this is easier said than done. After all, when a brand wishes to indicate to consumers who it is competing with (or perhaps more precisely, which brand it seeks to replace), it will often strive to make its stores' "look and feel" similar to that of the competitor's. When it is widely known that a particular company -- say, Gap -- intends to enter a market niche controlled by a particular competitor -- say, Lululemon -- similarities between the stores' "look and feel" are likely to be scrutinized especially closely.


So scrutinize we shall. While reading today's WWD, I did an actual double-take of photos of Lululemon Athleta, the upscale women's activewear store that Gap Inc. recently opened in San Francisco. Admittedly, I don't frequent activewear stores, as I am not frequently active. It is certainly possible that my reaction to Athleta shows only that all workout clothes look more or less the same. Given my utter lack of expertise in this area, I will leave it to LOF readers to decide whether Athleta's "look and feel" (first and second photos) is or is not confusingly similar to Lululemon's (third and fourth photos.)



Some say judges adjudicating trademark cases look at the contested images or products side by side, and decide who wins the case right there. (Even in jury cases, judges are empowered to decide whether there is a material factual dispute sufficient to allow the case to proceed to trial.) In the unfortunate event Gap were sued by Lululemon, it would be well-advised to pray for a judge more "active" than I. (Fortunately for all involved, this is not the place to discuss "activist" judges.)


But regardless of how judges decide these cases on the ground, the law on the books in the trade dress arena is surprisingly nuanced, primarily because U.S. Supreme Court has drawn a very fine -- and arguably nonsensical -- distinction between "product packaging" and "product design." When it comes to "product packaging," a trade dress plaintiff need not prove that her packaging is "distinctive"-- that is, that a significant portion of consumers associate the packaging with a single source. Instead, the packaging can qualify as "inherently distinctive," in which case consumer association is presumed. In Two Pesos v. Taco Cabana, the Supreme Court decided that the "look and feel" of a restaurant (and thus, presumably, that of clothing store) qualifies as "product packaging" for this purpose. In Taco Cabana, this decision of law let stand a jury verdict in favor of plaintiff TC (whose restaurants, ironically, look pretty much like every other Mexican restaurant LOF has ever seen.)


When it comes to product design, however, the Supreme Court has said that there is no such thing as inherent distinctiveness. According to the Supremes, per Justice Scalia, consumers are more likely to associate a product's design with its function than with its source, and if a trade dress plaintiff contends otherwise, he has to prove it.


Indeed, trademarks and functionality are like the Prada Group and Ms. Jil Sander circa 1999: they don't go well together. Why? Because, as the Supreme Court explained in Wal-Mart Stores v. Samara Bros., "[c]onsumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves[.]" To be sure, functionality can thwart plaintiffs in product packaging cases, too. But the additional requirement of showing "distinctiveness" in the marketplace means that, as LOF has noted in the past, trade dress claims based on product designs are an especially tough sell.


Naturally, trade dress plaintiffs want to get their cases in the "packaging" category; defendants will argue, whenever possible, that product design is at issue. Let's look at one case where the court, perhaps unexpectedly, decided that a fashion company's "look and feel" fell on the design side.


In the high-profile dispute Abercrombie & Fitch v. American Eagle Outfitters, A&F alleged that American Eagle's clothing, in-store advertising displays, and catalogs infringed on A&F's unregistered, but nevertheless protected "trade dress." The Sixth Circuit Court of Appeals deemed it inappropriate to aggregate the items at issue and treat the resulting "look and feel" as product packaging.  Rather, it declared, a court must examine "the specific elements which comprise [the allegedly distinctive] trade dress."  The elements at issue here, the court decided, each qualified as "design."  (LOF feels compelled to point out that most "product packaging" can probably be (re)characterized as "product design" if the elements are examined with a sufficient degree of granularity.  If so, is the packaging/design split a sensible rule?)

In any event, for A&F, this ruling meant that "to recover for trade dress infringement . . . , [A&F] must prove by a preponderance of the evidence: 1) that the trade dress in question is distinctive in the marketplace, thereby indicating the source of the good it dresses, 2) that the trade dress is primarily nonfunctional, and 3) that the trade dress of the competing good is confusingly similar." The Circuit Court ruled that while A&F might conceivably be able to prove that its trade dress was "distinctive," it could not conceivably prove the second or third elements of its trade dress claim.


Let's hope that 1) Gap will try to differentiate Athleta rather than simulate Lululemon's "look and feel," and 2) that Lululemon isn't litigious. (Would you want to litigate against a behemoth like Gap Inc.?) It seems to LOF that this litigation would be unfortunate for all parties: Lululemon would probably lose on the merits, but it could take a very long time for a judge to get to the fatal ruling. (Of course, "all parties" doesn't include the lawyers: as the song goes, it's nice work if you can get it.)


This post, like all content on LAW OF FASHION, is for informational and entertainment purposes only, and does not constitute legal advice or form an attorney-client relationship between Charles Colman Law, PLLC

or its members, and any company or individual.