Walmart Stores, Inc. vs. Samara Brothers, Inc.
: Commercial Law
1. Summarize the facts associated with Walmart Stores, Inc. v. Samara Brothers, Inc.
Samara is a manufacturer of children's clothing. The core of Samara's business is its line of spring/summer seersucker children's garments. Wal-Mart is a national chain of retail stores which sells a variety of items, including children's clothes.
In 1995, Wal-Mart contracted with Judy-Philippine, Inc. (“JPI”) to have JPI manufacture for Wal-Mart a large quantity of children's seersucker garments to be offered for sale under Wal-Mart's house label, “Small Steps,” in the 1996 ...view middle of the document...
Wal-Mart alone sold the JPI garments under its own house label. The other stores sold the garments under the JPI label, “Cuties by Judy.”
2. Identify the legal question(s) that is under consideration.
The legal question is that Wal-Mart’s case appears to be a narrow opinion devoted to the arcane question of whether federal trade dress protection requires a showing that the trade dress has “acquired” distinctiveness and if there is a protection of infringement registration of trademarks under the Lanham Act, which defines in §45 to include “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods . . . from those manufactured or sold by others and to indicate the source of the goods . . . .” 15 U. S. C. §1127. Registration of a mark under §2 of the Act, 15 U. S. C. §1052, enables the owner to sue an infringer under §32, 15 U. S. C. §1114; it also entitles the owner to a presumption that its mark is valid, see §7(b), 15 U. S. C. §1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see §15, 15 U. S. C. §1065. In addition to protecting registered marks, the Lanham Act, in §43(a), gives a producer a cause of action for the use by any person of “any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . .” 15 U. S. C. §1125(a). It is the latter provision that is at issue in this case.
The breadth of the definition of marks registerable under §2, and of the confusion-producing elements recited as actionable by §43(a), has been held to embrace not just word marks, such as “Nike,” and symbol marks, such as Nike’s “swoosh” symbol, but also “trade dress”— a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.
3. Prioritize the rules of law that the court will consider.
Since the text of §43(a) provides little guidance as to the circumstances under which unregistered trade dress may be protected. It does require that a producer show that the allegedly infringing feature is not “functional,” see §43(a)(3), and is likely to cause confusion with the product for which protection is sought, see §43(a)(1)(A), 15 U. S. C.. §1125(a)(1)(A). Nothing in §43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not “cause confusion . . . as to the origin, sponsorship, or approval of [the] goods,” as the section requires. Distinctiveness is, moreover, an explicit prerequisite for registration of trade dress under §2, and “the general principles qualifying a mark for registration under §2 of the Lanham Act are for the most part...