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Coach Leatherware Co. v. AnnTaylor? Inc.
933 F.2d 162 (2d. Cir. 1991)
Lex: 933 F.2d 162
Facts: Coach is a NY Corp. engaged in design, manufacture, marketing, distribution and sale of high quality, leather fashion products. AnnTaylor?, Laura and A&R Handbag (Appellants) are also engaged in the business of designing, manufacturing and selling handbags. Coach’s classic handbag designs including Dinky Bag, the Duffle Sac, and the Convertible Clutch where copied and sold by Appellants. All of these bags are leather, contain exterior binding at external seams and incorporate brass hardware components. Coach also registered as a trademark a leather tag that is attached to all its bags. AnnTaylor? similarly included a leather tag embossed with the AnnTyalor? Name.
Procedure: Coach sued for trademark infringement under §43a of Lanham Act and for unfair competition under NY state common law. The Trail court found that the appellant’s bags were confusingly similar to the Coach bags and granted summary judgment in favor of Coach finding appellants liable for trade dress infringement and common law unfair competition, enjoining them from substantially emulating any of Coach’s handbag designs. Appellants appealed.
Issue: Whether Coach is entitled to summary judgment against Appellants for trademark infringement for manufacturing and selling bags that are confusingly similar to Coach’s bags and the hang tags.
Held: On appeal court reverses summary judgment for copying of the bags under section 43a of Lanham Act and NY common law of unfair comp but affirms summary judgment on the copying of the registered coach hang tags.
Dicta: Summary judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to material factual fact and that the moving part is entitled to a judgment as a matter of law.” §43a of Lanham act extends protection to a product’s trade dress, the total image of a goods as defined by its overall composition and design, including size, shape, color, texture, and graphics.” To find trade dress infringement must prove “that the products appearance has acquired secondary meaning- the consuming public immediately identifies the product with its maker- and the purchasers are likely to confuse the imitating goods with the original.” Even if trade dress infringement is established liability is limited where the features that are infringed are functional and essential to the basic purpose the article is meant to serve. Secondary meaning can be acquired through advertising expenditures, consumer studies, unsolicited media converge of the product, sales success, attempts to plagiaries the mark and length and exclusivity of use. Proof of secondary meaning therefore requires detailed investigation of the products within the marketplace.
Analysis: Coach has failed to establish that a reasonable jury must conclude the overall design of its handbags have acquired secondary meaning as conscious replication alone does not establish secondary meaning. Additionally, Coach has not presented sufficient evidence for summary judgment on likelihood of confusion as Coach failed to establish as a matter of law infringement upon trade dress of the unregistered elements of the Coach product. In regards to the hang tags – the hang tag is perceived as inherently distinctive in its shape and composition and thus a fanciful mark that receives additional protection in the registration of the mark. Grant of summary judgment on the registered hang tags was valid as there is no issue of material fact preventing summary judgment and the AnnTaylor? tag is so confusingly similar to the Coach tag in the look and feel.
Future Importance: This case suggest that even though bags may be confusingly similar summary judgment is only warranted if there is enough evidence to show that there is no genuine issue of material facts. Therefore parties will be able to plead their case to suggest that the bags’ trade dress (product design) are not confusingly similar.