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Two Pesos Inc. v Taco Cabana Inc.

505 U.S. 763 (United States Supreme Court 1992)

D began operating restaurants with a motif very similar to P’s trade dress.
P sued D for trade dress infringement under the Lanham Act.

The trial court found in favor of P, and held that D had intentionally and deliberately infringed P’s trade dress.
The court of appeals upheld the trial court’s decision.

Can the trade dress of a restaurant be protected under the Lanham Act without proof that the trade dress has secondary meaning?

Yes, when the trade dress is inherently distinctive, proof of secondary meaning isn’t required.

Marks can be classified as: generic, descriptive, suggestive, arbitrary, or fanciful (Abercrombie & Fitch Co. v. Hunting World, Inc.).
  • The latter three marks are deemed inherently distinctive and are entitled to protection.
  • Generic marks are not registerable as trademarks.
  • Descriptive marks may acquire the distinctiveness which will allow them to be protected under the Act, and the acquired distinctiveness is called secondary meaning.

The lower courts found that the trade dress was inherently distinctive and non-functional.

If a mark is inherently distinctive “it is capable of identifying products or services as coming from a specific source and secondary meaning is not required.” Consequently, proof of secondary meaning isn’t necessary when the trade dress at issue is inherently distinctive.


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