United States: Sales Volume and Intentional Copying Alone May Be Sufficient to Demonstrate that a Trade Dress Is Valid as a Matter of Law

The U.S. Court of Appeals for the Tenth Circuit has held that a trade dress may be valid as a matter of law upon proof of a large sales volume of products featuring the trade dress and that the defendant intentionally copied the trade dress. Sally Beauty Co., Inc. v. Beautyco, Inc., 2002 U.S. App. LEXIS 18139 (10^th Cir. Sept. 3, 2002).

The plaintiff uses a trade dress for its beauty products that consists of, among others, a white bullet-shaped bottle with a flat, black cap. The defendant uses a similar-looking bottle for its beauty products. After the plaintiff sued for trade dress infringement, the district court awarded summary judgment in favor of the defendant, holding that the plaintiff’s trade dress was invalid as a matter of law.

The Tenth Circuit reversed and remanded for trial. The court explained that a trade dress is valid and, thus, protectable when it has acquired a secondary meaning. A trade dress has acquired a secondary meaning when "its primary significance in the minds of potential consumers is no longer as an indicator of something about the product but as an indicator of its source or brand." The plaintiff offered circumstantial evidence that its trade dress had acquired secondary meaning by showing a large sales volume of products featuring the trade dress (worth millions of dollars) and demonstrating that the defendant intentionally copied the trade dress. Because this evidence alone was a sufficient basis on which a reasonable jury could conclude that the plaintiff’s trade dress is valid, the court held that summary judgment was inappropriate.