Part 1 of this series introduced trade dress in restaurants and Part 2 took a closer look at restaurant décor as trade dress. Trade dress law is actually a part of the trademark laws, specifically Section 43(a) of the Lanham Act. The law itself states that a successful trade dress infringement claim will establish that (1) the restaurant decor of the copying competitor is either ‘inherently distinctive’ OR has achieved ‘secondary meaning’ (consumer brand recognition) among consumers, (2) the copied décor features are primarily ‘nonfunctional,’ and (3) the two decors in question are likely to be confused by the relevant purchasing public.

We all know that attorneys can make a whole case out of a single word. This is one of those areas. The “or” has led to an interesting interpretation of this section of the trademark law across the country. Some courts have addressed restaurant décor under the “inherently distinctive” analysis (before the “or”) while others have addressed it under the secondary meaning analysis (after the “or”). Yet others have avoided the question entirely in deciding cases of alleged copying of restaurant décor by a competitor. The Supreme Court stated that trade dress in the form of business décor could be protected from infringement if it is inherently distinctive and without a showing of secondary meaning. But in another case several years later, the Supreme Court characterized business décor as either product packaging or “else some tertium quid akin to product packaging (after the “or”). The Supreme Court recognized that there was an interesting situation when it came to restaurant décor – the analysis would “depend on whether you think the restaurant was serving food or serving a dining experience. If the restaurant is serving food, then it’s a package. If it’s serving a dining experience, then the ambiance and the layout are part of it.” The trade dress or restaurant décor in this case was described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” (Emphasis in the original.)

This seemingly contradictory analysis by the Supreme Court resulted in different paths taken by the lower federal courts. The Courts of Appeals for the Second, Tenth and Federal Circuits have found that secondary meaning must be shown. The Ninth Circuit has expressed doubts as to whether trade dress may be afforded protection without a finding of secondary meaning. On the other hand, the Fifth, Seventh and Eleventh Circuits have not required that secondary meaning be shown.

In a 2003 case called Best Cellars, Inc. v. Wine Made Simple, Inc., the New York district court adopted the line of thinking that business décor was akin to product packaging (after the “or”). In delineating the proper classification (before or after the “or”), the district court explicitly stated that “[i]nterior décor is thus clearly not product design” and implicitly selected the tertium quid akin to product packaging label for the décor trade dress at issue.  In Laureyssens v. Idea Group Inc.,” the Second Circuit explained “Where there is no actual secondary meaning in a trade dress, the purchasing public simply does not associate the trade dress with a particular producer. Therefore, a subsequent producer who adopts an imitating trade dress will not cause confusion, mistake, or deception as to the “origin, sponsorship, or approval” of the goods. Second, a junior producer’s use of imitating trade dress bears no “false designation of origin” because, in the absence of secondary meaning in the senior producer’s trade dress, the imitating trade dress suggests no particular origin to the consuming public …. The secondary meaning requirement exists to insure that something worth protecting exists-an association that has developed in the purchasing public’s mind between a distinctive trade dress and its producer-before trademark law applies to limit the freedom of a competitor to compete by copying. The imitation or even complete duplication of another’s product or packaging creates no risk of confusion unless some aspect of the duplicated appearance is identified with a particular source …. ” Absent confusion, imitation of certain successful features in another’s product is not unlawful and to that extent a ‘free ride’ is permitted.”

This makes sense. Confusion is only a risk if the customer actually attaches a meaning or association with the décor. The goal, therefore, of restauranteers is to link the décor with the restaurant’s public image.  The restaurant is delivering an experience – the environment together with great food and drink. There must be visual impact – and a consistent theme to the décor. If a customer visits a second location of the restaurant, it should have a déjà vu moment that he has been here before.

In Part 4 of this series on restaurant trade dress, we will explore how courts will not protect functional features, no matter how arguably unique or distinctive. Part 5 explores trade dress infringement cases by using the Fuddruckers chain as a case study.