By: Daniel Kazhdan, Ph.D. and Vishal Khatri – As explained in a recent Jones Day Commentary here, the Federal Circuit clarified the tests for determining secondary meaning and trade dress infringement. Converse v. ITC, No. 16-2497 (Fed. Cir. Oct. 30, 2018). First, the Federal Circuit explained that registering a trademark creates a presumption that the mark is valid, which can include a presumption that the mark has achieved secondary meaning, but the presumption only begins from the time of registration. Converse’s registration of a mark does not create a presumption that the mark had secondary meaning even before the mark was registered. Second, it laid out a multifactor test for secondary meaning:

(1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. . . . All six factors are to be weighed together in determining the existence of secondary meaning.

Third, the Federal Circuit held that, in order to be infringing, accused designs must be “substantially similar” to the protected trade dress. Judge O’Malley dissented.

This decision is also a reminder that section 337 investigations at the ITC can be based on a variety of intellectual property rights, including trademark and trade dress rights.

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Vishal Khatri is an intellectual property lawyer with more than 15 years of experience representing clients in high stakes, bet-the-company patent litigation and procurement matters around the world. He routinely represents clients in matters before U.S. district courts, the United States International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO), including Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).