Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc.

Rule of Law:

Trade dress protection under the Lanham Act requires distinctiveness and non-functionality, with product configurations (designs) requiring acquired distinctiveness (secondary meaning) rather than inherent distinctiveness. Features are functional and unprotectable if their exclusive use would put competitors at a significant non-reputation-related disadvantage, or if they are essential to the use or purpose of the product or affect its cost or quality. Furthermore, to prove infringement, there must be a likelihood of confusion among consumers.

Facts:

• Abercrombie & Fitch (A&F) is a retailer of casual clothing primarily targeting young men and women of college age, operating 157 retail stores and a mail-order catalog, having achieved over $1.4 billion in sales and $26 million in marketing expenditures.
• A&F identifies its “Abercrombie brand” trade dress as comprising nine features, including the use of specific marks (e.g., A&F in Universe Bold Condensed typeface), words like “performance,” “authentic,” and “outdoor” on labels and promotional materials to convey certain images.
• A&F's claimed trade dress also includes design logos (e.g., ski patrol cross, lacrosse sticks), primary color combinations in various designs, all-natural cotton/wool/twill fabrics, a “cutting edge ‘cool’ image” conveyed through its A&F Quarterly catalog, and a consistent in-store merchandise look with college student sales associates.
• American Eagle Outfitters (American) sells essentially the same variety of clothing and products in its 300 stores, generating approximately $300 million in annual sales.
• American's marketing executives directed its store managers to weekly inspect and report on A&F store presentations.
• American introduced its own catalog, which A&F claimed featured similar products, colors, designs, fabrics, product names (e.g., “vintage” sweatshirts), and a paper, page layouts, lifestyle editorial content, and typeface similar to the A&F Quarterly.
• During the district court litigation, American declined to contest, for purposes of its summary judgment motion, the allegation that it intentionally copied various aspects of Abercrombie’s claimed trade dress.

Procedural Posture:

• Abercrombie & Fitch Stores, Inc. (A&F) filed suit in the U.S. District Court, Southern District of Ohio, against American Eagle Outfitters, Inc. (American), claiming infringement of its unregistered trade dress under Section 43(a) of the Lanham Act, Ohio common law of trade dress protection and unfair competition, and the Ohio Deceptive Trade Practices Act.
• American filed its Answer and simultaneously filed a motion for summary judgment.
• The district court granted in part American's motion to stay discovery, ruling that discovery on intentional copying was inappropriate during the summary judgment motion's pendency because American had admitted intentional copying for purposes of the motion, but permitted discovery on similar designs/marketing approaches by third-party retailers.
• The district court granted American's motion for summary judgment in its entirety, reasoning that A&F had sought protection for something that did not constitute trade dress at all, finding the claimed elements "too descriptive and generic" and amounting to an unprotectable "abstract image or marketing approach."
• A&F moved for reconsideration, introducing emails as evidence of consumer confusion, which the district court examined and rejected as irrelevant to its judgment.
• A&F timely appealed the district court's grant of summary judgment to the Sixth Circuit Court of Appeals.