Ashley Furniture Industries, Inc. v. Sangiacomo N.A. Ltd.
187 F.3d 363, 1999 WL 598485 (1999)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A product's configuration can constitute inherently distinctive trade dress protectable under the Lanham Act if its overall design is capable of functioning as a source identifier. The traditional Abercrombie framework for trademark distinctiveness is the proper test for determining inherent distinctiveness in product configuration cases, focusing on the total image rather than the commonality of individual design elements.
Facts:
- Ashley Furniture Industries, Inc. (Ashley) and SanGiacomo N.A. Ltd. (SanGiacomo) are competing furniture manufacturers.
- In 1993, following a prior lawsuit, the CEOs of both companies made an oral 'gentlemen’s agreement' not to make 'Polaroid copies' of each other's furniture designs.
- In 1995, Ashley introduced a neoclassical bedroom suite named 'Sommerset,' which uniquely combined a modern high-gloss polyester finish with classical elements like fluted columns, arches, and entablatures.
- Ashley's evidence, undisputed by SanGiacomo, indicated that while the individual design elements were common in the industry, their combination in the Sommerset suite created a unique and unusual overall appearance not previously seen in the market.
- In late 1996 or early 1997, SanGiacomo began selling a visually similar, lower-priced bedroom suite named 'La Dolce Vita,' which also featured a high-gloss finish, fluted columns, arches, and entablatures.
- SanGiacomo's introduction of the La Dolce Vita suite displaced sales of Ashley’s Sommerset suite at many retailers.
- Manufacturers in this market do not typically place their names on the exterior of furniture, instead relying on internal tags which retailers often remove.
Procedural Posture:
- Ashley Furniture sued SanGiacomo in the U.S. District Court for the Middle District of North Carolina, alleging federal trade dress infringement and breach of an oral contract.
- SanGiacomo moved for summary judgment on Ashley's trade dress claim.
- The district court granted summary judgment for SanGiacomo, ruling as a matter of law that Ashley's Sommerset design was not inherently distinctive and had not acquired a secondary meaning.
- The district court also granted summary judgment for SanGiacomo on the breach of contract claim.
- Ashley (appellant) appealed the district court's grants of summary judgment to the U.S. Court of Appeals for the Fourth Circuit, with SanGiacomo as the appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Is a product's configuration, which combines common design elements into a unique overall appearance, inherently distinctive trade dress protectable under the Lanham Act without a showing of secondary meaning?
Opinions:
Majority - Judge Diana Gribbon Motz
Yes. A product's configuration that combines common design elements into a unique overall appearance can be inherently distinctive trade dress protectable under the Lanham Act without a showing of secondary meaning. The proper legal standard for assessing inherent distinctiveness of product configuration is the traditional Abercrombie framework, which the Supreme Court endorsed in Two Pesos, Inc. v. Taco Cabana, Inc. This court rejects alternative tests from other circuits that require a product design to be 'likely to serve as a source identifier.' The correct inquiry is whether the design is 'capable' of identifying the source, a standard which is presumed met for suggestive, arbitrary, or fanciful trade dress. The district court erred by focusing on the commonality of the individual design elements rather than the 'total image' of the Sommerset suite. Because Ashley presented uncontroverted evidence that the combination of elements was unique, a genuine issue of material fact exists as to whether the overall design is arbitrary or fanciful, which precludes summary judgment.
Analysis:
This decision solidifies the Fourth Circuit's position on a significant circuit split regarding the test for inherent distinctiveness in product configuration cases. By rejecting the more stringent 'source-identification' tests from other circuits and adhering to the traditional Abercrombie framework, the court lowers the bar for product designers to claim trade dress protection. The ruling clarifies that the key inquiry is the uniqueness of the overall design, not the novelty of its individual components. This precedent makes it easier for plaintiffs with novel product designs to survive summary judgment and reach a jury, potentially broadening the scope of protection for product designs under the Lanham Act in the Fourth Circuit and influencing other jurisdictions.
Unlock the full brief for Ashley Furniture Industries, Inc. v. Sangiacomo N.A. Ltd.