Coach Leatherware Co. v. Anntaylor, Inc.
933 F.2d 162 (1991)
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Rule of Law:
Infringement of a registered trademark can be established as a matter of law by showing a likelihood of confusion, whereas infringement of unregistered trade dress requires a plaintiff to also prove that the product's design has acquired secondary meaning, which is a fact-intensive inquiry generally unsuitable for resolution by summary judgment.
Facts:
- Coach Leatherware Company, Inc. (Coach), a manufacturer of high-quality leather goods for approximately fifty years, sold handbags featuring several consistent design elements.
- Coach attached a distinctive, lozenge-shaped leather hang tag, suspended from a beaded brass chain, to all of its handbags.
- This hang tag, bearing the name 'Coach Leatherware,' was a registered trademark on the Principal Register of the United States Patent and Trademark Office.
- AnnTaylor, Inc. (AnnTaylor), a prominent retailer of women's apparel, began selling handbags that replicated three of Coach's classic designs: the 'Dinky Bag,' the 'Duffle Sac,' and the 'Convertible Clutch.'
- The handbags sold by AnnTaylor were manufactured by Laura Leather Goods, Inc. (Laura) and A & R Handbag, Inc. (A & R).
- The imitation handbags sold at AnnTaylor also featured a lozenge-shaped leather hang tag that was similar in look and feel to Coach's tag, but was embossed with the AnnTaylor name.
Procedural Posture:
- Coach Leatherware Company, Inc. sued AnnTaylor, Inc., Laura Leather Goods, Inc., and A & R Handbag, Inc. in the U.S. District Court for the Southern District of New York for trademark infringement and unfair competition.
- Coach filed a motion for a preliminary injunction to stop the defendants from selling the imitation handbags.
- The defendants filed a cross-motion for summary judgment, arguing that Coach had failed to establish a prima facie case.
- The district court judge, on his own initiative (sua sponte), denied the defendants' motion and granted summary judgment in favor of Coach.
- The district court issued a permanent injunction preventing the defendants from replicating any of Coach's handbag styles.
- The defendants appealed the district court's judgment to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does the sale of handbags that intentionally replicate the unregistered overall design (trade dress) and a registered hang tag of a competitor's product violate the Lanham Act and New York common law as a matter of law?
Opinions:
Majority - Judge Kaufman
No, as to the unregistered handbag designs (trade dress), but Yes, as to the registered hang tag. While the imitation of the registered trademark hang tag violates Section 32 of the Lanham Act as a matter of law due to the high likelihood of confusion, determining whether the unregistered handbag designs have acquired secondary meaning presents a genuine issue of material fact that makes summary judgment for the trade dress claim improper. To prove trade dress infringement under § 43(a), Coach must establish both secondary meaning and likelihood of confusion. Secondary meaning is a 'vigorous evidentiary requirement' involving factual assessments of advertising, sales, and consumer recognition, rendering it an 'unlikely candidate for summary judgment.' Conversely, for the registered hang tag, secondary meaning is presumed because the mark is fanciful and registered. The court found that AnnTaylor's tag was 'confusingly similar to that of Coach’s tag in look and feel,' and when affixed to nearly identical products marketed to the same consumers, it established a likelihood of confusion as a matter of law.
Dissenting in part - Judge Winter
No. The court should not grant summary judgment on either the trade dress claim or the registered trademark claim, especially as the latter was never formally pleaded by the plaintiff. Procedurally, it is improper for an appellate court to grant summary judgment on a fact-specific claim the plaintiff never raised. Substantively, the hang tags are not confusingly similar on their own; they are different shapes and bear different names. Any potential for confusion arises only because they are attached to nearly identical handbags. Therefore, the issue is fundamentally one of trade dress, which the majority correctly concluded requires a trial. By finding trademark infringement based on the context of the imitated trade dress, the majority improperly 'converts a rejected trade dress claim into a registered trademark claim,' blurring the critical distinction between the two legal theories.
Analysis:
This case clarifies the significant procedural and evidentiary differences between protecting a registered trademark and an unregistered trade dress. It establishes a high bar for winning a trade dress claim on summary judgment by emphasizing that secondary meaning is an intensely factual question requiring a full trial to resolve. The decision demonstrates that while the overall look of a product may be difficult to protect without extensive evidence, a registered component of that product (like a hang tag) can be protected more easily and decisively. This bifurcation of infringement claims for a single product shows how distinct forms of intellectual property can be, even when physically connected.
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