                                                                                                                           Opinions of the United
1994 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


11-15-1994

Duraco Prod. Inc. v. Joy Plastic Ent.
Precedential or Non-Precedential:

Docket 94-3323




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                 UNITED STATES COURT OF APPEALS
                     FOR THE THIRD CIRCUIT

                      _____________________

                           No. 93-3323
                      _____________________


                     DURACO PRODUCTS, INC.,

                                     Appellant
                                v.

                 JOY PLASTIC ENTERPRISES, LTD.,
                    d/b/a BACKYARD PRODUCTS;
                     TRAVIS PRODUCTS, INC.

    _________________________________________________________

        On Appeal From the United States Court of Appeals
            for the Western District of Pennsylvania
                   (D.C. Civil No. 92-00270E)
    _________________________________________________________

                    Argued: February 17, 1994

     Before:   BECKER, HUTCHINSON, and COWEN, Circuit Judges

                   (Filed   November 15, 1994)

                      JAMES R. KYPER (Argued)
                      MARK R. LESLIE
                      Kirkpatrick & Lockhart
                      1500 Oliver Building
                      Pittsburgh, PA   15222
                           Attorneys for Appellant


                      CRAIG A. MARKHAM (Argued)
                      HARRY D. MARTIN
                      Elderkin,   Martin,   Kelly,    Messina   &
Zamboldi
                      150 East Eighth Street
                      Box 1819
                      Erie, PA   16507
                           Attorneys for Travis Products, Inc.,
                           Appellee

                      JOHN B. FESSLER (Argued)
                              Marsh, Spaeder, Baur, Spaeder & Schaaf
                              300 State Street, Suite 300
                              Erie, PA   16507

                              W. PATRICK DELANEY
                              MacDonald, Illig, Jones & Britton
                              100 State Street, Suite 700
                              Erie, PA 16507

                                    Attorneys     for                 Joy        Plastic
                                    Enterprises,   Ltd.,              d/b/a     Backyard
                                    Products, Appellee


                    ______________________________________

                             OPINION OF THE COURT
                    ______________________________________


BECKER, Circuit Judge.

         This is a trade dress infringement action brought under

section 43(a) of the Lanham Act, 15 U.S.C.A. § 1215(a) (Supp.

1994).    Plaintiff Duraco Products, Inc. ("Duraco") appeals from

an   order   of     the     district   court       denying      its    motion    for    a

preliminary        injunction        against        defendants          Joy     Plastic

Enterprises, Ltd. ("Joy"), d/b/a Backyard Products, and Travis

Products, Inc. ("Travis").             Duraco, a manufacturer of plastic

planters for use in gardens, claims that Joy has infringed the

trade    dress    of   Duraco's     most    popular      product      by   marketing    a

planter with a similar shape and texture, and that Travis is

liable for manufacturing the molds for Joy's planter.                           Because

Duraco's claim is predicated upon infringement of the trade dress

of the product itself, the appeal requires us to confront a

difficult    area      of   trade   dress    law    --   that    dealing      with     the

circumstances under which product configurations, in contrast to
product    packaging,           can,    in    Lanham       Act    parlance,        constitute

inherently distinctive trade dress thus serving as a designator

of    origin    that       will   protect      the      plaintiff's        product     design

features against copying.

          We conclude that traditional trade dress doctrine does

not "fit" a product configuration case because unlike product

packaging, a product configuration differs fundamentally from a

product's trademark, insofar as it is not a symbol according to

which one can relate the signifier (the trademark, or perhaps the

packaging) to the signified (the product).                          In other words, the

very    basis       for    the    trademark        taxonomy         --   the     descriptive

relationship between the mark and the product, along with the

degree to which the mark describes the product -- is unsuited for

application to the product itself.

          However, we also think that there is a proper set of

circumstances for treating a product configuration as inherently

distinctive.          These circumstances are characterized by a high

probability         that    a    product      configuration         serves     a    virtually

exclusively         identifying        function      for    consumers       --     where    the

concerns over "theft" of an identifying feature or combination or

arrangement of features and the cost to an enterprise of gaining

and proving secondary meaning outweigh concerns over inhibiting

competition,         and    where      consumers        are      especially        likely   to

perceive a connection between the product's configuration and its

source.        We    conclude      that,      to   be    inherently        distinctive,      a

product feature or a combination or arrangement of features, i.e,

a    product    configuration,          for    which       Lanham    Act    protection      is
sought   must   be   (i)   unusual   and   memorable;    (ii)   conceptually

separable from the product; and (iii) likely to serve primarily

as a designator of origin of the product.

         The district court applied a different standard, and in

the ordinary course we might remand for reconsideration under the

proper test.    However, our examination of the record persuades us

that, under the standard we adopt, no factfinder could reasonably

conclude that Duraco has demonstrated a likelihood of success on

the merits by meeting the threshold distinctiveness requirement

of   section    43(a)      either    through    a   showing     of     inherent

distinctiveness      or,   failing    that,    by   establishing      secondary

meaning.    We will therefore affirm the district court's order.

However, the district court will have to conduct a final hearing

at which it will apply the newly announced standard.                 In view of

our disposition, we need not reach the other grounds that the

district court gave for its denial of a preliminary injunction,

i.e., non-functionality of the trade dress and failure to show a

likelihood of confusion.
                              I.    FACTS AND PROCEDURAL HISTORY

            A.     The Relevant Facts

            Duraco's most profitable products, its "Grecian Classics"

plastic planters, account for one tenth of its nearly $35 million

in annual sales.              These planters, shaped like a Grecian urn, are

made in two sizes, with diameters of twelve and eighteen inches

and   heights          of   ten     and    fifteen   inches,      respectively.           Their

plastic construction makes them inexpensive and durable.                                But the

key to their considerable success, according to Duraco, is that a

careful combination of ornamental features creates in them the

illusion of marble, cement, or stone construction.

            The stimulus for the Duraco urn's design was a suggestion

by Robert Armstrong, a Senior Buyer at K-Mart, Duraco's largest

retailer customer.                 Armstrong had run across urn-shaped planters

similar      in    appearance         to    the    eventual      design    of     the   Grecian

Classics at a trade show in the Federal Republic of Germany

sometime in 1984.                  Realizing that like products were not then

available         in    the       United    States,    Armstrong          met    with    Duraco

officials to describe his fortuitous discovery and to encourage

Duraco to manufacture such an item.                        Duraco, in turn, set about

to satisfy Armstrong's interest.                      It surveyed Grecian urns at

statuary stores and explored its own archives.                             As it happened,

in    the   late       1970s       Duraco    had   tried    to    market        the   "Cotswold

Planter," an English-made Grecian plastic planter.                                Poor sales,

perhaps attributable to its relatively high retail price tag --

$14.99 compared to under $5.00 for the Grecian Classics -- caused

Duraco to drop the product two years later.                               The Cotswold may
have survived in United States commerce for some time thereafter,

but was no longer available at the time of the Armstrong-Duraco

conference.

        The Grecian Classics are much like, but not clones of,

the Cotswold.        Both planters have an hourglass-like design and

fluting, though the Cotswold has a higher base (hence a higher

center of gravity), softer lines, and a less realistic texture.

Despite the differences, Armstrong would have been pleased with a

replica of the Cotswold urn.

        Once     Duraco    showed     Armstrong     its   prototype,      K-Mart

committed itself to purchase 100,000 Grecian Classics planters

from Duraco.     With no competing plastic urn in the United States

sporting a similar, detailed design, sales of the eighteen-inch

Grecian Classics planter reached 460,000 the first year, making

it Duraco's leading seller.         This overwhelming success persuaded

Duraco to manufacture a twelve-inch cousin; sales continued to

soar.

        Today,    Duraco    markets    the   bulk    of   its   planter    wares

directly to large retailers, primarily large discount department

stores; some distributors are directly supplied.                Advertising is

typically done cooperatively with the retailers:                  the parties

share costs, and Duraco allows the retailer to use two percent of

sales receipts for advertising, redeemable in cash or credit.

The media generally relied upon for consumer advertising are

Sunday newspaper fliers, magazines, circulars, and newspaper ads.

In   those   types    of   advertising,      the    planters    are   generally

depicted in juxtaposition with other outdoor garden products,
such as plant food and watering cans.                    Duraco also solicits

retailers with brochures and trade advertisements.

          In its marketing endeavors, Duraco encourages, but does

not contractually require, its retailer customers to place either

the Duraco tradename or its registered trademark "Garden Scene"

logo in their advertisements.              Although a retailer's failure to

display Duraco's logo results, at worst, in an admonition, half

of the planter advertisements contain the logo.                    Nevertheless,

brand-name      awareness      in   the   outdoor    garden    products    area   is

slight -- less than 0.5 percent of consumers in Duraco's survey

recognized the Duraco name.           This is probably so because planters

are inexpensive and are typically bought as an impulse item.

          A    number     of   enterprises     compete   with    Duraco     in    the

plastic planter market, amongst them the defendant Joy.                          Joy,

also known by its "Backyard Products" logo, calls its planters

"Ultimate Urns."          Defendant Travis manufactures the molds for the

plastic       planters;    Joy   markets     them.    The     interest    of   Joy's

President Thomas Gay in producing a planter configured like a

classic Grecian urn had been piqued by a color brochure depicting

the Cotswold urn.          In 1987 and 1988, he approached buyers at K-

Mart and another retailing chain, both of which already stocked

Duraco's Grecian Classics, to elicit information regarding the

potential for a competitor to Duraco in the plastic urn market.

Having received favorable feedback, Gay undertook the development

of the Backyard Products urn.

          During the development phase Gay had access to various

urns   in      the   market,     including    the    Grecian    Classics.         His
considered observation and analysis of all those urns' features

convinced him to design one with a deeper bowl -- to hold more

soil and water for enhanced root development -- and with a lower

center of gravity -- because some other urns, such as the Duraco

urns, were too top-heavy and subject to tipping over.              After

completing his design, Gay engaged defendant Travis to create the

plastic injection mold for the Ultimate Urns.          Joy's Ultimate

Urns are strikingly similar in appearance to Duraco's Grecian

Classics.   Both planters have a similar construction, and both

are structured in two parts, a top "bowl" section that connects

at a joint with the "base" or "pedestal" of the planter.           Like

Duraco, Joy offers a twelve-inch, reduced-scale version of its

eighteen-inch model.

       According to Richard Husby, Duraco's Vice President of

Marketing and Sales, the Ultimate Urns cannot truly compare to

the Grecian Classics by virtue of Joy's failure to match Duraco's

punctilious quality control.      Joy's planters, of comparatively

poor quality according to Husby, can be found in the market with

drooping flash, poor color, and sharp edges and ridges.             The

inferior coloring is said to stem from Joy's reliance on a less

expensive   coloring   process,   and   Husby   testified   that   Joy's

inferior molding technique causes blotching on the urns' bottoms.

The uneven edges of Joy's planters are caused by Joy's cutting

away, rather than sanding off, the flashing.1

   1.   A significant drawback of the injection molding process,
the technique Duraco uses to manufacture the planters, is that
strips of plastic, called "flashing," sometimes form on the
planters' sides as a result of cracks in the molds or excessive
          Other    differences    between     the   Grecian     Classics     and

Ultimate Urns, unrelated to quality, can be noted, though only in

a sharply focused side-by-side comparison.                The Duraco planter

has higher fluting (used on the bowl and pedestal of the planters

to create the illusion of an actual marble or alabaster planter)

and a wider "landing" on the lip between each flute; the Backyard

Products    urn   has   a   broader   base,   a   lower    center   of   gravity

(causing it to withstand tipping better), and a twenty percent

greater fill capacity.        The side of the Backyard Products urn's

bowl is straight-edged, whereas the Grecian Classics' curves in

an arc.     Visual coincidence in detail can be noted in the "egg

and   dart"       patterns,    used    primarily     for     decoration     and

subsidiarily to strengthen the rim, on the lips of the planters'

bowls.

          Duraco inadvertently became aware of Joy's competition

when Duraco's President and Chief Executive Officer John Licht

stumbled across a Backyard Products planter while shopping in a

New Jersey retail store.         He saw a defective urn -- one side of

it was flattened, apparently because it had been removed from the

mold and laid on its side in a shipping carton while still hot --

and purchased it, thinking it to be a defective Duraco urn.                   He

turned the urn over to Duraco's vice president, demanding to know

how a defective urn could have slipped through Duraco's quality
(..continued)
production rates. Flashing can be sharp, threatening injury to
someone handling the planter, and unsightly, detracting from the
aesthetics of the planter.    To combat this irregularity Duraco
employs quality control workers for the purpose, inter alia, of
carefully sanding away any flashing from completed planters.
control safety net into the marketplace.                    When the vice president

returned with news that the urn was Joy's, not Duraco's, Licht

phoned Duraco's attorney.

          Duraco        claims         that    its      "trade     dress"     differs

significantly from the designs of all other competitors save Joy.

Duraco does not claim that any of the classical elements in its

urn's     design        is   protectable;         rather,     Duraco     defines     the

uniqueness of its trade dress according to the total composition

of all the elements of its urns' configuration, including the

rim, the finish, the joining of the top and bottom halves, and

the color results.            Duraco not only adduced evidence that other

competitors       had    come     up    with   patently     different    designs    for

plastic planters, but also presented five designs by its expert

designer that, according to the expert, could compete effectively

in the market for "contemporary interpretations of neoclassic

planters using modifications of classical motifs."                       Mem. op. at

9.       His   five     designs      assertedly      achieved    the   desired     motif

through variations on sundry classical elements, including the

fluting, rims, radii, pedestals, and egg-and-dart design on the

bowl's     rim.       Thus,     in     Duraco's      submission,   Joy    could    have

competed effectively without infringing Duraco's trade dress.2


     2
    .    Duraco alleges that Joy's competition has negatively
affected Duraco's pricing power in the retailer market, costing
it an estimated $600,000 in profits. K-Mart threatened a switch
to Ultimate Urns unless the price of Grecian Classics planters
were lowered; the savings, however, apparently were absorbed by
the retailer and not passed through to the final consumer.
Moreover, despite losing some retail accounts to Joy, Duraco's
sales slightly improved in 1992.
          B.     The District Court's Disposition

          The    district   court's     denial    of   Duraco's      motion   for   a

preliminary injunction was based on several grounds.                     First, it

concluded that Duraco had failed to show a likelihood of success

on the merits.       The court disagreed with Duraco that the design

of the Grecian Classics was distinctive.               According to the court,

"[a]ny consumer looking at the Duraco, Backyard [Products], and

Cotswold       planters   would   say   that     all   three   are    Grecian   urn

planters."       Mem. op. at 8-9.       It continued, remarking that "[t]o

this observer, all of the urns introduced as exhibits, including

plaintiff's, defendants' or others', looked about the same, as

did those presented in drawings by Mr. Hart, the designer."                     Id.

at 10.3




   3
    .    The court facetiously crowned its comparison with the
adapted aphorism, "[a]n urn is an urn is an urn."       Id.   Cf.
Gertrude Stein, Sacred Emily (1913) ("Rose is a rose is a rose is
a rose."), in GEOGRAPHY AND PLAYS 178, 187 (1922).           That
characterization of modern plastic urns is, of course, a far cry
from the eloquent words of Keats, who, saluting a Grecian urn of
a far more exquisite nature, and lacking the prescience to
foresee the commercialization of the classical Grecian form,
penned these timeless words of adulation:

          Thou still unravish'd bride of quietness,
            Thou foster-child of silence and slow time,
          Sylvan historian, who canst thus express
            A flowery tale more sweetly than our rhyme:
          What leaf-fring'd legend haunts about thy shape
            Of deities or mortals, or of both,
              In Tempe or the dales of Arcady?

John Keats, Ode on a Grecian Urn (excerpt from first stanza).
          Applying       a      taxonomy        of     trademark           distinctiveness

consisting of generic, descriptive, suggestive, and arbitrary or

fanciful    marks,       the       court    found     that    the        Grecian    Classics

planters were descriptive at best:                    "The Duraco urn is clearly

just that, an urn.             When purchased or inspected, the consumer

immediately knows the nature of the good before them [sic]:                                 a

plastic planter."            Id. at 13.        The court further found that the

planters'       descriptive         trade   dress     had    not    acquired       secondary

meaning in the market, as
       [t]here was no evidence that consumers, whether K-Mart
       buyers or retail customers, perceived that the product
       emanates from a single source, or, for that matter, that
       the public identified the Duraco planter with the Duraco
       or Garden Scene name. The consumer does not appear to be
       moved in any degree to buy the Duraco planter because of
       its source.    Buyers for the K-Mart stores seemed to be
        motivated largely by their profit margin.


Id. at 15.       Alternatively, the court found the trade dress to be

"generic."

          The    court    also       thought    the    design       to     be   functional,

"because [all the design elements are] necessary for classically

styled    urns,    [and]       in    combination      create       the    illusion    of   an

alabaster chiseled urn."                   Id. at 17.        Furthermore, the court

found that there was no likelihood of consumer confusion, both

because    consumers         are     disinterested      in     the       identity    of    the

manufacturer and because there was no evidence of actual consumer

confusion (neglecting that of Duraco's president, who is not

truly a consumer) that Joy's product was Duraco's.4
   4
    .      As to the other requirements for a preliminary
injunction, the court held: (i) that there was no merit to
Duraco's claim of irreparable harm due to lost profits,
          C.   Jurisdiction and Standard of Review

          The district court had original jurisdiction pursuant to

28 U.S.C.A. § 1338 (West 1993) (granting district courts original

jurisdiction over trademark cases).               Appellate jurisdiction is

invoked     pursuant    to    28     U.S.C.A.    § 1292(a)(1)       (West     1993)

(granting      courts    of        appeals     jurisdiction        over     certain

interlocutory      orders,         including     denials      of      preliminary

injunctions).

          Duraco appeals the denial of its motion for a preliminary

injunction in its action under section 43 of the Lanham Act, 15

U.S.C.A. § 1125(a) (Supp. 1994).5               We explained the requisites

(..continued)
likelihood of confusion, and the lower quality of Joy's products,
because Duraco's sales have remained at healthy levels; (ii) that
the balance of hardships favored Joy, since an injunction would
destroy its entire business whereas Duraco carried multiple
product lines, had increased its sales, and had shown no
likelihood of confusion, loss of consumer good will, or detriment
to reputation; and (iii) that the public interest favored healthy
competition over trade dress protection because there had been no
showing of a likelihood of confusion.    Because we resolve this
case on the likelihood of success on the merits prong, we will
not review these other conclusions.
   5
   .      That section now provides:

               Any person who, on or in connection with any goods
          or services, or any container for goods, uses in commerce
          any word, term, name, symbol, or device, or any
          combination thereof, or any false designation of origin,
          false or misleading description of fact, or false or
          misleading representation of fact, which--
                    (A) is likely to cause confusion, or to cause
               mistake, or to deceive as to the affiliation,
               connection, or association of such person with
               another person, or as to the origin, sponsorship, or
               approval   of  his   or  her   goods,  services, or
               commercial activities by another person, or
for the issuance of a preliminary injunction as well as the

nature of our review in such appeals in Merchant & Evans, Inc. v.

Roosevelt Building Products Co., 963 F.2d 628 (3d Cir. 1992):
             In ruling on a motion for a preliminary injunction,
        the district court must consider:     (1) the likelihood
        that the plaintiff will prevail on the merits at [the]
        final hearing; (2) the extent to which the plaintiff is
        being irreparably harmed by the conduct complained of;
        (3) the extent to which the defendant will suffer
        irreparable harm if the preliminary injunction is issued;
        and (4) the public interest.         Opticians Ass'n v.
       Independent Opticians, 920 F.2d 187, 191-92 (3d Cir.
       1990). The injunction should issue only if the plaintiff
       produces evidence sufficient to convince the district
       court that all four factors favor preliminary relief.
        Id. at 192.
             The   decision  whether   to  enter    a preliminary
        injunction is committed to the sound discretion of the
        trial court, and will be reversed "only if the court
        abused its discretion, committed an obvious error in
        applying the law, or made a serious mistake in
        considering the proof."    Loretangeli v. Critelli, 853
       F.2d 186, 193 (3d Cir. 1988). However, "[a]lthough terms
       of an injunction are normally reviewed for abuse of
       discretion, any determination that is a prerequisite to
       the issuance of an injunction . . . is reviewed according
       to    the    standard  applicable   to    that  particular
       determination." John F. Harkins Co. v. Waldinger Corp.,


(..continued)
                 (B) in commercial advertising or promotion,
            misrepresents    the    nature,    characteristics,
            qualities, or geographic origin of his or her or
            another persons's goods, services, or commercial
            activities,
       shall be liable in a civil action by any person who
       believes that he or she is or is likely to be damaged by
       such act.

15 U.S.C.A. § 1125(a)(1) (Supp. 1994).    With the Trademark Law
Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935,
Congress amended § 43(a) to codify existing constructions of that
section, see S. REP. No. 515, 100th Cong., 2d Sess. 40 (1988),
reprinted in 1988 U.S.C.C.A.N. 5577, 5603, so we will draw
heavily on precedent decided under the previous version of
§ 43(a).
          796 F.2d 657, 658 (3d Cir. 1986), cert. denied[,] 479
          U.S. 1059, 107 S. Ct. 939 (1987).


Id. at 632-33 (parallel citation omitted) (emphasis, and first
and final alterations, supplied).                   Thus, we exercise plenary

review    over    the    district      court's     conclusions     of    law     and its

application      of     the   law     to   the    facts,   see    Marco     v.    Accent

Publishing Co., 969 F.2d 1547, 1548 (3d Cir. 1992), but review

its findings of fact for clear error, see Oberti v. Board of

Educ., 995 F.2d 1204, 1220 (3d Cir. 1993), which occurs when we

are "left with a definite and firm conviction that a mistake has

been committed," Anderson v. Bessemer City, 470 U.S. 564, 573,
105 S. Ct. 1504, 1511 (1985).



                               II.     THE APPLICABLE LAW

          A.     Trade Dress Law in General

          "Trade dress" originally referred to the packaging or

displays associated with trademarked goods.                     In the leading case

of Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659

F.2d 695, 700-02 (5th Cir. 1981), for example, the Court of

Appeals    for    the    Fifth      Circuit      held    that   the     defendant    had

unfairly competed with the plaintiff by utilizing the same design

and colors as the plaintiff for packaging its lawn and garden

products,       even    though      the    defendant     prominently       employed    a

different brand name.

          That    principle      of   trade      dress   law    grounded    in    design

protection has since been extended to the design of a product

itself.        "Section 43(a) of the Lanham Act proscribes not only
trademark infringement in its narrow sense, but more generally

creates a federal cause of action for unfair competition.                       In

particular, § 43(a) provides a cause of action for unprivileged

imitation, including trade dress infringement [of unregistered

trade dress]."          American Greetings Corp. v. Dan-Dee Imports,

Inc., 807 F.2d 1136, 1140 (3d Cir. 1986) (citations omitted).

That is, while it was once "well-settled that shapes of products

in the public domain may be freely copied," id. at 1145 (citing

cases),6 the same no longer holds true, as federal trademark law

under the Lanham Act may protect "product configurations," see,

e.g., Merchant & Evans, 963 F.2d at 633-34; cf. Aromatique, Inc.

v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994) (per curiam)

(plurality opinion by Morris Sheppard Arnold, J.) (noting that

trade dress may now be registered on the Principal Register of

the United States Patent and Trademark Office).                    In Merchant &

Evans, we reaffirmed that trade dress protection extends beyond a

product's packaging or labeling to include "`the appearance of

the       [product]   itself.'"     Merchant   &    Evans,   963    F.2d   at   633

(quoting American Greetings Corp., 807 F.2d at 1140).

            The   Lanham   Act    protection   of    product       configurations

extends to "the total image of a product, including features such

as size, shape, color or color combinations, texture, graphics,

      6
      .   See JAMES L. HOPKINS, THE LAW OF TRADEMARKS, TRADENAMES AND UNFAIR
COMPETITION § 47 (2d ed. 1905) ("It is obvious that if a commercial
article itself could constitute a trademark, there would be
little use for patent laws.         As Judge Carpenter said, `in the
very nature of the case . . . the trademark must be something
other than, and separate from, the merchandise.'") (quoting Davis
v. Davis, 27 F. 490, 492 (C.C. Mass. 1886)).
or even particular sales techniques."                     Computer Care v. Service

Sys. Enters., Inc., 982 F.2d 1063, 1067 (7th Cir. 1992) (internal

quotation marks omitted); accord International Jensen, Inc. v.

Metrosound U.S.A., Inc., 4 F.3d 819, 822-23 (9th Cir. 1993);

Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247

(8th Cir. 1990); Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d

971, 974 (2d Cir. 1987); Ambrit, Inc. v. Kraft, Inc., 812 F.2d

1531,   1535     (11th    Cir.    1986);      John   H.    Harland     Co.    v.   Clarke

Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).                       "`Trade dress

is a complex composite of features' and `[t]he law of unfair

competition in respect to trade dress requires that all of the

features    be    considered      together,      not      separately.'"        American

Greetings Corp., 807 F.2d at 1141 (quoting SK&F, Co. v. Premo

Pharmaceutical       Labs.,      481   F. Supp.      1184,    1187     (D.N.J.     1979),

aff'd, 625 F.2d 1055 (3d Cir. 1980)).                        Thus, for example, a

product configuration may be distinctive although no particular

individual element or feature would be considered distinctive in

isolation.

        In this case we deal exclusively with trade dress said to

inhere in the product itself, rather than trade dress alleged in

a product's packaging.           Because the legal doctrines in these two

very different situations will substantially diverge in various

incidents, we will employ the designation "product configuration"

to refer to trade dress alleged in the product itself, whether in

a   specific     feature    or    in   some    combination        or   arrangement     of

features,      and   to    distinguish     that      type    of   trade      dress   from

"product packaging."          Cf. Two Pesos, Inc. v. Taco Cabana, Inc.,
112 S. Ct. 2753, 2760 (1992) ("[T]he protection of trademarks and

trade dress under § 43(a) serves the same statutory purpose of

preventing    deception   and    unfair      competition.      There   is   no

persuasive reason to apply different analysis to the two. . . .

It would be a different matter if there were textual basis in

§ 43(a) for treating inherently distinctive verbal or symbolic

trademarks     differently      from   inherently        distinctive    trade

dress.").

        In Merchant & Evans, we held that in order to qualify for

trade dress protection, the plaintiff must show:
       (1) that the imitated feature is non-functional, (2) that
       the imitated feature has acquired a "secondary meaning,"
       and (3) that consumers are likely to confuse the source
       of the plaintiff's product with that of the defendant's
       product.


Merchant & Evans, 963 F.2d at 633 (citing American Home Prods.
Corp. v. Barr Labs., Inc., 834 F.2d 368, 370 (3d Cir. 1987));

accord American Greetings Corp., 807 F.2d at 1141; Standard Terry

Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 780 (3d Cir. 1986).

The intervening decision in Two Pesos, Inc. v. Taco Cabana, Inc.,

112 S. Ct. 2753, 2758 (1992), has, however, overruled one aspect

of that formulation, eliminating the need for the plaintiff to

prove   secondary   meaning     in   order    to    receive   protection    for

"inherently distinctive" trade dress.              See Two Pesos, 112 S. Ct.

at 2760.     Hence a plaintiff proceeding under section 43(a) must

now only prove that (i) the trade dress is distinctive, either

because it is inherently distinctive or because it has acquired

distinctiveness; (ii) the trade dress is nonfunctional; and (iii)
the defendant's use of plaintiff's trade dress is likely to cause

consumer confusion.          See id.

        As   just    stated,     the    Supreme    Court    in   Two   Pesos   used

"distinctive"       in   a    dual     sense,     meaning   either     inherently

distinctive or having acquired distinctiveness through secondary

meaning.     See RESTATEMENT (THIRD)       OF   UNFAIR COMPETITION § 13 (Tent.

Draft No. 2, Mar. 23, 1990),7 cited in Two Pesos, 112 S. Ct. at

2758.   Because the Supreme Court in Two Pesos did not decide the

question whether trade dress, and in particular trade dress in a

product configuration, can actually ever be considered inherently

distinctive -- for purposes of that case, the Court assumed that

the restaurant decor at issue was so -- we must first embark on a

journey to delineate when, if ever, product configurations should

be deemed inherently distinctive.




   7
    .    Although the American Law Institute adopted the entire
Restatement of the Law of Unfair Competition in May 1993, the
final version is not yet available, and hence we will cite herein
to the second Tentative Draft.
B.The Problems With The Trademark Taxonomy
            Duraco argues that the design of its Grecian Classics

planters is inherently distinctive because it is "suggestive."

Duraco      borrows    the     term    "suggestive"    from      trademark      law,   as

trademarks have long been classified according to whether they

are   generic,     descriptive,         suggestive,    arbitrary,        or    fanciful.

See Two Pesos, 112 S. Ct. at 2757 (citing Abercrombie & Fitch Co.

v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly,

J.)).       In trademark law, marks belonging to the latter three

categories of the taxonomy -- suggestive, arbitrary, or fanciful

--    are     deemed    inherently       distinctive       and   are     automatically

entitled to protection.               See id.; Fisons Horticulture, Inc. v.

Vigoro      Indus.,    Inc.,    30     F.3d   466,   478   (3d    Cir.    1994);    A.J.

Canfield Co. v. Honickman, 808 F.2d 291, 296-97 (3d Cir. 1986).

Marks falling within the first category -- generic marks -- are

never subject to trademark protection, because to tolerate their

monopolization         would    preclude      competitors    from      accurately      and

efficiently describing their products and hence unduly hobble

them in competition.            See Two Pesos, 112 S. Ct. at 2757; Kellogg

Co. v. National Biscuit Co., 305 U.S. 111, 116-19, 59 S. Ct. 109,

112-14 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169,
186, 16 S. Ct. 1002, 1008 (1896).                 The marks falling within the

remaining category -- descriptive -- acquire distinctiveness only

if they come to identify and distinguish the producer's goods,

i.e.,    if    they     acquire       secondary   meaning.        See     15   U.S.C.A.

§§ 1052(e)-(f), 1127 (Supp. 1994); Two Pesos, 112 S. Ct. at 2757.

To have acquired secondary meaning, "in the minds of the public,

the primary significance of a product feature or term [must be]
to identify the source of the product rather than the product

itself."      Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,

851 n.11, 102 S. Ct. 2182, 2187 n.11 (1982) (dicta).

         Thus, Duraco seeks to latch onto the suggestive trademark

category to avoid having to demonstrate secondary meaning.               Some

courts        have     nonchalantly        applied       the      trademark

generic/descriptive/suggestive/arbitrary/fanciful taxonomy in the

product configuration context (though none of them has inquired

whether it makes sense to do so), see, e.g., Braun, Inc. v.

Dynamics Corp. of America, 975 F.2d 815, 825 n.18 (Fed. Cir.

1992) (design of a blender); cf. Paddington, 996 F.2d at 583

(product packaging); Computer Care, 982 F.2d at 1069 (same);

Ambrit, Inc., 812 F.2d at 1537 (same), and both parties here

assume that it provides the proper framework for our analysis,

see Br. of Appellant at 22-32; Br. of Appellee at 22-30; Reply

Br. of Appellant at 2-12.          But we do not think it helpful or

proper   to    transplant   the    categorical   distinctiveness    inquiry

developed for trademarks to product configurations, where the

alleged trade dress lies in the very product itself.             See Martin

P. Hoffman, Trade Dress/Product Simulation Overview, C913 ALI-ABA
219, 222 (1994) ("The [trademark distinctiveness] categories do

not fit trade dress considerations very well . . ..").

         The difficulty is that, perhaps unlike product packaging,

a product configuration differs fundamentally from a product's

trademark, insofar as it is not a symbol according to which one

can   relate     the   signifier    (the   trademark,    or    perhaps    the

packaging) to the signified (the product).           Being constitutive of
the     product    itself      and    thus    having     no    such    dialectical

relationship to the product, the product's configuration cannot

be said to be "suggestive" or "descriptive" of the product, or

"arbitrary" or "fanciful" in relation to it.                     See Jay Dratler,

Jr., Trademark Protection for Industrial Design, 1988 U. ILL. L.

REV. 887, 903 ("Unlike verbal marks, industrial designs do not

describe anything; they `just are.'"); Ralph S. Brown, Design

Protection:       An Overview, 34 U.C.L.A. L. REV. 1337, 1380 (1987)

(same); Melissa R. Gleiberman, Note, From Fast Food to Fast Cars:

Overbroad Protection of Product Trade Dress Under Section 43(a)

of     the    Lanham    Act,   45    STAN.   L.   REV.   2037,    2042-43       (1993)

[hereinafter Gleiberman, Note, Overbroad Protection of Product

Trade Dress] (same); cf. WILLIAM H. BROWNE, A TREATISE                 ON THE   LAW   OF

TRADE-MARKS § 130, at 87 (1873) ("A trademark is nothing more nor

less than one's commercial signature to his goods; and the mark

and the goods bear the same relation to one another as do the

positive and the negative forces of electricity to each other;

and in their opposition they mutually uphold and sustain.").                      The

very     basis    for    the   trademark      taxonomy    --     the   descriptive

relationship between the mark and the product, along with the

degree to which the mark describes the product -- is unsuited for

application to the product itself.

             Moreover, insofar as consumer motivation to purchase a

product will much more likely be predicated on an appreciation of

a product's features than on an appreciation of a product's name,

assuming no secondary meaning attached to either, one cannot

automatically conclude from a product feature or configuration --
as one can from a product's arbitrary name, for example -- that,

to a consumer, it functions primarily to denote the product's

source.     Cf. RESTATEMENT (THIRD)     OF   UNFAIR COMPETITION, § 16 cmt. b

(Tent. Draft No. 2, Mar. 23, 1990) ("[I]t is less common for

consumers to recognize the design of a product as an indication

of source.").          As Judge Nies wrote, concurring in In re DC

Comics, Inc., 689 F.2d 1042, 1050-51 (C.C.P.A. 1982):
       There are different considerations where one seeks
       protection of a product design itself, and I have found
       no precedent in decisions of this court, or others, which
       recognizes the protectability of any product design as a
       trademark    for   that    product   without    proof  of
       distinctiveness,    that   is,   distinctiveness   as  an
       indication of origin, not simply that it is a distinctive
       design in the sense of being unusual. The semantics, in
       referring to a design as "distinctive," impedes clarity
       in analysis.. . .      Descriptive designations are not
       presumed to function as indications of origin immediately
       upon first use, unlike arbitrary word marks or arbitrary
       logo designs, but rather must be used from some period of
       time before acquiring the status of a trademark.


          Thus,    a   fanciful   or    arbitrary   mark,   having     had     no

established meaning prior to its adoption as a trademark and

serving no apparent purpose other than to identify (signify) the
source, is legally presumed to achieve customer recognition and

association immediately upon its adoption and use.               In contrast,

a product configuration can not generally give rise to a similar

presumption,      as    consumers      usually   appreciate      a   product's

configuration for its contribution to the inherent appeal of the

product, not (in the absence of secondary meaning) its signifying

function.    If one felt compelled to apply the trademark taxonomy,

one could at best say that a product configuration is descriptive

of   (because     identical   with)    the   product   itself.       This    case
illustrates the point rather clearly:               whether or not the Grecian

Classics are "suggestive" of a marble construction or anything

else, we think it quite improbable that a consumer upon seeing

Joy's plastic planter in a store would reasonably associate its

specific configuration with a particular source, even if the

consumer had repeatedly before seen a Duraco plastic planter.

         Accordingly, for all the aforementioned considerations,

we conclude that the trademark taxonomy, carefully and precisely

crafted through a long succession of cases to accommodate the

particularities of trademarks, does not fit the quite different

considerations applicable to product configurations.8                       See Hanig

& Co. v. Fisher & Co., No. 92-C-1779, 1994 WL 97758, at *4 (N.D.

Ill.    Mar.   24,   1994);    Martin       P.   Hoffman,    Trade   Dress/Product

Simulation Overview, C913 ALI-ABA at 222.

         Although     Two     Pesos    made      extensive    reference       to   the

discrete trademark categories, that decision does not foreclose

our refusal to embrace the trademark distinctiveness taxonomy in

product configuration cases.                In Two Pesos the Supreme Court

specifically stated that the sole issue before it was whether

secondary meaning must be proven for an inherently distinctive

trade dress vel non, see 112 S. Ct. at 2757 & n.6, and hence the
applicability of the Abercrombie & Fitch classifications to trade

dress    was   not   at     issue,    see    Paddington,      996    F.2d    at    583.




   8
    .    We do not suggest that the same taxonomy might not be
efficacious in the context of product packaging.
Moreover, Two Pesos dealt with a restaurant's decor, more akin to

product packaging than product configuration.

        Of       course,      the     rationales         supporting       the    trademark

distinctiveness taxonomy may sometimes be fruitfully applied to

trade dress when speaking of the product itself.                            For example,

consider     the       trademark          distinctiveness        inquiry.          What    is

"generic" in trademark law is a word with so few alternatives

(perhaps none) for describing the good that to allow someone to

monopolize the word would debilitate competitors.                          A descriptive

trademark    is        one   that     leaves        a   larger    but     finite    set    of

equivalent alternatives, and therefore still can be protected

(because there are adequate alternatives for competitors) but

only   if    it        has    acquired         secondary     meaning       (so     that    it

demonstrably       functions         as    a   source    indicium).         Finally,      the

suggestive, arbitrary, or fanciful mark is entitled to automatic

protection,       as     there      exists      a    vast   universe       of    equivalent

alternatives (or, in the case of a suggestive mark, at least a

vast number of passable alternatives) to choose from, and the

consumer will reasonably immediately identify the mark for what

it is -- a source indicium and no more.
        As       noted       supra        at   typescript        Error!    Bookmark        not

defined.,    a     plaintiff        alleging        trade   dress   infringement          must

prove that the dress is non-functional.9                     In trade dress law, the

   9
   .             Although various forms of the inquiry have been
                 articulated, the essence of the question is whether
                 a particular feature of a product is substantially
                 related to its value as a product or service, i.e.,
                 if the feature is a part of the "function" served,
                 or whether the primary value of a particular feature
inquiry into functionality resembles the genericness inquiry in

trademark     law;   the    two    doctrines       share    essentially        the   same

underlying rationale, preserving competition.                      But cf. Dratler,

Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.

at   951-52    (arguing         that   the     genericness        doctrine     and    the

functionality doctrine -- in form substantially narrower than
this Circuit has adopted, see supra at n.Error! Bookmark not
defined. -- serve different purposes).                     Thus, just as generic

trademarks may be copied freely, functional trade dress may also

be copied freely -- because both are important for preserving

effective      competition.            Similarly,          just     as    descriptive

trademarks, which are neither generic nor inherently distinctive,

may be protected upon proof of secondary meaning, trade dress

that is not functional (and thus leaves a satisfactory number of

competitively viable alternatives, see Merchant & Evans, 963 F.2d

at 634-35 & n.4) but not inherently distinctive (and thus not a

presumptive     source      indicium)        may   be   protected,       but   only   if
secondary     meaning      is    shown,      see   supra   at     typescript     Error!
Bookmark not defined..            Finally, just as inherently distinctive

trademarks are protected because presumptively they identify the

(..continued)
             is the identification of the provider.. . . Several
             courts have noted that the key policy served by
             barring   the   use  of   functional  features  for
             identification is the policy favoring competition,
             and that the "functionality" inquiry must be
             addressed in light of this policy.

United States Golf Ass'n v. St. Andrews Sys., 749 F.2d 1028,
1033-34 (3d Cir. 1984) (footnote and citations omitted), quoted
in Merchant & Evans, 963 F.2d at 634.
product's source, inherently distinctive trade dress is protected

because   presumptively   it   primarily   identifies   the   product's

source.
C.   Distinctiveness in the Law of Unfair Competition
          Having       rejected        the    transplantation          of    the     trademark

distinctiveness categories to product configurations, the next

question we must address is whether a product configuration can

ever    be   inherently         distinctive.             Before      the    Supreme    Court's

decisions in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,

84 S. Ct. 784 (1964), and Compco Corp. v. Day-Brite Lighting,

Inc., 376 U.S. 234, 84 S. Ct. 779 (1964), unfair competition law

was essentially state law.                   Sears and Compco created a federal

unfair    competition       law.            See    Two   Pesos,      112    S. Ct.     at    2763

(Stevens, J., concurring in the judgment) ("`Section 43(a) . . .

has been widely interpreted to create, in essence, a federal law

of unfair competition.'") (quoting The United States Trademark

Ass'n Trademark Rev. Comm'n Report and Recommendations to USTA

President       and    Board     of    Directors,        77    TRADEMARK RPTR.        375,    426

(1987)); American Greetings Corp. 807 F.2d at 1140 ("Section

43(a)    . . .        creates    a     federal       cause      of    action    for     unfair

competition."); Kohler Co. v. Moen, Inc., 12 F.3d 632, 646 (7th

Cir.     1993)        (Cudahy,        J.,     dissenting)         ("[T]he       Lanham        Act

(comprising the federal law of trademarks and unfair competition)

essentially federalizes the common law of trademarks and unfair

competition."); id. at 647; cf. Kohler Co., 12 F.3d at 640 n.10
(recognizing relationship between Lanham Act and state common law

of     unfair    competition           but        emphasizing        that    they     are     not

identical).           Congress        approved       that     development      in    the     1988

amendments to the Lanham Act.                     See Two Pesos, 112 S. Ct. at 2765

(Stevens, J., concurring in the judgment) ("Congress codified the

judicial interpretation of § 43(a), giving its imprimatur to a
growing body of case law . . .."); Kohler Co., 12 F.3d at 636

("[The 1988 Lanham Act amendments] as a codification of prior

case law . . . validate the uniform preamendment interpretation

of § 45 [of] the Act."); S. REP. No. 515, 100th Cong., 2d Sess.

40 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603.                          Thus, it

will be instructive to commence our inquiry with a survey of the

common law tort of unfair competition.



         1.        State Unfair Competition Law

         Under          state        unfair        competition    law,    a     product

configuration could obtain protection from copying only if it

first had acquired secondary meaning.                      See, e.g., Gum, Inc. v.

Gumakers of America, Inc., 136 F.2d 957, 958 (3d Cir. 1943);

American Fork & Hoe Co. v. Stampit Corp., 125 F.2d 472, 474 (6th

Cir. 1942); Lewis v. Vendome Bags, Inc., 108 F.2d 16, 18 (2d Cir.

1939); Sinko v. Snow-Craggs Corp., 105 F.2d 450, 452 (7th Cir.

1939); Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 300

(2d Cir. 1917); Rathbone, Sard & Co. v. Chamption Steel Range

Co., 189 F. 26, 30-32 (6th Cir. 1911); 1 HARRY D. NIMS, THE LAW                       OF

UNFAIR COMPETITION      AND    TRADE-MARKS § 134(a), at 370, 378-79 (4th ed.

1947) [hereinafter NIMS, LAW                  OF   UNFAIR COMPETITION]; see also Two
Pesos,   112       S.    Ct.    at    2762     (Stevens,   J.,    concurring    in   the

judgment); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141, 158, 109 S. Ct. 971, 981 (1989); 1 J. THOMAS MCCARTHY,

TRADEMARKS   AND   UNFAIR COMPETITION § 7:23, at 227, § 8:2, at 285 (2d ed.

1984).        The       concept      of   an       inherently    distinctive    product

configuration was, in other words, alien to the common law.
         Secondary meaning in the product configuration context

was then, as it is now, defined to "attach[] to a given shape or

form of article when that form is associated in the minds of

prospective customers with the source from which the article came

to such an extent that demand for the particular article depends

upon the business reputation or standing of its maker."           American

Fork & Hoe, 125 F.2d at 475; see Kellogg Co., 305 U.S. at 118,

120, 59 S. Ct. at 113-14 (explaining that secondary meaning has

not been established when the form of the article, in the minds

of the public, is primarily associated with the article rather

than a particular producer); supra at typescript 22 (quoting

Inwood Labs.).      The Court of Appeals for the Seventh Circuit

succinctly expounded the persuasive rationale for this doctrine

in Sinko, which involved the defendant's copying of plaintiff's

successful knobs for automobile steering wheel spinners:
       Sinko created a desire on the part of the public for one
       of two things, either for knobs made by Sinko, above all
       other knob makers, or for knobs made in a particular
       manner regardless of who made them. If it is the first
       situation, the law of unfair competition gives Sinko the
       right to monopolize or to exclude other makers from
       copying the product.     If it is the latter situation,
       Sinko receives no such right to monopolize, even though
       he might have been the first one to make the article in
       the particularly desirable manner.


Sinko, 105 F.2d at 453; accord 1 NIMS, LAW          OF   UNFAIR COMPETITION

§ 134,   at   373   (citing   Diamond   Expansion   Bolt   Co.    v.   U.S.

Expansion Bolt Co., 164 N.Y.S. 433 (App. Div. 1917)).            Similarly,

then-District Judge Learned Hand, sitting by designation, wrote

for the Second Circuit:
       The cases of so-called "nonfunctional" unfair competition
       . . . are only instances of the doctrine of "secondary
          meaning." All of them presuppose that the appearance of
          the article, like its descriptive title in true cases of
          "secondary" meaning, has become associated in the public
          mind with the first comer as manufacturer or source, and,
          if a second comer imitates the article exactly, that the
          public will believe his goods have come from the first,
          and will buy, in part, at least, because of that
          deception.    Therefore it is apparent that it is an
          absolute condition to any relief whatever that the
          plaintiff in such cases show that the appearance of his
          wares has in fact come to mean that some particular
          person -- the plaintiff may not be individually known --
          makes them, and that the public cares who does make them,
          and not merely for their appearance and structure.     It
          will not be enough only to show how pleasing they are,
          because all the features of beauty or utility which
          commend them to the public are by hypothesis already in
          the public domain.    The defendant has as much right to
          copy the "nonfunctional" features of the article as any
          others, so long as they have not become associated with
          the plaintiff as manufacturer or source.     The critical
          question of fact at the outset always is whether the
          public is moved in any degree to buy the article because
          of its source and what are the features by which it
          distinguishes that source.


Crescent Tool Co., 247 F. at 300 (emphasis supplied).

          Finally,    Chief    Justice   Holmes,   then   sitting   on   the

Supreme    Judicial    Court   of   Massachusetts,   also   explained    the

irreproachable rationale sustaining the prerequisite of secondary

meaning before affording protection to product configurations:
       In the absence of a patent the freedom of manufacture
       cannot be cut down under the name of preventing unfair
       competition.   All that can be asked is that precautions
       shall be taken, so far as are consistent with the
       defendant's fundamental right to make and sell what it
       chooses, to prevent . . . deception . . ..
             It is true that a defendant's freedom of action with
       regard to some subsidiary matter of ornament or label may
       be restrained, although a right of the same nature with
       its freedom to determine the shape of the articles which
       it sells.. . .    [T]he instrument sold is made as it is
       [by defendant], partly at least, because of a supposed or
       established desire of the public for instruments in that
       form. The defendant has the right to get the benefit of
       that desire even if created by the plaintiff. The only
         thing it has not the right to steal is the good will
         attaching to the plaintiff's personality, the benefit of
         the   public's  desire   to  have   goods  made   by  the
         plaintiff.. . . [T]he plaintiff's right can be protected
         sufficiently by requiring the defendant's [products] to
         be clearly marked so as to indicate unmistakably that
         they are the defendant's and not the plaintiff's
         goods.. . . To go further is to save the plaintiff from a
         competition from which it has no right to be exempt.


Flagg    Mfg.    Co.    v.    Holway,    59    N.E.    667,    667     (Mass.      1901)

(citations omitted).

         Thus,    traditional      unfair       competition        law     would      not

mandate a copier to take positive steps to avoid confusion unless

"the existence of secondary meaning . . . plainly appear[ed]."

American Fork & Hoe, 125 F.2d at 475.                  If a product feature had

obtained secondary meaning, but was functional, all a defendant

had to do, to avoid competing unfairly, was to "use reasonable

care to inform the public of the source of its product."                           Gum,

Inc., 136 F.2d at 960 (citing Kellogg Co., 305 U.S. at 120, 59 S.

Ct. at 114); see Vaughan Novelty Mfg. Co. v. G.G. Greene Mfg.

Corp., 202 F.2d 172, 176 & n.11 (3d Cir.) (citing RESTATEMENT                          OF

TORTS § 741, cmt. j (1938)), cert. denied, 346 U.S. 820, 74 S.
Ct. 34 (1953); American Fork & Hoe, 125 F.2d at 475; Crescent

Tool Co., 247 F. at 301; 1 NIMS, LAW             OF   UNFAIR COMPETITION § 134, at

371; cf. J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d

949,    955-56   (8th    Cir.   1941).        This    latter     doctrine    survives

intact today.          See American Greetings Corp., 807 F.2d at 1141

("When    a   feature    or   combination      of     features    is     found   to   be

functional, it may be copied and the imitator may not be enjoined

from using it . . ..          Nevertheless, if the functional feature or
combination is also found to have acquired secondary meaning, the

imitator may be required to take reasonable steps to minimize the

risk of source confusion.") (citations omitted); id. at 1144-45 &

n.4.      A defendant could be completely barred from copying a

product       configuration          only   if   the     configuration      both   was

nonfunctional and had acquired secondary meaning.

          In short, the common law did not find any "unfairness,"

as concerns the law, in someone's copying a design -- even if it

was    originally         produced    through    great    expenditures     of   labor,

effort, talent, and capital -- if the design was unprotected by

patent or copyright.               See, e.g., Zangerle & Peterson Co. v.

Venice Furniture Novelty Mfg. Co., 133 F.2d 266, 269 (7th Cir.

1943).       What the courts of equity condemned was not bare-knuckled

competition, but fraud and deceit, which are worked when one

"palms off" one's goods as those of another, see, e.g., Zangerle

& Peterson, 133 F.2d at 269-70; J.C. Penney, 120 F.2d at 953-54;

Lewis, 108 F.2d at 18; Sinko, 105 F.2d at 452; Rathbone, Sard &

Co., 189 F. at 30-31; EDWARD S. ROGERS, GOOD WILL, TRADE-MARKS,                     AND

UNFAIR TRADING 212 (1914); cf. 1 NIMS, LAW               OF   UNFAIR COMPETITION § 134,

at 374 ("The fact that the defendant may have deliberately copied

the appearance of the plaintiff's goods and that in doing so may

have gained an advantage, is not enough.                  The imitating must have

been     done       with    the    expectation     of     obtaining      some   unfair

advantage."); see also Two Pesos, 112 S. Ct. at 2762 & n.5
(Stevens, J., concurring in the judgment); Bonito Boats, 489 U.S.

at    157,    109    S.    Ct.    at 981;   that   is,    when     one   deceives the

consuming public and misappropriates -- trades upon -- the good
will   of   another.         Exploiting        the   "goodwill    of   the    article,"

Kellogg Co., 305 U.S. at 121, 59 S. Ct. at 115 -- the attractive

features,     of        whatever     nature,     that    the    product      holds    for

consumers -- is robust competition; only deceiving consumers, or

exploiting        the     good     will   of    another       producer,      is    unfair

competition.



        2.        Precedent Under Section 43(a)

        Besides having no foothold in the common law, recognizing

the existence of inherently distinctive product configurations is

arguably inconsistent with precedent in this Circuit.                        As we have

mentioned, in Merchant & Evans we held that a feature of the

product itself qualifies for trade dress protection only if the

plaintiff proves that the imitated feature is nonfunctional, that

it has acquired secondary meaning, and that consumers are likely

to confuse the source of the plaintiff's products with that of

the defendant's.          Merchant & Evans, 963 F.2d at 633.                 This might

be read as an implied holding that trade dress in the product

itself can never be inherently distinctive.                       But the panel did

not advance this proposition in Merchant & Evans, and, especially
given the Supreme Court's intimations in the intervening Two

Pesos decision, we do not read Merchant & Evans in that fashion.

        As    already        stated,      Two    Pesos    poses    a   problem       with

adhering     to    Merchant      &   Evans     insofar   as    the Supreme        Court's

decision eliminated the secondary meaning prong for inherently

distinctive trade dress.             Of course, Two Pesos only answered the
question "whether trade dress which is inherently distinctive is
protectable under § 43(a) without a showing that it has acquired

secondary meaning," 112 S. Ct. at 2757 (emphasis supplied); it

did not define what makes trade dress inherently distinctive and,

more    importantly       for    our       purposes,      did    not     decide     whether    a

product configuration could ever be inherently distinctive, cf.

Kohler Co., 12 F.3d at 641 n.11 (dicta) ("[A] product's shape is

never inherently distinctive.").                    And Two Pesos, which dealt with

the decor of a Mexican restaurant, is a product packaging, not a

product configuration, case.                    See 112 S. Ct. at 2755 & n.1.                See

also RESTATEMENT (THIRD)        OF   UNFAIR COMPETITION § 16 cmt. b (Tent. Draft

No. 2, Mar. 23, 1990) ("Product designs are . . . not considered

inherently distinctive; such designs are protectable only upon

proof       of    secondary      meaning.");            MCCARTHY,      TRADEMARKS    AND   UNFAIR

COMPETITION § 7.31 n.1 (citing conflicting sources).

            Nevertheless,        we        do    read     Two     Pesos     as      giving    an

imprimatur to finding trade dress in a product configuration to

be    inherently       distinctive         under    certain       narrow     circumstances.

Cf. id. at 2759 (not distinguishing among "a verbal or symbolic

mark    or       the   features       of    a    product        design");     id.     at     2760

(discussing protectability of "design[s]" and "shape[s]").                                   The

Supreme Court provided two strong competition-based rationales

why    at    least     some     trade       dress    should       be    deemed      inherently

distinctive.

            First, the Court noted that protection of trade dress

along with trademarks could further the Lanham Act's purpose to

"`secure to the owner of the mark [or dress] the goodwill of his

business and to protect the ability of consumers to distinguish
among    competing     producers.'"          Two    Pesos,      112   S. Ct.       at   2760

(quoting Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S.

189, 198, 105 S. Ct. 658, 663 (1985)).                  "By making more difficult

the identification of a producer with its product," the Court

explained, "a secondary meaning requirement for a non-descriptive

trade dress would hinder improving or maintaining the producer's

competitive      position."       Id.         We    think    that     such    an    overly

rigorous    uniform      requirement        for    product   configurations             would

have a similar deleterious effect.

          Second,      the     Court     reasoned        that     always       requiring

secondary meaning would not protect the developer of a "fanciful"

or "arbitrary" trade dress from "theft" while the developer tries

to acquire secondary meaning for its trade dress.                            See id. at

2758-59; cf. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822,

825 (3d Cir. 1981).          In particular, the Court was concerned about

the    "anticompetitive        effects      [of]    particular        burdens      on    the

start-up of small companies."                 Two Pesos, 112 S. Ct. at 2761.

Always     requiring      secondary         meaning     would       burden     fledgling

companies seeking to expand into new markets because established

competitors      could       "appropriate         the   originator's         [inherently

distinctive nonfunctional trade] dress in other markets and . . .

deter the originator from expanding into and competing in these

areas."    Id.    This rationale also would seem to apply whether the

trade    dress   is    alleged    in    a    product     packaging      or    a    product

configuration.

          Of course, it is not the purpose of unfair competition

law,    under    the   guise     of    either      consumer      protection        or    the
protection      of    business      good    will,     to    implement      a     policy   of

encouraging          innovative      designs        by     protecting          them     once

designed.10          See    Gleiberman,       Note,       Overbroad      Protection       of

Product Trade Dress, 45 STAN. L. REV. at 2056-57; cf. Dratler,

Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.

at 909 ("[F]ostering innovation is only a minor and incidental

purpose    of     trademark       protection.").            Those       issues    are     the

province     of      copyright      and     patent       laws.      Moreover,         design

protection        laws     (which    have     repeatedly         been    introduced       in

Congress during virtually every session since 1917) have not once

been enacted.         See In re Nalbandian, 661 F.2d 1214, 1218-19 & n.1

(C.C.P.A. 1981) (Rich, J., concurring) (recounting the history of

efforts to pass design protection legislation); Esquire, Inc. v.

Ringer, 591 F.2d 796, 800 n.12 (D.C. Cir. 1978) (observing that

since 1914 none of the approximately 70 design protection bills

introduced in Congress had passed); Brown, Design Protection:                             An

Overview, 34 U.C.L.A. L. REV. at 1395 ("Beginning in 1957, a

[design protection] bill has been introduced in probably every

Congress . . .."); Dratler, Trademark Protection for Industrial
Designs, 1988 U. ILL. L. REV. at 888 & n.4, 904 & n.94 (stating
   10
    .    The two principal purposes of the trademark statute are
to avoid consumer confusion and to protect a trademark owner,
which has invested "energy, time, and money in presenting to the
public the product, . . . from [the trademark's] misappropriation
by pirates and cheats." S. REP. No. 1333, 79th Cong., 2d Sess. 3
(1946), reprinted in 1946 U.S. Code Cong. Serv. 1274, 1274; see
S. REP. No. 515, 100th Cong., 2d Sess. 4 (1988), reprinted in
1988 U.S.C.C.A.N. 5577, 5605 (1988 amendment); Park 'N Fly, Inc.,
469 U.S. at 198, 105 S. Ct. at 663; Inwood Labs., 456 U.S. at 854
n.14, 102 S. Ct. at 2188 n.14; see also 15 U.S.C.A. § 1127 (Supp.
1994) (identifying five purposes of the amended Lanham Act).
that the history of the effort to have Congress enact industrial

design    legislation      takes       up   160    pages        in    a    Copyright      office

bibliography, and that between 1914 and 1945 at least 45 such

bills were introduced in Congress); A. Samuel Oddi, The Functions

of "Functionality" in Trademark Law, 22 HOUS. L. REV. 925, 951 &

n.147 (1985); Gleiberman, Note, Overbroad Protection of Product

Trade Dress, 45 STAN. L. REV. at 2070 & nn. 251-52; cf. Bonito

Boats, 489 U.S. at 167-68, 109 S. Ct. at 986 ("It is for Congress

to determine if the present system of design and utility patents

is ineffectual in promoting the useful arts in the context of

industrial design.").

          Under     the   laws    that      are    on     the        books,      Congress       has

repeatedly chosen not to protect designs unless they meet certain

strict requirements, catalogued in Merchant & Evans, 963 F.2d at

638-40; see also Dratler, Trademark Protection for Industrial

Designs,     1988    U.   ILL     L.    REV.      at    923-35;           Gleiberman,      Note,

Overbroad Protection of Product Trade Dress, 45 STAN. L. REV. at

2055-65, and then Congress has only given them protection of

circumscribed       duration,      cf.      U.S.       CONST.    art.       I,     § 8,   cl.    8

(authorizing Congress to grant patents of limited duration).                                    We

believe    that     courts   should         exercise       restraint          so    as    not   to

undermine     Congress's         repeated      determinations               not     to    afford

virtually perpetual protection to product configurations with an

expansive construction of section 43(a).                        What Congress has, for

the great span of this century, been unwilling to do, see supra
at n.Error! Bookmark not defined., should not be effected by the

judiciary.
             Thus     Duraco's      suggestion,     based      on    its       reading    of

Paddington,           996    F.2d   at    582-83,   that    the     capacity       of    the

product's configuration to distinguish the plaintiff's goods from

others suffices to establish inherent distinctiveness, is grossly

overinclusive.              It is also circular:           clearly any perceptible

product feature or combination or arrangement of features can

distinguish goods, and perhaps is likely to do so if, as a rule,

nobody else were allowed to copy it.11                  That is, provided that no

one        besides    the    originator     is   allowed     to     use    a    particular

feature, it would be difficult to conjure up any perceptible

feature        that    users    can      train   upon   that   is    not       capable    of

distinguishing the originator's goods from those of others.                              For

      11
    .     In Paddington, an importer of the anise liqueur ouzo
under the label "No. 12 Ouzo" brought a trademark and trade dress
infringement suit against a rival ouzo importer using the label
"#1 Ouzo."   The importers' bottle designs, labeling, and gift
boxes were strikingly similar in appearance, containing similar
design elements and "using identical shades of red, white and
black." Id. at 586. The court of appeals concluded that

             [t]he No. 12 Ouzo bottle is inherently distinctive.. . .
             There is nothing descriptive about the bottle and label
             design that conveys anything about its particular
             contents, except for the use of the trademark "No. 12
             Ouzo," . . . and the fact that the bottle . . . indicates
             to the observer that it contains a liquid that probably
             is potable. The tone and layout of the colors, the style
             and size of the lettering, and, most important, the
             overall   appearance  of   the  bottle's   labeling,  are
             undeniably arbitrary. They were selected from an almost
             limitless supply of patterns, colors and designs.

Id. at 584 (emphasis supplied). Therefore, a secondary meaning
inquiry was unnecessary, id., and after reversing the district
court by finding a likelihood of confusion, the court reinstated
the trade dress claim that the district court had dismissed. Id.
at 588.
example, even the basic design of a light bulb is "capable of

identifying a particular source of the product," Paddington, 996

F.2d at 582-83, assuming that only one manufacturer produces the

basic design, a fact which would be assured, of course, if the

design were protected against copying.

          Duraco's          proposal      to       treat    any     product    feature     or

configuration as inherently distinctive if it were merely capable

of     identifying          the   source       of     the     product    would    therefore

eviscerate the requirement for showing secondary meaning.                                Cf.

Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp. 1314, 1321

(N.D. Ill. 1991) ("Presumably, it could be said about the trade

dress of any new product that no competitive product combines

precisely the same elements in its trade dress.. . .                               However,

that    fact        alone     does    not      make     the     product's      trade    dress

inherently distinctive.               Any other rule essentially would require

a finding of inherent distinctiveness whenever a new product

enters the market.").                This is so even though the design is not

at all deserving of such protection because, leaving aside the

question       of     functionality,           a    consumer      seeing      another    good

incorporating         the     same    design        feature    or   features     would   not

reasonably believe the first manufacturer to be its source.

          Moreover, contrary to Duraco's understanding, Paddington
did     not    read     Two       Pesos     as      establishing        the   "capable     of

identifying" standard for inherent distinctiveness.                              In the Two

Pesos passages cited in Paddington, the Supreme Court was simply

establishing that inherently distinctive trade dress need not

acquire secondary meaning before obtaining protection under the
Lanham Act.      Thus, the Supreme Court stated that no secondary

meaning would be required for "inherently distinctive trade dress

. . . capable of identifying a producer's product."                        112 S. Ct.

at 2760 (emphasis supplied).               That statement explains what is

necessary,    but     not    what    is   sufficient,    to    make       trade   dress

inherently distinctive.          Paddington, alert to this qualification,

simply held that a feature's capacity to distinguish the goods is

a    prerequisite      to     trademark     protection,       not     a    sufficient

condition.    See 996 F.2d at 582-83.           Indeed, the Court of Appeals

for the Second Circuit in Paddington -- a product packaging case

--   went   further    and    distinguished      between      merely      descriptive

trade   dress,   for    which       the   plaintiff   had   to   prove      secondary

meaning, and suggestive, fanciful, or arbitrary trade dress, for

which no secondary meaning was required.                 See 996 F.2d at 583;

see also Nancy D. Chapman, Trade Dress Protection in the United

States After the Supreme Court Decision in Two Pesos, 387 PLI/PAT

7,   13-16,    40-42        (1994)    [hereinafter      Chapman,       Trade      Dress

Protection] (criticizing the "capable of identifying" standard).

         In any event, the analysis appropriate for a product's

packaging, at issue in Paddington, is not necessarily appropriate
for a product's configuration.              Product packaging designs, like

trademarks, often share membership in a practically inexhaustible

set of distinct but approximately equivalent variations, and an

exclusive right to a particular overall presentation generally

does not substantially hinder competition in the packaged good,

the item in which a consumer has a basic interest.                          A product

configuration,      contrariwise,         commonly    has     finite      competitive
variations     that,     on      the   whole,       are     equally   acceptable    to

consumers.      See RESTATEMENT (THIRD)        OF   UNFAIR COMPETITION § 16 cmt. b

(Tent.    Draft    No.      2,     March     23,    1990)     (contrasting     product

configurations and product packagings based on the availability

of   alternatives).              Moreover,    because       of   consumers'    common

abundant experience with similar goods being sold in differing

packaging, a consumer is substantially more likely to trust a

product's      packaging,        rather    than     its     configuration,     as   an

indicium of source.              Accordingly, we reject the misreading of

Paddington advanced by Duraco.

          It is not ipso facto "unfair competition," we believe,

for one boldly to copy a competitor's product; it is only "unfair

competition" to trade off another's good will and in the process

dupe consumers into mistaking one's products for another's.                         A

proper    approach     to     inherent     distinctiveness        must   distinguish

between    nonfunctional         but   desirable      designs    --   which,   absent

secondary meaning, unfair competition law has no interest in

precluding     others       from    copying    --    and     nonfunctional     designs

representing to consumers the source of the goods -- which unfair

competition law does and should forbid others from copying.


          3.    The Standard for Inherent Distinctiveness of
                Trade Dress in Product Configurations

          Synthesizing       the    principles       explored    in   the    preceding

sections, we think that there is a proper set of circumstances

for treating a product configuration as inherently distinctive.

These circumstances are characterized by a high probability that
a     product          configuration      serves    a    virtually        exclusively

identifying function for consumers -- where the concerns over

"theft" of an identifying feature or combination or arrangement

of features and the cost to an enterprise of gaining and proving

secondary meaning outweigh concerns over inhibiting competition,

and    where       consumers        are   especially     likely    to     perceive     a

connection between the product's configuration and its source.

In particular, we think that, to be inherently distinctive, a

product configuration -- comprising a product feature or some

particular combination or arrangement of product features -- for

which Lanham Act protection is sought must be (i) unusual and

memorable;         (ii)   conceptually      separable    from     the    product;    and

(iii) likely to serve primarily as a designator of origin of the

product.

          For      a    product     configuration   to    have    the     capacity   to

distinguish goods in a consumer's mind -- the first prerequisite

for inherent distinctiveness -- it must be unusual and memorable.

It must partake of a unique, individualized appearance, so that a

consumer informed of all the options available in the market

could reasonably rely on it to identify a source.                        See Computer

Care, 982 F.2d at 1069; Hoffman, Trade Dress/Product Simulation

Overview, C913 ALI-ABA at 222 (asserting that trade dress is

inherently distinctive only if "so unique, . . . in a particular

market,      that       one   can    assume,   without    proof,        that   it   will

automatically be perceived by customer[s] as an indicia [sic] of

origin -- a trademark") (omission in original) (citing MCCARTHY,

TRADEMARKS   AND   UNFAIR COMPETITION and Ambrit, Inc. v. Kraft, Inc., 805
F.2d 974, opinion superseded by 812 F.2d 1531 (11th Cir. 1986)).

"Manifestly, if the plaintiff's trade dress is not sufficiently

distinctive to allow consumers to identify the [source] from the

trade dress, then the dress does not inherently serve as an

indication of origin . . .."                Ambrit, Inc., 812 F.2d at 1536,

quoted       in   Nexxus     Prods.   Co.     v.    Bertle     Concepts,      Inc.,   28

U.S.P.Q.2d 1257, 1266 (M.D. Fla. 1993).

            Moreover, unless the trade dress is memorable -- that is,

striking or unusual in appearance, or prominently displayed on

the product packaging, or otherwise somehow apt to be impressed

upon the minds of consumers, so that it is likely to be actually

and distinctly remembered -- it cannot serve as a designator of

origin.       See Stuart Hall Co. v. Ampad Corp., 31 U.S.P.Q.2d 1468,

1470 (W.D. Mo. 1994); id. at 1471 ("The trade dress must be

remembered before it can be confusing."); cf. Ambrit, Inc., 812

F.2d        at      1536     (setting       forth         criterion      to     measure

distinctiveness); Computer Care, 982 F.2d at 1069 (holding that

sales       brochures      are   inherently      distinctive     if     consumers     can

identify the product from the trade dress and the trade dress is

arbitrary or suggestive).             Thus, for example, designs customary

in the industry can not be inherently distinctive (nor for that

matter can they acquire secondary meaning).                     See Paddington, 996
F.2d at 583-84; Hanig & Co., 1994 WL 97758, at *6-*7; 1 NIMS, LAW

OF   UNFAIR COMPETITION § 134a, at 379 (citing Rathbone, Sard & Co.,

189    F.    26);    cf.    Aromatique,     28     F.3d   at   869-70    (per   curiam)

(plurality opinion by Morris Sheppard Arnold, J.) (holding that
the   plaintiff's            pillow-shaped             cellophane     packages         were       not

inherently distinctive, because commonplace).

          But    the    uniqueness         of      a    product     configuration            is   not

enough     by       itself         to    make          the    configuration        inherently

distinctive.             To        be    inherently           distinctive,         a     product

configuration        must      also      be     conceptually         separable         from       the

product,       so    that      a    consumer           will    recognize     its        symbolic

(signifying) character.                 This requirement ensures that consumers

unaware of any association of the product with a manufacturer

(i.e., where a configuration has no secondary meaning) will not

become confused about whether a particular configuration may be

trusted as an indicium of origin.                        To be conceptually separable,

the product configuration must be recognizable by the consumer

"as an indicium of source, rather than a decorative symbol or

pattern.. . ."           Stuart Hall, 31 U.S.P.Q.2d at 1471 (internal

quotation       marks        omitted);        see       Hoffman,     Trade   Dress/Product

Simulation Overview, C913 ALI-ABA at 223 (contending that trade

dress is inherently distinctive only if "one can assume, without

proof, that it will automatically be perceived by customers as an

indicia     [sic]       of    origin");         cf.      MCCARTHY,    TRADEMARKS       AND    UNFAIR

COMPETITION § 7.26, at 248 (suggesting that features perceived as

"merely ornamental" cannot serve as trademarks).

          As    with    trademarks,           an       inherently    protectable         product

configuration must, at least conceptually, be "something other

than, and separate from, the merchandise."                          Davis v. Davis, 27 F.

490, 492 (C.C. Mass. 1886).                That is, the configuration for which

protection is sought must not appear to the consumer as a mere
component, or the essence, of the product gestalt, but rather

must appear as something attached (in a conceptual sense) to

function in actuality as a source designator -- it must appear to

the consumer to act as an independent signifier of origin rather

than as a component of the good.                   See, e.g., In re General Tire &

Rubber Co., 404 F.2d 1396, 1398-99 (C.C.P.A. 1969) (affirming

denial of injunction because consumers would probably think of

product       feature       as    ornamentation        rather   than    as    indicium     of

source).

             Third, to be inherently distinctive, it must be likely

that        the    product       configuration        will   primarily       serve    as     a

designator of the source of the product.                          See Chapman, Trade

Dress Protection, 387 PLI/PAT at 32 ("`Unique' is not by itself

equivalent to inherently distinct, but a unique design may be so

if     it     also       functions    as    a    source      indicator.");      supra      at
typescript             Error!    Bookmark    not      defined.-Error!        Bookmark      not

defined. (rejecting Duraco's reading of Paddington).                                 If the

configuration itself, separate from the product, is likely to
serve some substantial purpose other than as a designation of

origin -- that is, besides to set it apart from other sources'

products in consumers' minds -- then it cannot be inherently

distinctive, but must acquire secondary meaning before becoming

entitled          to    protection    against      copying.      In     this    regard,     a

source's          intent    in    adopting      the    particular      configuration       is

highly probative.               See Stuart Hall, 31 U.S.P.Q.2d at 1470 & n.2;

RESTATEMENT       OF   TORTS § 719 cmt. a (1938) ("[D]esigns intended solely
as ornamentations are not trade-marks . . .."); Joan L. Dillon,
Two Pesos:    More Interesting for What It Does Not Decide, 83

TRADEMARK RPTR. 77, 85 (1993) (defining protectable trade dress as

"a combination of elements selected to identify origin, rather

than to serve as mere decor"); NIMS, LAW    OF   UNFAIR COMPETITION, at 370

("Peculiar   and    arbitrary   features   in    the   form,   structure,

arrangement of parts, and general appearance of an article are

often devised, in large part to distinguish it -- to give it

individuality.").

        The inquiry here does not duplicate that employed for

secondary meaning; instead of focusing on consumers' actually

acquired mental associations, the inquiry focuses on whether a

consumer would likely perceive the feature or combination or

arrangement of features as something that renders the product

intrinsically more desirable regardless of the source of the

product, or primarily as a signifier of the product's source.

Protecting a product configuration without a showing of secondary

meaning because the configuration is pleasant rather than because

it identifies the source of the product would risk seriously

transgressing the protective zones mapped by the patent laws.12

   12
     .     In the design protection area, our construction of the
Lanham Act is informed to some degree by the concurrent existence
of the patent laws. See Digital Equip. Corp. v. Desktop Direct,
Inc., 114 S. Ct. 1992, 2002 (1994) (invoking the "familiar
principle of statutory construction that, when possible, courts
should construe statutes . . . to foster harmony with other
statutory and constitutional law"); cf. RESTATEMENT (THIRD) OF UNFAIR
COMPETITION § 16 cmt. b (Tent. Draft No. 2, Mar. 23, 1990)
("Rigorous application of the requirements of distinctiveness
. . . is essential in order to avoid undermining the carefully
circumscribed statutory regimes for the protection of useful and
ornamental designs under federal patent and copyright law."). It
would not be politic to enable easy circumvention of the strict
This is not to say that a configuration must be undesirable to be

eligible as an inherently distinctive product configuration; we

refer    here     only   to   the     source-designating    function        of    the

configuration.

          Thus, if the feature as to which Lanham Act protection is

sought is likely to be notably desirable to consumers for some

reason other than its function as a source designator, it cannot

be     considered      inherently     distinctive.       Like    a    descriptive

trademark, such a nonfunctional product configuration would be

protectable       only   if   the     source-designating    function        of    the

configuration is factually demonstrated with proof of secondary

meaning.       So if the consumer is likely to be motivated, in some

more    than    incidental    part,     to   buy   a   product   because         of   a

particular combination or arrangement of features, other than

because that configuration signifies a source of the product, the

penumbra of the patent laws -- granting others a right to copy

what    has     been   donated   to    the   public    domain    --       will   deny

protection unless secondary meaning is first shown.

          The    primarily    source-designating       inquiry       is   different

from the functionality inquiry in trade dress law, although it is
(..continued)
rules governing the grant of a patent by injudiciously affording
similar protections without even a showing of secondary meaning.
Cf. Keene Corp., 653 F.2d at 824, 827-28 (affirming an injunction
requiring only labeling, but not precluding copying, of a
functional design with secondary meaning -- relying on discussion
of the patent laws in Sears, Roebuck, 376 U.S. at 231-32, 84
S. Ct. at 788-89); American Greetings Corp., 807 F.2d at 1147
(holding that an injunction must be "sufficiently narrow to avoid
affording underserved patent protection") (quoting Ideal Toy
Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 (3d Cir. 1982))
(internal quotation marks omitted).
motivated by similar concerns.                           Both are intended to protect

competition -- and hence consumers -- by restricting the types of

product        features       that           may        be   insulated           from            copying.

Nevertheless,          the        primarily         source-designating                  inquiry           is

different       from        the       functionality           inquiry,           for        it     limits

inherently distinctive product configurations not to those that

are not important for competitors to be able to copy, but rather

to those whose primary significance is as an intrinsic indicator

of the product's source.

          We    acknowledge            that,       to    a   large        extent,       how        courts

resolve the inherent distinctiveness inquiry could, theoretically

at least, cause a snowballing effect.                           If product configurations

are    easily     protected,            consumers            might       learn         to        rely    on

configurations         as    source      designators;              if    protection          is     rare,

consumers       will     disregard            product        configurations                 as     source

designators,       and       no       confusion          will      result.             But        partial

protection, if not carefully circumscribed, may eventually cause

even    greater        consumer          confusion,           as        consumers           will        face

difficulties      determining            what       features        are     legitimate             source

designators (because inherently distinctive) and which are not.

The narrow test that we adopt encourages consumers to rely on a

product's      configuration            as    a    source       designator         only          when    it

rather plainly serves an identifying function.

          We    believe       that       the       aforementioned           requirements                 for

inherent distinctiveness, while nascent and in need of caselaw

development,       allow          a   source       genuinely            intent    upon           using    a

particular feature or configuration of its product to signify
itself as the source to do so -- at no meaningful cost to free

competition   --     without    having    to    prove   consumer     association

(secondary meaning).       We turn to the application of this standard

to the facts of this case.



                               III.    THE LAW APPLIED

         Because     the   district     court     applied   the   Abercrombie   &

Fitch    trademark     taxonomy       (generic,     descriptive,     suggestive,

arbitrary, or fanciful) instead of the above standard, see mem.

op. at 12-14, we cannot let its finding of non-distinctiveness

stand.   While this would normally result in a remand, we need not

remand if, with the evidence viewed in the light most favorable

to it, Duraco has failed to demonstrate a likelihood of success

on the merits.       See In re Molded Acoustical Prods., Inc. (Fiber

Lite Corp. v. Molded Acoustical Prods., Inc.), 18 F.3d 217, 222 &

n.7 (3d Cir. 1994).          We conclude that this is the case, for

Duraco's Grecian Classics planters plainly are not inherently

distinctive, and it has not shown the acquired distinctiveness

(secondary meaning) that it would otherwise need to establish in

order for its product configuration to be protectable.



         A.   Inherent Distinctiveness

         We do not gainsay that the particular configuration of

Duraco's urn may be memorable and unusual.                  In this regard, we

disagree with the district court's conclusion that "all of the

urns introduced as exhibits . . . looked about the same, as did

those presented in drawings," mem. op. at 10.                     Instead, after
viewing most of the plastic planter designs introduced in the

district court, including the physical exhibits and drawings, we

believe that some definitely have a look that consumers could not

reasonably confuse with the Grecian Classics, Backyard Products,

or Cotswold planters.                  While mere distinguishability without more

is,        as    we    have       explained,    insufficient       to    establish       that   a

product configuration is memorable and unusual in the sense that

it could be an inherently distinctive indicium of source, we

cannot          say     with      certainty     that    Duraco's        planters    were    not

memorable             and    unusual    at     the   time   that    Joy     introduced      the

Ultimate Urns into interstate commerce.

                Our review of course is deferential.                    But we need not run

out the string in our review of the district court's fact finding

in this respect for, at all events, we are satisfied that the

Grecian          Classics'          design     rather   clearly         falls    outside    the

inherently distinctive category.

                First, it is beyond peradventure that Duraco's alleged

protectable product configuration is not conceptually separable

from its plastic planters.                      Unlike an arbitrary carving etched

into the back of a chair to identify the source, for example, the

features          of        the    Grecian     Classics     for    which        Duraco     seeks

protection are designed to achieve the goal of having the planter

appear as if constructed of marble or stone, and thus constitute

part and parcel of the overall product.13

      13
    .    It is apparent at this point that the definition of the
product market will have an important bearing on whether a
feature or combination or arrangement of features is conceptually
separable from the product.    Here the district court impliedly
          Second, consumers are likely to appreciate the Grecian

Classics' design, as the district court found to be the case,

primarily as an inherently attractive aspect of the product, not

as a source-indicator.           Abundant and uncontroverted testimony

established    that    Duraco    adopted     its   features    to     create   the

appearance of a marble, stone, or cement Grecian or classical-

style urn, not to identify itself as the source.                Indeed, Duraco

itself admits that consumers are largely motivated to purchase

Grecian    Classics    because   of    the   aesthetic   advantages       of   the

precise configuration for which it seeks protection.                    Moreover,

Joy   imitated   the    Grecian       Classics'    design     because    of    its

aesthetic appeal to consumers.

          In   sum,    two      of    the    requirements       for      inherent

distinctiveness not having been satisfied, we easily conclude

that Duraco's planter is not inherently distinctive.



          B.   Acquired Distinctiveness (Secondary Meaning)

          The absence of inherent distinctiveness means that to

establish a likelihood of success on the merits of its trade

dress infringement claim, Duraco must prove secondary meaning,

which the district court found it had not done.                See mem. op. at
14-16.    Although the point is without difficulty, we will briefly

review it for clear error.
(..continued)
found that the appropriate product category was plastic
"classically styled urns" for plants, see mem. op. at 17, and, no
party having challenged that finding, we are not called upon to
review   it   or  to  provide   the  appropriate   standards  for
ascertaining it.
           If        a     product's        configuration           is      not     inherently

distinctive, the plaintiff must prove acquired distinctiveness

via    a   showing         of    secondary        meaning.        Factors    relevant          to     a

finding of secondary meaning in a product configuration include:

(1) plaintiff's advertising expenditures, measured primarily with

regard to those advertisements which highlight the supposedly

distinctive, identifying feature, see First Brands Corp. v. Fred

Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987); (2) consumer

surveys      linking        the       distinctive      product       configuration             to    a

particular, single source (although the identity of the source

need   not      be       known);      and   (3)    length     and   exclusivity           of    use.

Consumer        surveys         and   testimony      are     probably    the       only    direct

evidence         of       secondary         meaning;        the     other         sources           are

circumstantial, though the plaintiff may rely solely on them.

See Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by

Morris Sheppard Arnold, J.) (secondary meaning for trade dress);

Woodsmith Publishing Co., 904 F.2d at 1249 (same); International

Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086 (7th

Cir. 1988) (secondary meaning for trademark).

           Sales         success       by   itself     will       typically        not     be       as

probative of secondary meaning in a product configuration case as

in a trademark case, since the product's market success may well

be attributable to the desirability of the product configuration

rather than the source-designating capacity of the supposedly

distinguishing feature or combination of features.                                  And unlike

with a trademark, where repeated purchases of a product support

an inference that consumers have associated the mark with the
producer or source, one can much less confidently presume that a

consumer's       repeated       purchase      of     a        product     has    created         an

association between a particular product configuration and the

source.        Cf.     International         Jensen,      4       F.2d    at    824    (product

configuration)          ("While       evidence     of         a    manufacturer's           sales,

advertising       and       promotional       activities            may   be    relevant         in

determining secondary meaning, the true test of secondary meaning

is the effectiveness of this effort to create it."); Braun, Inc.,

975 F.2d at 826-27 (product configuration) (same); First Brands

Corp., 809 F.2d at 1383 (product packaging) (same); American

Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d

Cir. 1979) (trademark) (same).

          The very fact that a consumer could identify the source

based     on     the        product's     configuration               implies         that       the

configuration          is     at      least      somewhat           unusual,          and     this

"distinctiveness" of the product itself may be the source of the

motivation to purchase if a consumer does not care about who the

source is.       In this respect product configuration again differs

dramatically from trademark and from product packaging, since the

success     of    a     particular       product         --       especially     if     similar

competing      products       exist     --    does       not       readily      lead    to       the

inference of source identification and consumer interest in the

source; it may well be that the product, inclusive of the product

configuration, is itself inherently desirable, in a way that

product     packagings          and     trademarks            are     not.         Similarly,

unsolicited      media       coverage     may      reflect          interest     more       in   an

unusual product than in the source of the product.
       Analogously,      attempts    to    copy   a   product       configuration

will quite often not be probative:           the copier may very well be

exploiting a particularly desirable feature, rather than seeking

to confuse consumers as to the source of the product.                         See

Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by

Morris Sheppard Arnold, J.); Braun, Inc., 975 F.2d at 827; supra
at typescript Error! Bookmark not defined.-34; cf. Brown, Design

Protection:     An    Overview,   34      U.C.C.A.      L.   REV.    at   1384-85

(observing that the act of copying a product configuration does

not ipso facto involve false representation).                The inference of

unfair competition will be even weaker where the copier takes

conspicuous steps -- whether in packaging, trademark, marketing

techniques, or otherwise -- to distinguish its product from its

competitor's.

       In sum, secondary meaning in a product configuration case

will generally not be easy to establish.              We note, however, that

in certain circumstances, e.g., with respect to drugs or pills

with unusual colors and/or shapes, a consumer may be more likely

to rely on the product's configuration as a source designator,

and the consumer may thereby have become sensitized, so that

secondary meaning will be easier to establish.                This may be the

case if the good is one with some features of importance to a

consumer's choice that a consumer ordinarily cannot recognize in

the market (such as the safety and efficacy of a drug) and one in

which, because of the nature of the product's use or consumption,

identifying source designations might not readily be prominently

displayed.      Cf.   Sinko,   105   F.2d    at   453    (stating      that   with
products like drugs, where the efficiency of the product depends

greatly upon the maker's capacity, consumers would care more

about the pills' manufacturer than the appearance of the drug

itself).

          With      respect      to   Duraco's   Grecian      Classics,    we    fully

concur in the district court's finding of no secondary meaning.

Duraco    in    its     survey has      not   shown   any    consumer    association

between the Grecian Classics planters and a particular source;

instead, its plastic planters are purchased because consumers

(whether       retail    or   wholesale)      find    them    innately    desirable,

probably because of their pleasing "attic shape."14                        Moreover,

the evidence indicates without contradiction that Joy emulated

Duraco's design because Joy believed it to be a superior one, not

to    trade    on     Duraco's    non-existent       good    will   in   the   Grecian

Classics' configuration.

          In addition, Duraco has not emphasized its alleged trade

dress in its advertising, relying instead primarily on small

depictions of the entire product.                 Finally, Duraco exclusively

sold planters with the "Grecian Classics look" for at most five

years, not so long a time as to raise a strong inference of

consumer association with a single source.                     Therefore, because


     14
      .
          O Attic shape! Fair attitude! with brede
            Of marble men and maidens overwrought,
          With forest branches and the trodden weed;
            Thou, silent form! dost tease us out of thought
          As doth eternity: Cold Pastoral!

John Keats, Ode on a Grecian Urn (excerpt from last stanza).
the   district      court    was   correct      and    a   fortiori        not   clearly

erroneous, we will affirm its finding of no secondary meaning.



                                    IV.    CONCLUSION

         Applying the standard that this opinion has articulated

for   determining     whether      product      configurations       are    inherently

distinctive, we have concluded, viewing the evidence in the light

most favorable to Duraco, that Duraco's Grecian Classics plastic

planters     are    not     inherently     distinctive.         We     have      further

concluded that the district court was not clearly erroneous in

finding that Duraco has failed to show secondary meaning.                          Thus,

having       demonstrated          neither        inherent           nor         acquired

distinctiveness,       Duraco      has    not   established     a     likelihood       of

success on the merits of its Lanham Act action for trade dress

infringement.        For the foregoing reasons, we will affirm the

district court's order denying Duraco's motion for a preliminary

injunction.        The district court's further proceedings resolving

the   case    on    final     hearing     will,       of   course,     be     conducted

consistently with this opinion.
