I.P. Lund Trading ApS v. Kohler Co.

This is an appeal from the district court’s issuance of a preliminary injunction enjoining defendants Kohler Company and Robern, Inc. from selling the Kohler Falling Water faucet, a faucet resembling plaintiff Lund’s VOLA faucet. The VOLA faucet mounts on a wall, has been in the design collection at the Museum of Modern Art, and has a certain cachet among those who enjoy bathrooms and kitchens beautiful. Kohler intended to produce a faucet like Lund’s, but not identical to it, and hence designed the now-enjoined Falling Water faucet. Thei'e were two basic claims before the trial court: that the Falling Water faucet “diluted” the VOLA faucet’s trade dress within the meaning of the Federal Trademark Dilution Act of 1995 (“FTDA”), 15 U.S.C. § 1125(c), and that the Falling Water faucet infringed the VOLA’s trade dress. Lund won a preliminary injunction on the first ground, but not on the second. See I.P. Lund Trading ApS v. Kohler Co., 11 F.Supp.2d 112, 127 (D.Mass. 1998) (“Lund I”).

This difference in results was not anomalous. The district court found, as to the infringement claim, that while the VOLA faucet was not inherently distinctive, it had acquired secondary meaning and thus was pro-tectable, but that there was no infringement because there was no confusion on the part of consumers. In contrast, under the FTDA, where no confusion need be shown, the court found the VOLA faucet was famous and that Kohler’s faucet diluted the identity of the VOLA faucet.

This case presents complex issues arising in areas of intellectual property law recently extended and not yet well demarcated. New courts of appeals have yet interpreted the FTDA and this court has never addressed certain key issues, under both the infringement and FTDA claims, necessary to the resolution of the case. The district court wrote thoughtfully, and, particularly as to the FTDA issues, without much appellate guidance. The claim for protection here comes not from traditional marks such as names but from the very design of the faucet itself— that design is said to give the faucet its identity and distinctiveness. Although Lund may have been able to obtain a design patent and so protect its VOLA faucet in that way, at least for a period of fourteen years, see 35 U.S.C. § 173, it chose not to. Rather, it chose to turn for protection to legal doctrines of trademark and trade dress, originally crafted without product designs in mind. The trade dress of product designs, unlike other forms of trade dress, cannot be separated from the product itself. Kohler has raised serious constitutional concerns, saying that this use of the FTDA against a competing product essentially gives a perpetual monopoly to product design, a perpetual monopoly prohibited by the Patent Clause.

Kohler and Robern (collectively “Kohler”) argue that the district court erred in its determination that plaintiffs I.P. Lund Trading ApS and Kroin Incorporated (collectively “Lund”) demonstrated a likelihood of success on the merits of their claim under the FTDA that the Falling Water faucet dilutes the trade dress of Lund’s VOLA faucet.1 Lund cross-appeals, arguing that the district court erred in determining that Lund was unlikely to succeed on the merits of its infringement claim. We affirm the denial of the preliminary injunction on the infringement claim. We vacate the grant of the injunction on the FTDA claim.

Several questions of first impression are resolved in this opinion. We hold that the *33burden of showing non-functionality of a product for which trade dress protection is sought rests on the party seeking that protection. Here that is the plaintiff Lund. In analyzing inherent distinctiveness in the context of product design, we hold that while the well-known Abercrombie test provides a useful analogy, strict application of the test is not required; we reiterate this court’s adherence to the Seabrook Foods test. We emphasize that, in any cáse where the trade dress is said to arise from the product design, there must be separate analyses as to (1) whether a design is inherently distinctive and (2) whether it has nonetheless acquired distinctiveness through secondary meaning. As to secondary meaning said to stem from the design of the product itself, we hold that the plaintiff must show that the primary' significance of the design is to signify its source.

Under the FTDA, we hold that a party who wishes to establish fame of the trade dress for which protection is sought bears a significantly greater burden than the burden of establishing distinctiveness for infringement purposes. The FTDA creates an exceptional anti-dilution remedy for truly famous marks. Once this greater burden of establishing fame has been met under the FTDA, the issue of dilution must be addressed. We reject the use of the “Sweet factors” as the test for dilution and instead require an inquiry into whether target customers will perceive the products as essentially the same. We hold that the dilution standard is a rigorous one, and Lund has not shown that it is likely to succeed. While we acknowledge serious constitutional concerns about application of the FTDA to a dilution claim against a competing product which does not confuse consumers, the resolution of the case obviates the as applied constitutional issue, and we decline to address any residual facial challenge.

I. Standard of Review

The district court “enjoys considerable discretion” in determining whether to grant a preliminary injunction, but its decision “must be supported by adequate findings of fact and conclusions of law.” TEC Eng’g Corp. v. Budget Molders Supply, Inc., 82 F.3d 542, 544-45 (1st Cir.1996); see also Camel Hair & Cashmere Institute of America, Inc. v. Associated Dry Goods Corp., 799 F.2d 6, 12-13 (1st Cir.1986). “On appellate review of the grant or denial of a preliminary injunction, the deferential standard of ‘abuse of discretion’ applies to judgment calls, by the district court, such as those that involve the weighing of competing considerations.” Public Serv. Co. v. Patch, No. 98-1764,- F.3d -, 1998 WL 823177, at *5 (1st Cir. Dec. 3, 1998). As explained in Ocean Spray Cranberries, Inc. v. Pepsico, Inc., 160 F.3d 58 (1st Cir.1998), “[t]he usual rubric refers to abuse of discretion ... but this phrasing is most pertinent to issues of judgment and the balancing of conflicting factors; rulings on abstract legal issues remain reviewable de novo, and findings of fact are assessed for clear error.” Id. at 61 n. 1 (citations omitted). If findings are made under incorrect standards, little or no deference is due those findings. Cf. Uno v. City of Holyoke, 72 F.3d 973, 978 (1st Cir.1995). Further, “[a]buse of discretion occurs ... when a material factor deserving significant weight is ignored, when an improper factor is relied upon, or when all proper and no improper factors are assessed, but the court makes a serious mistake in weighing them.” Foster v. Mydas Assocs., Inc., 943 F.2d 139, 143 (1st Cir.1991) (internal quotation marks omitted).

A party seeking a preliminary injunction must establish that (1) it is substantially likely to succeed on the merits of its claim; (2) absent the injunction there is “a significant risk of irreparable harm”; (3) the balance of hardships weighs in its favor; and (4) the injunction will not harm the public interest. TEC Eng’g Corp., 82 F.3d at 544 (discussing a claim for trade dress infringement). In the trademark context, “irreparable harm may be shown even in the absence of actual injury to plaintiffs business based on plaintiffs demonstration of a likelihood of success on the merits on its claim.” Calamari Fisheries, Inc. v. The Village Catch, Inc., 698 F.Supp. 994, 1013 (D.Mass.1988) (citing Camel Hair. & Cashmere Institute, 799 F.2d at 14). There is no argument that the district court applied the wrong test for injunctive relief; there is considerable dis*34pute over the subsidiary tests which the court applied in determining whether there was probability of success on the various elements of the claims.

II. Facts and Procedural History

Lund, a Danish corporation, manufactures bathroom and kitchen fixtures and accessories, including faucets. Lund has been a family-owned corporation since its establishment in 1873. In 1969, Lund introduced the VOLA faucet, designed by the noted architect Arne Jacobsen. The faucet, which has received numerous awards over the past quarter-century, is Lund’s principal revenue-producing product. Lund has sold a total of more than 600,000 VOLA faucets. The faucet has been regularly advertised and featured in numerous magazines. Kroin Incorporated is the sole United States distributor of the VOLA.

Kohler is the largest supplier of plumbing fixtures in this country, selling hundreds of types of kitchen and bathroom fixtures. In 1994, Kohler contacted Lund regarding the possibility of selling the VOLA faucet under Kohler’s name. In 1995, Kohler purchased eight VOLA faucets from Lund for the purpose of testing the faucets to see if they fit in a sink that Kohler planned to introduce and to ensure that the faucets complied with United States regulations. Kohler claims that it tested the faucets and found that they did not meet U.S. regulations regarding water flow capacity and resistance to hydrostatic pressure, a contention Lund contests, and as to which there was conflicting evidence.

Kohler gave a VOLA faucet to Erich Slo-thower, an industrial designer employed by Kohler. Slothower then designed the Falling Water faucet, which Kohler introduced for sale at a price lower than that of the VOLA faucet. Slothower testified that he examined the VOLA carefully prior to designing the Falling Water, but that he attempted to make the Falling Water faucet different from the VOLA. Kohler’s large size and well-established distribution channels mean that the Falling Water is likely to be more easily available, in addition to being less expensive.

The district court found a number of similarities between the VOLA and the Falling Water faucets. Both are “single-control, wall-mounted faucets” with handles that “utilize a thin cylindrical lever to adjust water temperature and volume”; both have “spouts and aerator holders ... of uniform diameter,” with the spouts “bendpng] downward at right angles softened by a curve”; and “both faucets offer spouts in almost exactly the same three lengths.” Lund I, 11 F.Supp.2d at 116. Both faucets fit no-hole sinks.2 In contrast, most sinks sold in the United States are “three-hole” sinks, with one hole each for the water spout and the hot and cold spigots. However, the district court also found dissimilarities between the faucets, including differences in the faucets’ handles, a rounded lever on the Falling Water faucet compared to a flat lever on the VOLA, and a rounded bonnet — a piece that connects the faucet to the wall — on the mounting end of the Falling Water spout, compared to no bonnet on the VOLA. See id. The court also found that the housemarks, “VOLA” and “Kohler,” are clearly dissimilar and are prominently displayed on the faucets. See id. at 123.

Co-defendant Robern, which Kohler acquired in August 1995, also purchased a number of VOLA faucets. Before being acquired by Kohler, Robern purchased 218 VOLA faucets from Kroin for use in a sink module. Robern apparently promoted its sink module pictured with the VOLA faucets. At approximately the same time as Kohler acquired Robern, Kroin refused to sell additional VOLA faucets to Robern, claiming that Ro-bern was selling the faucets to Kroin’s customers at pi'ices below those Kroin was charging. One year later, Robern announced plans to market its sink module with the Falling Water faucet. Lund produced evidence that Robern has continued to use pictures of the VOLA in promotional materials, despite the fact that it has replaced the VOLA with the Falling Water faucet in its sink modules.

Kohler introduced the Falling Water faucet to the market in 1996. Lund filed suit on February 27, 1997, alleging trade dress infringement under Section 43(a) of the Lan-*35ham Act and trade dress dilution under the FTDA.3 Kohler denied any violations and argued that the FTDA was unconstitutional as applied to product designs. The district court held an evidentiary hearing on April 16 and 30,1997.

The court ruled on the motion for a preliminary injunction in three stages. In a February 5, 1998 Memorandum and Order, the court found that Lurid had demonstrated a substantial likelihood of success on its dilution claim, and so enjoined Kohler from selling its Falling Water faucet. See Lund I, 11 F.Supp.2d at 127. At the same time, the court found that Lund had failed to show likelihood of success on its claim of trade dress infringement, and it reserved decision on the question of the constitutionality of the FTDA pending additional briefing. See id.

On February 12, 1998, the district court stayed the preliminary injunction pending resolution of Kohler’s claim that application of the FTDA to product designs violates the Patent Clause.

In an order dated March 31, 1998 and a memorandum dated April 2,1998, the district court found that Kohler’s constitutional argument was unlikely to succeed on the merits, lifted the stay on the injunction, and ordered Lund to post a bond of $250,000. See I.P. Lund Trading ApS v. Kohler Co., 11 F.Supp.2d 127, 134-35 (D.Mass.1998) (“Lund II”).

The district court also denied Kohler’s request to stay the injunction pending appeal to this court. On April 29, 1998, this court rejected Kohler’s request for a stay pending appeal.

III. Purposes of Trademark and Trade Dress Protection

The basic building blocks of the analysis are worth reiterating. Section 43(a) of the Lanham Act provides protection against the use of “any word, term, name, symbol, or device” that “is likely to cause confusion, or to cause mistake, or to deceive” as to the source of a product. 15 U.S.C. § 1125(a). Trade dress includes “the design and appear-anee of [a] product together with the elements making up the overall image that serves to identify the product presented to the consumer.” Chrysler Corp. v. Silva, 118 F.3d 56, 58 (1st Cir.1997) (alteration in original) (quoting Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.1997)) (internal quotation marks omitted). The new law, the FTDA, Lanham Act section 43(c), grants protection to “famous” marks against any use of the mark that “causes dilution of the distinctive quality of the mark.” 15 U.S.C. § 1125(c).

To resolve the issues presented, we go back to the underlying purposes of trademark and trade dress infringement and dilution protections. The various intellectual property protection mechanisms serve related but distinct ends. These distinct ends inform the selection of appropriate tests under the different sections of the Lanham Act. These distinctions are also particularly pertinent to Kohler’s constitutional claim that dilution protection of trade dress of product design amounts to an unconstitutional perpetual monopoly under the Patent Clause of the Constitution. The Patent Clause itself describes the “exclusive Right” given as being for “limited Times.” U.S. Const. art. I, § 8, cl. 8. “The laws of patents, copyright, trade secrets, trademarks, unfair competition, and misappropriation balance the conflicting interests in protection and dissemination differently in different contexts through specific rules that determine just who will receive protection, of just what kind, under what circumstances, and for how long.” DeCosta v. Viacom Int’l, Inc., 981 F.2d 602, 605 (1st Cir.1992).

A primary purpose of trade dress or trademark protection is to protect that which identifies a product’s source. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (noting that “the statutory definition of a trademark ... requires that a person ‘us[e]’ or ‘inten[d] to use’ the mark ‘to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the *36source of the goods, even if that source is unknown’ ” (alterations in original) (quoting 15 U.S.C. § 1127)). “The purpose of trademark laws is to prevent the use of the same or similar marks in a way that confuses the public about the actual source of the goods or service.” Star Fin. Servs., Inc. v. Aastar Mortgage Corp., 89 F.3d 5, 9 (1st Cir.1996). Traditional trademark and trade dress law thus encourages production of products of high quality “and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an item offered for sale.” Qualitex, 514 U.S..at 164, 115 S.Ct. 1300. More importantly for our purposes, trademark and trade dress protection serves to protect both the trademark or trade dress owner and the public by avoiding confusion or mistake.

In contrast, dilution statutes, and the FTDA in particulár, protect only the trademark or trade dress owner and are not concerned with possible confusion on the part of consumers. See J. Gilson, Trademark Protection and Practice § 5.12 (1998). Any protection of the public intended by the FTDA is indirect at best. “Anti-dilution statutes have developed to fill a void left by the failure of trademark infringement law to curb the unauthorized use of marks where there is no likelihood of confusion between the original use and the infringing use.” L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 30 (1st Cir.1987). Filling this void, Congress passed the FTDA in 1995 both to provide uniform national protection against dilution and to bring this country’s law into conformity with international agreements. See H.R.Rep. No. 104-374, at 3-1 (1995), reprinted in 1995 U.S.C.C.A.N 1029, 1030-31.4

IV. Prerequisites for Protection from Infringement and Dilution

Despite different purposes being served, claims for protection against trademark and trade dress infringement, on the one hand, and dilution, on the other, share three common elements before the analyses diverge. Those elements are that marks (a) must be used in commerce, (b) must be nonfunctional, and (c) must be distinctive. While all such marks may be protected against infringement, under the FTDA only famous and distinctive marks are eligible for protection against dilution. No requirement for fame is present in trademark and trade dress infringement.

A. Use in Commerce

There is no dispute that both Lund’s and Kohler’s faucets have been used in commerce, thus satisfying the first requirement for protection against both infringement and dilution. See 15 U.S.C. § 1125(a),(c).

B. Functionality

1. Legal Standards

To be protected under the Lanham Act, a trademark or trade dress must not be functional. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). If the trade dress is functional, it receives no protection under trademark law. The functionality doctrine has considerable economic and legal significance. “The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, fi’om instead inhibiting legitimate competition by allowing a producer to control a useful product feature.” Qualitex, 514 U.S. at 164, 115 S.Ct. 1300. Thus, the functionality doctrine marks the boundaries of trade dress protection.

As discussed later, “if functional features were given trademark or trade dress protection, such protection would clearly clash with the objectives of federal functional patent law.” 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 7:64 *37(4th ed.1996). The rule against functional features being protected as symbols of origin “is obviously to prevent the grant of perpetual monopoly by the issuance of a trade-mark in the situation where a patent has either expired, or ... cannot be granted.” Sylvania Elec. Prods., Inc. v. Dura Elec. Lamp Co., 247 F.2d 730, 732 (3d Cir.1957).

The core inquiry into whether trade dress is functional requires examination of the effects that granting protection to a product will have on the ability of others to compete. Thus, in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982), the Court stated that a functional product feature is one that “is essential to the use or purpose of the article or [that] ... affects the cost or quality of the article.” Id. at 851 n. 10, 102 S.Ct. 2182. In Qualitex, the Court added that the inquiry into functionality turns in part on whether granting protection to a mark “would permit one competitor ... to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.” Qualitex, 514 U.S. at 170, 115 S.Ct. 1300.5

The fact that a product contains some functional elements does not, however, preclude Lanham Act protection. “[A] particular arbitrary combination of functional features, the combination of which is not itself functional, properly enjoys protection.” Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1119 (5th Cir.1991), aff'd, 505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). The crucial inquiry is into the effect that granting protection will have on the opportunity of others to compete.

As the parties note, this court has not previously decided whether a showing of non-functionality is an element of the claim of the party seeking protection, or whether functionality is an affirmative defense on which the defending party has the burden. See TEC Eng’g Corp., 82 F.3d at 546 n. 3. In Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193 (1st Cir.1980), this court, although not resolving the issue, stated that it was “not at all clear” that the district court erred when it placed the burden of proof on the plaintiff. Id. at 195. Other circuit courts which have decided the issue are split. Compare Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 251 (5th Cir.1997) (holding that plaintiffs bear the burden), cert. denied, — U.S. -, 118 S.Ct. 1795, 140 L.Ed.2d 936 (1998), Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir.1990), Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir.1987), AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 (11th Cir.1986), Kwik-Site Corp. v. Clear View Mfg. Co., 758 F.2d 167, 178 (6th Cir.1985), and CIBA-GEIGY Corp. v. Bolar Pharmaceutical Co., 747 F.2d 844, 854 (3d Cir.1984), with Computer Care v. Service Sys. Enters., Inc., 982 F.2d 1063, 1068 (7th Cir.1992) (holding that defendants bear the burden), Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 520 (10th Cir.1987), and LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75-76 (2d Cir.1985). See generally 1 McCarthy § 7:72. The Lanham Act itself provides no guidance on the issue, and the caselaw contains little discussion of the rationale for allocating the burden of proof to plaintiffs or defendants.

We hold that the party alleging trademark infringement and dilution bears the burden of proving non-functionality of those elements of the physical object that the plaintiff claims constitute the mark and for which the plaintiff is seeking protection. Several ratio*38nales support the burden being placed on those seeking protection, here the plaintiff. Functionality, or, more precisely, a showing of non-functionality of the elements for which protection is sought, is an essential component of the protection the law gives to trademarks and trade dress. A showing of non-functionality is essential because the doctrine prevents trademarks from limiting legitimate competition. Put differently, “functionality” plays an important role in preventing a constitutional problem between the Lanham Act and patent law. Moreover, Congress did not intend to provide Lanham Act protection to functional aspects of products, see Two Pesos, 505 U.S. at 775, 112 S.Ct. 2753, and thus it would be anomalous if the burden were not placed on the party seeking protection. Such an assignment of the burden of proof ensures that trademarks serve their intended purpose of identifying product sources.

A plaintiffs product is known best by plaintiff itself. A contrary result, placing the burden on defendant, could lead to untoward results. It could also lead to unwarranted litigation. If protected elements of a product are indeed functional, and the burden of showing non-functionality is placed on plaintiff, plaintiff will have incentives not to bring unwarranted actions hoping that defendants will fail to raise or prove functionality as an affirmative defense. It would be far easier for plaintiffs to obtain protection for functional aspects of their products — and thus limit legitimate competition — if defendants were to bear the burden of proof, as defendants might lack the ability or incentive to pursue the issue fully. There is value in minimizing the chances of the issue not being properly raised or presented.

2. Application of Functionality Doctrine

The district court did not make a specific finding on functionality and the record on the important issue of functionality is unclear.6 Although Lund I commented that “[n]o one argues that the VOLA design is ‘functional,’ as that term is used in trademark law,” Lund I, 11 F.Supp.2d at 120 n. 12, Kohler did in fact argue in a filing that “to the extent that some features on the respective faucets may somewhat resemble each other, these features are either functional in nature and thus not protectable under the Lanham Act or so commonly used in the plumbing industry that they are obvious — not distinctive of a particular product” (emphasis added). Thus Kohler did not waive the issue. We cannot say that it is obvious no aspect of the VOLA is functional; indeed some aspects give the appearance of being functional and so the issue is a real one. There are significant dissimilarities between the two faucets, and at least some of the similarities that do exist are suggestive of functionality. Nonetheless, we will assume at this stage of the case that there is some non-functional residuum based on the aesthetic unity and proportions of the VOLA.

The issue of functionality plays a key role in this case. In the absence of a finding of non-functionality of the aspects of the VOLA for which protection is sought, and in light of our placing the burden of proof on plaintiff, there can be no trademark or trade dress protection. If the VOLA design or aspects of it are functional, then the only source of exclusive rights would be in a utility patent. Trademark and trade dress law cannot be used to evade the requirements of utility patents, nor the limits on monopolies imposed' by the Patent Clause. This also means that in the absence of a finding of non-functionality, no protection is available under the FTDA and no injunction may issue under the FTDA, a point to which we return later.

But there is another reason that the functionality analysis must be undertaken. There is a relationship between functionality and distinctiveness:

If a feature is functional, it is likely that all similar articles will have a similar functional feature, and one seller’s feature is not likely to evoke any response in buyers that *39it is unique or is a distinctive symbol of origin.

1 McCarthy § 7:64. It is also clear that even if a functional feature has achieved secondary meaning as an indication of origin, that feature is not protectable under trademark or trade dress law. See Fisher Stoves, 626 F.2d at 195-96; 1 McCarthy § 7:66.

C. Distinctiveness

The third prerequisite for protection is distinctiveness. In order to receive trade dress protection, a product must either be inherently distinctive or have acquired secondary meaning. See Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753; TEC Eng’g Corp., 82 F.3d at 545. The inquiry into distinctiveness turns on the total appearance of the product, not on individual elements. Cf. Sunbeam, 123 F.3d at 251 (stating that “ ‘trade dress’ refers to the total image and overall appearance of a product”). The district court found, within the usual preliminary injunction standards about likelihood of success, that the VOLA faucet was not inherently distinctive but that it had acquired secondary meaning.

1. Inherently Distinctive Marks

In analyzing whether a product’s mark is distinctive, courts have often divided marks into the five categories set forth in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976): (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. See Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753 (discussing Abercrombie); Abercrombie, 537 F.2d at 9. Suggestive, arbitrary, and fanciful marks are deemed inherently distinctive; descriptive marks receive protection only upon a showing that they have acquired secondary meaning; and generic marks are not protectable. Abercrom-bie itself addressed words, the usual form of mark. The Abercrombie test has been used in some other areas of trade dress, such as product packaging and the overall appearance of a restaurant. See Two Pesos, 505 U.S. at 768-69, 773, 112 S.Ct. 2753.

Courts have struggled with whether the Abercrombie test, originally designed for words, should be imported wholesale into that specialized area of trade dress claimed to come from product design. Although the Supreme Court in Two Pesos endorsed the Abercrombie test in the context of non-verbal trade dress not involving product designs, at least two circuits have been skeptical of the appropriateness of the test in the product design context. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1007-08 (2d Cir.1995); Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1445-49 (3d Cir.1994); 1 McCarthy § 8:12. Indeed, these courts, questioning whether a product design can ever be inherently distinctive, apply a more rigorous standard for determining inherent distinctiveness of product designs than they do for determining the inherent distinctiveness of more traditional forms of trade dress. See Knitwaves, 71 F.3d at 1008-09 (requiring that a product design serve primarily to indicate a product’s source); Duraco Prods., 40 F.3d at 1449 (requiring product designs to 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 problem with applying traditional trademark or trade dress classifications to product designs arises because “one cannot automatically conclude from a product feature or configuration — as one can from a product’s arbitrary name ... — that, to a consumer, it functions primarily to denote the product’s source.” Duraco Prods., 40 F.3d at 1441.

Parting from the skeptics, the Eighth Circuit has rejected any differentiation between product designs and other forms of trade dress. See Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 787-88 (8th Cir.1995). The Stuart Hall court argued that the Second and Third Circuit tests would effectively eliminate the possibility that a product design could be inherently distinctive, collapsing the inherent distinctiveness inquiry into the secondary meaning inquiry. See id. at 787 (“The requirement of source-identification applies not to whether a trade dress is inherently distinctive, but to whether it has a secondary meaning.”). Such an o