“Some day we’ll look back on this, and it will all seem funny.”

B. Springsteen, Rosalita (Come Out Tonight).

As the rather large, affluent (and self-obsessed) “Baby Boomer” generation ages, coalescing factors may give rise to a new genre of litigation: trade dress litigation arising from Baby Boomer nostalgia. This is because with the passage of those born between 1946 and 1964 through middle age, one finds a contemporaneous increase in their prominence, disposable incomes, and interest in their younger years.

While perhaps tempting, this article is not intended to provide a psycho- or politico-analysis of these trends, but instead to point out that “My Generation’s” wistfulness has contributed to trade dress lawsuits relating to emblems of its formative years. This article, then, seeks to provide an overview of some trade dress (and a few trademark) decisions of recent years where the product at issue might be considered a “baby boomer icon.” Primarily focusing on product-configuration trade dress claims (rather than product packaging claims), it will offer guidance about the kinds of issues that may make or break these cases.

Background

While historically, trade dress connoted the “’manner in which a product was ‘dressed up’ to go to market with a label, package, display card, and similar packaging elements . . .’,” today “’”trade dress” has taken on a more expansive meaning and includes the design and appearance of the product as well.’” Callman Unfair Competition (4th Ed.), §19:1, p. 19-4, n. 2 (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir.1995). Determining whether a trade dress claim is based upon product configuration or packaging can be a difficult matter, see Wal-Mart v. Stores, Inc. v. Samara Bros., 529 U.S. 205, 215 (2000), but may be critical because product configurations cannot be inherently distinctive; instead, proof of distinctiveness requires establishing that the “dress” has acquired secondary meaning, see id. at 216. Thus, where the claim is based upon product configuration, the primary significance of the product feature must be to identify the source of the product, rather than the product itself. See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, n.11 (1982).

To receive protection as trade dress under Lanham Act §43(a), a product configuration must be defined, nonfunctional, and distinctive as an indicator of the product’s origin. While courts “exercise ‘particular caution when extending protection to product designs,’” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001); as noted by Professor McCarthy, “’trade dress’ is an expansive concept,” and the list of protected configurations has ranged from the use of a lighthouse as part of a golf hole design, to the shape of a flashlight. See McCarthy on Trademarks, §8.4 at 8-17 (including list of protected trade dress). As is true in all trademark claims, the plaintiff must also demonstrate a likelihood, rather than mere possibility, of confusion. See Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997).

These analyses have come into play, to varying degrees, in “Baby Boomer Trade Dress Claims.” Among illustrative examples are the following cases.

While My Guitar Gently Weeps: For Boomers who were “into” rock music, two styles of solid-body electric guitars stood out –Gibson Les Pauls® (such as played by early Eric Clapton and by Duane Allman) and Fenders (including the Stratocasters® used by Jimi Hendrix and later Clapton). Perhaps because of the growing interest of Baby Boomers in collecting iconic guitars, see C. Wilson, “Antiques; Now, Baby Boomers are Digging Guitars as Pricey Collectibles,” New York Times, September 24, 2004 (p. 34); Gibson Guitar Company sued competitor Paul Reed Smith Guitars (“PRS”), seeking to enjoin PRS from selling its Singlecut® guitars. Because the bodies of both Les Pauls and Singlecuts have only one “cutaway,” and because of the allegedly similar placement of certain controls, Gibson claimed that PRS’s Singlecut was confusingly similar to the Les Paul, and infringed Gibson’s trademark and trade dress. See Gibson Guitar Corp. v. Paul Reed Smith Guitars, 311 F. Supp.2d 690, 697 (M.D. Tenn. 2004), rev’d 423 F.3d 539 (6th Cir. 2005). PRS counterclaimed for, inter alia, a declaration of invalidity.

Curiously, while it had dismissed (at the parties’ request) all non-trademark claims, see 423 F.3d at 544, the trial court’s summary judgment ruling seemed premised upon trade dress issues, see id. at 546; see also 311 F. Supp.2d at 697-98, and 710, 719-20. The trial judge appeared particularly swayed by evidence of comments made during PRS’s development of the Singlecut, see id. at 704-07, and was unconvinced by the differences in the guitars, the presence of bold identifying logos and tags, and the price ($1800-3500). After dismissively rejecting functionality arguments, the court found a likelihood of confusion, id. at 725, and enjoined PRS’s sales of Singlecut guitars.

On appeal, the Sixth Circuit soundly reversed. Noting that the trial court had “confused trademark law and trade-dress law when it concluded that the LP Trademark covered the entire guitar” (rather than Gibson’s registered two-dimensional silhouette), 423 F.3d at 546 (emphasis in original), the court concluded that Gibson could not show a likelihood of confusion as a matter of law. In doing so, it rejected the District Court’s substitution of “initial interest” confusion (stemming from the similar body shapes) for actual confusion, id. at 548-49. It cited Gibson’s concessions at oral argument that there was no evidence of point-of-sale confusion, id.; that the buyers were sophisticated; and that “you’d have to be an idiot” to confuse these two $2000-plus instruments. Id. at 548 n.13.

After rejecting claims of post-sale confusion, id. at 552; the court addressed Gibson’s “’Smoky-Bar Theory of Confusion,’” id., a claim premised upon the idea that “[o]n a distant stage, a smoky bar, wannabe musicians see their heros playing a guitar they then want,” id. at 553. As explained by the court, Gibson’s theory ran afoul of the fact that the beneficiary of any confusion would be Gibson, not PRS, for confused “wannabes” who thought a PRS Singlecut player’s tone came from a Les Paul would likely thereafter purchase a Gibson. Id. Having disposed of all claims of confusion, the appellate court reversed the lower court.

In a somewhat related vein, the sole remaining member of the rock band “Revolver” –a group that played “Beatles” music in a simulated (but ostensibly enhanced) “Beatles concert” environment –successfully claimed that the group’s mode of presentation was distinctive and protectable. Cesare v. Work, 36 Ohio App.3d 26, 520 N.E.2d 586 (9th District 1987). As a result, the former band mates’ efforts to copy that “simulation” were enjoined.

Where Have All the Cowboys Gone?: One element of growing up in the 50s and 60s –the ubiquitous Western –has led, in parts of the country, to a nostalgia for the “Old West,” including its period firearms. While one maker of a mainstay “cowboy gun” –Colt’s Manufacturing Company –has offered its revolver over the years, others have since the mid-1950s offered replicas, albeit with varying degrees of authenticity. Colt’s sued a new entrant (American Western Arms) in the replica revolver industry, for, inter alia ,infringement and dilution of the trade dress of the Model 1873 revolver.

The trial court summary dismissed plaintiffs’ trade dress dilution claims, accepting the defendants’ argument that after the holdings in Wal-Mart (product configuration trade dress not inherently distinctive, 529 U.S. at 212); and TCPIP Holding Co. v. Hoar Communications, Inc., 244 F.3d 88, 98 (2d Cir. 2001) (only inherent distinctive trade dress protected against dilution); such claims were invalid as a matter of law. New Colt Holding Corp. v. RJG Holdings of Florida, 2003 WL 23507022 (D. Conn. 2003). After rejecting the argument that labels on the revolvers’ barrels barred claims of confusion, id., the court left most other issues for trial, 312 F. Supp. 2d 195, 209 (D.Conn. 2004), although it provided guidance on secondary meaning, the likelihood of confusion (including the admissibility of plaintiffs’ survey), consumer sophistication, and functionality.

Other cowboys have fared better. For instance, the seller of Marlboro cigarettes enjoined a competitor from offering “Gunsmoke” cigarettes using Marlboro’s trade dress –which was described as “an image of the American West made up of geographical (“Marlboro Country”) and individualized (the cowboy as the “Marlboro Man”) components. Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379, 383 (S.D.N.Y. 1995). The similarities of the two products’ trade dress (even if only creating a “subliminal” association), and the evidence of intentional copying were enough to overcome the lack of evidence of actual confusion. Id. at 386-88.

Toys: While some aging Baby Boomers satisfy their nostalgia cravings by collecting Baby Boomer playthings, claims based on toys have often received unsympathetic treatment. For instance, the court in Mattel v. Walking Mountain Productions, 353 F3d 792 (9th Cir. 2003), shrugged off “Barbie’s” claims that the “Food Chain Barbie,” photographic series, inter alia, infringed her trade dress, stating that use in these parodic photographs was a noninfringing, nominative fair use and not likely to cause confusion. The maker of the Etch a Sketch® was denied trade dress protection for the drawing toy’s configuration, in large part because of the lack of evidence of secondary meaning for the configuration (as opposed to the name) or of a likelihood of confusion. Ohio Art v. Lewis Galoob Toys ,Inc. 799 F.Supp. 870 (N.D. Ill 1992). Norfin’s “Troll” dolls were left to the whims of the marketplace, as their configuration did not serve primarily as designator of origin. EFS Marketing, Inc. v. Russ Berrie & Co., Inc., 76 F.3d 487, 490-91 (2nd Cir. 1996). In contrast, the design of “Rubik’s Cube” was held to constitute protectable trade dress, even against claims that its design was functional. Ideal Toy Corp. v. Plawner Toy Mfg Corp., 685 F2d 78 (3rd Cir. 1982).

Vehicles: Baby Boomer vehicle icons have been all over the road. The Ferrari 365 GTB/4 automobile has been protected against duplication as a toy car, Ferrari SpA v. McBurnie, 11 U.S.P.Q. 2d 1843 (S.D. Cal. 1989); and with respect to a manufacturer of replicas, Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235 (6th Cir. 1991). Similarly, Daisy Duke and friends were able to protect the imagery of the “General Lee” from being hijacked by unlicensed toy manufacturers. See e.g., Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983). In another case, on appeal Chrysler was allowed to go to trial on its claims that a copier of its “Viper” (a 60s-roadster style “muscle car”) infringed its trade dress. Chrysler v. Silva, 118 F.3d 56 (1st Cir 1997).

In contrast, the makers of the “Jeep” SUV had “virtually no chance of showing” a likelihood of consumer confusion when they claimed the Hummer H2 grill infringed the Jeep grill trade dress. AM General v. Daimler Chrysler, 311 F3d 796 (7th Cir. 2002). Caterpillar’s efforts to enjoin Disney on Lanham Act §43(a) (infringement) and §43(c) (dilution) grounds from including “Cat” bulldozers in George of the Jungle 2 were demolished by an opinion which perhaps also serves as a movie review. Caterpillar, Inc. v. Walt Disney Co., 287 F.Supp.2d 913 (C.D. Ill. 2003).

Food: Foods about which Baby Boomers have memories have met mixed results. Nabisco was able to protect its 40-year old “Goldfish” cracker design from dilution by “Cat-Dog” crackers, Nabisco, Inc. v. PF Brands, Inc., 50 F Supp.2d 188 (S.D.N.Y. 1999), aff’d 191 F.3d 208 (2nd Cir. 1999); and also obtained an injunction (including on trade dress grounds) against a competitor’s sale of a hard roll candy confusingly similar to Lifesavers®. See Nabisco Brands v. Conusa, Corp., 722 F. Supp. 1287, 1290 n. 3 (MDNC, 1989). In contrast (and while admittedly not a trade dress claim), when the makers of Spam® sought to enjoin the Muppets from including a character named “Spa’am” in Muppet Treasure Island, even the strength of that mark did not overcome the lack of any likelihood of confusion (and the plaintiff’s missing sense of humor). HormelFoods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 501 (2d Cir. 1996).

Other Icons: The identifying red tab on perhaps the most ubiquitous Baby Boomer item – Levi’s® jeans –has been protected against infringement. See Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817 (9th Cir. 1980); Levi Strauss & Co. v. GTFM, Inc., 196 F.Supp.2d 971 (N.D. Cal. 2002).

Finally, while perhaps not brought as trade dress claims, one may note that as was true during his movie career (spanning 50 years and 28 movies), Toho’s Godzilla® has won some and lost some. His name and persona were found to be protected against trademark and copyright law infringement in Toho Co., Ltd. v. William Morrow and Co., Inc., 33 F.Supp.2d 1206 (C.D.Cal.,1998). In contrast, the “King of the Monsters” lost his claim against Retail Giant Sears arising from the promotion of “Bagzilla” plastic lawn bags, Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981), a decision which turned on the differences in the products (“fire-breathing, pre-historic, often-schizophrenic dinosaur,” 33 F. Supp.2d at 1214; vs. “Monstrously Strong Bags” ), the character representations, and the marketing channels.

Other than providing a trip down memory lane, these decisions are interesting for several reasons. First, it is instructive to note that in several of these cases (including Gibson Guitars, Colt’s, the Ferrari cases, and the “Marlboro Man” and “Lifesavers” cases), the presence of labels on the product were not necessarily enough to summarily dispose of the plaintiff’s claims (at least at the trial court level), but see Versa Products Co., Inc. v. Bifold Co., 50 F.3d 189, 213 (3rd Cir. 1995). In many cases, functionality has been important, and one author noted that the Trademark Trial and Appeal Board has often refused registration of proposed trade dress based upon functionality. See Welch, J., “Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will,” Allen’s Trademark Digest, Vol. 18, No. 5, p. 9, 10 (Nov. 2004). As is often true in these lawsuits, confusion is hotly contested. Courts have, moreover, declined protection in these (as other) trade dress cases absent proof of secondary meaning and where the item is simply not distinctive.

One also finds that facts strictly relevant to the legal theories may become secondary where the court feels that the junior user’s pre-litigation conduct was inappropriate. Thus, the trial courts in Gibson v. PRS Guitars, and Philip Morris v. Star Tobacco both placed great weight upon comments made during the development and marketing processes; while PRS successfully appealed an adverse decision, it did so only after a nine-month injunction and substantial legal bills. On the other hand, the senior user is ill-advised to overstate its concerns about the use of its mark in a parodic (see Hormel, Walking Mountain) or other noninfringing (Caterpillar) manner.

What seems likely is that the absorption of the “Me Generation” in its youth has the potential to lead to increasing litigation about its memories. Given that they are more affluent than any prior age group (see K. Davis, “Oldies But Goodies. Marketers, Take Note: Baby Boomers have Lots of Money to Spend,” U.S. News & World Report (March 14, 2005)), it should not surprise that Baby Boomers are developing an interest in and collecting some of the more expensive icons of the 50s and 60s, in some cases turning what in the past would have been single-owned items into collections. The law of supply and demand dictates that this can only increase prices, providing an incentive for owners of 60s icons to try to enhance the affinity for them, and then protect their sole rights to the icons.

The quandary is, however, that success in marketing may breed failure in litigation. As the 6th Circuit noted in Gibson v. PRS, and as may be implied in some of the language in, inter alia, AM General and Colt’s, more expensive and valuable “memories” may also be the least subject to protection, for consumers seeking (or collecting) them are often well-versed, sophisticated, and unlikely to be confused. Thus, the """"discriminating purchaser theory"""" may defeat claims of a likelihood of confusion for many of the more valuable Baby Boomer icon cases. See Callman, §21:10, p. 21-100. In contrast, less expensive products –such as cigarettes and candies –may prove fair game for proof of confusion, as they may provoke memories, but not close examination.

The result? As the largest demographic ages and (rather than die before it gets old, see P. Townshend, My Generation) looks back on all this, owners of marks will have strong incentives to try to protect (and sometimes overextend) the reach of their trade dress rights, while (legitimately or not) others will replicate or copy the imagery or products evoking memories. Absent further restrictions on trade dress claims by the Supreme Court, as the value of those “memories” increase, so will the numbers of trade dress cases based upon products evoking those memories. While the stakes are growing for these kinds of claims, the fact that the consumers are, in many instances, well-versed in the more valuable products may (absent evidence of bad intent) prove a difficult hurdle for many plaintiffs to overcome.

“Yesterday all my troubles seemed so far away.

Now it looks as though they're here to stay.

Oh, I believe in yesterday.”

J. Lennon & P. McCartney, Yesterday.

*This article was originally published in DRIs December 2005 issue of "Business Suit".