Introduction
Samara Brothers, Inc. designs and manufactures a line of children's clothing. Wal-Mart Stores, Inc., contracted with a supplier, Judy-Philippine, Inc. (JPI), to manufacture outfits based on photographs of Samara garments and to be offered under Wal-Mart's house label, "Small Steps." When JPI manufactured the clothes, it copied sixteen of Samara's garments with some small modifications to produce the line of clothes required under its contract with Wal-Mart. After discovering that Wal-Mart and other retailers were selling the so-called knockoffs, Samara brought an action for infringement of unregistered trade dress under section 43(a) of the Trademark Act of 1946. The jury found for Samara and awarded the company more than $1 million in damages. Wal-Mart then renewed a motion for judgment as a matter of law, claiming that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as distinctive trade dress for purposes of section 43(a). The District Court denied the motion and awarded Samara relief. The Court of Appeals affirmed the denial of the motion and concluded that "copyrights depicting familiar objects, such as the hearts, daisies, and strawberries in Samara's copyrights are entitled to very narrow protection. It is only the virtually identical copying...which will result in a successful claim of infringement of familiar objects."
2-)Rule of Law/Rationale
The legal framework used to analyze whether design features--also referred to as trade dress--are entitled to trademark protection can be summarized as follows: First, as a threshold matter, it must be determined whether the claimed trade dress is functional. If so, the trade dress cannot be registered or protected as a trademark. In general terms, a feature is “functional” and cannot serve as a trademark “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” The functionality doctrine limits the types of product configurations and design features that can be registered and protected under trademark law. If the claimed trade dress is found not to be functional, the party claiming rights must satisfy additional legal requirements before achieving registration or protection. The Supreme Court addressed these requirements in the key case of Wal-Mart Stores, Inc. v. Samara Bros.,where the court distinguished between “product-design” trade dress and “product-packaging” trade dress. The two categories can be described as follows:
1. “Product-packaging” trade dress is composed of the overall combination and arrangement of the design elements that make up the product's packaging, including graphics, layout, color, or color combinations; and
2. “Product-design” trade dress covers a product's shape or configuration and other product design features.As discussed below, inherent distinctiveness does not entitle product-design trade dress to protection under the trademark laws. Only after product-design trade dress is shown to have acquired secondary meaning will it be entitled to such protection. Product-packaging trade dress, on the other hand, can be protected either if it is inherently distinctive or if it has acquired secondary meaning.

3-)Analysis

I. Protectability of Product Configurations
A product configuration is protectable as "trade dress" when it functions as a trademark, i.e., when the configuration serves to identify the source of the product. The owner of a certain product configuration must satisfy three prerequisites to establish that it is protectable as trade dress.
First, a configuration is eligible for protection only when it is actually used in commerce in a manner that is apparent to consumers. Second, the trade dress must be nonfunctional. In other words, for a product configuration to function as a trademark it must not be essential to the use or purpose of the product and it must not affect the quality of the product.2
Finally, prospective purchasers must perceive the product configuration as a symbol identifying the source of the product with which it is associated.3 In most cases, the owner of the trade dress may satisfy this "distinctiveness" requirement by demonstrating that the configuration has achieved secondary meaning — that the configuration has, through a period of use, come to be seen as such a source-identifying symbol.
To bring a claim for trade dress infringement under the dilution provisions of the Lanham Act,(4) however, the plaintiff must demonstrate substantially more distinctiveness. The First Circuit explained: "[T]he mere acquisition of secondary meaning to achieve trademark status in a non-inherently distinctive designation is nowhere near sufficient to achieve the status of `famous mark' under the anti-dilution statute. The acquisition of secondary meaning merely establishes the minimum threshold necessary for trademark status: section 43(c) requires a great deal more."5

II. Inherent Distinctiveness
Because the standard for proving secondary meaning is somewhat difficult to satisfy, and because many owners of product configurations seek protection under the dilution statute, proving "inherent distinctiveness" has become virtually essential in many trade dress cases.
In Two Pesos, Inc. v. Taco Cabano, Inc.,6 the Supreme Court established that product configurations can qualify for trade dress protection if they are inherently distinctive. Since 1992, however, the Court has not established guidelines for determining which product configurations are inherently distinctive,7 leading to confusion among the Circuit courts.
While courts have adopted various tests and standards for evaluating claims of inherent distinctiveness, three principal lines of analysis have evolved in the lower courts. One method for determining inherent distinctiveness, followed in varying degrees by courts in the Fifth and Eighth circuits, applies the "Abercrombie"8 continuum to the product configuration (classifying trade dress, like word marks, as fanciful, arbitrary, suggestive, descriptive, or generic).9
Three circuits tend to follow the approach first established in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.10 According to this "Seabrook" test, courts in the First, Eleventh, and Federal circuits apply the following four factors to determine whether a product configuration is inherently distinctive:11
1) Whether the product configuration is a "common" or basic design; 2) Whether the configuration is unique or unusual within the class of goods; 3) Whether the configuration is a "mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods"; and 4) Whether the configuration is capable of creating a distinctive impression independent of the associated product.12
The Third Circuit follows a three-pronged test in evaluating claims of inherent distinctiveness. A product configuration must be: 1) "unusual and memorable"; 2) "conceptually separable from the product"; and 3) "likely to serve primarily as a designator of origin of the product."13

III. The Second Circuit "Test" in Samara Brothers v. Wal-Mart
Since Two Pesos, courts in the Second Circuit followed an inconsistent set of guidelines in trade dress cases. In at least one case, the Second Circuit applied the Ambercrombie test.14In another instance, however, it rejected the use of the "descriptive" label in the context of product configurations.15 Moreover, the Southern District of New York has twice applied the four-factored Seabrook test.16
In Samara Bros., Inc. v. Wal-Mart Stores, Inc.,17 the Second Circuit did not follow any of these formulae in concluding that the product configuration at issue was inherently distinctive, thus maintaining its "the best test is no test" approach to trade dress cases.
Samara offers a line of seersucker children's clothing (jumpers generally) that have cloth appliqués stitched across the chest and neckline. A jury found that Wal-Mart had infringed Samara's copyrights in thirteen patterns as well as the "inherently distinctive" trade dress of the jumpers. The appeal arose after the district court denied Wal-Mart's motion for judgment N.O.V., writing an opinion addressing the trade dress issue, which the court characterized as the most difficult.18 Because Samara did not claim that the jumpers had acquired secondary meaning, the issue on appeal was whether there was sufficient evidence before the jury to establish that the product configuration was inherently distinctive.19
The Second Circuit neither classified the configuration as "suggestive" nor applied any discernible "factors" or "tests" in evaluating the evidence of inherent distinctiveness. Rather, the court pointed to the testimony of Samara's Vice-President for sales that "Samara chose to design its line of spring/summer seersucker children's clothes using consistent design elements so that the look would be identified with Samara, building brand loyalty" and that the product configuration was "the core of Samara's business" and the "lifeblood of the company."20 In essence, the court held that the product configuration was inherently distinctive because the company intended it to be so.
Relying on the plaintiff's intent will permit clever designers to generate inherent distinctiveness by fiat merely by testifying that he or she intended for the configuration to serve as a source-identifying characteristic of the product. And, while this would certainly reduce the court's discretion in the analysis, and another opportunity for activism, such a test hardly preserves the policy foundation of trademark law — reserving the grant of limited monopolies to those words and designs that are not needed for use by competitors in a competitive marketplace.
In addition to the fact that proving inherent distinctiveness under an intent-based test would be demonstrably simple, Samara is intriguing in that this test was specifically rejected in a district court opinion affirmed by the Second Circuit not two months earlier.21
The Supreme Court has granted certiorari, presumably to review the propriety of reliance on the plaintiff's intent in the inherent-distinctiveness analysis. The question posed is: "What must be shown to establish that a product's design is inherently distinctive for purposes of Lanham Act trade-dress protection?"22
In its brief, Wal-Mart urges the Court to apply the Abercrombie factors, concluding that under Abercrombie, no product configuration is inherently distinctive.23 Alternatively, Wal-Mart proposes a new test, which it claims to have derived from precedent, the Restatement (Third) of Unfair Competition, and the PTO's Trademark Manual of Examining Procedure, the "TMEP."24 Under the proposed test, a product is only inherently distinctive if it is "a consistent and particular design that is so unique as to be automatically, immediately, and primarily perceived as indicating source."25
In addition to the parties, several third parties have chimed in on the proper response to this question. The International Trademark Association(26) and the American Intellectual Property Association27 filed briefs in support of neither party, urging the Court to adopt the Seabrooktest. The United States28 and a number of corporations (many of whom previously had been trade dress litigants)29 urged adoption of the Seabrook test; however, while the United States urged reversal, the corporate amici urged the Court to affirm.
On the other hand, Payless ShoeSource, Inc.,30 The International Mass Retail Association,31and Private Label Manufacturers Association32 have filed amicus briefs urging the Court to adopt the more stringent Duraco test.
Interestingly, none of the amici support adoption of the Second Circuit's "intent" test. For example, the United States argued in its brief: "Whether a producer `intended' a product design to be source-identifying, aesthetically pleasing, or both (as will often be the case) should not, however, be relevant in determining whether a claimed trade dress is `inherently' distinctive. That determination turns on the likely perceptions of consumers, not producers: The question is whether the claimed trade dress `almost automatically tells the customer that it refers to a brand.' Whether the producer "intended" such an effect is not relevant; what matters is what consumers are objectively likely to perceive."33
It remains to be seen which course the Court will take, although its options appear to include: 1) affirming the Second Circuit decision, thereby opening the door for intent-based determinations in future trade secret cases; 2) adopting one of the existing tests — most likely Abercrombie, Seabrook, or Duraco; or 3) adopting an entirely new set of factors for courts to use in determining whether a product configuration is inherently distinctive.

4-)Conclusion
The Wal-Mart decision is largely a review of established law and the Court establishes a fine line distinction between trade dress, which can be inherently distinctive, product-design which requires secondary meaning in order to become distinctive. The Court held that, in an action for infringement or unregistered trade dress under §43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The judgment of the Second Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.
Justice Scalia unanimous opinion used proper reasoning and properly applied the applicable rule of law but one of the likely effects of this decision is to encourage registration of marks under the Lanham Act. One of the negative effects of this decision is that producers of goods may fear bringing a product to market because the court will not provide recourse against competitors that are not honest or that don’t deal fairly. One of the main purposes for a Lanham Act is to prevent consumer confusion & protect a trademark owner’s investment from diversion of sales, and to preserve fair competition. However, Justice Scalia’s decision makes it more difficult for a producer of goods to distinguish his goods from a competitor’s knockoffs. Producers of goods may be discouraged in bringing a product to market for the fear that there investment in advertising and quality may serve to benefit a cheaper, inferior knockoff.

REFERENCES www.law.cornell.edu www.digitalcommons.law.scu.edu www.camelaraymond.com www.law.berkeley.edu www.fed-soc.org www.fashionlawschool.wordpress.com www.bu.edu/law www.inta.org www.justice.org www.leagle.com www.vincenti.com www.fryer.com