Morton & Bassett, LLC-V-Organic Spices Inc
4:15-cv-01849
N.D. Cal.Aug 25, 2017Background
- This case concerns Morton & Bassett, LLC’s Lanham Act trade dress claim against Organic Spices, Inc. (Spicely) in a Northern District of California action (15-cv-01849).
- At a 2017 case management conference, Morton sought to resolve two issues relevant to trial: trade dress type and genericness.
- The dispute centers on whether Morton’s trade dress is product design, packaging design, both, or ambiguous, and whether genericness applies.
- Wal-Mart distinguishes packaging trade dress from product design, suggesting packaging can be inherently distinctive.
- The court ultimately adopts a packaging-trade-dress framework and applies a Seabrook-style test for inherent distinctiveness rather than the Two Pesos framework.
- The court emphasizes Seabrook for non-verbal, packaging-related trade dress and resolves the related genericness discussion accordingly.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Nature of Morton’s trade dress | Morton’s trade dress involves packaging. | Spicely argues it is not packaging, or is ambiguous. | Unambiguous product-packaging trade dress. |
| Applicable standard for inherent distinctiveness | Genericness not applicable; Seabrook not discussed. | Two Pesos framework should apply as a trademark test. | Seabrook test governs inherent distinctiveness for packaging trade dress. |
| Jury instruction on distinctiveness and genericness | If distinctiveness is recognized, ordinary juror guidance suffices. | Jury should be instructed under Two Pesos or genericness theories. | Jury instructed under Seabrook-based inherent distinctiveness rather than Two Pesos. |
Key Cases Cited
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (U.S. 2000) (distinguishes product packaging from product design for trade dress)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (taxonomy of marks; informs non-verbal trade dress analysis)
- Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977) (preferred test for inherent distinctiveness in product-packaging trade dress)
- Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (cited regarding genericness and distinctiveness principles)
- Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143 (9th Cir. 1999) (genericness considerations in unregistered mark disputes)