Professional Jeweler Archive: Trade-Dress Dispute Settled

May 2000

Managing/Legal Issues

Trade-Dress Dispute Settled

Big disputes can come in little packages

In February, Andin International Inc. and Frederick Goldman Inc., two major jewelry manufacturers in New York City, issued a press release saying they had settled a trade-dress dispute that involved the way their jewelry was packaged and promoted for Valentine’s Day.

The promotion in question involved a heart-shaped pendant in a heart-shaped box within a larger heart-shaped box. Chocolates were arranged between the two boxes. Andin has sold this item to Zale Corp. on an exclusive basis for many years. It’s marketed as Zale’s Keepsake box.

The parties agreed Andin had valid trade-dress rights in the Zale’s Keepsake box and that Goldman’s promotional box infringed on that trade dress. They also agreed any confusion the promotion caused was innocent on Goldman’s part, though Goldman agreed to pay an undisclosed amount to Andin.

This dispute was settled without a trial, but it raises many of the same issues involved in the David Yurman Designs vs. PAJ Inc. case (see Professional Jeweler, January 2000, p. 129). If the dispute hadn’t been settled, a judge or jury would have had to determine whether the Andin promotion was inherently distinctive or had acquired secondary meaning. Both of these legal terms reflect the idea that certain products or methods of packaging are associated with a single source in consumers’ minds. That association can be based on either of two reasons:

  • The look is inherently distinctive and unique to a single company, and consumers think all similar looks are from that company.
  • The look has been heavily advertised and sold for a substantial period of time.

Line Between Common & Distinct

This doesn’t mean any look can attain trade-dress protection simply because it’s heavily advertised. Commonly used designs or motifs by themselves, in a sense, are in the public or industry’s domain.

If Andin had simply used a red, heart-shaped box, it most likely couldn’t prevent other companies from using a similar or even identical promotion. A box shaped like a valentine is too generic or common for one manufacturer to claim an exclusive right to its use. Even a red, heart-shaped box that holds candy and a pendant probably wouldn’t earn trade-dress protection.

Combining common elements becomes protectible only when it’s done in a unique and distinctive way.

How to Prevent Problems

Trade dress remains a difficult area of law. There are rarely clear-cut answers to whether a packaging design has attained trade dress or whether a similar package infringes it. But if you’re familiar with the basics of the law, common sense and good business judgment can go long way toward preventing problems.

Whether it’s packaging or jewelry, a good rule of thumb is not to ignore the little red flags that go up when you see a design that closely resembles one you’ve seen before. If it resembles one you think is unique, one you immediately associate with another manufacturer and one marketed heavily by one company for many years, the little red flag should get a lot bigger.

If you have concerns, discuss them with your attorney before you place a large order. The attorney’s consultation fee will be very small in comparison to the cost of a full-blown dispute. Don’t be afraid to tell the potentially infringing company you have concerns about buying its product. The company may not even be aware of the possible infringement.

Most importantly, if you get a cease-and-desist letter from a company or its attorneys saying you’re selling designs or using a promotion motif for which the company claims exclusive rights, consult your attorney immediately.

– by William H. Donahue Jr.

William H. Donahue Jr. is an attorney practicing in New Jersey.

Andin International has sold a heart promotion to Zale Corp. for many years (see advertisement above). This year, Frederick Goldman sold essentially the same idea to Wal-Mart, as shown in the advertisement at right. Andin sued, citing trade-dress infringement. The two sides settled the dispute before it went to trial.

Copyright © 2001 by Bond Communications