Ninth Circuit Concludes Direct Copying Can Be Evidence of “Secondary Meaning” for Trade Dress Infringement 

By: Zach Schroeder and Courtney Moore*

The Ninth Circuit recently upheld a district court’s decision in favor of furniture designer Jason Scott Collection, Inc. (“JSC”) against Trendily Furniture, LLC, Trendily Home Collection, and Raul Malhotra (collectively, “Trendily”) finding Trendily liable for trade dress infringement for willfully copying, manufacturing, and selling identical JSC furniture pieces. The court concluded that JSC’s unique designs acquired secondary meaning in the eyes of consumers in the furniture market, particularly because of Trendily’s copying, and possessed protectable trade dress.

JSC designs high-end furniture hand-crafted by woodworkers in Indonesia. It began selling its uniquely decorative “weathered-teak” furniture to exclusive retailers in 2004. By 2016, JSC had created a well-known market for its high-end furniture—JSC had received awards for its furniture, pieces were highlighted in magazines and on social media, and pieces were regularly featured at furniture trade shows. In 2016, Trendily’s owner copied, manufactured, and sold identical JSC‑designed pieces. JSC filed suit for copyright infringement, trade dress infringement, and unfair competition.

The district court held a bench trial to determine whether JSC’s furniture had become sufficiently “distinct” in the market to garner trade dress protection.  Trade dress is not intrinsically protectable.  Instead, the party alleging trade dress infringement must show that the trade dress is inherently distinctive or has acquired secondary meaning in the market. The district court concluded that Trendily’s intentional copying served as substantiated proof that JSC’s furniture designs had acquired secondary meaning in the market. The district court reasoned that there could be no logical motive for the precise copying of JSC’s trade dress but for the intent to realize upon its secondary meaning in the market. Trendily appealed.

The Ninth Circuit concluded that JSC’s furniture designs had acquired secondary meaning: JSC continuously used the mark for five years; JSC’s pieces were showcased in trade shows; and JSC’s designs were featured in magazines and social media. The Ninth Circuit affirmed the district court’s conclusion that, in this instance, Trendily’s copying was proof that JSC’s designs had acquired secondary meaning because Trendily intentional attempted to exploit JSC’s goodwill in the furniture industry.

In affirming the district court, the Ninth Circuit helped clarify the instances when direct copying can constitute “secondary meaning” in the market. In these types of trade dress infringement cases, direct copying can be the catalyst to a trade dress infringement claim as it can support a finding of both “secondary meaning” in the market and a likelihood of confusion.  

*Courtney Moore is a summer associate in Snell & Wilmer’s Phoenix office and is not admitted to practice law. She is anticipated to graduate from Arizona State University College of Law in May 2024.