HAYWOOD S. GILLIAM, Jr., District Judge.
On August 8, 2017, the Court held a further case management conference with Plaintiff Morton Bassett L.P. ("Morton") and Defendant Organic Spices, Inc. ("Spicely") to discuss certain issues regarding the upcoming jury trial. See generally Dkt. No. 145 (transcript). During the proceedings, Morton's counsel stated that resolution of two issues would clarify the parties' meet-and-confer discussions in anticipation of trial. See id. at 21:16-22:6. Both issues relate to Morton's claim for trade dress infringement and false designation of origin in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(A). See Dkt. No. 62 ("SAC") ¶¶ 36-38. The first issue is whether Morton's trade dress is "a product design, packaging design, . . . both . . . or . . . ambiguous." See Joint Pretrial Conference Statement, Dkt. No. 122 ("JPCS") at 7-10. The second issue is whether the concept of "genericness" is applicable. See id. at 5-7.
Relying on Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), Spicely argues that this case does not unambiguously involve product-packaging trade dress. See JPCS at 8-10. In Wal-Mart, the Supreme Court distinguished product-packaging trade dress from product-design trade dress, finding that the former can be inherently distinctive, while the latter cannot. Compare id. at 212 ("The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.") with id. at 213 ("In the case of product design . . ., we think consumer predisposition to equate the feature with the source does not exist.") and id. at 216 ("[I]n an action for infringement of 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.") Moreover, the Court recognized that, on the margin, it could be difficult to distinguish product-packaging from product-design trade dress, and directed courts to classify ambiguous trade dress as the latter:
Id. at 215.
Spicely quotes this cautionary guidance from Justice Scalia, but fails to demonstrate that the instant case is a "close" case involving "ambiguous trade dress." See JPCS at 8-10. Spicely has presented no evidence that dissuades the Court from the commonsense conclusion that Morton's customers purchase its products to consume the spices contained inside the bottles, as opposed to for some other purpose, such as collecting the bottles. See Wal-Mart, 529 U.S. at 215; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 8:12.50 (4th ed.) (updated June 2017) (describing the court decisions since Wal-Mart as reflecting "a common sense approach in classifying trade dress as either product or package, asking what is the primary product that the buyer is purchasing"); see also Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F.Supp.2d 1165, 1176 (C.D. Cal. 2010) (finding that FIJI's bottle and label for mineral water constituted product-packaging trade dress). Spicely argues that "[t]he first of element of the claimed trade dress refers to the product as part of the package," see id. at 9, but that element merely indicates that the product is visible through the clear glass container, see SAC ¶ 14 ("A contemporary, clean round clear glass container through which the enclosed product is easily seen."). This unremarkable fact does not preclude the straightforward conclusion that this case involves product-packaging trade dress. See Fiji, 741 F. Supp. 2d at 1171, 1176 (classifying FIJI's asserted trade dress as product packaging under Wal-Mart, despite the bottle including a "transparent outer front label"). Likewise, the Court is unpersuaded by Spicely's argument that the use of the word "product" (as opposed to "packaging") by Morton's expert on consumer confusion has legal significance as to whether Morton's trade dress is classified as product packaging or product design. See JPCS at 9-10. And while Spicely claims to also sell empty spice jars, that is not relevant to whether the nature of Morton's asserted trade dress is ambiguous. See id. at 10. Accordingly, the Court holds that this case unambiguously involves product-packaging trade dress.
The present disagreement regarding the applicability of genericness principles is not the first time that the concept has arisen during this litigation. The Court granted (with leave to amend) Spicely's motion to dismiss Morton's trade dress infringement claim for failure to assert the defense of genericness:
Dkt. No. 55 at 10-11 ("MTD Order"). Morton subsequently amended its complaint to assert that its trade dress was "not generic." SAC ¶ 15.
Later, in the course of denying Spicely's motion for summary judgment, the Court rejected Spicely's argument that Morton could not show that its asserted trade dress was non-generic. Dkt. No. 89 ("MSJ Order") at 12-15. However, the Court only did so after noting that Spicely's argument relied on the test for inherent distinctiveness from Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69 (1992). MSJ Order at 12. The Court agreed with the trend, where the asserted trade dress involves product packaging or containers, to instead adopt the test for inherent distinctiveness from Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977). MSJ Order at 12. Nevertheless, in an abundance of caution, the Court addressed Spicely's argument, given that the Ninth Circuit briefly referenced genericness in the context of assessing the distinctiveness of trade dress. Id. at 12-15 (discussing Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998)).
Spicely contends that the issue for the jury is whether Morton's asserted trade dress "is (a) distinctive; (b) descriptive; or (c) generic for spice jars." JPCS at 7. Thus, Spicely is arguing that the jury should be instructed according to the Two Pesos test, despite this being a product-packaging trade dress case.
See MSJ Order at 9-10.
The Court reaffirms its view that the Seabrook test is better suited to assess inherent distinctiveness in product-packaging trade dress cases:
Id. at 9. Therefore, the Court finds that, consistent with the Ninth Circuit's model jury instructions, the jury should be instructed on inherent distinctiveness according to the Seabrook test, not the Two Pesos test. See Manual of Model Civil Jury Instructions for the District Courts of the Ninth Circuit 311 (2007 ed.) (updated July 2017); see also MSJ order at 11 & n.10 (describing typical application of Seabrook test); Fiji, 741 F. Supp. 2d at 1176 (applying Seabrook test to assess whether FIJI's water packaging was inherently distinctive).