In an oft-quoted moment in the Supreme Court’s Wal-Mart v. Samara opinion, Justice Scalia articulated three types of trade dress: product packaging, which can be protectable from its earliest use if deemed inherently distinctive; product design, which is only ever protectable upon a showing of secondary meaning; and a third category, “some tertium quid that is akin to product packaging,” which is also capable of being inherently distinctive. As Professor Dustin Marlan sees it, Scalia coined the phrase to save face. He “needed a conceptual mechanism for distinguishing restaurant décor (previously held capable of inherent distinctiveness [in Two Pesos]) from product design (now considered incapable of such [in Wal-Mart]), without overruling the previous Two Pesos holding outright.” In so doing, Scalia conflated trade dress for services with product packaging in a way that has sowed confusion since 2000.
So what exactly is a tertium quid—Latin for “third thing”—and why should trade dress in that category be treated as capable of inherent distinctiveness? And how have courts perpetuated the vague, amorphous idea of tertium quid for more than 24 years without any real interrogation?
In his forthcoming article, Marlan takes a magnifying glass to the phrase, working backward to consider its derivation (alchemy; religion) and then forward from Wal-Mart to explicate every trade dress case that incorporates it. What he finds is fairly straightforward. Just about every case categorizing trade dress as tertium quid has at its heart what Marlan labels “service dress”: not product design, which is the shape of a tangible good; not product packaging, which is what a tangible good gets boxed inside; but rather experiential elements of branded services, such as restaurant décor, store layout, retail displays, employee uniforms, menu presentation, “look and feel,” and other aspects of design connected with services and the places in which they’re provided. Service dress is In-N-Out’s red and white diner-style setup, the layout of a Yankee candle display shelf, the cuffs and collars worn by Chippendale’s dancers, or the design of an Apple store from floor to ceiling. Mostly service dress is about protectability of spaces, rather than objects or symbols. The tertium quid is trade dress for services, and Marlan argues that it demands decidedly different treatment from trade dress for goods when it comes to assessing distinctiveness and protectability.
Why? The primary purpose of product packaging is usually a branding purpose—it’s designed to catch the eye, communicate source-indicating information, and improve commercial efficiency by distinguishing the brand from others and enabling consumers to find what they prefer quickly and consistently. It’s possible for product packaging, like word marks and logos, to do what a trademark does from its very first use. Product design, on the other hand, is far more likely to serve utilitarian and/or aesthetic purposes. It follows that product design faces more hurdles to registration: it may be deemed functional; it may fail to function as a mark; it may require substantial investment in the form of sales and look-for advertising before it comes to serve as a source indicator to consumers. Marlan argues factfinders should treat service dress with the same caution. It certainly isn’t akin to packaging, as Scalia claimed, because “a service…has no container, being an intangible concept without material exteriority.” Instead, like product design, service dress’ primary purpose is usually something other than source identification, such as user experience, efficiency, effectiveness, quality, cost, aesthetic appeal, or desirability. In marketing parlance, service dress takes the form of “touchpoints,” which consumers tend to value for non-source-indicating reasons. So service dress doesn’t deserve the free pass it has received since Wal-Mart.
Marlan advocates instead that trademark law treat service dress as incapable of inherent distinctiveness, requiring a user to establish “commercial significance prior to removing that touchpoint from the experiential commons.” The competitive interest in copying service dress, like the competitive interest in copying product design, is substantial and benefits consumers, new entrants, and the marketplace up the point when the service dress becomes clearly source-indicating. Requiring secondary meaning also gives competitors better notice of the scope of rights that might be asserted against them, lowering transaction costs and improving predictability. In addition, Marlan observes, trademark law lacks a consistent doctrinal test for determining inherent distinctiveness of nontraditional marks, leaving factfinders to rely heavily on intuition, so those determinations tend to be erratic and unpredictable. Determinations of secondary meaning are based on more robust information and track more objective indicators than determinations of inherent distinctiveness for trade dress.
In Tertium Quid Unveiled: Trade Dress and Service Design, Marlan gleans guidance from the field of service design and analyzes the entire set of federal “tertium quid” cases. His proposal is well-supported, persuasively argued, and far from radical, although it does require a walking-back of some case law from the last quarter-century. Once he reveals tertium quid trade dress for what it is—not something ineffable and unknowable, but simply service-related design elements—it becomes readily apparent that requiring secondary meaning would better serve the interests of fairness and competition.
