505 U.S. 763 (1992)
Taco Cabana, Inc., operates a chain of fast-food restaurants serving Mexican food.1 The first Taco Cabana restaurant opened in San Antonio in September 1978. By 1985 five more had opened in that city.2 Taco Cabana's Mexican trade dress features a festive eating atmosphere with interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. It also includes a stepped exterior in a vivid color scheme using top border paint and neon stripes, bright awnings and umbrellas.3
In December 1985, Two Pesos, Inc., opened a restaurant in Houston that adopted a motif very similar to Taco Cabana's trade dress. Two Pesos expanded rapidly in Houston and other markets but did not enter San Antonio.4 In 1986, Taco Cabana entered the Houston and Austin markets. It expanded into other Texas cities including Dallas and El Paso where Two Pesos was also operating.5
In 1987, Taco Cabana sued Two Pesos in the United States District Court for the Southern District of Texas. The suit alleged trade dress infringement under § 43(a) of the Lanham Act and theft of trade secrets under Texas common law. The case was tried to a jury.6 The jury answered five questions. Taco Cabana has a trade dress. Taken as a whole, the trade dress is nonfunctional. The trade dress is inherently distinctive. The trade dress has not acquired a secondary meaning in the Texas market. The alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services.7
The district court entered judgment awarding damages to Taco Cabana.8 It found that Two Pesos had intentionally and deliberately infringed the trade dress.9 The Court of Appeals for the Fifth Circuit affirmed the judgment.10 The Supreme Court granted certiorari to resolve a conflict among the courts of appeals.11
Whether the trade dress of a restaurant may be protected under § 43(a) of the Lanham Act based on a finding of inherent distinctiveness without proof that the trade dress has acquired secondary meaning?12
Section 43(a) of the Lanham Act protects qualifying unregistered trademarks and trade dress.13 Marks are classified in categories of generally increasing distinctiveness as generic, descriptive, suggestive, arbitrary, or fanciful.14 The latter three categories are inherently distinctive and entitled to protection because their intrinsic nature serves to identify a particular source.15 Descriptive marks may acquire distinctiveness through secondary meaning, but inherently distinctive marks do not require such proof.16 These principles apply equally to trade dress, which may be protected if it is inherently distinctive and nonfunctional.17
Yes. The jury specifically found that Taco Cabana possesses a trade dress that is inherently distinctive when taken as a whole and that the trade dress is nonfunctional.18 The same jury determined that the trade dress has not acquired a secondary meaning in the Texas market yet also found a likelihood of confusion on the part of ordinary customers.19 Because the trade dress is inherently distinctive, it is capable of identifying Taco Cabana as the source of its restaurant services, and section 43(a) therefore protects the trade dress without any requirement that secondary meaning be shown.20
The district court and the Court of Appeals correctly applied this rule when they entered and affirmed the judgment awarding damages to Taco Cabana on the basis of the jury's findings.21
Taco Cabana's inherently distinctive trade dress is protected under section 43(a) of the Lanham Act even without proof of secondary meaning, and the judgment of the Court of Appeals is therefore affirmed.22
Related opinions on this issue
Justice Scalia authored a separate concurrence noting his complete agreement with Justice Thomas's explanation that the language of § 43(a) and its common-law derivation are broad enough to embrace inherently distinctive trade dress.23 Scalia determined that Thomas's analysis was complementary to the Court's opinion and not inconsistent with it.24 On that basis Scalia concurred in the opinion of the Court.25
Justice Stevens concurred in the judgment and emphasized that the meaning of section 43(a) has been transformed by federal courts over the past few decades.26 Those courts created a federal cause of action for infringement of unregistered trademarks and trade dress that goes beyond the original narrow focus on false designation of geographic origin and passing off.27 Stevens observed that this expansion is consistent with the purposes of the statute and has been endorsed by Congress in subsequent legislation, including the Trademark Law Revision Act of 1988.28
He therefore joined the conclusion that secondary meaning is not required once inherent distinctiveness has been established, stressing stare decisis and the uniform national protection Congress ultimately approved.29
Justice Thomas concurred in the judgment and would have relied directly on the language of section 43(a) rather than moving between registration provisions and the unfair competition section.30 He concluded that inherently distinctive trade dress, like inherently distinctive trademarks, is entitled to a presumption that it represents the source of the product, so no showing of secondary meaning in fact is required.31 Thomas explained that at common law arbitrary or suggestive trade dress now receives the same protection as arbitrary or suggestive words or symbols.32 Judges have recognized that packaging and images can be as distinctive as verbal marks, limited only by imagination.
This rule applies under section 43(a) without regard to the rules that apply under the sections of the Lanham Act that deal with registration.33