Restaurant trade dress is possible to own when the claimed trade dress is distinctive and non-functional, think Taco Cabana. Restaurant trade dress can be so unique in the marketplace that distinctiveness is presumed with a finding of inherent distinctiveness. When not so obviously unique, distinctiveness also can be established with the more difficult proof of secondary meaning.

Remember 1992? The U.S. Supreme Court, in Two Pesos v. Taco Cabana, held that when restaurant trade dress is inherently distinctive there is no need for the more difficult proof of secondary meaning or acquired distinctiveness. Now, fast forward to December 2010. Apparently inspired by Taco Cabana’s short-cut to success, Happy’s Pizza, a more than 100 location pizza restaurant franchise from Farmington Hills, Michigan, asserted ownership of an inherently distinctive unregistered restaurant trade dress in an infringement action against competing Papa’s Pizza:

Unfortunately for Happy’s Pizza, after two years of litigation, not only did the district court not find the claimed trade dress to be inherently distinctive on summary judgment, it appears that Happy’s Pizza will never have the opportunity to try and establish distinctiveness through the acquisition of secondary meaning, because U.S. District Judge Marianne O. Battani of the Eastern District of Michigan rejected the claimed trade dress as generic, just two weeks ago in Happy’s Pizza Francise, LLC v. Papa’s Pizza, Inc.

If you’re wondering what elements made up the plaintiff’s claimed trade dress, here you go:

  1. Granite countertops and tabletops;
  2. Ceramic tiled walls and faux-Venetian plaster finished walls;
  3. Extensive neon lighting;
  4. Ceramic floors;
  5. Large back-lit menu with faux-Venetian plaster walls;
  6. Large, black industrial-style rugs;
  7. Back-lit pictures of menu items;
  8. Stainless steel shelving units behind the service counter; and
  9. Stacks of pre-folded pizza boxes and large coin-operated candy and bubble gum dispensers.

With respect to the necessary element of distinctiveness, the court ruled:

“Happy’s used generic elements to create a fast food restaurant setting otherwise indistinguishable from any others. Without the use of Happy’s name and logo within the design or on the menu, there is nothing that would alert the average consumer that they are in a Happy’s restaurant. Thus, Happy’s trade dress is generic and it has failed to provide sufficient evidence to establish this element.”

And with respect to the element of non-functionality, it found:

“Happy’s failed to provide evidence that these elements are not commonly used in the industry. It also failed to show that there are other alternatives for Papa’s to use in conducting its business or provide any evidence that protecting the trade dress would not hinder competition. Considering the elements as a whole, this total package is common to the fast food industry. Happy’s has not provided sufficient evidence to establish this element.”

Not having seen the interior of either pizza place, I’m still wondering whether there might have been a more creative and effective way to dress up the claimed trade dress description, your thoughts?