top of page
  • Writer's pictureIRALR


This article has been authored by Yashika Kuntela, a fifth year law student at UPES, Dehradun.


Ever wondered how many times you have purchased an article for the reason of it being attractive in shape or configuration? Well, presumably numerous times. It is an undisputed fact that the design of a product has the capacity to manipulate consumers’ mind which helps the competitors to set up an edge in the market. Not only quality, but visual appearance also influences customer choice and helps the customers develop an association between the product and its source. This identification of source through visual appearance is known as ‘source identification’. This is one of the reasons, why the Indian Trademark Act, 1999 under section 2(zb) protects the configuration of goods as a trademark, provided such shape is devoid of functionality.

Similarly, in the United States it is protected under section 43(a) of Lanham Act, 1988. However, unlike United States, the Indian legislation does not provide any specialized provision for the protection of product configuration. Product configuration protection laws are vigilant in the United States as compared to India. An amendment/insertion to qualify protection under law shall be inherently distinctive. However, the jurisprudence to determine inherent distinctiveness of a configuration is still at the developmental stage.

Abercrombie Test (given in Abercrombie and Fitch Co. v Hunting World) is well established and recognized method across to determine inherent distinctiveness of a configuration for the grant of protection under the law. More the distinctiveness, stronger the protection is. But when it comes to non-conventional trademarks, particularly product configuration, there is nothing but a pool of conflicting opinions by court of laws. The constant tussle between American Courts is one example of such scepticism. However, the prime analytical issue that remains before the benches is ‘How to determine inherent distinctiveness of product configuration’ or ‘Whether Abercrombie test is an appropriate test to determine inherent distinctiveness of a product configuration?' or ‘How will one fit a product shape into any of Abercrombie’s classification?

For the convenience of the readers Abercrombie spectrum is attached herewith:

Increasing spectrum of distinctiveness

The Struggle of Courts to adopt an Appropriate Method

The case which got substantial attention initially is Two Pesos v Taco Cabana where the Supreme Court of America upheld the ruling of Fifth Circuit Court and acknowledged that the court was correct in the application of Abercrombie classification to determine the distinctiveness of fast-food Mexican restaurant trade dress. The Supreme Court, through this case, in a roundabout way held that Abercrombie classification is the correct approach to determine distinctiveness of trade dress.

Unlike the Supreme Court, Circuit courts of America have a contrary observation that led to a split between them. A series of tests have been formulated by different circuit courts to find out the distinctive character of product configuration trade dress and to further question the inappropriateness of traditional Abercrombie test. The Second Circuit Court for the first time dissented from the Supreme Court's view in Two Pesos, after a span of three years. The court went onto developing its own test called ‘The Knitwaves Test’ derived from the name of the case itself i.e., Knitwaves, Inc. v. Lollytogs Ltd. The principal argument given to make the application of Abercrombie test redundant was that the Knitwaves test grants protection to distinctive product configurations even though it never intended to serve source identification function. According to this test, protection is granted only when producers intent is qualified to use product configuration solely for source-identifying function. It could be put in simple words as “inherent distinctive configuration as per Abercrombie does guarantee source identification”.

Similarly, in Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd. the Third Circuit Court has not treated Two Pesos as a binding precedent, arguing that the issue in Two Pesos was more like a product packaging than product configuration itself and accordingly, not applicable to product configuration issues. Therefore, the Duraco test laid down two conditions for a product configuration to be inherently distinctive. First, it must serve as virtually exclusive identifying function for consumers, and second, the consumers must perceive a connection between product configuration and its source.

Furthermore, Fifth Circuit Court and the Court of Customs coined the Pebble Bleach Test and the Seabrook Test in the cases Pebble Beach Co. v. Tour 18 and Seabrook Foods, Inc. v. Bar-Well Foods Ltd respectively. Whereas under Pebble Bleach test, the court focused on uniqueness, distinctive visual impression and source-identifying capability of the product, on the other hand, Seabrook Test laid a list of conditions such as whether the design was common, unique or unusual in a particular field, a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods or capable of creating a distinct commercial impression.

Afterwards, in another leading case of Ashley Furniture Industries, Inc. Sangiacomo N.A. Ltd., the court rejected views of Circuit Courts that Abercrombie is inappropriate for product configuration which is inseparable from the product. The Court heavily relied upon Two Pesos and interpreted the restaurant trade dress being part of the product being sold at the restaurant and thus marked it as product configuration issue. The Court had also rejected source identification requirement in product configuration cases as given by the Circuit Courts. Another argument was that both trademark and trade dress (product packaging and configuration) have the sole purpose of protecting the goodwill and therefore, it would be prejudiced to apply different approach to both. The Court cited an example of Mango flavoured candy to show Abercrombie is well suited for configurations: Round shaped toffee- Generic; Mango shaped: Descriptive; Monkey-shaped: Suggestive; Star-shaped: Arbitrary and unique shaped: fanciful. But it is here to be pointed out that the scope of its application is very subjective. For example, how can the configuration of a car be arbitrary when it's shaped like a hamburger?

Critical Analysis

It is interesting here to note that all tests formulated by the Circuit Courts to substitute the improper framework of Abercrombie have one primary essential in common to prove distinctiveness, Source Identification. Now the question that arises here is 'whether arbitrary or fanciful configurations have the inherent capacity to identify the source?' If the answer is yes, there was no need to develop separate tests by circuit courts. The basis of this argument is that all those distinctive features which do not identify the source but granted protection after application of Abercrombie, shall remain in the public domain for healthy competition in the market. However, the question is still unanswered, and a vacuum exists on this point.


There are various conflicting opinions of American Courts for the application of Abercrombie test to determine inherent distinctiveness of a product configuration. The jurisprudence regarding the appropriate scheme to determine inherent distinctiveness is still at its evolution stage. The lack of an appropriate method may lead to rejection of protection to a legitimate applicant or can extend protection irrationally. Therefore, a method to determine distinctiveness shall be adopted as soon as possible.

bottom of page
ga('require', 'ipMeta', { serviceProvider: 'dimension1', networkDomain: 'dimension2', networkType: 'dimension3', }); ga('ipMeta:loadNetworkFields'); ga('send', 'pageview');