In Mana Products Inc. v. Columbia Cosmetics Mfg. Inc., the Court of Appeals for the Second Circuit held that neither the shape of plaintiff's cosmetic products nor their black color constituted protectible trade dress to which plaintiff could claim proprietary rights.

Plaintiff manufactured and sold at wholesale "private label" cosmetic products. Plaintiff's purchasers affixed their own brand names to the products and, thereafter, resold the products at retail. When the defendant, which had been a former distributor for plaintiff, began marketing its own private label cosmetics in containers that were similar in size, shape, color and overall appearance to plaintiff's products, plaintiff brought suit for trade dress infringement under Section 43(a) of the Trademark Act as well as for state unfair competition and dilution. The district court granted summary judgment in favor of the defendant, holding that the design of plaintiff's products did not function as a signifier of source.

In evaluating the district court's grant of summary judgment, the Second Circuit pointed out that it was plaintiff's burden to show either that its alleged trade dress is inherently distinctive or has acquired "secondary meaning" in the marketplace. While noting that summary judgment is usually not appropriate on the issue of inherent distinctiveness, the appellate court focused on plaintiff's admission that it had purchased the allegedly distinctive product containers from independent distributors "on the open market". Since other cosmetics distributors and retailers have, therefore, used the identical containers, the containers could not be viewed as inherently distinctive.

Plaintiff also claimed to have spent over $3 million advertising the product designs at issue and contended that such expenditure established that such designs had acquired "secondary meaning", i.e., primary significance as a source identifier in the marketplace. The court rejected this contention, noting that advertising expenditures are but one factor to be weighed in evaluating the existence of secondary meaning. Plaintiff's paltry (or non-existent) showing concerning such other criteria as consumer studies, unsolicited publicity and sales success, the court observed, weighed against a finding of secondary meaning.

The Second Circuit also rejected plaintiff's claim that the black color of its cosmetic containers alone constituted protectible trade dress. Again, the Second Circuit noted that black is commonly used by numerous other companies for similar cosmetics products, such that the black color of the products is equivalent to a "plain brown wrapper".