IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 13-30918

NOLA SPICE DESIGNS, L.L.C., 

 Plaintiff - Appellee

v.

HAYDEL ENTERPRISES, INCORPORATED, doing business as Haydel’s 

Bakery, 

 Defendant - Third Party Plaintiff - Appellant

RAQUEL DUARTE, 

 Third Party Defendant - Appellee

Appeals from the United States District Court

for the Eastern District of Louisiana

Before KING, GRAVES, and HIGGINSON, Circuit Judges.

STEPHEN A. HIGGINSON, Circuit Judge:

This case concerns the intersection between intellectual property rights 

and a Mardi Gras tradition. Haydel Enterprises appeals the district court’s 

grant of summary judgment to Nola Spice Designs and Raquel Duarte on 

United States Court of Appeals

Fifth Circuit

FILED

April 8, 2015

Lyle W. Cayce

Clerk

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claims of trademark infringement, unfair competition, trademark dilution,

copyright infringement, and unfair trade practices. We affirm. 

FACTS AND PROCEEDINGS

During Mardi Gras parades in New Orleans, parade “krewes” throw 

strands of plastic beads to onlookers, who, in turn, have created “bead dogs” by 

twisting these strands into the shape of a dog. Haydel Enterprises (“Haydel”)

owns Haydel’s Bakery in New Orleans, which makes and sells pastries and

cakes, including its popular king cake sold during the Mardi Gras season. In 

2008, Haydel commissioned an artist to design a mascot, which was named

“Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the 

United States Patent and Trademark Office (“PTO”) issued two trademark 

registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD 

DOG” and its bead dog design. The design consists of a “stylized dog wearing a 

beaded necklace, with the dog being formed by a series of spheres designed to 

look like Mardi Gras style beads. The dog has two eyes and a nose, all formed 

by smaller beads.” Both registrations cover king cake pastries, jewelry, and 

clothing (shirts, hats, and baby jumpsuits). Haydel sells these items in its New 

Orleans store, online, and through its licensee Fleurty Girl, a New Orleans 

retailer. In September 2012, Haydel obtained a certificate of copyright 

registration for its work titled “Bead Dog” in “photograph(s), jewelry design, 

2-D artwork, sculpture.” Haydel has acknowledged that its mascot “brings to 

mind the traditional bead dog” made of Mardi Gras beads. Nevertheless, 

Haydel asserts that its mascot and its use of the phrase “Mardi Gras Bead Dog” 

differ from the Mardi Gras tradition in key respects, which we will discuss. 

In May 2012, Raquel Duarte formed Nola Spice Designs, which sells 

jewelry and accessories, including necklaces and earrings featuring bead dog 

trinkets. Duarte twists each bead dog by hand from beads and wire, following 

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the same general method that she used to make bead dogs as a child during

Mardi Gras. By contrast, the bead dogs in Haydel’s jewelry are made of sterling 

silver. Duarte sells her jewelry on the Internet under titles that include the 

phrase “bead dog,” but not “Mardi Gras bead dog.” The appendix to this opinion 

contains images of Haydel’s bead dog sculpture, jewelry, and trademarked 

design, as well as images of Nola Spice’s jewelry and of a traditional bead dog 

trinket. 

Haydel learned of Duarte’s bead dogs through Haydel’s customers. In 

August 2012, Haydel sent Nola Spice Designs a letter noting Haydel’s 

trademark and copyright in “the bead dog design,” and demanding, inter alia, 

that Nola Spice Designs “remove from [its] website all display, mention of or 

reference to the bead dog design,” and “cease any and all promotion, sale, 

and/or use” of materials incorporating the bead dog design. In October 2012, 

Nola Spice Designs filed a complaint against Haydel seeking (1) a declaratory 

judgment that Nola Spice Designs’s activities do not violate the Lanham Act, 

15 U.S.C. § 1051 et seq., or any other trademark law; (2) the cancellation of 

Haydel’s trademarks under 15 U.S.C. § 1119; and (3) damages for unfair trade 

practices under the Louisiana Unfair Trade Practices Act (“LUTPA”), La. Rev.

Stat. Ann. § 51:1401 et seq. Haydel asserted counterclaims against Nola Spice

Designs and filed a third-party complaint against Duarte, seeking injunctive 

relief and damages. Specifically, Haydel asserted counterclaims for trademark 

infringement, unfair competition, and trademark dilution, all in violation of 

the Lanham Act, unfair trade practices under LUTPA, and copyright 

infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq. The 

parties also filed cross-motions for summary judgment. 

On August 28, 2013, the district court granted in part and denied in part 

the motion for summary judgment filed by Nola Spice Designs and Duarte 

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(collectively, “Nola Spice”) and denied Haydel’s motion for summary judgment.

Specifically, the district court granted summary judgment to Nola Spice on its 

claim for a declaratory judgment that it was not infringing Haydel’s 

trademarks, and the court cancelled those trademarks as unprotectable, but it

denied Nola Spice’s motion for summary judgment on its LUTPA claims. The 

district court also granted summary judgment to Nola Spice on Haydel’s claims 

of trademark infringement, unfair competition, trademark dilution, copyright 

infringement, and unfair trade practices. Haydel timely appealed the district 

court’s August 28 order. Nola Spice did not appeal the district court’s dismissal 

with prejudice of its LUTPA claim.

STANDARD OF REVIEW

We review de novo a district court’s grant of summary judgment, Xtreme 

Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009), 

applying the same standard as the district court, Gowesky v. Singing River 

Hosp. Sys., 321 F.3d 503, 507 (5th Cir. 2003). Summary judgment is 

appropriate “if the movant shows that there is no genuine dispute as to any 

material fact and the movant is entitled to judgment as a matter of law.” Fed.

R. Civ. P. 56(a). A genuine dispute of material fact exists when the “‘evidence 

is such that a reasonable jury could return a verdict for the nonmoving party.’” 

Royal v. CCC & R Tres Arboles, L.L.C., 736 F.3d 396, 400 (5th Cir. 2013) 

(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The moving 

party “‘bears the initial responsibility of informing the district court of the 

basis for its motion, and identifying those portions of [the record] which it 

believes demonstrate the absence of a genuine issue of material fact.’” E.E.O.C. 

v. LHC Grp., Inc., 773 F.3d 688, 694 (5th Cir. 2014) (alteration in original)

(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)). Once the moving 

party fulfills this responsibility, the non-moving party must “go beyond the 

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pleadings and by her own affidavits, or by the depositions, answers to 

interrogatories, and admissions on file, designate specific facts showing that 

there is a genuine issue for trial.” Id. (quoting Celotex Corp., 477 U.S. at 324)

(internal quotation marks omitted). Where the non-movant bears the burden 

of proof at trial, “the movant may merely point to the absence of evidence and 

thereby shift to the non-movant the burden of demonstrating by competent 

summary judgment proof that there is an issue of material fact warranting 

trial.” Transamerica Ins. Co. v. Avenell, 66 F.3d 715, 718–19 (5th Cir. 1995)

(per curiam). In reviewing a grant of summary judgment, we view all evidence 

in the light most favorable to the non-moving party and draw all reasonable 

inferences in that party’s favor. United States ex rel. Taylor-Vick v. Smith, 513 

F.3d 228, 230 (5th Cir. 2008). We may affirm a grant of summary judgment 

“based on any rationale presented to the district court for consideration and 

supported by facts uncontroverted in the summary judgment record.” 

Terrebonne Parish Sch. Bd. v. Mobil Oil Corp., 310 F.3d 870, 887 (5th Cir.

2002).

DISCUSSION

I. Trademark Infringement

Trademark infringement claims are governed by the Lanham Act, 15 

U.S.C. § 1051 et seq. That Act defines “trademark,” in relevant part, as: 

any word, name, symbol, or device, or any combination thereof . . . 

used by a person . . . to identify and distinguish his or her goods, 

including a unique product, from those manufactured or sold by 

others and to indicate the source of the goods, even if that source 

is unknown.

15 U.S.C. § 1127. To prevail on its claim of trademark infringement under the 

Lanham Act, Haydel must show (1) it possesses valid trademarks; and (2) Nola 

Spice’s use of Haydel’s trademarks creates a likelihood of confusion as to 

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source, affiliation, or sponsorship. Nat’l Bus. Forms & Printing, Inc. v. Ford 

Motor Co., 671 F.3d 526, 532 (5th Cir. 2012); 15 U.S.C. § 1114(1). The district 

court granted summary judgment to Nola Spice on Haydel’s claim of 

trademark infringement and entered a declaratory judgment of noninfringement on the ground that Haydel’s marks are not legally protectable. 

The court pretermitted discussion of likelihood of confusion. 

To be legally protectable, a mark must be “distinctive” in one of two ways. 

Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).

First, a mark is inherently distinctive if its intrinsic nature serves 

to identify a particular source. . . . Second, a mark has acquired 

distinctiveness, even if it is not inherently distinctive, if it has 

developed secondary meaning, which occurs when, in the minds of 

the public, the primary significance of a mark is to identify the 

source of the product rather than the product itself.

Wal–Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210–11 (2000) (internal 

quotation marks, citations, and alterations omitted). The registration of 

Haydel’s marks with the PTO is prima facie evidence that the marks are

inherently distinctive. See Amazing Spaces, Inc. v. Metro Mini Storage, 608 

F.3d 225, 237 (5th Cir. 2010); 15 U.S.C. § 1057(b) (registration of a mark on 

the principal register is prima facie evidence of the mark’s validity).1 However, 

Nola Spice may rebut this presumption by demonstrating that the marks are 

not inherently distinctive. Amazing Spaces, 608 F.3d at 237. The analysis that 

our circuit follows to determine whether a mark is inherently distinctive differs 

1 Haydel asserts, and Nola Spice does not dispute, that the PTO registered Haydel’s 

marks based on a finding of inherent distinctiveness, and not a finding of acquired 

distinctiveness. Indeed, there is no evidence in the record that the PTO examined evidence 

of secondary meaning. We therefore presume inherent distinctiveness. See 2 McCarthy on 

Trademarks and Unfair Competition § 11:43 (4th ed.) [hereinafter McCarthy on Trademarks]

(“[W]hen the USPTO registers a mark without requiring evidence of secondary meaning 

(‘acquired distinctiveness’), it is presumed to be inherently distinctive.”). 

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for word marks and design marks. Id. at 243. Therefore, we analyze separately 

the distinctiveness of Haydel’s word mark (“Mardi Gras Bead Dog”) and the 

distinctiveness of its design mark (the bead dog design).

A. Word Mark

To assess the distinctiveness of a word mark, our circuit relies on the 

spectrum set forth by Judge Friendly in Abercrombie & Fitch Co. v. Hunting 

World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Abercrombie divided marks into five

categories: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5)

fanciful. Id.2 While suggestive, arbitrary, and fanciful marks are inherently 

distinctive, generic marks cannot be distinctive, and descriptive marks are 

distinctive only if they have acquired “secondary meaning.” Sugar Busters LLC 

v. Brennan, 177 F.3d 258, 268 (5th Cir. 1999). In categorizing a term, we must 

examine the context in which the term is used. Union Nat’l Bank of Tex., 

Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 847 (5th 

Cir. 1990). We consider “how [the term] is used with other words,” “the 

products or services to which it is applied,” and “the audience to which the 

relevant product or service is directed.” Id. “[T]he question is, ‘What do the 

buyers understand by the word for whose use the parties are contending?’” Id. 

(quoting Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (Hand, 

J.)). Although “summary judgment is rarely appropriate” on the factual 

question of categorization, Xtreme Lashes, LLC, 576 F.3d at 232, we may affirm 

a grant of summary judgment where the “‘record compels the conclusion that 

the movant is entitled to judgment as a matter of law.’” Amazing Spaces, 608 

2 The Third Circuit has provided concise examples of what constitutes each type of 

mark: “(1) arbitrary or fanciful (such as ‘KODAK’); (2) suggestive (such as ‘COPPERTONE’); 

(3) descriptive (such as ‘SECURITY CENTER’); and (4) generic (such as ‘DIET CHOCOLATE 

FUDGE SODA’).” Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 472 (3d Cir. 

2005) (internal quotation marks and citation omitted). 

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F.3d at 234 (quoting Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. 

v. Smack Apparel Co. (Smack Apparel), 550 F.3d 465, 474 (5th Cir. 2008)). The 

district court found, and Nola Spice argues on appeal, that “Mardi Gras Bead 

Dog” is not entitled to trademark protection because it is generic, or 

alternatively, because it is descriptive and has not acquired secondary 

meaning. Haydel argues that “Mardi Gras Bead Dog” is suggestive as applied 

to its jewelry and arbitrary as applied to its clothing and king cakes. 

“A generic term is the name of a particular genus or class of which an 

individual article or service is but a member.” Amazing Spaces, 608 F.3d at 241 

(citation omitted); see also Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 

974 (8th Cir. 2006) (“A generic term . . . refers to the common name or nature 

of the article.”). “The test for genericness is whether the public perceives the 

term primarily as the designation of the article.” Soc’y of Fin. Exam’rs v. Nat’l 

Ass’n of Certified Fraud Exam’rs Inc., 41 F.3d 223, 227 (5th Cir. 1995) (internal 

quotation marks, citation, and alterations omitted).

The record evidence, read in the light most favorable to Haydel,

demonstrates that the term “Mardi Gras Bead Dog” refers to the figure of a 

dog made from Mardi Gras beads. David Haydel, Jr., testified that “[b]ead dog, 

beaded dog, a dog made of beads are all common terms for describing” a dog 

made from Mardi Gras-style beads. Dawn Turner, a Louisiana resident, 

submitted an affidavit stating that she has “childhood memories of making 

handmade bead dogs from broken Mardi Gras beads.” Similarly, Mary-Clare 

Manson stated in an affidavit that at Mardi Gras parades, her daughter 

learned from other children “how to twist the broken beads into the shape of a 

dog, which we have called bead dogs for many years.” Although these trinkets 

are sometimes described as “bead dogs” and not “Mardi Gras bead dogs,” Philip 

Weddle, the artist who created Haydel’s bead dog design, agreed at his 

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deposition that the terms “Mardi Gras” and “bead dog” “naturally go together:” 

“You know, it’s a bead dog. It’s kind of hard . . . not [to] put them together, 

Mardi Gras.” Indeed, the Copyright Office, in response to Haydel’s application 

for a copyright registration in its bead dog design, noted that “Mardi Gras bead 

dogs . . . have apparently become well-known and traditional parts of Mardi 

Gras.” The record evidence thus makes clear that the relevant public—those 

familiar with Mardi Gras traditions—perceives the term “Mardi Gras bead 

dog” primarily to refer to a dog made of Mardi Gras beads. However, Haydel

does not sell dogs made of Mardi Gras beads. Rather, Haydel sells silver

jewelry in the shape of bead dogs, clothing with the image of a bead dog, and 

king cakes containing or accompanied by bead dog figurines.3 On this record, 

therefore, the term “Mardi Gras Bead Dog” describes a characteristic of 

Haydel’s products, and not the products themselves. Nola Spice therefore has 

not carried its burden at summary judgment of demonstrating that “Mardi 

Gras Bead Dog” is generic as applied to Haydel’s jewelry, clothing, and king 

cake. 

The district court nevertheless properly classified Haydel’s mark as 

descriptive. “A descriptive term identifies a characteristic or quality of an 

article or service, such as its color, odor, function, dimensions, or ingredients.” 

Amazing Spaces, 608 F.3d at 241 (citation omitted). “Examples of descriptive 

marks would include Alo with reference to products containing gel of the aloe 

vera plant and Vision Center in reference to a business offering optical goods 

and services.” Id. We have noted that “the concept of descriptiveness must be 

3 Haydel’s lawyer stated to the district court that Haydel “[p]ut a bead dog [made of 

metal or ceramic] in a king cake with a ribbon, which is called a pull.” In addition, David 

Haydel, Sr. stated in an affidavit that Haydel baked a record-sized king cake on September 

22, 2010, and that “[e]very box with a king cake piece that was sold on [that day] contained 

a small statue of Haydel’s MARDI GRAS BEAD DOG mascot.” 

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construed rather broadly.” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 

F.2d 786, 792 (5th Cir. 1983) (internal quotation marks, alteration, and 

citation omitted), abrogated on other grounds by KP Permanent Make–Up, Inc. 

v. Lasting Impression I, Inc., 543 U.S. 111 (2004). A central inquiry to assess 

descriptiveness is the “imagination test,” which “seeks to measure the 

relationship between the actual words of the mark and the product to which 

they are applied.” Id. “If a word requires imagination to apply it to the product 

or service in question, it tends to show that the term as used is suggestive. On 

the other hand, if the word conveys information about the product, it is 

descriptive.” Union Nat’l Bank of Tex., 909 F.2d at 848. 

The record makes clear that the phrase “Mardi Gras Bead Dog” conveys 

information about Haydel’s clothing, jewelry, and king cake. The bead dog 

design embodied in each of these products is, in Haydel’s words, a “rendering 

of the old time bead dog.” In addition, Haydel’s own public statements closely 

link these products to the traditional Mardi Gras bead dog. Haydel advertises 

its clothing on its website as “Mardi Gras Bead Dog parade gear,” next to a 

description of the Mardi Gras tradition of twisting beads into the shape of a 

dog. Likewise, Haydel advertises its jewelry as a way to “[s]how your Mardi 

Gras spirit year round.” Fleurty Girl, which sells Haydel’s jewelry pursuant to 

a license, published the following advertisement: “In New Orleans, you can 

twist your Mardi Gras beads a certain number of ways and make what we call 

a Bead Dog. Now available for the first time ever in sterling silver.” These 

statements make clear that the bead dog image is a central aspect of Haydel’s 

clothing and jewelry. Similarly, the use of “Mardi Gras bead dog” in connection 

with king cake, a popular Mardi Gras tradition, conveys information about the 

bead dog figurine inside or accompanying the king cake. No reasonable juror 

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could find that imagination is required to link Haydel’s clothing, jewelry, and 

king cake to the phrase “Mardi Gras bead dog,” as Haydel uses that phrase. 

A second test to determine descriptiveness is “whether competitors 

would be likely to need the terms used in the trademark in describing their 

products.” Zatarains, 698 F.2d at 793 (internal quotation marks and citation 

omitted). An article in a magazine published by Haydel describes the 

traditional bead dog as “a fond memory of Mardi Gras’ past and symbol of the 

City’s youth.” Another magazine article refers to the traditional bead dog as 

“an iconic Mardi Gras symbol.” Given the bead dog’s popularity and its close

connection to Mardi Gras, common sense indicates that other vendors would 

need to use the term “Mardi Gras bead dog” to describe their own Mardi Grasthemed clothing, accessories, and baked goods containing the image of a bead 

dog. See id. (“Common sense indicates that in this case merchants other than 

Zatarain’s might find the term ‘fish fry’ useful in describing their own 

particular batter mixes.”) 

In response to compelling evidence of descriptiveness, Haydel fails to 

identify evidence raising a genuine factual issue as to the word mark’s inherent 

distinctiveness. Haydel argues that its word mark must be suggestive as 

applied to jewelry because Nola Spice conceded in its motion for summary 

judgment that “Haydel does not make and sell bead dogs.” However, that 

statement at most reflects that the phrase “Mardi Gras bead dog” is not generic

as applied to Haydel’s merchandise. Indeed, other phrases conveying a 

product’s shape have been found to be descriptive. See Vox Amplification Ltd. 

v. Meussdorffer, No. 13-4922, 2014 WL 558866, at *6 (E.D.N.Y. Feb. 11, 2014) 

(“‘Teardrop[,]’ . . . used in conjunction with a teardrop-shaped instrument body, 

is clearly descriptive.”), adopted, – F. Supp. 3d –, 2014 WL 4829578 (E.D.N.Y. 

2014); In re Carlson Dolls Co., 31 U.S.P.Q. 2d 1319, at *2 (T.T.A.B. 1994) 

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(finding that the name “Martha Washington” is descriptive of a doll intended 

to represent the historical figure Martha Washington).

Also unpersuasive is Haydel’s argument that its word mark is arbitrary 

as applied to clothing and king cake. Arbitrary marks “bear no relationship to 

the products or services to which they are applied.” Amazing Spaces, 608 F.3d 

at 241 (citation omitted); see also Union Nat’l Bank of Tex., 909 F.2d at 845 

(“[T]he term ‘arbitrary’ refers to ordinary words which do not suggest or 

describe the services involved.”). Haydel notes that “Apple” is commonly 

described as an arbitrary mark in connection with computers, even though an 

Apple computer displays the image of an apple. See Sport Supply Grp., Inc. v. 

Columbia Cas. Co., 335 F.3d 453, 460 n.7 (5th Cir. 2003). However, a mark’s 

categorization under the Abercrombie typology depends on the context in which 

it appears and on the nature of the products sold. See Union Nat’l Bank of Tex., 

909 F.2d at 847. Apple Computer sells electronic products, which bear no 

relationship to the fruit. By contrast, Haydel’s public statements make clear 

that it is marketing Mardi Gras-related merchandise; the bead dog image on 

its clothing and the bead dog figurine inside or accompanying its king cake are 

part of and describe the product being sold. No reasonable juror could therefore

conclude that the phrase “Mardi Gras bead dog” “bear[s] no relationship” to 

Haydel’s clothing and king cake. Amazing Spaces, 608 F.3d at 241 (citation 

omitted). Because the record compels the conclusion that Haydel’s word mark 

is descriptive as applied to jewelry, clothing, and king cake, the mark is legally 

protectable as a source identifier only if it has acquired secondary meaning, 

which we discuss below. 

B. Design Mark

We now analyze the distinctiveness of Haydel’s design mark, which the 

PTO defined as “a stylized dog wearing a beaded necklace, with the dog being 

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formed by a series of spheres designed to look like Mardi Gras style beads. The 

dog has two eyes and a nose, all formed by smaller beads.” 

While the Abercrombie test determines the inherent distinctiveness of 

word marks, we recently embraced the Seabrook Foods test to determine the 

inherent distinctiveness of a design mark, although we did not “go so far as to 

hold that the Abercrombie test is eclipsed every time a mark other than a word 

is at issue.” Amazing Spaces, 608 F.3d at 243. To assess inherent 

distinctiveness, the Seabrook Foods test asks: 

[1] whether it was a “common” basic shape or design, [2] whether 

it was unique or unusual in a particular field, [3] whether it was 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 [4] whether it was 

capable of creating a commercial impression distinct from the 

accompanying words.

Id. at 232 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 

1344 (C.C.P.A. 1977)).4 We have noted that “[t]he first three of the Seabrook 

Foods ‘questions are merely different ways to ask whether the design, shape 

or combination of elements is so unique, unusual or unexpected in this market 

that one can assume without proof that it will automatically be perceived by 

customers as an indicator of origin—a trademark.’” Id. at 243–44 (internal 

quotation marks omitted) (quoting I.P. Lund Trading ApS v. Kohler Co., 163 

F.3d 27, 40 (1st Cir. 1998) (quoting 1 McCarthy on Trademarks § 8:13)). If not, 

4 This case does not require analysis of the fourth question in the Seabrook Foods test, 

which “by its terms applies only when a party seeks trademark protection for a background 

design typically accompanied by words.” Amazing Spaces, 608 F.3d at 243 n.14. We further 

note that Nola Spice, in relying on the Seabrook Foods test, does not argue that the bead dog 

design in Haydel’s products is incapable of inherent distinctiveness as “product design” trade 

dress. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 207 (2000) (analyzing a claim 

of infringement of unregistered trade dress).

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then the mark is not inherently distinctive and is protectable only upon a 

showing of secondary meaning. Id. at 247. We have also found useful the 

following language from the Restatement: “The manner in which a symbol or 

design is used . . . is relevant to the likelihood that it will be perceived as an 

indication of source. In some instances a design is likely to be viewed as mere 

ornamentation rather than as a symbol of identification.” Restatement (Third) 

of Unfair Competition § 13 cmt. d; Amazing Spaces, 608 F.3d at 246; see also 1 

McCarthy on Trademarks § 3:3 (“Usually, if when viewed in context, it is not 

immediately obvious that a certain designation is being used as an indication 

of origin, then it probably is not. In that case, it is not a trademark.”).

We measure the distinctiveness of a design mark with reference to the 

market in which the mark is used, although uses beyond that market are also 

relevant. See Amazing Spaces, 608 F.3d at 245 n.18 (framing the inquiry as 

whether the design mark “identifies and distinguishes Amazing Spaces’s selfstorage services from others’ self-storage services,” while noting that “[t]his 

does not mean . . . that we must blind ourselves to uses beyond the self-storage 

services industry”). In evaluating distinctiveness, our circuit and other courts

have considered evidence of third-party use of similar marks. See id. at 232

(noting that “the same or a similar five-pointed star was used in commerce in 

at least 63 different industries and businesses on buildings, property, and as 

part of logos and on the buildings of at least 28 other self-storage locations”

(internal quotation marks and citation omitted)); see also Seabrook Foods, 568 

F.2d at 1345 (noting “evidence of third-party uses and registrations of similar

marks on frozen foods, indicating that Seabrook’s ‘oval’ design is not unique in 

this field”); Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985) 

(applying Seabrook Foods and affirming a grant of summary judgment on a 

common law trademark claim on the ground that the mark—a red heart affixed 

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to the left breast of a teddy bear—was not inherently distinctive, noting that 

“[t]he record contains pictures of, and references to, an abundance of plush 

animals, including many teddy bears, that sport heart designs on their chests 

or other parts of their anatomy”).

To prevail on summary judgment, Nola Spice must offer sufficient 

evidence both to overcome the presumption of inherent distinctiveness that 

accompanies Haydel’s registration, and to compel the conclusion that Haydel’s 

design mark is not inherently distinctive as a matter of law. See Amazing 

Spaces, 608 F.3d at 234. A first step is to define the relevant market. Haydel 

defines the relevant market as one for pastries, clothing, and jewelry, while 

Nola Spice argues that the market is one for “bead dogs.” We believe the 

market is appropriately defined as one for Mardi Gras-themed products. This 

definition is consistent with advertising of Haydel’s products, which makes 

clear that Haydel is selling Mardi Gras-themed merchandise to an audience 

familiar with Mardi Gras traditions. See generally A.J. Canfield Co. v. 

Honickman, 808 F.2d 291, 303 (3d Cir. 1986) (recognizing the importance of 

consumer understanding to determining the relevant product genus). Haydel 

describes its clothing as “Mardi Gras Bead Dog parade gear.” Haydel’s jewelry 

is advertised as a traditional bead dog cast in sterling silver, and as a way to 

“[s]how your Mardi Gras spirit year round.” As Haydel acknowledges, king 

cake is also a Mardi Gras tradition. We therefore must consider whether 

Haydel’s bead dog design is “so unique, unusual or unexpected” in the market 

for Mardi Gras-themed merchandise that it “will automatically be perceived 

by customers as an indicator of origin.” Amazing Spaces, 608 F.3d at 243–44. 

We may also consider uses of bead dog designs beyond that market, given that 

a “[c]ommonplace . . . design[’s] . . . appearance on numerous products makes 

it unlikely that consumers will view [it] as distinctive of the goods or services 

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of a particular seller.” Restatement (Third) of Unfair Competition § 13 cmt. d; 

Amazing Spaces, 608 F.3d at 245 n.18.

The record is replete with evidence that Haydel’s design is substantially 

similar to the traditional bead dog that parade-goers have long crafted from 

Mardi Gras beads. Haydel describes its design mark as “a rendering of the old 

time bead dog, jazzed up for the 21st century.” In its application for a copyright 

registration for its bead dog design, Haydel acknowledged that the image 

“brings to mind the traditional bead dog.” Indeed, David Haydel, Jr. testified 

that every bead dog that could be made would “look like” Haydel’s trademarked 

design. Ryan Haydel likewise testified that there was not “any other way to 

make a bead dog” besides Haydel’s bead dog design. An article published in the 

magazine Rally to Rescue describes Haydel’s design mark as taking “the form 

of an iconic Mardi Gras symbol: the bead dog.” In addition to these statements, 

the record contains various images of traditional bead dogs that are similar to 

Haydel’s design. These include a photograph of a bead dog trinket on an artist’s

weblog; a photograph of a bead dog crafted by Duarte from Mardi Gras-style 

beads during her deposition, which Haydel acknowledges is a traditional bead 

dog trinket; and still shots from a YouTube.com video, titled Boudreaux the 

BeadDog, featuring a cartoon bead dog. 

Haydel argues that its design is distinct from a traditional bead dog 

because its design has eyes, a nose, a tail, and a necklace. However, the cartoon 

in Boudreaux the BeadDog also has eyes, a nose and a tail. Other images in 

the record depict dog trinkets made of beads and wearing a “necklace,” which 

may be described as a collar. At most, the eyes, nose, tail, and collar on Haydel’s 

design are a mere “refinement” of the traditional bead dog, which is a wellknown image to those who celebrate Mardi Gras. See Wiley, 762 F.2d at 142

(“The fact that Wiley’s alleged mark is a red heart, permanently affixed to the 

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left breast of a teddy bear does not . . . serve to distinguish [plaintiff’s] use of 

the design from others’ uses of hearts on other stuffed animals. These 

characteristics, even if they in combination could be deemed unique, are ‘mere 

refinement[s] of a commonly-adopted and well-known form of 

ornamentation . . . .’” (emphasis in original) (quoting Seabrook Foods, 568 F.2d 

at 1344)). Given the similarity between Haydel’s design mark and a traditional 

Mardi Gras bead dog, no reasonable juror could conclude that Haydel’s mark 

is “so unique, unusual or unexpected” when used in connection with Mardi 

Gras-themed merchandise that it would “automatically be perceived by 

customers as an indicator of origin.” Amazing Spaces, 608 F.3d at 243–44.

Hence, Haydel’s design mark, like its word mark, is not inherently distinctive 

and may be protected only if it has acquired secondary meaning. 

C. Secondary Meaning

“Secondary meaning occurs when, in the minds of the public, the primary 

significance of a mark is to identify the source of the product rather than the 

product itself.” Id. at 247 (internal quotation marks and citations omitted). In 

other words, “[t]he mark must denote to the consumer a single thing coming 

from a single source to support a finding of secondary meaning.” Zatarains, 

698 F.2d at 795 (internal quotation marks and citation omitted). The district 

court found that even if Haydel’s word and design marks were descriptive and

not generic, there was no factual issue as to whether these marks had acquired 

secondary meaning. 

Because Nola Spice has demonstrated that Haydel’s marks are 

descriptive, rebutting the presumption of inherent distinctiveness arising from 

Haydel’s registrations, Haydel bears the burden of establishing secondary 

meaning at trial. See Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 

567 (5th Cir. 2005) (“Registration is prima facie proof that the registered mark 

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is distinctive. However, this presumption can be overcome by showing that the 

mark is merely descriptive. The burden then shifts to the registrant to prove 

that its mark has secondary meaning.” (citations omitted)); American Heritage 

Life Insurance Company v. Heritage Life Insurance Company, 494 F.2d 3, 12 

n.9 (5th Cir. 1974) (noting that where the mark was descriptive at most, but 

registration appeared to have been based on a finding of arbitrariness, the 

burden of showing secondary meaning rested with the putative mark holder), 

abrogated on other grounds by B & B Hardware, Inc. v. Hargis Indus., Inc., No. 

13-352, – S. Ct. –, 2015 WL 1291915 (2015); 20th Century Wear, Inc. v. 

Sanmark-Stardust Inc., 747 F.2d 81, 88 n.8 (2d Cir. 1984) (“We hold . . . that 

in the absence of evidence that the Patent and Trademark Office registered the 

mark because of its secondary meaning, 15 U.S.C. § 1052(f), registration does 

not shift the burden of proving a lack of secondary meaning onto the 

defendant.”). In the summary judgment context, Nola Spice may merely point 

to an absence of evidence of secondary meaning, thus shifting to Haydel the 

burden of demonstrating by competent summary judgment proof that there is 

a genuine issue of fact warranting trial. See Transamerica Ins. Co., 66 F.3d at 

718–19.

The burden of demonstrating secondary meaning “is substantial and 

requires a high degree of proof.” Test Masters Educ. Servs., 428 F.3d at 567.

The determination of secondary meaning is “primarily an empirical inquiry,” 

informed by the following factors: 

(1) length and manner of use of the mark or trade dress, (2) volume 

of sales, (3) amount and manner of advertising, (4) nature of use of 

the mark or trade dress in newspapers and magazines, (5) 

consumer-survey evidence, (6) direct consumer testimony, and (7) 

the defendant’s intent in copying the trade dress [or mark].

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Amazing Spaces, 608 F.3d at 248 (internal quotation marks and citation 

omitted). “While none of these factors alone will prove secondary meaning, in 

combination they may establish the necessary link in the minds of consumers 

between a product and its source.” Zatarains, 698 F.2d at 795. Although 

secondary meaning is a question of fact, summary judgment may be upheld if 

the record “compels the conclusion that the movant is entitled to judgment as 

a matter of law.” Smack Apparel, 550 F.3d at 474; Amazing Spaces, 608 F.3d 

at 248–50 (affirming grant of summary judgment where plaintiff failed to raise 

a genuine issue of fact on secondary meaning).

As to the first factor for assessing secondary meaning, Haydel began 

using its marks in October 2008, when it placed a statue of its mascot in front 

of its bakery, three-and-a-half years before Nola Spice began selling bead dog 

jewelry. Haydel began using its marks in connection with the sale of jewelry, 

clothing, and king cake in April 2009. This duration of use is relatively brief

and does not alone raise a factual issue for trial with respect to secondary 

meaning. See Amazing Spaces, 608 F.3d at 248 (finding an absence of 

secondary meaning, as a matter of law, where the mark was used for ten years);

Bank of Tex. v. Commerce Sw., Inc., 741 F.2d 785, 788 (5th Cir. 1984) (finding 

an absence of secondary meaning despite nine years of use, and noting that 

“[a]lthough one party may have been successful in imbuing a name with 

secondary meaning in three short years, that does not mean that length of time 

alone is sufficient to establish secondary meaning”). As for sales volume, 

Haydel’s financial records reflect that it sold bead dog-related items worth

approximately $30,500 between January 2007 and May 2013. These sales

include approximately 80 clothing items and 300 jewelry items. The record 

does not reflect the number of king cakes that Haydel sold in connection with 

its marks. Haydel’s sales are low compared to the sales of products bearing 

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marks that we have found to have secondary meaning. See Zatarains, 698 F.2d 

795–96 (holding that the district court’s finding of secondary meaning was not 

clearly erroneous where Zatarain’s sold 916,385 cases of Fish-Fri between 1964 

and 1979); Smack Apparel, 550 F.3d at 472, 478 (affirming summary judgment 

to mark holders on secondary meaning where recent sales of products bearing 

the marks exceeded $93 million). 

With respect to the third factor, the “amount and manner of advertising,”

David Haydel, Sr. stated in an affidavit that Haydel spent more than $594,000 

between October 2008 and August 2013 on “the development and promotion 

and expanding the use” of Haydel’s bead dog mascot. However, David Haydel 

did not specify how much of this money was spent on the “development” of the 

mascot, which may not have affected public perception of the mark. As for

promotion and advertising, “spending substantial amounts of money does not 

of itself cause a mark or trade dress to acquire secondary meaning.” Pebble 

Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 541 (5th Cir. 1998), abrogated on 

other grounds by TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 

(2001). The relevant question “is not the extent of the promotional efforts, but 

their effectiveness in altering the meaning of [the mark] to the consuming 

public.” Zatarains, 698 F.2d at 795 (internal quotation marks and citation 

omitted); see also Amazing Spaces, 608 F.3d at 248 (finding an absence of 

secondary meaning as a matter of law even though plaintiff had spent nearly 

$725,000 in advertising). Haydel’s most significant promotional effort appears 

to have been “Paws on Parade,” an exhibit coordinated with the Louisiana 

Society for the Prevention of Cruelty to Animals (“LA/SPCA”) to raise 

awareness about animal welfare. Some 74 bead dog sculptures, each about 54 

inches long and 42 inches tall, were displayed throughout New Orleans from 

January to September 2012. Haydel donated the mold to create the sculptures, 

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which embody Haydel’s design mark. The sculptures were painted by New 

Orleans artists and displayed next to a plaque with various names, including 

the LA/SPCA, Haydel, the artist, and the organization that sponsored the 

sculpture. 

The Paws on Parade exhibit has little probative value on the question of 

secondary meaning. The statues do not feature the word mark “Mardi Gras 

Bead Dog.” Although the statues embody Haydel’s design mark, the record 

does not raise an inference that the exhibit led the consuming public to 

associate that mark with a single source. See Zatarains, 698 F.2d at 795. In 

evaluating the effectiveness of advertising, we have considered the context in 

which the mark appears. See Amazing Spaces, 608 F.3d at 248–49. Haydel’s 

name on the plaque is no more prominent than names of other people and 

organizations involved in the exhibit. In addition, David Haydel, Jr. conceded 

that a person could read the plaques only by approaching the sculptures, and 

not from a moving vehicle. Two Nola Spice customers stated that that they had 

seen the Paws on Parade statues or photos of these statues, and that they had 

not known that these statues “were associated with Haydel’s Bakery or any 

store or artist in particular.” One of the customers stated that she “thought it 

was simply a Mardi Gras themed art project.” The exhibit’s short duration

further limits its potential effect. See Test Masters Educ. Servs. v. Singh, 46 F. 

App’x 227, at *4 (5th Cir. 2002) (per curiam) (noting that “[t]he probative value 

of advertising depends on the presence of data regarding its reach, frequency, 

and duration”). 

Haydel’s promotional efforts also include the placement, beginning in 

October 2008, of one or two bead dog statues outside its bakery, atop a pedestal 

that reads “Haydel’s Mardi Gras Bead Dog.” David Haydel, Jr. testified that 

“hundreds of people” take pictures with the bead dog statue every day.

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However, there is no evidence that the sculptures led consumers to associate 

the design and word marks only with Haydel or another single source. See 

Amazing Spaces, 608 F.3d at 248 (“In considering th[e] evidence [of secondary 

meaning], the focus is on how it demonstrates that the meaning of the mark or

trade dress has been altered in the minds of consumers.” (quoting Pebble Beach 

Co., 155 F.3d at 541)). Indeed, Haydel’s inclusion of its own name before “Mardi 

Gras Bead Dog” on the pedestal suggests a generic use of that phrase. See 2 

McCarthy on Trademarks § 15:52 (“Use of a term in its descriptive sense or in 

a nontrademark sense is not evidence of secondary meaning.” (footnotes 

omitted)); see also E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 

200 (3d Cir. 2008) (finding that use of the phrase “Palmer’s Cocoa Butter 

Formula” was not probative on the question of whether the phrase “Cocoa 

Butter Formula” had acquired secondary meaning). In addition, the exposure 

of a single sculpture in a permanent spot is necessarily limited. Furthermore, 

Haydel does not claim trademarks in connection with sculptures, but rather in 

connection with clothing, jewelry, and king cake. Given the bead dog’s 

popularity in New Orleans and the similarities between Haydel’s design and a 

traditional bead dog, even a consumer who associated the large bead dog 

sculptures with a single source would not automatically associate other 

merchandise bearing a bead dog image with a single source. See Genesee 

Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 143 n.3 (2d Cir. 1997) (noting 

that secondary meaning “depends on whether a significant number of 

prospective purchasers understand the term when used in connection with the 

particular kinds of goods involved in the registration certificate as indicative 

of an association with a specific entity”). With respect to clothing, jewelry, and 

king cake, Haydel’s promotion of its marks is limited. Haydel advertised that

merchandise on its website and in Mambo Beat, its annual magazine. In 2010, 

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Haydel baked two record-sized king cakes and included a “small statue” of its 

mascot with each piece of cake sold to the public. However, the record does not 

reflect the effectiveness of this one-day promotional event in creating an 

association in the minds of consumers between Haydel and its bead dog design. 

Press coverage of Haydel’s marks, the fourth factor in the analysis of 

secondary meaning, is also slim. Two short online articles about Paws on 

Parade include photographs of the statues and mention that Haydel provided 

the mold. Haydel’s magazine Mambo Beat and a magazine titled Rally to 

Rescue published longer articles that describe Paws on Parade and include

Haydel’s design and word marks, but there is no evidence of these magazines’ 

circulation or of their impact on public perception. Haydel does not identify any 

evidence of third-party media coverage of its marks in connection with 

clothing, jewelry, or king cake. 

Haydel argues that Nola Spice’s intent in copying Haydel’s marks 

supports a finding of secondary meaning. However, Nola Spice did not use 

Haydel’s word mark, “Mardi Gras Bead Dog.” As for Haydel’s design mark, 

Haydel’s discussion of secondary meaning does not identify evidence it believes 

demonstrates Nola Spice’s intent to copy that mark. Elsewhere in its briefs, 

Haydel points to evidence that Duarte briefly posted images of statues from 

the Paws on Parade exhibit on Nola Spice’s webpages on Facebook.com, 

Pinterest.com, and Twitter.com. However, the record does not support an 

inference that Duarte knew Haydel provided the mold for these statues, or that 

she intended to copy Haydel’s design in crafting her bead dog jewelry. With 

respect to the remaining factors, Haydel does not offer any consumer testimony 

or survey evidence. While survey evidence is not required to establish 

secondary meaning, it is “‘the most direct and persuasive way of establishing 

secondary meaning.’” Amazing Spaces, 608 F.3d at 248 (quoting Zatarains, 698 

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F.2d at 795). We have cited one scholar’s observation that “‘in a borderline case 

where it is not at all obvious that [a] designation has been used as a mark, 

survey evidence may be necessary to prove trademark perception.’” Id. at 249 

(citing 1 McCarthy on Trademarks § 3:3). 

In light of the above factors, we agree with the district court that Haydel 

failed to raise a fact issue as to whether its design and word marks acquired 

secondary meaning. The overwhelming evidence demonstrates that Haydel’s 

marks are not distinctive and therefore not protectable. Because a mark’s legal 

protectability is an element of a trademark infringement claim, the district 

court properly granted summary judgment to Nola Spice on its claim for a 

declaratory judgment that it was not infringing Haydel’s marks. The court also 

properly granted summary judgment to Nola Spice on Haydel’s counterclaim 

of trademark infringement. The district court properly pretermitted discussion 

of likelihood of confusion. 

II. Cancellation of Trademark Registrations

A court may cancel the registration of a trademark that it determines is 

not distinctive. See 15 U.S.C. § 1119 (“In any action involving a registered mark 

the court may . . . order the cancellation of registrations . . . .”); see also Xtreme 

Lashes, LLC, 576 F.3d at 232 (“[I]f the mark is found to be either generic or 

descriptive and lacking secondary meaning, a court may cancel it.”). The 

district court canceled Haydel’s word mark and design mark registrations for 

all three classifications—clothing, jewelry, and king cake pastries—based on 

the court’s findings that the marks were generic, or, alternatively, descriptive 

without secondary meaning. Cancellation of Haydel’s word and design marks 

was proper because the record evidence compels the conclusion that these

marks are descriptive of Haydel’s products but lack secondary meaning.

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III. Unfair Competition 

The district court granted summary judgment to Nola Spice on Haydel’s 

counterclaim of false designation of origin in violation of Section 43(a) of the 

Lanham Act, which prohibits certain types of unfair competition. 15 U.S.C. 

§ 1125(a); Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 29 

(2003). The relevant provision of Section 43(a) creates a cause of action against 

a person who, in connection with goods or services,

uses in commerce any word, term, name, symbol, or device, or any 

combination thereof, or any false designation of origin, false or 

misleading description of fact, or false or misleading 

representation of fact, which . . . is likely to cause confusion, or to 

cause mistake, or to deceive as to the affiliation, connection, or 

association of such person with another person, or as to the origin, 

sponsorship, or approval of his or her goods, services, or 

commercial activities by another person . . . .

15 U.S.C. § 1125(a)(1)(A). Haydel argues that Nola Spice violated Section 43(a) 

by engaging in “passing off,” which “occurs when a producer misrepresents his 

own goods or services as someone else’s.” Dastar Corp., 539 U.S. at 27 n.1. 

Haydel points to the following record evidence in support of its claim. As of

August 14, 2012, Nola Spice’s Facebook.com page featured a photograph of 

Duarte posing with a bead dog sculpture from the Paws on Parade exhibit.

Only the sculpture’s ears, eyes, and part of its nose are visible in the 

photograph. Duarte later posted the same photograph on Nola Spice’s pages on 

Twitter.com and Pinterest.com. As of September 7, 2012, Duarte had replaced 

the photograph on Facebook.com with a photograph of herself posing with 

another Paws on Parade statue, which has the head of a crawfish and the body 

of a bead dog. Next to the photograph is an image of a poster, created by 

Haydel, portraying about thirty miniature versions of the bead dog sculptures 

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from Paws on Parade. None of these photographs or images includes Haydel’s 

name or depicts the bead dog statue that stands outside Haydel’s store.

The district court based its grant of summary judgment on a finding that 

Haydel’s marks are unprotectable as a matter of law. Although Section 43(a) 

“extends beyond mere trademark protection,” Schlotzsky’s, Ltd. v. Sterling 

Purchasing & Nat’l Distrib. Co., 520 F.3d 393, 399 (5th Cir. 2008), Haydel’s 

claim is foreclosed because its bead dog design lacks distinctiveness. Given that

Haydel’s design does not act as a source identifier, the image of a sculpture 

incorporating that design on Nola Spice’s webpages could not “cause confusion 

. . . as to the origin, sponsorship, or approval” of Nola Spice’s goods. 15 U.S.C. 

§ 1125(a)(1)(A); see Samara Bros., 529 U.S. at 210 (“Nothing in § 43(a) 

explicitly requires a producer to show that its trade dress is distinctive, but 

courts have universally imposed that requirement, since without 

distinctiveness the trade dress would not ‘cause confusion . . . as to the origin, 

sponsorship, or approval of [the] goods,’ as the section requires.” (alterations 

in original)); see also Genesee Brewing Co., 124 F.3d at 150 (holding that to 

recover for unfair competition based on the use of a generic term, the plaintiff 

was required to show, inter alia, “an association of origin by the consumer 

between the mark and the first user, that is, secondary meaning” (internal 

quotation marks and citation omitted)). Because Haydel’s marks lack 

secondary meaning and are therefore not distinctive, Nola Spice was entitled 

to summary judgment on Haydel’s unfair competition claim.5

5 Although Nola Spice’s display of sculpture from Paws on Parade does not alone 

support an unfair competition claim under Section 43(a), our holding does not preclude 

Haydel from bringing future unfair competition claims if Nola Spice misrepresents its 

relationship with Haydel in other ways. See Schlotzsky’s, Ltd., 520 F.3d at 399–400.

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IV. Trademark Dilution 

The district court granted summary judgment to Nola Spice on Haydel’s 

counterclaims for trademark dilution under the Lanham Act and Louisiana 

law. The Lanham Act, as amended by the Trademark Dilution Revision Act, 

provides, in relevant part, 

the owner of a famous mark that is distinctive, inherently or 

through acquired distinctiveness, shall be entitled to an injunction 

against another person who, at any time after the owner’s mark 

has become famous, commences use of a mark or trade name in 

commerce that is likely to cause dilution by blurring or dilution by 

tarnishment of the famous mark, regardless of the presence or 

absence of actual or likely confusion, of competition, or of actual 

economic injury.

15 U.S.C. § 1125(c)(1). To state a dilution claim under the Lanham Act, Haydel

must show that (1) it owns a famous and distinctive mark; (2) Nola Spice has 

commenced using a mark in commerce that is diluting Haydel’s mark; (3) the 

similarity between Nola Spice’s mark and Haydel’s mark gives rise to an 

association between the marks; and (4) the association is likely to impair the 

distinctiveness of Haydel’s mark or harm the reputation of Haydel’s mark. See 

Nat’l Bus. Forms & Printing, Inc., 671 F.3d at 536 (citing Louis Vuitton 

Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264–65 (4th Cir.

2007)). Because Haydel’s marks are not distinctive, the district court properly 

granted summary judgment to Nola Spice on Haydel’s federal dilution claim. 

Louisiana’s anti-dilution statute provides: 

Likelihood of injury to business reputation or of dilution of the 

distinctive quality of a mark or trade name shall be a ground for 

injunctive relief in cases of infringement of a mark registered or 

not registered or in cases of unfair competition notwithstanding 

the absence of competition between the parties or the absence of 

confusion as to the source of goods or services.

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La. Rev. Stat. Ann. § 51:223.1. Although a dilution claim under Louisiana law 

requires a showing of distinctiveness, Louisiana courts have provided little 

guidance on the meaning of distinctiveness for dilution purposes. See 

Advantage Rent-A-Car, Inc. v. Enter. Rent-A-Car, Co., 238 F.3d 378, 381 (5th 

Cir. 2001). In the context of trademark infringement, the Louisiana Supreme 

Court has adopted the same definition of distinctiveness that applies to a 

Lanham Act claim: the mark must either be inherently distinctive or have 

secondary meaning. Id. (citing Gulf Coast Bank v. Gulf Coast Bank & Trust 

Co., 652 So. 2d 1306 (La. 1995)). We believe the Louisiana Supreme Court 

would apply the same definition for purposes of a dilution claim, and Haydel 

does not argue otherwise. See Six Flags, Inc. v. Westchester Surplus Lines Ins. 

Co., 565 F.3d 948, 954 (5th Cir. 2009) (noting that to determine Louisiana law 

in the absence of authority from the Louisiana Supreme Court, “we must make 

an Erie guess and determine, in our best judgment, how that court would 

resolve the issue if presented with the same case” (internal quotation marks 

and citation omitted)). Given that Haydel’s marks are not distinctive, the 

district court’s grant of summary judgment to Nola Spice was proper with 

respect to Haydel’s state law dilution claim. 

V. Copyright Infringement

“To prove copyright infringement, a plaintiff must establish (1) 

ownership of a valid copyright; (2) factual copying; and (3) substantial 

similarity.” Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007) (per curiam). 

As to the first element, Haydel obtained a certificate of a copyright registration 

for its work titled “Bead Dog,” in the form of “photograph(s), jewelry design, 

2-D artwork, [and] sculpture.” The Copyright Act provides that a certificate of 

copyright registration “made before or within five years after first publication 

of the work shall constitute prima facie evidence of the validity of the 

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copyright.” 17 U.S.C. § 410(c). Although the presumption of validity may be 

rebutted, see Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 

1995), Nola Spice does not develop any argument that Haydel’s work as a whole 

is unprotectable. We therefore do not assess the validity of Haydel’s copyright. 

See Audler v. CBC Innovis Inc., 519 F.3d 239, 255 (5th Cir. 2008) (“A party 

waives an issue if he fails to adequately brief it.” (internal quotation marks 

and citation omitted)). Nola Spice also does not argue against a finding of

factual copying, the second element required for a copyright infringement 

claim. Rather, Nola Spice argues that the third element is absent because its 

works are not substantially similar to Haydel’s bead dog design.

The district court relied on the merger doctrine in granting summary 

judgment to Nola Spice on Haydel’s copyright infringement claim. The merger 

doctrine is based on the statutory prohibition against copyright protection for 

ideas. See 17 U.S.C. § 102(b). “If an idea is susceptible to only one form of 

expression, the merger doctrine applies and § 102(b) excludes the expression 

from the Copyright Act.” Veeck v. S. Bldg. Code Cong. Int’l, Inc., 293 F.3d 791, 

801 (5th Cir. 2002). However, examples of bead dogs in the record make clear 

that the idea of a bead dog may be expressed in various ways. The merger 

doctrine therefore does not alone preclude a finding of copyright infringement. 

Still, “we may affirm the district court’s decision on any ground supported by 

the record, even if it was not the basis for the judgment.” Terrebonne Parish 

Sch. Bd., 310 F.3d at 878. We find that the grant of summary judgment was 

appropriate based on the absence of substantial similarity between Haydel’s 

and Nola Spice’s bead dogs. 

While the question of substantial similarity “typically should be left to 

the factfinder, summary judgment may be appropriate if the court can 

conclude, after viewing the evidence and drawing inferences in a manner most 

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favorable to the nonmoving party, that no reasonable juror could find 

substantial similarity.” Peel & Co. v. Rug Mkt., 238 F.3d 391, 395 (5th Cir. 

2001) (footnote omitted). To assess substantial similarity, we have often cited 

the following test: “[A] side-by-side comparison must be made between the 

original and the copy to determine whether a layman would view the two works 

as ‘substantially similar.’” Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 

816 (5th Cir. 1997) (per curiam) (footnote omitted). However, where the

copyrighted work contains unprotectable elements, the first step is to

distinguish between protectable and unprotectable elements of the copyrighted 

work. See Peel & Co., 238 F.3d at 398 (holding that the district court erred in 

failing to identify the original constituent elements of the copyrighted design 

before comparing the two works); Kepner-Tregoe, Inc. v. Leadership Software, 

Inc., 12 F.3d 527, 533–34 (5th Cir. 1994) (“To determine the scope of copyright 

protection in a close case, a court may have to filter out . . . unprotectable 

elements of plaintiff’s copyrighted materials to ascertain whether the 

defendant infringed protectable elements of those materials.”); see also Feist 

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (describing an 

element of infringement as the “copying of constituent elements of the work 

that are original”). The next inquiry is whether the allegedly infringing work 

bears a substantial similarity to the protectable aspects of the original work. 

See Peel & Co., 238 F.3d at 398 (“To support a claim of copyright infringement, 

the copy must bear a substantial similarity to the protected aspects of the 

original.”). This determination should be based on the perspective of a

“layman” or “ordinary observer.” See id. (“[A] layman must detect piracy 

without any aid or suggestion or critical analysis by others.” (internal 

quotation marks and citation omitted)). Our precedents also support 

consideration of the importance of the copied protectable elements to the 

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copyrighted work as a whole. Positive Black Talk Inc. v. Cash Money Records

Inc., 394 F.3d 357, 373 n.12 (5th Cir. 2004), abrogated on other grounds by Reed 

Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Eng’g Dynamics, Inc. v. 

Structural Software, Inc., 26 F.3d 1335, 1343 (5th Cir. 1994).6

Applying these principles to Haydel’s claim, we first identify the 

unprotectable elements in Haydel’s bead dog design, which is manifested most 

clearly in sculpture form. Haydel concedes that its bead dog design is a 

“derivative” work, meaning that it is “based upon one or more preexisting 

works.” 17 U.S.C. § 101. “The copyright in a . . . derivative work extends only 

to the material contributed by the author of such work, as distinguished from 

the preexisting material employed in the work, and does not imply any 

exclusive right in the preexisting material.” Id. § 103(b); see also Yurman 

Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109–110 (2d Cir. 2001). Haydel concedes 

that the body of its bead dog design is unprotectable as preexisting material 

because it mimics the body of a traditional bead dog. Haydel nevertheless 

contends that its “original contributions include, among other things, the 

selection and arrangement of a necklace, nose, eyes, and a tail, all made of 

6 Our analysis here is similar to the “abstraction-filtration-comparison” test that our 

circuit has adopted to assess the substantial similarity of computer programs. See Eng’g 

Dynamics, Inc., 26 F.3d at 1343. Under that test, we abstract the copyrighted program into 

its constituent parts, filter out unprotectable elements, and compare the remaining 

protectable expression with the allegedly infringing program to determine whether the 

defendant misappropriated substantial elements of the plaintiff’s program. Id. at 1342–43 

(quoting Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 834 (10th Cir. 1993)). 

Several courts and a copyright scholar have found this test, or variations on it, well-suited to 

analyze copyrighted works other than computer programs. See Country Kids ’N City Slicks, 

Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996) (wooden dolls); R. Ready Prods., Inc. v. 

Cantrell, 85 F. Supp. 2d 672, 683 & n.10 (S.D. Tex. 2000) (advertising letters); Churchill 

Livingstone, Inc. v. Williams & Wilkins, 949 F. Supp. 1045, 1050 (S.D.N.Y 1996) (medical 

textbooks); 4 Nimmer on Copyright § 13.03 (noting that “there is no reason to limit” the 

filtration test to the realm of computer software).

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smaller beads.” However, anatomical features on replicas of animals are ideas 

not entitled to copyright protection. See Blehm v. Jacobs, 702 F.3d 1193, 1204

(10th Cir. 2012) (“[C]ommon anatomical features such as arms, legs, faces, and 

fingers [on cartoon figures] . . . are not protectable elements.”); Mattel, Inc. v. 

Goldberger Doll Mfg. Co., 365 F.3d 133, 136 (2d Cir. 2004) (“An upturned nose, 

bow lips, and wide eyes are the ‘idea’ of a certain type of doll face. That idea 

belongs not to Mattel but to the public domain.”). As for the “necklace” in 

Haydel’s design, the ring of spheres around the neck of Haydel’s bead dog may 

be characterized as a collar. Collars on dogs, like anatomical features, are 

common ideas that belong to the public domain. Still, while the idea of eyes, a 

nose, a tail, and a collar are not protectable, the manner in which Haydel 

expresses these features may be protectable, as long as that expression is 

original and not dictated by the underlying idea. See Mattel, Inc., 365 F.3d at 

135–36 (“The copyright does not protect ideas; it protects only the author’s 

particularized expression of the idea.”); Blehm, 702 F.3d at 1201 (“A copyright 

owner’s original stylistic choices qualify as protectable expression if the choices 

are not dictated by the underlying idea.”).

We now compare Nola Spice’s bead dog to the protectable elements of 

Haydel’s bead dog, assuming the perspective of an ordinary observer and 

considering the significance of the protectable elements to Haydel’s work as a 

whole. See Peel & Co., 238 F.3d at 398; Eng’g Dynamics, Inc., 26 F.3d at 1343.

Haydel argues that only some of Nola Spice’s bead dogs are infringing and 

identifies examples in the record. Focusing on the protectable elements of 

Haydel’s design, the similarity between Nola Spice’s and Haydel’s bead dogs is 

the expression of the collar as a ring of small spheres. As for the differences, 

the torso of Haydel’s bead dog has three spheres, while the torso of Nola Spice’s 

bead dog has one sphere. The spheres that make up Haydel’s bead dog are 

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pressed together, whereas visible wire connects the spheres that make up Nola 

Spice’s bead dogs. Whereas the tail of Haydel’s bead dog consists of two spheres

and no wire, the tails of Nola Spice’s bead dogs include a curled wire, either 

alone or atop one or two spheres. Likewise, the noses of Nola Spice’s bead dogs 

include a curled wire, either alone or atop a single sphere, while the nose of 

Haydel’s bead dog is a single sphere. Unlike Haydel’s bead dog, Nola Spice’s 

bead dogs do not have eyes. No reasonable juror could conclude that Nola 

Spice’s bead dogs bear a substantial similarity to the way in which the eyes, 

nose, and tail are expressed in Haydel’s bead dog. Indeed, Haydel focuses its 

argument on the collar, conceding that its “copyright infringement claim is 

narrow. Only to the extent that Nola Spice copied Haydel’s original expression 

by, at least adding a necklace made of smaller beads to what would otherwise 

look like a dog trinket made of larger beads, has Nola Spice infringed Haydel’s 

copyrighted expression.” We must therefore decide whether the collar on Nola 

Spice’s bead dogs could suffice to support a finding of substantial similarity in 

the mind of a reasonable juror.

Because the idea of a collar is unprotectable, only its expression as a

string of spheres is relevant to the analysis of substantial similarity. As a 

threshold matter, we question whether using bead-shaped spheres for a bead 

dog’s collar is sufficiently original to merit copyright protection. See Feist 

Publ’ns, Inc., 499 U.S. at 348 (“[C]opyright protection may extend only to those 

components of a work that are original to the author.”). Although the 

requirement of originality demands only a “creative spark, no matter how 

crude, humble or obvious,” the level of creativity must be more than “trivial.” 

Id. at 345, 359 (internal quotation marks and citation omitted). Even if a beadshaped collar possesses the requisite creative spark, its minimal originality 

counsels against a finding of substantial similarity. See Harney v. Sony 

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Pictures Television, Inc., 704 F.3d 173, 187 (1st Cir. 2013) (“[L]ocating the 

subject of a photograph in the middle of a frame is an element of minimal 

originality and an insufficient basis, without more, to find substantial 

similarity.” (internal quotation marks omitted)). In addition, the collar is both 

qualitatively and quantitatively insignificant in relation to Haydel’s work as a 

whole, which is designed to represent a traditional bead dog trinket and is 

dominated by unprotectable elements. See Positive Black Talk Inc., 394 F.3d 

at 373 n.12 (noting other circuits’ support for the proposition that the 

substantial similarity analysis should consider the qualitative and 

quantitative importance of the copied material to the plaintiff’s work as a 

whole); Eng’g Dynamics, Inc., 26 F.3d at 1343 (noting that the goal of the 

comparison step is to “determine whether the defendants have 

misappropriated substantial elements of the plaintiff’s” work (citing Gates 

Rubber, 9 F.3d at 834) (emphasis added)). In light of these considerations, no 

reasonable jury could find substantial similarity based solely on Haydel’s 

expression of a collar. 

Haydel argues that the “best evidence” of substantial similarity consists 

of statements by the Haydel family that its customers were confused about the 

relationship between Nola Spice’s bead dogs and Haydel’s mascot. Haydel 

points to a sworn statement by David Haydel, Sr. that he “personally heard 

several customers of Haydel’s Bakery asking whether Nola Spice Designs sells 

Haydel’s MARDI GRAS BEAD DOG jewelry and telling our staff that they (the 

customers) believed that Nola Spice Designs sold Haydel’s MARDI GRAS 

BEAD DOG jewelry.” This vague allegation of consumer confusion by a selfinterested party possesses little probative value. Cf. Filipino Yellow Pages, Inc. 

v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1152 (9th Cir. 1999) (finding that

“vague,” “self-interested” testimony by the founder of the plaintiff company,

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alleging confusion by unidentified consumers, “possesse[d] very limited 

probative value” and “did not create a genuine issue for trial” as to whether the

company’s claimed trademark had acquired secondary meaning). More 

important, any confusion by Haydel’s customers would have stemmed from a 

comparison of the two bead dog designs in their entirety, and would therefore 

have been based largely on unprotectable elements. Given that the substantial 

similarity analysis requires a focus on protectable elements, Haydel’s evidence 

of confusion does not raise a genuine issue for trial. See Johnson v. Gordon, 

409 F.3d 12, 19 (1st Cir. 2005) (“[I]n assessing whether substantial similarity 

exists, an overall impression of similarity may not be enough . . . [i]f such an 

impression flows from similarities as to elements that are not themselves 

copyrightable.” (internal citation omitted)). Because no reasonable jury could 

conclude that Nola Spice’s and Haydel’s bead dogs are substantially similar in 

protectable expression, the district court properly granted summary judgment 

to Nola Spice on Haydel’s copyright infringement claim. 

VI. Louisiana Unfair Trade Practices Act

The Louisiana Unfair Trade Practices Act (“LUTPA”) prohibits “[u]nfair 

methods of competition and unfair or deceptive acts or practices in the conduct 

of any trade or commerce.” La. Rev. Stat. Ann. § 51:1405(A). “A business 

practice is considered ‘unfair’ if it offends established public policy and is 

unethical, oppressive, unscrupulous, or substantially injurious. A business 

practice is ‘deceptive’ for purposes of LUTPA when it amounts to fraud, deceit 

or misrepresentation.” Surgical Care Ctr. of Hammond, L.C. v. Hosp. Serv. 

Dist. No. 1 of Tangipahoa Parish, 309 F.3d 836, 843 (5th Cir. 2002) (citing

Jefferson v. Chevron U.S.A. Inc., 713 So. 2d 785, 792–93 (La. Ct. App. 1998)). 

Haydel argues that the district court erred in granting summary judgment to 

Nola Spice on Haydel’s LUTPA claim. However, Haydel supports that 

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argument only by asserting that the district court erred in dismissing its 

trademark and copyright infringement claims. Haydel waived its argument 

regarding LUTPA by failing adequately to develop it. See Audler, 519 F.3d at 

255.

CONCLUSION

For the above reasons, we AFFIRM the district court’s grant of summary 

judgment to Nola Spice on its claim for a declaratory judgment of noninfringement of Haydel’s trademarks, and we AFFIRM the district court’s 

cancellation of those trademarks. We also AFFIRM the district court’s grant of 

summary judgment to Nola Spice on Haydel’s claims of trademark 

infringement, unfair competition, and trademark dilution under the Lanham 

Act; trademark dilution under Louisiana law; copyright infringement under 

the Copyright Act; and unfair trade practices under LUTPA. 

APPENDIX

Haydel’s Sculpture

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Haydel’s Design Mark

Haydel’s Jewelry

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Nola Spice’s Jewelry

Traditional Bead Dog Trinket

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