What is Trade Dress?

When you think of trademarks, you probably think of words, logos, slogans, or symbols that identify and distinguish the source of goods or services. For example, you can easily recognize the golden arches of McDonald’s, the swoosh of Nike, or the slogan “Just Do It”. But did you know that trademarks can also include the appearance of a product or its packaging? This is called trade dress, and it is a form of intellectual property that protects the commercial look and feel of a product or service.

a hand holding a blue colored pencil coming from the bottom right while the tin of colored pencils is in the upper left

When you think of trademarks, you probably think of words, logos, slogans, or symbols that identify and distinguish the source of goods or services. For example, you can easily recognize the golden arches of McDonald’s, the swoosh of Nike, or the slogan “Just Do It”. But did you know that trademarks can also include the overall appearance of a product or its packaging? This is called trade dress, and it is a form of intellectual property that protects the commercial look and feel of a product or service.

Trade Dress vs. Trademark

Even though it can protect the actual shapes of products, trade dress is not a part of patent law. It is actually a subset of trademark law that covers the visual aspects of a product or service that indicate its source or origin. Trade dress can include the shape, color, texture, design, graphics, layout, or any other distinctive features of a product or the product packaging. For example, trade dress can protect the shape of a Coca-Cola bottle, the color scheme of Tiffany & Co. boxes, or the layout of an Apple store.

Trade dress is different from traditional trademarks in that it does not involve any words or symbols that directly identify the source of goods or services. Trade dress is more subtle and indirect, relying on the overall impression that consumers get from the appearance of a product or service. Trade dress can also be more difficult to define and prove than a trademark, as it may involve many elements that are not easily separable or measurable.

Trade Dress Concerns

Trade dress is an important aspect of intellectual property that can help businesses create a distinctive identity and reputation for their products or services. However, there are also some challenges and risks, like the ability to register trade dress, the risks involved with unregistered trade dress, and whether or not the design is even protectable trade dress.

Trade dress registration can be costly and time-consuming, and may require extensive evidence of distinctiveness and non-functionality. Moreover, trade dress registration may not be available for some types of trade dress, such as colors or scents.

Much like with trademarks, unregistered trade dress may not enjoy the same level of protection as registered trade dress, and may require more proof of secondary meaning.

Trade dress protection may not extend to all aspects of a product or service, and may be limited by the functionality doctrine or the aesthetic functionality doctrine. Trade dress protection may also be subject to fair use exceptions or defenses, such as parody, comparative advertising, or descriptive use.

Trade Dress Protection

Trade dress can be protected under both federal and state laws, as well as common law rights. The main federal law statute that governs trade dress is the Lanham Act, which also covers trademarks. The Lanham Act protects trade dress against infringement, dilution, and unfair competition by prohibiting any use of a mark that is likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval of goods or services.

To qualify for trademark protection for trade dress under the Lanham Act, trade dress must be:

  • Distinctive: Trade dress must be either inherently distinctive (meaning that it is unique and memorable) or have acquired distinctiveness (meaning that it has become widely recognized by consumers through use and advertising) as an indicator of source. It is important to note that the courts have determined that product design is not inherently distinctive by itself and needs a secondary meaning to acquire distinctiveness. Product packaging, however, can be inherently distinctive and thus not require secondary meaning.

  • Non-functional: Trade dress must not be essential to the use or purpose of the product or service, or affect its cost or quality. It cannot have any functional aspects to its use. Trade dress must also not confer any competitive advantage to the owner other than source identification.

Trade dress can also be registered with the U.S. Patent and Trademark Office (USPTO) as a trademark if it meets the above criteria and complies with the application requirements. Registering trade dress can provide several benefits to the owner, such as:

  • Presumption of validity and ownership: Registration creates a legal presumption that the trade dress is valid and belongs to the registrant.

  • Nationwide protection: Registration grants exclusive rights to use the trade dress throughout the United States and its territories.

  • Constructive notice: Registration puts others on notice that the trade dress is protected and prevents infringers from claiming innocent use as a defense.

  • Right to sue: Registration gives the owner the right to sue for trade dress infringement in federal court and seek remedies such as injunctions, damages, profits, attorney fees, and treble damages.

  • Recordation with customs: Registration allows the owner to record the trade dress with U.S. Customs and Border Protection (CBP) and prevent the importation of counterfeit or infringing goods.

Trade Dress Infringement

Trade dress infringement occurs when one product’s design or packaging copies or mimics that of another product to the extent that there is a likelihood of confusion in the mind of the purchasing public. The trade dress owner has the burden of proving that its trade dress is distinctive and non-functional, and that the defendant’s use creates a likelihood of confusion. The court may consider several factors in determining whether confusion is likely, such as: The similarity between the trade dresses;

  • The strength of the plaintiff’s trade dress;

  • The intent of the defendant;

  • The evidence of actual confusion;

  • The degree of care exercised by consumers;

  • The type and quality of the products;

  • The marketing channels used by both parties;

  • The likelihood of expansion into other markets.

Trade Dress Enforcement

Trade dress owners have the right to enforce their trade dress against any unauthorized use by third parties that may create consumer confusion or dilution. Trade dress owners can take various actions to protect their trade dress, such as:

  • Sending cease and desist letters: Trade dress owners can send letters to infringers demanding them to stop using the trade dress and remove any infringing products from the market.

  • Filing oppositions or cancellations: Trade dress owners can challenge any pending or registered marks that are similar or identical to their trade dress before the USPTO’s Trademark Trial and Appeal Board (TTAB).

  • Filing lawsuits: Trade dress owners can sue infringers for violation of their trade dress rights in federal or state courts and seek injunctive relief and monetary damages.

Trade Dress Cases

Trade dress infringement cases may be more common than you think. Here are some recent examples.

In one trade dress case, Apple sued Samsung for infringement on the iPhone design. The court found the design to be primarily functional and denied protection.

Adidas sued Sketchers over a shoe design that resembled its Stan Smith sneakers. The court granted a preliminary injunction to Adidas and found a likelihood of confusion existed.

Tiffany & Co. sued Costco for selling diamond rings in blue boxes that resembled its trade dress. This lawsuit was based on the visual appearance and association of the jewelry boxes that Tiffany claimed was inherently distinctive. They eventually settled after 8 years of back and forth litigation.

Pepperidge Farm brought suit against Trader Joe’s and claimed trade dress infringement of their Milano cookies. The parties reached a settlement agreement shortly after the filing of the suit.

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., a case that went to the Supreme Court, Samara Bros. sued Wal-Mart for infringing on their unregistered trade dress related to their children’s clothing. The court held that a design is not distinctive without secondary meaning.

Conclusion

Trade dress protects the commercial look and feel of a product or service, making it an important form of intellectual property. Trade dress can help consumers identify and trust the quality and reputation of a brand. Trade dress can also help businesses differentiate themselves from competitors and create customer loyalty. However, trade dress protection is not automatic or easy to obtain. Trade dress owners must ensure that their trade dress is distinctive and non-functional, and register it with the USPTO if possible. They must also monitor their trade dress and enforce their rights against any infringers who may harm their goodwill and market share.

We hope you enjoyed this blog post and learned something new about trade dress. If you have any questions or need any assistance with your trade dress matters, please feel free to contact us. We are a team of experienced trademark attorneys who can help you protect and enforce your trade dress rights. Thank you for reading!