Visual appearance matters.
This is true for brands and their signature visual identity, a valuable asset that can obtain trade dress protection.
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What is Trade Dress
A trade dress covers the overall image of a product or service.
It protects the look and feel that identifies the source of the product or service from being copied or infringed on.
What Does Trade Dress Include
Trade dress covers the design and shape of a product packaging or the product itself.
For services, this could be the theme or décor of a restaurant brand.
“A product’s trade dress encompasses the overall design and appearance that make the product identifiable to consumers.” (Cartier, Inc. v. Sardell Jewelry, 294 F. App’x 615, 617 (2d Cir. 2008)).
“The Lanham Act protection of product configurations extends to “the total image of a product, including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques,” all of which can be identifying features.
The protection refers to the total image since “[t]he law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately.” (Duraco Products v. Joy Plastic Enterprises, 40 F.3d 1431, 1439 (3d Cir. 1994)).
Therefore, even when no one element is distinctive in itself, the total combination or arrangement can be distinctive.
What is Trade Dress Law
In the US, the Lanham Act protects trade dress when it serves as a source-identifier, just as a trademark. Brands can register a trade dress as a trademark or service mark with the U.S. Patent and Trademark Office (USPTO).
More often, trade dress is protected without registration under US law 15 U.S.C. § 1125(a), acquiring rights through use in commerce and protected through common law rights.
What Is the Difference Between Trade Dress and Trademarks?
Trade dress and trademarks are intellectual property protections that point to the source of goods.
In other words, when consumers see them, it helps them recognize the source.
The rationale is protection from deception and unfair competition. So how to distinguish a trade dress from a trademark?
A trademark is a recognizable identifier, such as names, logos, words, and symbols.
A trade dress grants a type of trademark protection that includes the design or image of the product.
From luxury brands to CPGs and from restaurant to store designs, brands can use trade dress to protect their visual identity.
What Is the Difference Between Trade Dress and Design Patents?
Trade dress and design patents protect the appearance and aesthetic elements of a product.
They do not cover its functionality. However, trademarks and trade dress cover the look of a product when used to identify its source.
A design patent protects the invention of a new ornamental appearance of a product in itself, not associated with indicating its source.
What do I Need for Trade Dress Protection
To register a trade dress with the USPTO, you must file an application to register, which can be done through the USPTO website.
The application must include the same information as a trademark application.
So what do you need for trade dress protection?
- The trade dress is nonfunctional
- The trade dress is distinctive in that it is a source-identifier (either inherently or because it has acquired distinctiveness)
- There is a likelihood of confusion for consumers
A product-design trade dress is not inherently distinctive.
It can be registered on the U.S. Principal Register only if it has acquired distinctiveness through Secondary Meaning.
Product packaging, on the other hand, may be inherently distinctive and registered without proving secondary meaning.
What is Nonfunctional?
Elements such as designs and shapes created for commercial and promotional purposes can be protected as they are non-functional.
Being nonfunctional means that the trade dress is not essential to the use or purpose of the product and does not affect its quality or cost.
Factors to examine in determining functionality are the availability of alternative designs or whether the design results from a simple or inexpensive method of manufacture, among others.
When a configuration has a functional or competitive advantage, it cannot be protected as a trade dress (or a design patent, for that matter).
To protect a functional feature, brands or manufacturers can, when relevant, apply for a utility patent.
What is Inherently Distinctive Design?
Being “inherently distinctive” means that a product or service is specific and unique in a way that points to its source.
“We conclude that, to be inherently distinctive, a product feature or a combination or arrangement of features, i.e., a product configuration, for which Lanham Act protection is sought must be (i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to serve primarily as a designator of origin of the product. (Duraco Products v. Joy Plastic Enterprises, 40 F.3d 1431, 1434 (3d Cir. 1994)).
What is Secondary Meaning?
Even if not inherently distinctive, a mark can acquire “secondary meaning”, which means that it gained distinctiveness and recognition as consumers have started to see it as a feature that they use to identify and distinguish the source of the product.
Therefore, the applicant must show evidence that a visual feature such as a shape or color on a good or service over a period of time has made a substantial segment of consumers associate it with a specific source.
To gain protection for fashion design, for example, designers can turn to trade dress if they can prove that consumers connect the fashion design with the designer, thus acquiring secondary meaning.
Examples of trade dress
When a product or its container have visual features that identify the source, they act like a name or a logo that consumers connect with a brand.
Everyday examples include the Coca-Cola bottle, the Heinz bottle, and the fish shape of Goldfish crackers.
Luxury examples include the Hermès Birkin bag and the red soles of high-heel dress shoes, where the rest of the shoe is not red by Louboutin.
The famous Louboutin red lacquered sole is a color mark protected for its nonfunctional distinctiveness.
Brands can also create a trade dress that identifies the design of their business.
Restaurants, for example, can build a distinctive look and feel through decoration.
In a well-known United States Supreme Court case, Two Pesos, Inc. v. Taco Cabana, Inc., the court determined that the design of a chain of restaurants distinguished the chain.
Although the trade dress was not registered with the USPTO, the court concluded that the trade dress is inherently distinctive, and there was no need to prove secondary meaning.
Hard Rock Café chain also has a distinctive décor protected by trade dress, as does the Apple Store layout and design.
Trade dress has evolved over the years to also encompass the flavor of a product, a sound and image, the color of a product and color combinations.
In a 2020 case, a federal court concluded that although single-color marks cannot be inherently distinctive, this is not the case for multi-colored marks.
It determined that multi-colored marks can be inherently distinctive when used on product packaging when used as source indicators.
Trade Dress Infringement
Trade dress does not require registration to gain legal protection.
Registration of your trade dress allows you to carry out legal action, although it is not always enough for a successful infringement suit.
To win in a trade dress infringement case under § 43(a) of the Lanham Act, the trade dress owner must prove distinctiveness (inherent or through secondary meaning) and a likelihood of confusion between its product and the defendant’s as to the source of goods (like in other trademark cases).
A trade dress that is not strong enough may result in the court determining that there is not enough evidence for consumer confusion and secondary meaning.
As for an unregistered trade dress, you also need to prove that it is not functional.
Owners can claim trade dress dilution, just like trademark dilution, without proving a likelihood of confusion.
Trademark dilution refers to the unauthorized use of a mark that is likely to cause dilution.
Dilution by Blurring means that another brand’s actions impact the uniqueness of your trade dress.
Dilution by Tarnishment means that someone negatively associates your trade dress because of another party’s actions.
The remedies for trade dress infringement are the same as trademark infringement, namely injunctions and damages.
When successful, owners can recover the defendant’s profits, any damages sustained, and the costs of the action.
Wiser Market – Online Brand Protection
Trade dress protection can help your business protect revenue and reputation against infringement and unfair competition.
Wiser Market works with brands of all sizes and provides online intellectual property protection.
We believe in a proactive and preventative brand protection strategy, combining innovative technology, unique know-how and a relentless approach toward protecting brands online.
Our superb brand protection services, from detection of infringements to enforcement of your rights, protect your intellectual property online with unrivaled results.
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WiserTip: Trade dress and Design Patents can protect your product at the same time. Even after the patent expires, others cannot copy it and cause confusion.
What Does Trade Dress Include?
Trade dress refers to elements that include size, shape, package, color and color combinations, texture, and more.
How Can Brands Show Secondary Meaning?
To determine secondary meaning the court considers the following factors:
“(1) Advertising expenditures
(2) Consumer studies linking the mark to a source
(3) Unsolicited media coverage of the product
(4) Sales success
(5) Attempts to plagiarize the mark, and
(6) Length and exclusivity of the mark’s use.”
Cartier, Inc. v. Sardell Jewelry, 294 F. App’x 615, 618 (2d Cir. 2008)
How to Determine Likelihood of Confusion?
The question of the likelihood of confusion is determined by courts in trade dress cases as it does for other trademarks. Although not binding, often courts refer to the Polaroid case (Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) and consider the following factors:
- The strength of the mark.
- The similarity of the marks.
- The proximity of the products/services.
- The likelihood that the prior owner will bridge the gap (expand into the defendant’s product area).
- Evidence of actual confusion.
- The defendant’s bad faith in adopting its own mark.
- The quality of the defendant’s product.
- Consumer sophistication.
How Long is Trade Dress Protection?
Trade dress protection does not expire. It exists for as long as the trade dress is being used in commerce as signifying the source. Once a product design acquires secondary meaning, it can also apply to future products that use the protected element.