Trade Dress Law and the Hidden Protections It Provides
Don’t let interlopers in Minnesota steal your image
on May 28, 2019
Updated on March 21, 2022
Every business owner is looking to be distinct in their market. Indeed, the manner in which a product is packaged and branded is often worth more than the products that are sold. Case in point: a ring sold at any jewelry store for $250 put in a Tiffany blue box becomes worth $2,500. But any good brand or intellectual property must be protectedby the trade dress law from unfair competition.
If Zales or Kay began project packaging jewelry in Tiffany blue boxes, it would be a violation of trademark infringement. The Tiffany brand, as well as every other distinct business packaging, can be protected by an often-forgotten intellectual property doctrine called trade dress.
Under the Lantham Act, there is a protection for businesses that have a distinct packaging. It allows a business to prevent any misleading and substantially similar packaging. Courts have held, "the 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."
Trade dress has been used to protect the appearance of a product as an indicator of source. For example, a bottle of Crown Royal in its distinctive bottle and velvety bag is a visual indicator of the quality and source of the product comes from. And this can be essential to a business attempting to carve out their place in a market.
This protection isn’t merely for packaged goods. It has been extended to the shape, color, look and feel and of the materials of a children's line of clothing; the design of a magazine cover; the appearance and décor of a chain of restaurants; and a method of displaying wine in a shop. So, the field of possibility for protecting your distinct businesses look and feel are very possible. With some effective advocacy, there is no telling how far this trade dress rights can extend.
An application to register trade dress with the U.S. Patent and Trademark Office (USPTO) must include all of the same content as any other trademark application or trade mark registration, including a description of the product's trade dress, identification of the products and/or services to be covered, and payment of the appropriate fee. According to the International Trademark Association, “Substantively, the trade dress must be both distinctive (recognizable to consumers as source identifying) and nonfunctional (not be essential to the use or purpose of the product or service and not affect the cost or quality of the product or service).”
This protection can also be used without registering with the USPTO. Common law will prevent trade dress infringement and trade mark protection if the product’s dressing doesn’t serve a functional purpose, is distinctive, and someone else’s packaging creates a liklihood of confusion amongst consumers.
If the product packaging is deemed not inherently distinctive, there are secondary protections available. The idea that the packaging is not new and different but has acquired specialty status is called a secondary meaning of the dress. Courts have held that a secondary meaning may be established through a combination of the following six factors:
- advertising expenditures
- consumer studies linking the mark to a source of the product
- unsolicited media coverage of the product
- sales success
- attempts to plagiarize the service mark
- length and exclusivity of the mark’s use
While the courts may protect your hard-won market share from an infringer after the fact, it will be a much more costly and drawn out business than properly protecting your brand on the front end.
If a business can prove that another’s packaging is likely to cause consumer confusion, and that they have the should protectable trade dress by one of the theories above, the courts can offer injunctive relief, damages and even attorney’s fees.
No matter your business, make sure to find an experienced and reputable intellectual property attorney that will protect not only your product but also how your product is seen on the shelves. Be sure to ask about trade dress, protect yourself at every turn or all of your hard work may benefit someone else.
If you'd like more general information about this area of the law, see our trademark law overview.