Trade Dress: What It Is and How To Protect Yours

Every business owner wants to stand out in their market. Indeed, a product’s packaging and branding are often worth more than the product itself. For example, a ring sold at any jewelry store for $250 can become worth $2,500 when placed in a Tiffany blue box. However, any good brand or intellectual property must be protected under trade dress law against unfair competition.

If Zales or Kay began packaging jewelry in Tiffany blue boxes, it would constitute trademark infringement. The Tiffany brand has acquired distinctiveness that can be protected by an often-forgotten intellectual property doctrine known as trade dress.

Clearly, the system protects those who play by the rules, but knowing where to begin can be daunting. Worried that your trade dress is being infringed? Connect with a trademark lawyer today.

Defining Trade Dress

“Not many people understand the differences between trademark and trade dress, and the variations in the strength of potential marks, which can be complicated,” says Nancy A. Del Pizzo, an intellectual property attorney at Rivkin Radler in Hackensack, New Jersey. “It’s why you probably want to talk to an attorney — especially one who knows what they’re doing.”

The term ‘trade dress’ refers to the characteristics and visual appearance of a product or its packaging that act as a source signifier. As noted in the Trademark Manual of Examining Procedure (TMEP), the term is generally defined as the “overall appearance” of a product/packaging. It can include everything from features, sizes, colors, combinations, graphics, textures, and other unique product design elements.

Much like trademark law, Del Pizzo says, trade dress “can be registered; you can have common law rights; you can have federal rights; basically, trademarks are typically words and design, while trade dress relates to image and overall appearance.”

Under the Lanham Act, there is protection for businesses with distinctive packaging. It allows a business to prevent the likelihood of confusion from 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 a product’s appearance and to indicate its 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. And this can be essential to a business attempting to carve out its place in a market.

This protection isn’t merely for packaged goods. It has been extended to the shape, color, look, and feel of materials in a children’s clothing line; the design of a magazine cover; the appearance and décor of a chain of restaurants; and a method of displaying wine in a shop. The field of possibilities for protecting your distinct business’s look and feel is wide. With some effective advocacy, there is no telling how far these trade dress rights can extend.

If the product packaging is deemed not inherently distinctive, secondary protections are available. The concept that the packaging is not new or different but has acquired a secondary meaning is known as secondary meaning. Courts have held that a secondary meaning may be established through a combination of the following six factors:

1. Advertising expenditures
2. Consumer studies linking the mark to the source of the product
3. Unsolicited media coverage of the product
4. Sales success
5. Attempts to plagiarize the service mark
6. 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 process 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 protectable trade dress by one of the theories above, the courts can offer injunctive relief, damages, and even attorneys’ fees.

The Benefits of Getting Trade Dress Protections

For companies involved in consumer goods, protectable trade dress is crucial. As such, businesses need to take proactive steps to protect their intellectual property rights. Some common legal strategies used to protect trade dress rights include:

• Filing a trademark registration for a unique design
• Continuously reviewing products on the market to ensure that violations are quickly identified
• Taking immediate action against any company/business creating products or using packaging that will confuse consumers

Examples of Famous Trade Dress

Trade dress can perhaps be best understood through one of its most famous examples of trade dress: The Coke bottle. Coca-Cola obtained trade dress protection for its classic hourglass bottle shape.

Of course, this bottle serves functional purposes — and Coca-Cola cannot stop other companies from selling products from glass bottles — but the inherent distinctiveness of the design of the bottle has become such a source signifier for consumers that many people associate it with the company. As such, it has intellectual property rights to that style of packaging.

Requirements for Legal Protection

Under United States law, there are two key legal requirements for companies seeking trade dress protection for overall appearance.

First, the design of a product must have distinctiveness. Relevant consumers must view the design in question as a source signifier.

Second, companies cannot seek trade dress protection for purely functional products/packaging. Trade dress protection is reserved for nonfunctional elements only. The product/packaging in question can certainly have functional aspects, but trade dress protection itself is reserved for only the design elements that signify the source.

Proving Distinctiveness

“Sometimes a person comes to us with a trade dress that is distinctive and we’ll say it’ll likely be registered — you can’t say for sure, since you don’t know what examiner you’ll get,” she adds. “But there are some that are proposed where there are several other marks that will likely be confused. Even if you pass registration, you’ll have difficulty with these entities in the marketplace.

“Frequently, I’ll have clients come to me who have spent years planning the launch of a product or service, and put a lot of money into it. Then, years later, they decide to get their IP protected, so they call me. ‘Can you register our trade dress or trademark?’ The answer is potentially yes, but if something happens in the application — say, we find another entity with a mark that is similar and likely to be confused — they may be out of luck. It really behooves someone who wants trademark or trade dress protection to talk to an attorney sooner rather than later. That initial cost up front can save you thousands later.”

The Non-Functionality Doctrine

U.S. trademark rights do not protect a product’s functional features. The non-functionality doctrine precludes treating trade dress as a means to protect functional elements. Intellectual property law defines functionality in two ways. Utilitarian functionality is the purpose or essential use that directly affects the cost or quality of the product. Aesthetic functionality is the design that provides a competitive advantage that can’t be readily duplicated by alternatives.

A claimed trade dress may not qualify for protection under trademark law. However, it could be better protected by a patent. A design patent can protect the ornamental and nonfunctional elements of a product. A design patent does not cover how the product works; it only protects the way it looks. A utility patent protects the functional aspects of an invention, how it works, how it is used, or how it is made. Utility patents can cover processes, machines, manufactured items, compositions of matter, and improvements to any of these.

How To Register Your Trade Dress

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 trademark 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 provide trademark protection if the product’s dressing doesn’t serve a functional purpose, is distinctive, and someone else’s packaging creates a likelihood of confusion among consumers.

Getting a Lawyer’s Help in Securing Trade Dress Protections

In any case, an experienced trademark law attorney will probably come in handy. “If you don’t have experience with [the U.S. Patent and Trademark Office], you might attempt to file a mark that is not likely to be protectable, in that it simply describes your business, like ‘John’s Hardware Store’ to identify a hardware store owned by John. That’s not likely the kind of mark that would be registered (on the Principal Register),” Del Pizzo says.

Trademark attorneys experienced in filing with the USPTO will know best how to prepare your filing. Part of that process should involve a search of existing trademarks for products and/or services in the same or similar class to what you proposed that could be deemed similar to yours.

“One of the things that can be particularly helpful in determining your trade dress is looking closely at the design process and how you or your team came up with the product or packaging idea,” Del Pizzo says. It is best to avoid basing the trade dress on something similar to a competitor in the marketplace to avoid a rejection from the USPTO and/or a potential infringement claim.

Enforcing Your Trade Dress Rights

No matter your business, make sure to find an experienced and reputable trademark attorney who will protect not only your product but also how your product is seen on the shelves. Be sure to ask about trade dress and protect yourself at every turn, or all of your hard work may benefit someone else.