What is Trade Dress?

Trade dress covers all elements that make up the overall image of a product or service. This includes, but is not limited to, the color, shape, size, configuration, and packaging of a product. Trade dress (which is a type of intellectual property) can also apply to decor, architecture, or anything else that makes the presentation of a product or service distinctive.

Trade dress refers to anything that is designed or used to promote a product or service. This is known as the "total image" or "overall appearance" of the product or service.

In the right circumstances, trade dress may be something as simple as a color. Trade dress is protected under trademark law, so the Lanham (Trademark) Act applies whether you have a registered or an unregistered mark. In fact, the law makes no distinction between a trademark based on a word (such as the name of your brand or product) and a trademark based on something visual (trade dress).

As trade dress is concerned with the promotional aspects, or image, of a product or service, it does not apply to any aspect that is purely functional.

For example, the shape of a Coca-Cola bottle is distinctive and instantly identifies the product. It doesn't have a functional purpose, however, as the product could be sold in bottles of any shape. The Coca-Cola bottle can, therefore, be protected by trade dress.

The courts demonstrated this in the case of a company that claimed trade dress on the round design of a beach towel. The court found this design was primarily functional rather than promotional so could not be protected. (Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010))

As trade dress is a trademark, you can register it with the U.S. Patent and Trademark Office (USPTO). For practical reasons, however, trade dress is usually not registered. This is often because of the costs involved, particularly the costs of proving distinctiveness (see below).

While a trade dress that is not registered is still protected under the Lanham Act, registering it as a trademark gives you additional protection in federal courts.

Finally, while the trade dress of a product or service is usually made up of a number of different features, all those features should be viewed as a whole and considered together. This applies even if individual features are generic, descriptive, or used by other companies. It is a unique combination of features that trade dress protects.

Proving Trade Dress Infringement

There are three steps involved in proving trade dress infringement under the Lanham Act:

  • Step 1 - You have to show the trade dress is not primarily functional
  • Step 2 - You have to show the trade dress is inherently distinctive or distinctive because of a secondary meaning
  • Step 3 - You have to show there is a likelihood that customers will confuse other products or services with yours if those other products or services use your trade dress

Functionality

Functionality plays a key role in most trade dress cases, and a lot of time is often spent determining whether a trade dress is legally functional. If it is, the trade dress cannot be protected. This even applies in situations where the trade dress is closely associated with a single product or service, or where its use by a competitor will cause customer confusion, i.e. where they confuse a competitor's product or service with those of the owner of the trade dress.

The question of functionality seeks to determine whether a trade dress is primarily used to make the product or service unique and easy to identify, or whether it is connected with customer demands or expectations of the product. A design feature that only makes the product easy to identify and unique cannot be connected to consumer demands for the product. This design feature can take many forms including a slogan, a logo or symbol, a combination of a logo and slogan, a distinctive and/or unique shape, or a feature that is purely ornamental. In other words, anything that reminds consumers of, or connects consumers to, the brand.

Functionality can take two forms:

  1. De facto -  this is the function that the trade dress was intended to perform. Coca-Cola is, again, the best example to use. The de facto function of its famous bottle is to hold and pour the drink, but the trade dress is not connected to that. The trade dress concerns the ribbing on the bottle and the shape of the bottle; neither of these things is necessary to hold or pour the drink, so the trade dress is not de facto functional.
  1. De jure - this applies if competitors of your product or service must use the trade dress in order to compete. In the Coca-Cola example, its competitors can easily use differently designed bottles to compete so the trade dress of Coca-Cola's bottle is not de jure functional either.

The courts have provided a definition of a trade dress that is de jure functional. It is when the trade dress "is essential to the use or purpose of the article or affects the cost or quality of the article". (Qualitex, slip op. at 6; citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850-51 (1982).)

Another case added visual desirability as a factor that could cause a trade dress to be determined as being functional. In other words, even if the trade dress is not essential to the use of the product or service, does not impact on the cost, and does not impact on the quality, it might still be regarded de jure functional. This happens when the trade dress is seen to reduce the competitiveness of other companies. A good example is protecting a color using trade dress. If that color is aesthetically functional (i.e. where consumers specifically want or need the product in that particular color), you will not be successful.

The burden of proof in regard to functionality depends on the court the case is heard in:

  • The plaintiff (the owner of the trade dress) must prove the trade dress is not functional - First, Third, Ninth, and D.C. Courts
  • The defendant (the infringer of the trade dress) must prove the trade dress is functional - Second, Seventh, and Tenth Courts

The way that courts determine functionality can vary from case to case too. Some courts will look at functionality on a feature-by-feature basis, while others look at trade dress as a whole. The Supreme Court in its rulings favors the latter.

Courts determine functionality in a number of different ways, including:

  • Patent - where some or all of the features of the trade dress are covered by a patent (current or expired). In a lot of cases, patents are evidence of functionality. A design patent, on the other hand, is evidence of non-functionality.
  • Advertising - where there is advertising that promotes the usefulness, or utilitarian nature, of features included in the trade dress. This is evidence of functionality.
  • Alternatives - whether there are alternative designs available (such as in the Coca-Cola bottle example given above).
  • Manufacture - whether the trade dress is the result of a cheap or simple manufacturing method. In this case, the trade dress may be considered functional if it is costly for a competitor to offer a product or service without using it.

Distinctiveness

The easiest way to show evidence of distinctiveness is for the trade dress to be registered on the Principal Register of the USPTO. It is important to note, however, that the trademark will not be automatically regarded as valid if it is registered on the Supplemental Register.

If you don't have a USPTO registration, you have to prove the trade dress is distinctive, i.e. the burden of proof is with you.

There are two main ways of doing this:

  • Inherently distinctive – proving the trade dress is unusual, memorable, fanciful, suggestive, arbitrary, separate from the product or service (separately recognized, for example), or commonly regarded as being associated with the product or service (i.e. being a designator of the product's source). Unfortunately, the tests that courts apply to determine inherent distinctiveness vary depending on the jurisdiction and the nature of the trade dress. In addition, inherent distinctiveness can vary from industry to industry, i.e. what is distinctive in one industry may not be distinctive in another.
  • Distinctiveness acquired through secondary meaning – proving customers associate the trade dress only with your product. This can be proven through testimony or survey evidence, or by providing evidence that shows intentional copying. You can also prove secondary meaning by providing evidence that inquiries for your product or service have been misdirected (i.e. to a competitor), or by showing how long the trade dress has been in use, the sales volume achieved in that time, and the advertising used that has featured the trade dress.

Likelihood that Customers will be Confused

In this element of proving trade dress infringement, you have to show that a reasonable customer is likely to be confused as to the origin of the defendant's products or services, or be confused about your connection with the defendant.

Importantly, you don't have to show there has been actual confusion. If there is actual confusion, however, you don't need much proof of it to demonstrate a "likelihood of confusion".

Other factors that are considered when determining if there is a likelihood of confusion include, but are not limited to:

  • The strength of your trade dress (particularly in relation to distinctiveness acquired through secondary meaning)
  • The similarity of the defendant's trade dress as well as the defendant's intentions in using it
  • The similarity between your products or service and those of the defendant
  • Whether you and the defendant sell products or services through similar channels and/or to similar customers
  • The marketing channels that both you and the defendant use
  • The level of care that customers take when purchasing products or services from you or the defendant
  • The use and prominence of brand names and product names on the defendant's products or service, i.e. whether the use of those words reduces or eliminates the likelihood of customer confusion

Other Things to Consider

If you have an unregistered trade dress, it may be possible, under federal law, to assert a claim of dilution. You must be able to prove both of the following:

  • The trade dress is not functional but is famous, when taken as a whole
  • The trade dress taken as a whole is famous separately from the fame of any registered marks that may be included in the trade dress being claimed

In addition, unfair competition laws (federal and state) often apply if you have a trade dress that is not registered.

If a court decides your trademark has been infringed, the following remedies can be applied:

  • Injunction
  • Payment of damages based on the defendant's profits and/or the damages you have incurred (courts have the power to treble damages in exceptional cases of trade dress infringement)
  • Attorney fees (in exceptional cases)

In regard to damages, you will have to prove the defendant's sales in relation to products or services using your trade dress. The defendant then has to prove costs and deductions so the court can assess the level of profit.

Exceptional cases are those where the defendant infringes your trade dress willfully, maliciously, deliberately, or fraudulently.

Why Is Trade Dress Important?

Trade dress is important because it prevents other companies from using unfair practices in their efforts to compete with you. In particular, selling products which could be confused as being yours, or creating customer confusion as to the link between your company and theirs.

It is a useful legal tool in a number of situations, including when products cannot be protected using word or logo based trademarks, copyright, or patents. This is the case even though the law continues to evolve, changing what can and can't be protected by trade dress.

Examples of Trade Dress

  • One of the most well-known and important cases was brought by the Mexican restaurant chain, Taco Cabana. It wanted to protect the atmosphere created by its décor and the novel way it provided a buffet service. This atmosphere was found to be inherently distinctive by the Supreme Court, so it was protected by trade dress. ((Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).) The defendant in the case tried to argue the atmosphere was not inherently distinctive. If this was successful, Taco Cabana would have had to show secondary meaning, i.e. that the atmosphere in its restaurants had acquired secondary mean through, for example, the use of that atmosphere in its advertising. The court rejected this argument, however.
  • In another case, a restaurant was able to use trade dress to protect its decor, layout, menu, and style. This included the nature of its food preparation area (which customers could see), the way it stored food products in the dining area, and more.
  • Bottle shapes are often protected using trade dress. Examples include the Coca-Cola bottle with its curves and ribs as well as the Haig & Haig Scotch whiskey bottle.
  • Successful trade dress cases have been taken by companies claiming trade dress on the color and shape of pill capsules. (Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., 547 F.Supp. 1095 (D.N.J. 1982))
  • Toys can be protected too. An example is toy models of the Ferrari 365 GTB/4 – the design of such toys is protected by trade dress. (Ferrari SpA v. McBurnie, 11 U.S.P.Q. 2d 1843 (S.D. Cal. 1989).)
  • Ferrari cars themselves have been protected by trade dress too, preventing kit-car manufacturers from offering replicas. ([Ferrari] Esercizio v. Roberts, 944 F.2d 1235 (6th Cir. 1991).)
  • Golf courses have been able to use trade dress to protect signature holes that were copied by other golf courses. Golf clubs have been protected too, particularly Calloway Big Bursa golf clubs - other companies are prevented from selling clubs that are deemed to infringe on Calloway's trade dress. (Calloway Golf Co. v. Golf Clean Inc., 39 U.S.P.Q. 2d 1737 (M.D.Fla. 1995).)
  • Another good example is that of a gas station selling gas from a Mobil pump, even though the gas was not supplied by Mobil. The brand name Mobile was covered over, but the design of the pump was found to be protected as trade dress. (Mobil Oil Corp. v. Auto-Brite Car Wash, Inc., 615 F.Supp. 628 (D. Mass. 1984).)
  • In a case brought by Sunbeam regarding its American Classic Mixmaster product, a court found that its design (which includes a torpedo shape and other features) had become distinctive and so was protected as trade dress. (Sunbeam Products Inc. v. West Bend Co., 44 U.S.P.Q. 2d 1161 (5th Cir. 1997).)
  • An example of a comedian's style being protected by trade dress comes from a case taken by the comedian Jeff Foxworthy. He is associated with "you might be a redneck" jokes so courts prevented other companies from selling t-shirts bearing that phrase. (Foxworthy v. Custom Tees, Inc., 879 F.Supp. 1200 (N.D.Ga. 1995).)
  • Smells have been protected by courts too, such as in a case brought by a manufacturer of thread and yarn for sewing. It was allowed to register a smell described as "high impact, fresh, floral fragrance reminiscent of plumeria blossoms". (In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).)
  • Sounds have also been registered and are protected by trade dress, including the three tone chime used by NBC.
  • The use of pink in Owens-Corning's insulation products is a good example of the use of color in trade dress. Making these products pink actually increases the cost of manufacturing, but it makes them identifiable so courts have protected the trade dress of the products.
  • Another example of the use of color comes from the Supreme Court which protected the green and gold color of the dry cleaning press pads used by Qualitex. (Qualitex Co. v. Jacobson Products, 115 S. Ct. 1300 (1995).)

Examples from the courts also show when trade dress does not apply. This includes the case where a court found the Chippendale's Cuffs & Collar design mark was not inherently distinctive (In re Chippendales USA, Inc., 90 U.S.P.Q.2d 1535 (TTAB 2009). Another is where the Supreme Court decided that clothing design, specifically a line of children's clothing, is not inherently distinctive by default. In this case, the distinctiveness would have to be achieved through marketing efforts and sales. (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).)

Another case that went to the Supreme Court involved the traffic sign manufacturer Marketing Display. It argued its design, which previously had a patent, could be protected by trade dress. A lower court found in its favor because the design had secondary meaning and, while being functional (as evidenced by the expired patent), did not put its competitors at a disadvantage. The Supreme Court reversed this by saying the design was essential to the use of the traffic sign. This made it functional so it could not be protected by trade dress. (Traffix Devices v Marketing Displays, 121 S.Ct 1255 (2001).)

In another case, the Court of Appeals overturned the decision of a lower court in a trade dress case by looking at the differences between two products. In addition, it did not give weight to whether or not the defendant acted in bad faith. The case was brought by Merriam-Webster to protect the trade dress of its dictionary, Merriam-Webster's Ninth New Collegiate Dictionary. It did this when a competitor, Random House, changed the name of its dictionary to Random House Webster's College Dictionary and put it in a similar red dust jacket, along with other similarities.

Other courts have taken a different view, particularly in relation to a case involving the V.C. Andrews book series. In this case, the court did take into account similarities between the book covers involved and the likelihood that this would cause confusion, in addition to the bad faith of the defendant. It decided that trade dress protection did apply. (Simon & Schuster v. The Putnam Berkley Group, Inc. (DCNY, 1994).)

As a final example, a court found that medical equipment manufacturer ERBE could not protect the blue color of its endoscopic probes. This was because blue has a functional purpose in this field of medicine as it helps identify endoscopic tips. (ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278 (Fed. Cir. 2010).)

Trade Dress and Design Patents

Trade dress protections can also apply to products which have had or could have had a design patent. This applies even if the design patent has expired or was never obtained. In other words, you can simultaneously protect a product with trade dress and a design patent, plus you can use trade dress when a design patent is no longer valid.

This is because of the nature of the two laws. When your design patent expires, other companies can copy your design but they are not allowed to cause confusion between their products and yours.

When deciding whether to obtain a trade dress trademark, a design patent, or both, you should first consider what each protects:

  • Design patent - protects the design of a product giving you exclusivity over the design for a certain period. Even if you don't manufacture or sell the product, you are still protected by a design patent.
  • Trade dress - protects your investment in marketing and advertising where you have created a particular image for your product, and consumers exclusively associate that image with your product.

As design patents and trade dress protect different things, the requirements are different for both:

  • Design patent - the design firstly has to be new and cannot be a variation of a design that already exists. The design must also be ornamental in nature, rather than purely functional. That said, it can have some functionality.
  • Trade dress - a trade dress must be something that is distinctive and connects the consumer to the product, i.e. the consumer instantly recognizes the source of the trade dress. Unlike a design patent, it cannot be functional in any way. Design features that have a function should be protected with a design patent.

Time is also a consideration as design patents are time-limited (usually 15 years). Trade dress, on the other hand, can theoretically exist forever. Some companies use a design patent to give them protection while they establish trade dress through advertising.

Another thing you should consider is how the courts make decisions in cases of trade dress and design patents. If the court decides you do have trade dress, you have to demonstrate there is a likelihood of confusion in the market. This is easier to achieve than what you have to prove in a design patent case - that an ordinary observer would regard the two designs as being substantially the same.

Also, the way rewards are determined is important as it is different in both cases. In both, a court may award you lost profits as well as the defendant's profits. That said, profit awards are often both easier to prove and are for higher amounts in cases of design patent infringement. This is because you have to prove the infringement of your trade dress caused you injury, something you don't have to do if your design patent is infringed. This way of determining awards in design patent cases is sometimes controversial, such as in the decision between Apple and Samsung.

There are other differences in the way awards are determined in design patent infringement and trade dress infringement cases. In a design patent case, you may also be awarded a reasonable royalty. This is particularly beneficial in cases where the defendant has a low profit margin, sells the products at a loss, or gives them away for free.

Finally, design patents are beneficial to cases involving trade dress so it is sometimes good to have both. This is because only non-functional designs can get a design patent. This means courts usually regard design patents as evidence of a product's non-functionality. Having a design patent is not always beneficial to your efforts to protect trade dress, however. This particularly applies when your product dominates the market to an extent that it becomes either generic or functional. In both cases, trade dress protection does not apply.

It's worth noting that in addition to potentially applying to products that have design patent protection, trade dress protection can also apply to items that are copyrighted or that have a utility patent.

Common Mistakes

  • Being inconsistent – customer familiarity is important in cases of trade dress, so it is important to keep designs consistent when you release updated versions or alternatives of your product. Remember, it is the overall look of the trade dress that a court will normally consider.
  • Focusing too much on details - trade dress involves the overall look of a product or service. It is this which will determine whether or not there is a likelihood of confusion, not individual features or details.
  • Assuming a product will have immediate trade dress protection - this only applies if the trade dress is inherently distinctive. In most cases, you have to show secondary meaning which usually takes a number of years.

Steps to Register

Your trade dress rights potentially exist whether you have received registration with the USPTO or not. In situations where your product is unregistered, your rights are established in common law by the adoption and use of the trade dress (i.e. through advertising and other marketing efforts).

You can also register the trade dress with the USPTO or through state registration to obtain a trademark. You have to show the trade dress is not functional and that it is either inherently distinctive or distinctive because of a secondary meaning. Usually, this is achieved by providing evidence of the advertising you have used to promote the product. As a result, the trade dress will have to be in use for a number of years (often five years or more) before you can register it.

If you need help with trade dress, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.