What Is Trade Dress Infringement?

Trade dress infringement occurs when one company uses trade dress similar enough to another's to cause a "likelihood of confusion" in an ordinary buyer's mind. The legal term "trade dress" refers to the general appearance of a product or its packaging that reveals its source to customers. Think of McDonald's Happy Meal boxes, for example. Companies who provide services can also have trade dress in the atmosphere or decor in which those services are provided. Picture the high ceilings and Grecian columns of The Cheesecake Factory restaurants, for instance.

While a trademark is a word, trade dress is a visual impression. Just like trademarks and patents, companies can register their trade dress with the United States Patent and Trademark Office, (USPTO). Doing so allows companies to protect their trade dress in federal court from infringement. To get that protection, the trade dress must be "inherently distinctive," and use by others must be likely to confuse buyers.

Companies that get this protection for their trade dress can sue other parties for infringing. The company that owns the trade dress is the plaintiff in these situations, and the company allegedly infringing is the defendant. In deciding whether the similarity between the parties' trade dress is likely to cause confusion among consumers, the courts apply the "ordinary buyer" standard. That is, would the similarity lead "unthinking" consumers to believe the product or service came from the same source? If so, trade dress infringement likely exists.

Here are the factors the court will look at to decide the likelihood of confusion:

  • The strength or distinctiveness of the trade dress
  • Defendant's intent to copy and profit off plaintiff's reputation and goodwill
  • Products' similarity
  • Evidence of actual confusion
  • Degree of care exercised by buyers
  • The area, manner, and degree of concurrent use

Guidelines for Trade Dress Infringement

The courts don't have any hard-and-fast rules for deciding trade dress infringement cases. Instead, these lawsuits are decided on a case-by-case basis. However, past rulings have established a few general guidelines:

  • Check out the labels. Courts are less likely to deem something trade dress infringement if the product has a company's well-known logo or name prominently displayed. The reasoning behind this is that a prominent label significantly lowers the likelihood of confusion among buyers. However, prominent labels don't always negate the possibility of confusion. If the defendant copies more than functional or common characteristics, the court may still find that confusion is likely even with a conspicuous label.
  • Do your homework. As you create your trade dress, meet with your marketing or design team to figure out where the idea came from. Before you do a formal search for any similar protected trade dress, do what is known as a "knockout search" to knock out any obvious possible infringement. You can do this through the USPTO's TESS, or Trademark Electronic Search System , and Google. If you don't find anything, you can proceed with a full trademark research report. The results will be complicated, so you will need a trademark attorney to help you make sense of the results.
  • Take the "confusing similarity" test. Apply the six factors mentioned above to your trade dress. For example, will your product be next to those with similar trade dress (proximity)? How careful are buyers when purchasing a product like yours (degree of care)? Have you conducted polls or studies that provide actual evidence of buyer confusion?
  • Good faith. If you know similar trade dress is out there and still go forward with yours, you're far more likely to lose a trade dress infringement suit. By contrast, if you act in good faith, not intending to cash in on someone else's similar trade dress, the court may find in your favor.
  • Focus on the big picture. Remember trade dress is all about a visual impression, not subtle details. The ordinary buyer test means that the court will look at your product through the eyes of a casual buyer — one who does not have the time or the desire to scrutinize every detail. The overall appearance of your product will tip the scale one way or another, not the small, distinguishing features.
  • Stay consistent. If your trade dress varies widely over time, it will affect how familiar buyers are with your product. This damages the distinctiveness of your trade dress and puts you in a weaker position in an infringement suit. To avoid this, keep the font, graphics, style, terms, colors, and size of your trade dress consistent. If you introduce changes, do it gradually.
  • Register, register, register. Even unregistered trade dress is protected under the common law. However, federal registration will give you a host of benefits. For one, registration serves as notice to all other companies that the trade dress belongs to you. Second, registration gives your trade dress the presumption of ownership and validity, meaning that it is presumed to be the first in time. If alleged infringers claim otherwise, they have to prove it.

Why Is Trade Dress Infringement Important?

The earliest attempts to protect trade dress were an effort to stop companies from duping consumers into buying poor-quality products by imitating the look of high-quality items. Early courts also sought to protect the sellers of high-quality items from disreputable companies who tried to profit off of other companies' good reputations. Trade dress infringement cases can be found as early as 1900.

Eventually, Congress passed federal laws with the same goals. Trade dress infringement is now a violation of the Lanham Act, otherwise known as the United States Trademark Act of 1946. Section 43(a) of this law is the legal tool most commonly used to protect trade dress. Here's what the law, in relevant part, provides:

"Any person who, on or in connection with any goods or services . . . uses in commerce any word, term, name, symbol, or device, or combination thereof, or any false designation of origin . . . which – (A) is likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act." (15 U.S.C. §1125)

Trade dress protection also exists at the state level in many states. Some states' statutes allow for registration of trademarks and trade dress at the state level, but this option is exercised far less frequently than the federal one. The Lanham act already provides protection for both registered and unregistered trade dress, so the state statutes don't bring much to the table. Additionally, state and federal courts have concurrent jurisdiction under the Lanham Act, which means companies can bring trade dress infringement suits in state court and still enjoy the Lanham Act's protections.

Elements of a Trade Dress Infringement Claim

For a trade dress infringement claim to succeed, the plaintiff must prove infringement by a preponderance of the evidence. In other words, the plaintiff must prove that 51 percent, or the majority, of the evidence favors a finding of infringement. That evidence must prove all three of the following:

  1. That the plaintiff owns protectable rights in the trade dress, which must be a) inherently distinctive or have taken on secondary meaning, and b) not functional.
  2. That the plaintiff began using the trade dress before the defendant began using its similar trade dress, or, if the trade dress isn't inherently distinctive, that the plaintiff's trade dress took on secondary meaning before the defendant's did.
  3. That the defendant's use of the trade dress is likely to cause confusion among consumers about the origin or source of the products or services. The court will evaluate the likelihood of confusion by looking at the overall image, impression, and appearance created by the defendant's trade dress in the mind of an ordinary buyer.

"Secondary meaning" refers to acquired meaning of trade dress that identifies where that product or service came from. In deciding whether trade dress has taken on a secondary meaning, the courts may look at:

  • The testimony of consumers
  • Type and amount of advertising
  • Consumer surveys
  • The length, nature, and exclusivity of use
  • Evidence of intentional copying
  • Sales and number of buyers
  • Established position in market

Defenses to Trade Dress Infringement Claim

A company accused of infringing on another's trade dress may use any of the following defenses:

  • Non-distinctiveness/lack of secondary meaning. The defendant can argue that the trade dress is common and/or that it serves only to identify the product, not its origin, so it lacks secondary meaning. Keep in mind that when trade dress is federally registered, that serves as evidence in court that it is either inherently distinctive or has taken on secondary meaning.
  • Functional. If trade dress is functional, it is not protectable. For example, the courts have previously denied trade dress protection to a company for pink wound dressing. The courts said that the dressing blends with certain skin tones, making the color flesh-toned and thus functional.
  • Laches. Laches is a legal term meaning that a party loses its right to an infringement claim when it unnecessarily delays filing suit. For example, say a plaintiff waits several years to file an infringement claim against a defendant, and that defendant invests money and time in the trade dress in the interim. Unless the plaintiff has a good excuse, the court would likely find for the defendant.
  • Fair use. This is when the defendant uses the trade dress not to identify the source or origin of the goods, but merely to describe them.
  • Brand name. As discussed above, the prominent display of the defendant's brand name or logo on the trade dress can overcome a claim of infringement. The rationale is that the likelihood of confusion is greatly reduced.

Trade Dress Infringement and Other IP

Trade dress is a form of intellectual property, or IP. Here's how trade dress protection compares with other forms of IP:

  1. Trade dress and design patents. You can potentially protect a design with both trade dress rights and a design patent. While trade dress protects the overall image of a product or its packaging, a design patent protects the "ornamental" features of an item instead of its functional features. Typically, it takes 15.1 months to register trade dress. It takes about 18 months to get a design patent. Keep in mind, however, that trade dress can take years to acquire secondary meaning. Also, trade dress rights cost about $673 to acquire in 2006, while design patents cost $1500.
  2. Trade dress and utility patents. At least in the Tenth Circuit, it has become harder to get trade dress protection on a product for which there is a utility patent. Essentially, the Tenth Circuit has ruled that patent laws preclude a product from trade dress protection, even if that trade dress is nonfunctional.
  3. Trade dress and copyright. While written material is ordinarily granted copyright protection, companies may also protect such materials with trade dress laws. In the 1992 Computer Care case, the Seventh Circuit extended trade dress protection to Computer Care's monthly reports, sales brochures, and reminder letters.

In the event that a court finds that trade dress infringement has occurred, it has several remedies at its disposal:

  • Injunction. When a court issues an injunction in a trade dress case, it enjoins, or stops, a company with a court order from continuing to use the trade dress in question. Courts can also just limit the use of trade dress through an injunction.
  • Monetary relief. A court might also award a plaintiff with money damages in the form of actual losses suffered by the plaintiff due to the trade dress infringement, and/or recovery of the defendant's profits that resulted from the infringement.
  • Attorneys' fees. In rare cases, the winning party in an infringement suit might be entitled to recover the cost of their legal fees.

What Is Dilution?

Dilution is another claim a plaintiff might be able to make with regard to trade dress. Dilution, according to Section 43(c) of the Lanham Act, protects companies from "the weakening or reduction in the ability of a mark to clearly distinguish one source."

Dilution can occur in one of two ways. First, trade dress may suffer "tarnishment," meaning the trade dress' reputation is degraded somehow by a negative association. For example, associating trade dress with illegal activities or pornography would qualify as tarnishment. Second, trade dress may be subject to "blurring," meaning another company's actions impair the trade dress' distinctiveness.

In these cases, the owner of the trade dress rights is entitled to an injunction. That right applies regardless of the likelihood of potential or actual confusion and regardless of whether any economic injury has occurred.

Examples of Trade Dress Infringement

Recent court cases have highlighted examples of protected trade dress:

  • John Deere green and yellow. The court issued an injunction against a competing farm equipment producer who was producing tractors and other products painted green and yellow. John Deere has used its signature green color on the body of its machines and yellow on the seats and tires for over a century. The court found this color combination to have taken on secondary meaning, thus entitling it to trade dress protection.
  • Apple vs. Samsung. Apple and Samsun just recently finished up drawn-out litigation over claims that Samsung diluted Apple's trade dress and infringed on its design and utility patents. Ultimately, a federal court denied the dilution claim but agreed that Samsung had infringed on Apple's patents. In explaining its denial of the trade dress claim, the court pointed out that a design that is functional, such as that of Apple's iPhone, can't qualify as protectable trade dress.
  • AP Royal Oak watch vs. Swiss Legend Trimix. These two watches had similar designs, particularly on the bezels, which both had six distinctive circular metal decorations. AP sued Swiss Legend for trade dress infringement, and the court ruled in AP's favor. The court ordered Swiss Legend to pay AP the $3.2 million it had made in profits prior to the trial. The court also awarded treble damages for a total of over $10 million and about $880,000 in attorneys' fees and expenses.

If you need help with a trade dress infringement claim, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top five percent of attorneys to its site. Lawyers on UpCounsel graduated from law schools like Harvard and Yale. UpCounsel's attorneys also have an average of 14 years of experience, including working for or on behalf of Google, Stripe, and Twilio.