What Is Trade Dress Protection?

Trade dress is a term that describes a product or packaging's look and feel. While traditional trademark law protects words and logos, trade dress protects design. A publisher, for instance, might apply for trade dress protection for a book series' design. For trade dress to be protected, the public must be able to identify it through advertising, promotion, and strong sales.

According to the Federal Courts, trade dress protection follows a general rule. It states that the Lanham Act protects registered trademarks as well as unregistered trade dress. For those wanting to sue for trade dress infringement under the Lanham Act, the plaintiff must prove that:

  • The trade dress has obtained "secondary meaning" in marketing;
  • The trade dress of two competing products is very similar; and 
  • Trade dress features are nonfunctional.

For trade dress to have "secondary meaning," the public must recognize that a product, book series, or packaging comes from one manufacturer. Similar uses by other manufacturers might cause confusion among the public. The Court would then have to identify eight factors to determine whether there is a "likelihood of confusion." These factors include:

  • The strength of the plaintiff's trademark; 
  • How the goods are related; 
  • Similarities between or among the marks; 
  • Proof of trademark confusion; 
  • Any marketing methods used; 
  • Likelihood of care by the buyer;
  • Likelihood that the defendant will use the mark; and
  • The likelihood of product line expansion.

Why Is Trade Dress Protection Important?

If you present a clearly distinctive product design and trademark, you might stand a better chance of claiming protectable rights to such trademark and trade dress. For this reason, it is important to market your product effectively and to have proof of that marketing. 

Trade dress protection helps businesses that want to identify themselves easily by way of a trademark, which comes in the form of a symbol, slogan, ornamental design, or other visual element. 

Trade Dress Protection Limitations

Questions a court might ask when determining trade dress include:

  • Whether the trade dress is functional;
  • Whether it is distinctive; and
  • What's the likelihood of confusion if more than one party claims trade dress.

With regards to functionality, the product must perform the function it was intended to.

A "distinctive" case of trade dress protection is one that can be protected because of its secondary meaning or its inherent nature. A trademark or service mark is considered distinctive if it's a valid trademark.

Another factor is whether the trade dress protection causes any confusion per the Lanham Act. Likelihood of confusion, however, does not mean there's actually been copying, direct competition, or confusion. 

Issues That Affect Trade Dress

Three important issues affect trade dress protection.

  1. First, the courts must determine if it is "functional." 
  2. If that cannot be determined, the next step is to decide if the trade dress is "distinctive," whether inherently or because of its secondary meaning. 
  3. If the trade dress is distinctive, then the third issue in a court case is whether there's a good chance the service or trademark will cause confusion between the parties' trade dress.

Functionality

With this limitation in trade dress protection, there is "de facto" and "de jure" functionality. Factors to determine functionality include:

  • How the claimant advertises its products and services;
  • Overall sales volume of the client's products or services;
  • Ways the product or service is used;
  • Consumer testimonials or reviews;
  • Consumer surveys;
  • Whether the product was copied intentionally; and
  • Evidence of misdirected inquiries.

Distinctiveness

A trade dress can also be considered protectable. A U.S. trademark or service mark that's on the Principal Register is a valid trademark, making it distinctive. If the trademark is nonfunctional, that means it is an embellishment or a trade dress that stands out for its individuality. Examples include a slogan, a symbol, words and symbols, an ornamental feature, a shape, or something else designed to remind customers of a certain brand.

In the case of distinctiveness, a competitor would find it necessary to include a certain mark on his or her product to be competitive. A trademark feature is also considered functional when it is more expensive to design around a brand.

Likelihood of Confusion

According to The Lanham Act, trade dress protection must be determined based on a likelihood of confusion. Direct competition or actual copying is not always necessary for there to be confusion. Factors include:

  • Similarities between the trade dress of the claimant's products or services and that of the alleged infringer's;
  • Other similarities between the two products; 
  • Whether the products or services go through similar distribution cycles and attract the same consumers;
  • The amount spent by consumers on the product or service;
  • The public's perceived importance of the secondary meaning of the claimant's trade dress;
  • Proof of actual confusion; and
  • Proof the infringer tried to pass off the product or service as its own.

Trade Dress Protection Examples

Examples of trade dress protection include Grey et al. vs. Meijer Inc. and Wal-Mart Stores Inc. vs. Samara Brothers Inc.

In the case of Grey et al. vs. Meijer Inc., the plaintiff argued that a design promoting his popcorn brand was distinctive, qualifying for protection under trade dress. Meanwhile, the defendant originally marketed the plaintiff's popcorn at the same time as the defendant's private label popcorn brand. The plaintiff's popcorn line was later discontinued because of poor sales. Because the defendant and plaintiff appeared to market similar packaging, the argument was whether the plaintiff had protectable rights in trade dress.

In Wal-Mart Stores Inc. vs. Samara Brothers Inc., Samara Brothers sued, arguing that Wal-Mart violated Samara Brothers' rights to trade dress because it sold a similar line of children's clothing.

Frequently Asked Questions

  • What are the requirements to register trade dress?

According to the International Trademark Association (ITA), applications to register for trade dress protection must include a general description of the trade dress, identification of the product or service to be protected, and payment.

  • What categories must products or services fall into before being considered for trade dress protection?

A product must be distinctive, meaning consumers easily recognize the trademark and know its source. Or, the trademark can be nonfunctional, meaning it is not necessary to the product or service's purpose.

  • What is the Lanham Act's role?

Trademarks are protected by the Lanham Act, which prevents unfair competition among brands. To prove infringement against trade dress, the plaintiff must prove inherent distinctiveness or secondary meaning of the trade dress; nonfunctionality of the trade dress; and likelihood of confusion among consumers.

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