What is Trademark vs. Trade Dress?

A trademark offers legal protection for a logo, symbol, phrase, word, name, or design used to show the manufacturer of a product. Trade dress protects all elements used to promote a specific service or product. Examples of trade dress include packaging and the atmosphere or décor within a place of business.

The term "trade dress" comes from a 1992 court ruling and refers to the way a product is "dressed" to go to market. Since then, the term has expanded to include other elements, such as specific themes used in decoration or styling of a business location. The updated definition focuses on the total image instead of the way a product is "dressed up."

The Lanham Act, which contains a number of trademark-related laws and regulations, defines trade dress as "almost anything at all that is capable of carrying meaning." This does come with some restrictions.

To qualify as distinctive trade dress, it must have a secondary meaning. This means consumer association of the design with the company or source through exposure and advertising.

Functionality

The first limitation is functionality, which exists to prevent a monopoly on something that is necessary for the functionality for all producers of a similar product or providers of a similar service. Functionality further breaks down to two subcategories:

  • De facto
    • De facto means that the packing, product, or design elements offer a unique function in a meaningful, deliberate way.
    • One example is the unique shape of a glass Coca-Cola bottle. The bottle holds the soft drink and the small opening at the top allows the beverage to be poured. These aspects of the bottle are functional, but the shape of the bottle itself is not.
    • Thus, only the functional components of the bottle would qualify under the de facto functionality requirement for trade dress.
  • De jure
    • De jure refers to how important the packaging, product, or design elements are for another company to compete. If your trade dress elements are necessary for other companies as well, they likely won't qualify for trade dress protection. This regulation exists to prevent disadvantages between competitors that don't relate to one company's reputation.
    • One example of de jure functionality occurred when Brunswick Corp. filed a suit against British Seagull Ltd. Both boat and engine companies used the color black when manufacturing engines, but Brunswick Corp. wanted to register the color as part of its trade dress.
    • When reviewing the functionality of black for boat motors, the judge found that this color helps the outboard motor look smaller. Black also complements many color schemes used in boat construction. So Brunswick Corp. could not claim black as part of its trade dress because that would create an unfair advantage.
  • Both de facto and de jure restrictions help maintain competitive fairness. When a trade dress request goes to court for review, functionality is the top issue addressed.

When assessing functionality, the courts often look at four factors:

  • Whether the design or product holds an active or expired utility patent
  • Whether the company advertises the advantages of the specific elements of its trade dress
  • Whether other design options are available
  • Whether the design comes from cheaper or easier ways to manufacture the item

One example of the functionality aspect of trade dress protection is visible when a company that produced a round beach table filed an application on the shape. The round shape of the table was functional in nature, allowing several people to sit around it, so it could not qualify for protection under trade dress. Shapes, designs, and other similar aspects are protectable under trade dress if they somehow promote the service or product in a unique way.

Another example is a wearable fitness monitor with a contoured heart shape that was orange in color. The orange color and heart shape might qualify for trade dress protection, since these elements are not necessarily functional in nature. But the contoured shape likely wouldn't, since it serves a purpose to keep the monitor close to the skin on the wrist for heart rate tracking. If you wanted to pursue legal protection in this example, you would need to file a utility patent for the functionality of the shape or a design patent for the appearance.

It's also nearly impossible to register patented ideas under trade dress, since utility patents cover the functional aspects of a product.

Distinctiveness

Without characteristics that set the design apart from others, the trade dress probably won't hold up in court. One of the easiest ways to prove that trade dress is distinctive is holding a trademark from the United States Patent and Trademark Office (USPTO).

When considering if something is distinctive enough to qualify for trade dress, reviewers will decide whether the shape or design is common or unique. Common shapes or designs often serve a purpose. For example, if your company makes packaging that holds a certain computer part, it may not qualify for trade dress if the packaging is in the shape of the part. In this case, the design is common because it serves a specific purpose in housing the part.

It's also unlikely that color alone will qualify for trade dress protection. In order to qualify, the color must hold secondary meaning.

If your design elements qualify for trade dress protection, you'll receive a registered trademark from the USPTO. After establishing the rights of the trademark, you can legally sue anyone who infringes on your trademark.

When reviewing cases of trademark infringement, the overall purpose is determining whether the third party's design will cause confusion. The purpose of trademarks and trade dress is to prevent consumers from feeling confused about who manufactured a product or offered a service.

The likelihood of confusion restriction includes a few factors, such as how similar the two trade dresses are, how similar the products and/or services are, and the strength of the protected trade dress.

Why Is Trademark vs. Trade Dress Important?

Trademark vs. trade dress is important because both allow companies to protect its intellectual property, or the aspects that make the business more unique. Protecting and enforcing marks and design elements is becoming even more important with the increase of digital communications and technology. Companies can market their products and services on a global scale simply by setting up a website.

The result of increased awareness is increased infringement and replication. Without a way to protect the aspects of your company that make it unique, you can't stand out in the marketplace. Trademark laws protect companies and consumers. The ultimate goal of trademark or trade dress protection is avoiding confusion and allowing a consumer to make an informed decision because of clear and protected branding.

Both trademarks and elements of trade dress are valuable to a company. Because of their value, trade dress and trademarks are always vulnerable to duplication or creation of similar designs. Competitors see the value that your company brings to the market, and those unique elements help your business stand out.

Reasons to Consider Not Using Trademark vs. Trade Dress

If the elements of your packaging, overall décor, design, or theme aren't unique or functional enough, they won't meet the requirements for trade dress protection. If this happens, you have a few options. You can continue using the same items or design elements with the understanding that they aren't fully trademarked or protected.

Another option is to make the elements more functional and distinctive so they would qualify for trade dress protection. Doing so would require you to file for a trademark again.

Reasons to Consider Using Trademark vs. Trade Dress

Protecting the elements of your company that make it unique helps prevent duplication and copycats. It also solidifies the purpose of trademarking ideas and elements, which is to prevent confusion among your existing and potential customers.

When someone walks into a Hard Rock Café location, he or she will see similar designs, décor items, and themes that identify it as a location within this chain. It would be confusing if any restaurant could create a similar atmosphere since the Hard Rock Café could no longer set itself apart with these elements.

When someone is preparing to apply for a patent, he or she might keep the idea quiet for as long as possible to extend the period in which the option for a patent is still available. You must legally file a patent application within 12 months of public disclosure of the idea. But publicly disclosing your trade dress elements quickly is very helpful to creating a stronger case for protection. Because trade dress requires a "secondary meaning," or association with your brand or product, you'll need to get the concepts in front of consumers as soon as possible.

Secondary meaning also requires proof of advertising, marketing, and other media coverage, so using it often will make a better case that your trade dress does set your company apart from competitors and thus qualifies for legal protection. It's easier to qualify for trade dress protection if you have been using the elements for at least five years.

What Could Happen When You Don't Do Trademark vs. Trade Dress?

If you choose not to file for protection of your company's unique mark or trade dress, your competitors could introduce similar concepts. However, basic common law trademark rights offer protection on unregistered marks and trade dress in current market use.

If you infringe on a registered trademark or trade dress with your design or mark, the common law rights don't apply. You'll have to stop using the mark or elements that infringe and create a new theme or design for your business.  

Common Mistakes

One mistake that companies make is trying to get trade dress protection for a functional aspect of a design. For example, Coca-Cola bottle could not trademark the overall shape of the bottle. Bottles don't have secondary meaning to Coca-Cola because consumers don't associate every bottle with Coke. But certain non-functional elements of the bottle are unique, so those could qualify for trade dress protection.

Another mistake is trying to file a trademark application when you're looking for trade dress protection. A trademark specifically protects certain elements that identify a provider of goods or services, such as the logo, phrase, word, name, symbol, or design. Trade dress is much broader and covers elements that provide an atmosphere.

Frequently Asked Questions

  • How can I apply for trade dress?

There are two options to protect the unique design elements that make up your trade dress. The first is to apply for a design patent. This includes reviewing existing patents to make sure that the concept is ornamental and unique without copying any prior art. In order to qualify for a design patent, the design can't include any functionality, as that would be covered under a utility patent.

If you choose the design patent option, you'll have 12 months to file from when you introduce your design. If you miss the window, you'll lose the opportunity to patent your design.

Most companies choose to register trade dress through the trademark process instead of a design patent. It doesn't take as long and it's typically cheaper. The elements must meet the criteria for protection, including distinctiveness and non-functionality.  

To apply for trade dress protection, file a trademark application with the elements of trade dress included.

  • What is covered under trade dress protection?

Trade dress protection could cover a variety of elements that make your company unique. As mentioned, the Hard Rock Café's trade dress components include the design of its restaurants. The Coca-Cola bottle has ribbed areas that make it look different from other bottles on the shelf. You could also include packaging for your product as a trade dress feature.

  • What can I do if another company copies my protected trade dress?

If you hold trademark protection on your company's trade dress, you have the same legal rights to sue as you would under a standard trademark.

Steps to File

Understanding the differences between unique trade dress elements and a mark that identifies your company will help you know which to choose for better protection.

If you need help with trademark vs. trade dress, you can post your question or concern on UpCounsel's marketplace. 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.