Trade Dress 

Trade Dress is a version of trademark protection that can be a valuable intellectual property tool for protecting proprietary designs and products. Trade dress is the overall impression and appearance of a product, product packaging, design, or promotional materials, and acts as a source identifier for a product or service, i.e., like a trademark. Familiar examples of trade dress include the design of a coke bottle, Ferrari sports car designs, the smell of Play Doh, and the store design of Dunkin' Donuts restaurants, including the décor and layout.

If the average consumer associates the non-functional, distinctive packaging or design features of the product with the source of the product (e.g., the manufacturer), then the design may carry trade dress rights. Additionally, trade dress rights can arise from other distinctive aspects that create an impression in the mind of the consumer, such as any non-functional distinctive colors (e.g., the pink color of Pink Panther insulation), flavors, materials, shared features across products (e.g., Dr. Marten's shoe sole design), packaging, exterior or interior building designs, or other features and aspects that have (1) become distinctive as to the source of the product either inherently or through long-standing use (secondary meaning), and which are (2) non-functional. This article provides an overview of trade dress, its purpose, and the associated legal protection.

Trade dress refers to the overall visual appearance of a product or its packaging, which signifies the source of the product to customers. It includes both product design trade dress and product packaging trade dress. A good example of product design trade dress is the unique shape of the Coca-Cola bottle, which is instantly recognizable to consumers. This visual appearance has become associated with the Coca-Cola brand, even without any logos or text.

Similarly, product packaging trade dress protects the look and feel of how a product is packaged. For example, the distinctive décor and color scheme of Tiffany & Co.'s signature blue box is protected as trade dress because customers recognize it as an indicator of the brand. In both cases, these protections cover specific visual elements that make the product or its packaging distinctive.

In some instances, a product feature itself can be protected, provided the feature is non-functional and serves to identify the brand. For example, Christian Louboutin’s signature red-soled shoes combined with specific visual advertising designs have been protected as part of trade dress. Other visual elements like the layout, color schemes, and overall presentation of a product's packaging can also be protected. To qualify as trade dress, these features must be distinctive and serve to identify the source of the product.

A provider of services can create trade dress rights through the distinctive use of décor , architecture, distinctive promotional materials, or other things that are non-functional and serve to distinguish the particular company. A famous example of trade dress for services is found in the US Supreme Court case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). In the Taco Cabana case, a Mexican restaurant chain was found to have trade dress rights in its décor and novel configuration of its restaurants. The elements of the restaurant that contributed to the trade dress included the exterior building design and decoration, the signage, and the interior layout and décor. A less tangible, but more famous example of trade dress is the three tones of the NBC chime - see US Trademark Registration No. 916,522. In these examples, unique decorations and sound design are used as a familiar reminder of the brand to the consumer.

Under U.S. law, trade dress encompasses a wide variety of elements that contribute to the overall image of a product or service in the marketplace. Trade dress law recognizes the following types of trade dress:

1. Product Design Trade Dress


     Examples:

          a.  Coca-Cola Bottle: The contour and "unique shape" of the Coca-Cola glass bottle is a well-known example.

          b.  Apple's iPhone Design: The combination of rounded edges, placement of buttons, and overall look of the iPhone has been claimed as trade dress.

2. Product Packaging Trade Dress

     Definition: The design and "visual appearance" of a product's packaging.

     Examples:

          a.  Tiffany & Co. Blue Box: The distinctive blue color and packaging design associated with Tiffany jewelry.

          b.  McDonald's Happy Meal Boxes: The distinctive yellow and red packaging for Happy Meals.

          c.  Jack Daniel’s Bottle Label: The black label and stylized text used on the whiskey bottle’s packaging.

3. Store Design and Décor (Store Layout or Service Establishment Trade Dress)

     Definition: The overall design and "distinctive décor" of a retail store or service location.

     Examples:

          a.  Apple Store: The combination of glass storefronts, minimalist décor, and wooden display tables has been recognized as trade dress.

          b.  Chipotle Restaurants: The unique layout, use of materials like steel and wood, and open-view kitchens have been considered as protectable trade dress.

4. Product Configuration

     Definition: The arrangement or configuration of non-functional "product features" or parts.

     Examples:

          a.  LEGO Minifigures: The specific configuration and appearance of LEGO minifigure parts.

5. Color and Texture

     Definition: A specific color or combination of colors, or a surface texture associated with a product or service.

     Examples:

          a.  Owens-Corning Pink Insulation: The use of pink in the insulation material has been protected as trade dress.

          b.  John Deere Green and Yellow Tractors: The specific combination of green and yellow used on John Deere agricultural equipment.

6. Sound Marks (Auditory Trade Dress)

     Definition: A distinctive sound that identifies the source of a product or service.

     Examples:

          a.  NBC Chimes: The three-note NBC chime sound.

          b.  Harley-Davidson Motorcycle Sound: The unique sound of Harley-Davidson motorcycles was once subject to trade dress protection claims, though the registration attempt was ultimately abandoned.

7. Scent (Olfactory Trade Dress)

     Definition: A distinctive smell or scent associated with a product.

     Examples:

          a.  Play Doh: The familiar and unique smell of Play Doh modeling clay has been successfully registered (U.S. Trademark Registration No. 5467089) based on acquired distinctiveness. The scent of Play Doh is now essentially known throughout the U.S. and beyond, and thus credibly has acquired secondary meaning.

8. Overall Advertising Design

     Definition: The combination of advertising elements such as slogans, music, colors, and style used to create a distinctive advertising feel.

     Examples:

          a.  Apple Inc.'s MAC vs. PC ad campaign: Apple's "Get a Mac" campaign, often referred to as the Mac vs. PC ads, ran from 2006 to 2009 and featured a series of humorous TV commercials that highlighted the differences between Apple's Mac computers and PCs running Windows. The design of the commercials was minimalist, with each ad taking place against a clean, all-white backdrop that allowed the focus to remain on the characters and dialogue. The two main characters personified the Mac and PC. "Mac," played by Justin Long, appeared casual, young, and laid-back, typically dressed in a t-shirt and jeans, while "PC," played by John Hodgman, was portrayed as an older, formal, and somewhat awkward businessman wearing a suit and glasses. The tone of the ads was lighthearted, using humor to emphasize the advantages of Macs over PCs. The overall aesthetic of the campaign was unique and communicated simplicity, friendliness, and ease of use, aligning perfectly with Apple's broader brand identity.

9. Websites (Virtual Trade Dress)

     Definition: The overall layout and design of a website, including specific "visual elements" like fonts, colors, and layout.

     Examples:

          a.  Pinterest’s User Interface: The grid-based layout and overall presentation of user “pins” in a visually appealing board format has been subject to trade dress claims.

Though there are many kinds of trade dress, trade dress protection is only available to distinctive and non-functional trade dress, meaning it serves the purpose of identifying the source of the product or service rather than providing utilitarian advantages.

Trade dress law is a subcategory of trademark law and thus the requirements for legal protection and registration are very similar. Trademark and trade dress law each are directed to protecting the consumer by awarding registrations to distinctive source identifiers (e.g., trademarks, service marks, and trade dress) that serve to prevent consumer confusion. However, the bar for acquiring legal protection and registration is higher for trade dress. In order to establish enforceable rights or register trade dress with the US Patent and Trademark Office (USPTO), the trade dress must be inherently distinctive or have acquired distinctiveness in the mind of the consumer. In other words, the consumer must associate the particular nonfunctional features of the product or service with the source of the product or service (e.g., when a consumer sees a brown truck, they think of UPS).

Trademark registrations for trade dress may be issued by the United States Patent and Trademark Office. The Lanham Act (federal law) allows for the registration of design elements of a product, its packaging, or other design features. However, after filing a trademark application, the application faces a difficult registration process. The applicant often has a substantial burden of providing evidence to the USPTO to establish secondary meaning, such as survey evidence taken from relevant consumers.

The acquired distinctiveness requirement stems from the Supreme Court's ruling in Wal-Mart Stores, Inc. v. Samara Bros., which held that product design trade dress is never inherently distinctive. As a result, product design cannot be registered on the Principal Register without proof that consumers associate the design with the applicant as the particular source of goods and services, rather than its functionality or aesthetic appeal.

Substantial evidence, such as long-term use, advertising efforts focused on the design, or consumer surveys must be produced to the USPTO to demonstrate that the claimed trade dress is distinctive and capable of functioning as a source identifier . Without proof of distinctiveness, product design trade dress may only be registered on the Supplemental Register, where protections are more limited.

The USPTO will not issue a trade dress registration that fails to have a distinctive look (e.g., a bottle with a common shape), is primarily made of functional aspects, or is simply lacks supporting evidence of secondary meaning (this is not required for other forms of trademark protection, like word marks and logos).

Other forms of trade dress may be inherently distinctive. For example, in the Two Pesos, Inc. v. Taco Cabana, Inc. case, the U.S. Supreme Court found Taco Cabana's trade dress, which included a distinctive combination of brightly colored artwork and pottery, seating layout, and festive decorations, to be inherently distinctive. This trade dress served as a "commercial impression" that immediately identified the restaurant’s brand. However, even in applications for trade dress other than product design or packaging, the USPTO typically requires evidence of acquired secondary meaning.

It should be understood that trade dress rights are not available when the feature, color, shape, or other aspect of a product is functional in any way. Trade dress is functional when it is essential to the use or purpose of the article or it if it affects the cost or quality of the article. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001). Thus, even if the trade dress is associated with the source of the product or service in the mind of the consumer, if it is functional it does not provide enforceable trade dress rights and no trademark registration can be issued for the trade dress. 

Trade dress rights are similar to those of a design patent in that they can protect the distinct outward appearance of a product. Trade dress can also complement design patent or utility patent rights for a manufactured article. That is, a particular manufactured article (e.g., a product, product packaging, etc.) can be simultaneously protected by both trade dress rights and patent rights.

As a practical matter, it is more difficult to protect a manufactured article (a product) through trade dress rights than through design patent protection because trade dress must both be (1) established as a source identifier for the provider of the product or service and (2) non-functional. The functionality standard for trade dress is similar to that which applies to design patents, but is more strictly applied in practice. Thus, a design patent may be a quicker and easier way to acquire enforceable rights than a trade dress registration, but a design patent will have a limited term (15 years), whereas the protection provided by trade dress rights can last indefinitely, if properly managed.

The combination of design patent protection and trade dress protection is powerful. In the short term, the product design can be protected by a design patent. As soon as a design patent application is filed, the article of manufacture can be marked "patent pending" until the design patent is granted. The trade dress rights can then be established during the enforceable term of the design patent. Once the design patent expires, the trade dress rights may continue. Additionally, the design patent allows the patentee to seek disgorgement of all profits gained through the infringement of the design patent and a high probability of preliminary injunction, if the infringement is apparent. Trade dress also provides powerful remedies, which remain available as long as the trade dress rights exist.

In a trade dress infringement case, a trade dress plaintiff must demonstrate several elements to prevail in the infringement suit. First, the plaintiff must show that their trade dress is distinctive and non-functional, meaning it qualifies for protection under trademark law. Once that is established, the plaintiff must prove that the defendant's use of similar commercial impression creates a likelihood of consumer confusion regarding the source of the goods or services.

The courts assess consumer confusion using various factors, including the strength of the trade dress, the similarity between the products or services, and the intent of the defendant. To prove infringement, the plaintiff must show that consumers are likely to mistake the defendant’s goods or services for those of the plaintiff, or that consumers have been actually confused.

Trade dress law protects trade dress from competitors who attempt to "pass off" their products as originating from another company. In such cases, the ultimate goal of an infringement suit is to prevent trade dress infringement and safeguard the unique design elements that identify a product's source in the market.

The attorneys and professionals at Sierra IP Law are experienced and skilled in area of intellectual property, including all aspects of trade dress. Contact our firm for a free consultation.