PRIMARY PRACTICE AREAS OF THE FIRM

Trade Dress Attorney

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 or service, and acts as a source identifier for the product. 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. However, trade dress does not arise solely from the product packaging or design. Trade dress rights can also arise from other aspects that create an impression in the mind of the consumer that is distinctive to the product and its branding, 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, 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. A prominent example of trade dress in a product design is the Coca-Cola bottle, with its distinctive spiral ribbing design. 

A provider of services can create trade dress rights through the distinctive use of decor, architecture, distinctive promotional materials, or other things that are non-functional and service to distinguish the provider of services. 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 decor 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 decor. A less tangible example of service trade dress is the three tones of the NBC chime - see US Trademark Registration No. 916,522. 

In order to establish enforceable trade dress rights, the trade dress must be inherently distinctive or have acquired secondary meaning in the mind of the consumer. In other words, the consumer must associate the particular trade dress 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, but the Office requires evidence of secondary meaning (this is not required for other forms of trademark protection, like word marks and logos) before it will issue a registration for trade dress. This association between the trade dress and the source of the product or service is typically established through long-standing widespread use, extensive advertising or other evidence of secondary meaning.

It should be understood that trade dress is 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 design patent rights in that they can protect the distinct outward appearance of a product. Trade dress can also complement design 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 a design patent. 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 patents 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.

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