Trade Dress: Its Not Just How You Look!
John Wilson • June 1, 2019
Trade Dress & the Promotion of a Product or Service
Trade dress protection, like trademarks, was born out of the realm of unfair competition: that no person should be able to trade off the goodwill of another. Accordingly, an inherently distinctive trade dress can be registered as a federal trademark under the Trademark Act, affording a trade dress registrant a wealth of protection against imitating products. For a product, trade dress may be the packaging, the promotional displays, and even the shape or coloring of a product. For a service, it may be the presenting of the building facade, the interior decor, or even the environment in which a service is provided. Our Dallas trademark and trade dress attorneys can assist you in protecting your trade dress. For more information on trade dress, see our Trade Dress Practice
web page.
What Is Trade Dress?
Trade dress is the public commercial "look and feel" of a product or service, is source identifying, and distinguishes the product or service from others. It can include a wide array of components, such as color, size, design, shape and material used to package a product or offer services. Trade dress law and patent law occasionally can overlap as certain design configurations and shapes of a product may be both a trade dress and a potential deign patent.
Trade Dress Must Be Distinctive
For trade dress to be considered inherently distinctive, a court will require that a trade dress meet a level of distinctiveness. That it “must be unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product.” Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994). Distinctiveness is the threshold for determining whether a product is capable of serving as a trade dress (i.e., capable of identifying a particular source). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). A product that is immediately capable of identifying a particular source is considered an “inherently distinctive” trade dress; however, a product that is not “inherently distinctive” can still be considered a trade dress if it has developed a secondary meaning, which occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 (1982).
In 2000, the United States Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., Inc., was presented the issue of whether a product design was capable of being inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000). In that case, Samara Brothers – a children’s clothing designer and manufacturer – sued Wal-Mart for allegedly selling “knockoff” copies of their clothes. The clothes at issue were not federally-registered trade dresses. The Supreme Court held that a product design could not be inherently distinctive; and, therefore, may only be protectable as a trade dress if it has acquired secondary meaning. To show secondary meaning in trade dress, one must show that in the public mind, the primary significance of the product feature is to identify the source of the product. The Supreme Court reasoned that a product’s design generally serves no purpose for source identification – the primary basis for providing trade dress protection. On the other hand, a product’s packaging (i.e., the overall look of the product, including color, shape, labels, etc.) may be protectable as a trade dress because it is capable of identifying the source of the product.
Functional Aspects Alone Do Not Qualify As A Trade Dress
Functional aspects of trade dress cannot be protected under trademark law. For instance, a package or product shape can lack protection as being “generic” if the trade dress is defined as a mere product function or is such a common design that it cannot identify any particular source. Accordingly, courts have routinely struck down common product configurations or themes (e.g., a grape leaf on a wine bottle) as generic and incapable of protection as a trade dress. See Stuart Spector Designs, Ltd. V. Fender Musical Instruments Corp., 94 U.S.P.Q.2d 1549 (T.T.A.B. 2009) (“the evidence overwhelmingly demonstrates that these configurations are so common in the industry that they cannot identify source.”); see also Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (holding no designer can hold a monopoly on designs regarded by the public as the basic form of a particular item).
What Is Trade Dress Dilution?
In addition to a claim of trade dress, courts will allow claims to be made for trade dress dilution pursuant to Section 43(c) of the Lanham Act. 15 U.S.C. § 1125(c). Dilution is legal concept designed to protect against the weakening or reduction in the ability of a mark to clearly distinguish only one source. Dilution often comes by way of “tarnishment." Tarnishment is the degrading of the reputation of the mark through negative associations
or by impairing the distinctiveness of the brand by blurring that brand with a knock-off design.
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