Intellectual Property Law 101: Trade Dress

Definition

Trade Dress is defined as: the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers.
 
Products have a personality, and having a winning personality is very valuable. The elements of a product’s personality or brand image is its packaging or the total commercial image of a product can be protected under Trademark law. Like a traditional Trademark, Trade Dress must be registered with the United States Patent and Trademark Office (“USPTO”) to receive the maximum amount of protection from infringement.
 
For Trade Dress to receive protection or to be registered it must be:

• The Trade Dress must be inherently Distinctive; OR
• The Trade Dress must have acquired a secondary meaning.

Additionally:

• The Trade Dress may not be a functional element of the product/packaging.

​Now, lets break down what that actually means.

Distinctive

​There are different ways in which Trade Dress can be distinctive and these ways are slightly different depending on whether the Trade Dress is part of the product’s packaging (Coke bottle) verses a product’s configuration (design of a restaurant).
 
A product’s packaging is inherently distinctive if it is one of the following:

• Its basic shape or design is unique or unusual in its field;
• It is not a mere refinement of a commonly adopted or well known appearance for a particular class of good as viewed by the public; OR
• It is capable of creating a commercial impression distinct from the accompanying words.

 
A product configuration (aka visual appearance or commercial image) is inherently distinctive if it is:

• Unusual and memorable;
• Conceptually separable from the product; and
• Likely to serve primarily as a designator of origin of the product.

 
If you are able to show that the packaging or configuration of your products is Inherently Distinctive, then you will be able to register it as a Trademark with the USPTO. However, don’t despair if your product does not have inherently distinctive packaging or configuration. You still might have to develop a secondary meaning that can be protected under Trademark Law.

Secondary Meaning

Absent inherent distinctiveness, there are two types of evidence by which to prove secondary meaning (acquired distinctiveness):
 
The first type of evidence is direct evidence. Direct evidence entails either testimony of individual witnesses or survey evidence showing that a secondary meaning has arisen.
 
The second type of evidence is indirect evidence from which secondary meaning can be inferred. The following are factors to consider:

• The length of time the trade dress has been in use;
• The amount and number of sales under the trade dress; AND
• The amount of advertising featuring the trade dress.

 
It is more difficult to prove that your product’s packaging or configuration has secondary meaning, because a secondary meaning has to arise over time.

Non-Functional

Trade Dress may not be a functional element of the product or packaging. The most classic example of this is the Coca-Cola bottle. The bottle is functional because it holds liquid, however the particular design of the bottle, the curvy shape, is not functional beyond its distinctiveness to the consumer. Under this same theory, many alcohol bottles are also Trademarked under this Trade Dress theory of Trademark.

How to Prove Infringement of Trade Dress

Once Trademark rights are established for your Trade Dress, you can protect it from infringement. To show that there is infringement, you need to show that there is a likelihood of confusion.
 
Trademark and Trade Dress use the same factors to decide if there is infringement of the Intellectual Property:

• Strength of plaintiff's trade dress;
• Degree of similarity between the parties' trade dress;
• The similarity of the parties' goods or services;
• The parties' marketing channels;
• Actual confusion;
• Defendant's intent; and
• The degree of care exercised by purchasers.

 
Other factors may also be relevant but the most relevant ones are listed.

What to do if there is infringement of the Trade Dress

If you discover that someone is infringing your Trade Dress, the first thing that you should do is contact an attorney and have them write a cease and desist on your behalf to the infringer.
 
If after working with an attorney to get the infringer to cease and desist using your Trade Dress, the infringer does not agree to cease and desist, you will need to go to court. The action may be brought in a United States District Court.
 
The remedies for trade dress infringement are the same as those for trademark infringement. The owner of the Trade Dress can get an injunction to stop the infringer from using their infringing Trade Dress and recover damages in the form of the infringer’s profits or the Trade Dress Owner's actual damages.

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