What Is Trade Dress? Examples and Why It Matters

Just as brands like Nike, Apple, and Chanel are instantly recognizable by their logo alone, a trade dress can have the same effect. Picture the Campbell's soup can, a Coca-Cola bottle, or Christian Louboutin's red sole pumps.

All of these iconic designs are part of the brand's trade dress. This lesser-known branch of intellectual property is no less protected by the law than the trademark. Protecting your trade dress from infringement is critical to your business' bottom line.

Defining trade dress

According to the Lanham Act, the body of law that governs intellectual property (IP) rights, trade dress protects "the total image of a product including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."

In other words, trade dress is the distinctive visual characteristics of a product or service that allows consumers to quickly identify its source. Trade dress could point to the design of a product or its packaging, or the distinctive decor of the retail space where a product is sold or a service is provided.

U.S. law protects trade dress so as to safeguard the integrity of the brand associated with those visual characteristics and to shield customers from unintentionally purchasing a product or service due to its visual similarity to a well-known brand with a claimed trade dress.

Examples of trade dress

Some examples of trade dress include the following:

• Restaurant design, such as Sonic or the Hard Rock Cafe restaurant chain
• Book series cover design, such as the Harry Potter series
• Food design, such as Frito-Lay's tortilla bowl chip
• Packaging, such as the McDonald's happy meal
• A distinctive perfume bottle, such as Chanel No. 5 or Dior's J'adore perfume
• A fashion bag design, such as the Hermès Birkin bag or Louis Vuitton's monogram pattern
• The look and feel of a website, such as Apple's charcoal header and use of gradients.
• The design and layout of a mobile application, such as Duolingo's bright green features and circular level icons

Trade dress vs. trademark

Trade dress law protects the overall look and feel of a product or its packaging, such as visual characteristics like size, shape, color, texture, graphics, or even certain sales techniques. Trademark law protects logos, words, symbols, taglines, or names associated with a product or service.

Apple, for example, has a registered trademark in their logo. They also have trade dress protection for their store design and layout. The goal in registering these intellectual property assets is to protect the company from infringers who would use their logo and store design to pass off counterfeit Apple products.

Both trademark and trade dress need to be distinctive to qualify for legal protection. However, trade dress also needs to be nonfunctional—meaning, the protected features can't be essential to the product's use or influence the cost or quality of the product.

Trade dress protection

According to U.S. law, trade dress must meet certain criteria to receive protection in an infringement case.

Qualifying features

Whether or not it's registered with the U.S. Patent and Trademark Office, you may receive protection for your trade dress under the law if it has features that are distinctive, nonfunctional, and that have acquired secondary meaning. Secondary meaning in trade dress simply means that the public has come to recognize a particular manner of trade dress as coming from you.

• Distinctiveness. Trade dress is inherently distinctive if it's unusual, memorable, and not dictated by function. In the case of Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court of the United States ruled that a Mexican restaurant chain's decor—with murals, bright colored pottery, and distinctive outdoor umbrellas—was inherently distinctive and granted them protection against Two Pesos, who had copied their aesthetic.
• Secondary meaning. If the average consumer associates a product feature with your brand, you have a right to defend from dilution. Dilution happens when another product is similar enough to a well-known mark or design that it can harm the public's perception of the original and jeopardize its sales success. Secondary meaning is important to trade dress, but not always mandatory. In the above case, Taco Cabana received protection even though their decor didn’t have secondary meaning, simply because it was inherently distinctive.
• Nonfunctional. For trade dress to be protected, it must not be functional—meaning, it cannot serve a utilitarian purpose that is necessary for the product’s use or purpose. For example, a company with a patent on a folding chair design lost its case because the court ruled that the design was primarily functional, and therefore not eligible for a trade dress protection (Specialized Seating, Inc. v. Greenwich Indus.). Conversely, the shape of a perfume or liquor bottle serves no functional aspects, and therefore can be protected under trade dress when it is a distinctive feature of the brand.

How judges measure trade dress infringement

If someone else attempts to sell a product with similar trade dress, you may bring a case against them for infringement. A judge will use an eight-factor test, also known as a likelihood of confusion test, to determine whether infringement is present.

This test includes the following questions:

• How strong is your trade dress?
• How are the goods and services you offer related to the defendant's?
• How similar is your trade dress to the alleged infringement?
• Can you show proof of consumer confusion?
• What marketing methods have you used to promote your product or service?
• How careful are your buyers?
• What is the likelihood that the defendant will use a similar trade dress?
• What is the likelihood that you will expand your product or service line?

Trade dress infringement claims

Trade dress infringement cases may be more common than you think. Some recent examples include the following:

• Apple sued Samsung for infringement on the iPhone design. The court found the design to be functional and denied protection.
• Adidas sued Sketchers over a shoe design. The court found that the Adidas shoe was distinctive and nonfunctional and therefore worthy of trade dress protection.
• Nike sued A Bathing Ape (BAPE) over sneaker designs. Nike claims that BAPE's design and color scheme mimic its Air Force 1, Air Jordan 1, and Dunk models.

Though legal protections exist regardless of whether your intellectual property is registered, there are benefits to registration, including the ability to sue in federal court and the confiscation of counterfeit goods at borders. It also places would-be infringers on notice that your trade dress is protected.

Registering a trade dress also places the burden of proof onto the defendant. If your trade dress is registered on the United States Supplemental Register or Principal Register, it's assumed that your trade dress is distinctive and nonfunctional. Therefore, the infringer would have to prove otherwise.

Trade dress enforcement

Courts may enforce trade dress protection through an injunction and/or monetary damages.

• Injunction. A plaintiff (accusing party) in a trade dress case may initiate their claim by seeking a preliminary injunction. This temporary court order forces the defendant (accused party) from ceasing the infringing activity while the trial takes place, as long as the plaintiff can prove they have a strong case. If the court rules in favor of the plaintiff at the end of the trial, they may make the injunction permanent.
• Monetary damages. If a plaintiff proves their trade dress infringement claim, they may recover monetary compensation, such as the profit that the defendant made as a result of their infringement, the cost of losses suffered, or litigation costs. The American Intellectual Property Law Association estimates that the median litigation costs for a trade dress infringement cases with less than $1 million at risk are estimated at $275,000.

How to file a trade dress application

Trade dress can be protected under a design patent or a trademark application. You can file an application through the trademark side of the United States Patent and Trademark Office (USPTO).

To file for trade dress protection, follow these simple steps:

1. Conduct a trademark search to determine whether a confusingly similar trade dress for related products or services is already registered or whether a pending application for one exists.
2. Visit the USPTO registration page and create a Trademark Electronic Application Sys. (TEAS) account or work with LegalZoom to begin your trade dress application.
3. Verify your identity. This is typically a 15-minute process.
4. Upload a JPG file of your trade dress to show its distinctive characteristics, including the functional and nonfunctional elements.
5. File the appropriate application and pay the fees—$250 per class of goods or services for TEAS Plus (if the goods or services are in the Trademark ID Manual) or $350 per class for a TEAS Standard (if you need a custom description of your goods or services).
6. Hold tight for a couple of months while the USPTO examining attorney makes a decision.
7. Respond to office actions, if required.
8. If no legal objections are raised, collect your certificate of registration.

Trade dress is an important part of your company's intellectual property portfolio. Consult an experienced IP attorney for more information on how to protect your trade dress and other intellectual property.

FAQs

Why is it important to protect trade dress?

Protecting your trade dress discourages other businesses from damaging the integrity of your product or service by creating something confusingly similar. It also protects your customers from mistakenly purchasing a different product or service when they intended to buy from your brand.

Can trade dress be registered?

Yes, trade dress can be registered through the United States Patent and Trademark Office as long as it is distinctive, nonfunctional, and sufficiently different from all other registered or pending trade dresses.

What are the challenges of protecting trade dress?

To protect a trade dress, you must prove in court that your product design or the look and feel of your service is inherently distinctive, nonfunctional, and that the average consumer would instantly recognize your company as the source of the product or service based on its trade dress.

What is the difference between trademark and trade dress?

While a trademark protects logos, words, symbols, taglines, or names associated with a product or service, trade dress protects its overall look and feel.

River Braun, J.D. contributed to this article.