Laying the Case for Trade Dress

Laying the Case for Trade Dress

by River Braun, J.D., February 2019

Ever wrapped your hands around a Coke bottle? Or felt a bit of nostalgia walking into your favorite greasy spoon restaurant? Then you understand the concept of trade dress. This little-known branch of intellectual property is no less protected by the law than its more commonly thought of cousin, the trademark. Protecting your trade dress from infringement is critical to your business' bottom line.

Laptop with product design on the screen in a creative office setting

Defining Trade Dress

Trade dress refers to the look and feel of a product or its packaging. Some examples include:

  • Restaurant design, such as Sonic
  • Book series design, such as the Harry Potter series
  • Food design, such as Frito-Lay's tortilla bowl chip
  • A distinctive perfume bottle, such as Chanel No. 5
  • A fashion bag design, such as the Hermès Birkin bag

According to the Lanham Act, the body of law that protects intellectual property 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."

Trade Dress vs. Trademark

While trade dress law protects the overall look and feel of a product or its packaging, 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 of 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.

Trade Dress Protection

You may receive protection under the Lanham Act, regardless of whether your trade dress is registered, if it meets certain requirements. These include having features that are distinctive, nonfunctional, and that have obtained secondary meaning. Secondary meaning simply means that the public has come to recognize a particular manner of trade dress as coming from you.

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 the 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 similar trade dress?
  • What is the likelihood that you will expand your product or service line?

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

  • 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.

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.

How to File a Trade Dress Application

Trade dress may be protected under a design patent or a trademark application. Because it is easier and less expensive, most people opt to 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. Visit the USPTO registration page or work with an online service provider to begin your trade dress application.
  2. Provide a description of your trade dress using drawings or images to show its distinctive characteristics, including the functional and nonfunctional elements. File the application and pay the fees.
  3. Hold tight for a couple of months while the USPTO examining attorney makes a decision.
  4. Respond to office actions, if required.
  5. 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 online service provider to start protecting yours today.