Trade dress is 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. Trade dress is a form of intellectual property.

Trade dress consists of the unique, non-functional, elements used to promote a product or service. It may also include features such as size, shape, color, color combinations, textures, graphics, or even particular sales techniques. Federal law is violated when someone uses a trade dress (or trade mark) of another that creates confusion among customers. While a trademark prevents others from copying the name of the good or service, trade dress prevents copying the appearance. 

Yes!

As with trademarks, trade dress can be registered with the U.S. Patent and Trademark Office (USPTO) and receive protection from the federal courts.

To receive protection, both of the following must be true:

1) The trade dress must be inherently distinctive, unless it has acquired secondary meaning.
2) The junior use must cause a likelihood of consumer confusion.

The 3-dimensional COKE and PINCH bottle shapes are registered, as are Kodak’s yellow and red color combination, Wedgwood’s famous blue color and other color marks.

In Two Pesos, the Supreme Court said not only that restaurant decor may be protected as trade dress, but also that restaurant–and other trade dresses–may be inherently distinctive and protectable from the moment of adoption. As an example, the plaintiff’s trade dress in Two Pesos was described as follows:

“a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” Taco Cabana International, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1117 (5th Cir. 1991). See also Freddie Fuddruckers, Inc. v. Ridgeline, Inc., 589 F.Supp. 72 (N.D. Tex. 1984); aff’d w/out op, 783 F.2d 1062 (5th Cir. 1986) (restaurant decor protected and infringed).

Trade dress may be registered with the PTO in either the Principal Register or the Supplemental Register.

Although registration is not required for legal protection, registration offers several advantages. In the Principal Register, a registrant gains nationwide constructive use and constructive notice, which prevent others from using or registering that registrant’s trade dress (without contesting the registration).

Further, a registrant in the Principal Register gains incontestable status after five years, which eliminates many of the ways for another party to challenge the registration.

Registration under the Supplemental Register allows the registrant to protect its trade dress in foreign countries, although the protections are much more limited than protections under the Principal Register in the U.S.

Functional aspects of trade dress cannot be protected under trademark law. For example, a company that claimed trade dress on a round beach table lost their rights when the Seventh Circuit determined that the towel design was primarily functional (despite the fact that the trade dress had been registered and had achieved incontestable status). (Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010)).

Only designs, shapes, or other aspects of the product that were created strictly to promote the product or service are protectable trade dress.

Section 43(a) of the Lanham Act creates a “federal cause of action for infringement of marks and trade dress that have not obtained federal registration.” To succeed on a trade dress infringement claim under the Lanham Act, a plaintiff must prove the distinctiveness, the non-functionality, and the confusing similarities as discussed above.

The first major limitation on trade dress protection is the doctrine of functionality. There are two kinds of “functionality”: de facto and de jure.

De facto functionality simply means that the product or packaging performs the function that it was intended to perform. A COCA-COLA bottle’s function is to hold COCA-COLA beverage and permit it to be poured out of the bottle, a job it certainly performs. But that does not make the bottle’s shape or ribbing “functional” for trade dress purposes because those features are not necessary for the bottle to do its job.

A feature is de jure functional if competitors must use it in order to compete effectively. The U.S. Supreme Court has defined a functional feature as one which …`is essential to the use or purpose of the article or [that] affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. Qualitex, slip op. at 6; citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850-51 (1982).

Some factors courts consider in assessing functionality are:
1) The existence of an expired utility patent disclosing utilitarian advantages of the design;
2) Advertising which touts the utilitarian advantages of the design;
3) The availability of alternative designs; and
4) Whether a particular design results from a comparatively simple or cheap method of manufacturing the article.

Most likely not because the utility patent describes the function of the invention.

If the claimed trade dress is not de jure functional, the next question is whether the plaintiff has established that its trade dress is “distinctive”, i.e., protectable, either because of its inherent nature or because it has acquired secondary meaning. A U.S. trademark or service mark registration on the Principal Register of the PTO is prima facie evidence that the mark is a valid trademark and therefore distinctive. (15 U.S.C. § 1057(b)). A federal registration on the Principal Register is thus very valuable to the plaintiff in a trade dress case. (On the other hand, a registration on the Supplemental Register is not entitled to a presumption of validity. 15 U.S.C. § 1094.)

Absent a registration, the plaintiff must show that its trade dress functions as a trademark in other ways.

The first is to show that the trade dress is inherently distinctive. Two Pesos does not offer much guidance on determining whether a trade dress is inherently distinctive, but other courts have done so. The U.S. Court of Appeals for the Third Circuit, for example, quite recently held that a product configuration is inherently distinctive if it is: “(i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to serve primarily as a designator of origin of the product.” Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 32 U.S.P.Q. 2d 1724, 1725 (3d Cir. 1994). The Court distinguished product configurations from “traditional” trade dress cases, involving, for example, packaging.

In an older case which did involve package design, the Court of Customs and Patent Appeals said that in determining inherent distinctiveness the Court should look to whether the design …was a “common” basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words. Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977).

Although the Supreme Court did not expressly hold that color alone can never be inherently distinctive in Qualitex, everything in the opinion strongly indicates that secondary meaning in a color per se must be shown to be entitled to a trademark registration. See, e.g., slip op. at 3-4.

Absent inherent distinctiveness, there are two types of evidence by which to prove acquired distinctiveness, i.e., secondary meaning. The first, direct evidence, entails either testimony of individual witnesses or survey evidence. The second type of evidence is indirect evidence from which secondary meaning can be inferred. 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 are all factors to consider.

An example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Tm. Reg. No. 3,457,218.

Apple used this design since 2007 and it was registered in 2008. This is a very short time for a product design to achieve trade dress protection. However the Trademark Office was convinced that the shape had become distinctive.

In Apple’s application to register this trade dress, Apple claimed that the extensive media coverage of the launch of the iPhone, including front page coverage on national newspapers and lead stories on TV news broadcasts, amounted to about $400 million in free advertising. Further, Apple claimed 1 million iPhones were sold in the first 74 days after the product was launched. Apple cited leading trademark scholar Thomas McCarthy’s treatise McCarthy on Trademarks for the proposition that no minimum amount of time is necessary for a mark to achieve distinctiveness in the marketplace. Massive TV and print advertising campaign can promote a trademark or trade dress to distinctiveness within a matter of days or weeks in certain circumstances.

If a trade dress is a registered trademark, a claim for trade dress infringement may be asserted under Section 32(1) of The Lanham Act (15 U.S.C. Section 1114(1)). When the trade dress is not registered, a trade dress infringement claim may be asserted under Section 43(a) of The Lanham Act (15 U.S.C. Section 1125(a)). The action may be brought in a United States District Court where personal jurisdiction and venue are proper.

The remedies for trade dress infringement are the same as those for trademark infringement, i.e., injunctions (15 U.S.C. Section 1116), recovery of damages in the form of the defendant’s profits or the plaintiff’s actual damages (trebled in the court’s discretion), and/or attorney’s fees in “exceptional” cases. (15 U.S.C. Sections 1114-1119).