Trade dress is an area of trademark law that is often overlooked. A trademark is word, phrase, logo, symbol, or design associated with a good or a service that is legally protected and helps distinguish the source of said good or service from those of others. A trade dress, on the other hand, refers to the overall appearance of a product, and can include “size, shape, color or color combinations, texture, graphics or even certain sales techniques.
The “overall appearance” aspect of a trade dress allows for capturing of distinguishing elements that cannot be captured by a normal trademark. For instance, let’s say you sell a product in a special box with specific dimensions, color, and logos. A simple trademark registration, whether it be a word mark or a character mark registration, will let you protect any words or logos and colors thereof, but not the dimensions of the box, the orientation and placement of the logo, and the color scheme, if any, of the whole product. On the other hand, you can include these extra elements that a trademark cannot cover with a trade dress registration.
Trade Dress Requirements
In order for you to properly register a trade dress, several requirements must be met:
- The trade dress must be distinctive in the marketplace inherently or through a secondary meaning;
- The trade dress must be primarily nonfunctional.
As with all trademarks, the trade dress must be, apart from other considerations, inherently distinctive and must serve as an identifier for a good or a service. According to case law, in order for a trade dress to be inherently distinctive, the trade dress “must be unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product. Additionally, trade dress is a complex composite of features” and the law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately.
However, it is important to note that the test for inherent distinctiveness can vary depending on jurisdiction and/or the industry in which trade dress protection is sought. For instance, packaging flavored soft drinks with colors associated with such flavors is a widely common practice in the industry (think lemon-lime flavors with corresponding green bottles or cans) and as such, this sort of packaging is likely not inherently distinctive. However, in a separate industry or in the absence of the soft drink industry, colored cans could be considered suggestive or arbitrary and thus, inherently distinctive. Accordingly, when applying for trade dress registration, it is important to consider what is common in the industry in which the goods or services reside.
If you cannot show that your intellectual property is inherently distinctive, you can still show distinctiveness has been acquired through secondary meaning. The courts define secondary meaning as the “mental association by a substantial segment of consumers and potential consumers ‘between the alleged mark and a single source of the product. In other words, you must show that customers associate the overall appearance of the trade dress solely with your product. There are several factors to consider when proving secondary meaning, including (1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, length, and manner of use, (4) amount and manner of advertising, (5) amount of sales and number of customers, (6) established place in the market, and (7) proof of intentional copying.
Going back to the box packaging example, let’s say you sell watches and you shipped your watches in a rectangular box. Let’s also say that the box is always bright orange with a giant black X on top of the lid of the box with your logo on the inside of the lid. If you can show, going through the aforementioned factors, that customers clearly associate this box appearance with your product, you will likely have proven secondary meaning.
In addition to proving distinctiveness, the trade dress must be primarily nonfunctional. If a trade dress is proven to be legally functional, then you cannot protect said trade dress. The primary reason for this limitation is to prevent the monopolization of an essential functionality that is necessary for all other manufacturers or producers of the product. The courts used to consider functionality on two fronts—de facto and de jure.
- De facto “functional means that the design of a product has a function, i.e., a bottle of any design holds fluid.
- De jure “functionality means that the product has a particular shape ‘because it works better in this shape. Courts also found de jure functionality if the trade dress “is essential to the use or purpose of the article or affects the cost or quality of the article”.
De facto functionality can be explained by way of analogy with liquor bottles. For instance, liquor bottles are, in essence, containers used for holding and pouring liquor, and a trade dress covering a bottle design includes de facto the functionality inherent in these bottles. However, the trade dress for many of these liquor bottles (Crown Royal, for one) relate to the shape, outline, dimensions, ribbing, labels, colors, or anything else that contributes to the overall appearance to create that product association, which can be considered proper trade dress elements so long as these elements are not necessarily for the functionality of the product.
However, if some of these trade dress elements somehow improved or contributed to a functionality of the bottle (for instance, the bottle dimensions improved portability or the ribbings improved grip), and if this functionality was found to be a necessary element for competitors to compete effectively so as to prevent a non-reputation-based disadvantage, a court might find the trade dress elements to have de jure functionality. For example, in Brunswick Corp. v. British Seagull Ltd., Brunswick Corp. filed suit against British Seagull Ltd. claiming a trade dress infringement for the use of the color black. However, the court found de jure functionality because the color black on the outboard motor worked better for most color schemes and the color black also made the motor look smaller.
Modern Considerations for Functionality
Although de facto and de jure considerations can be useful, modern courts often (but not always) look to the “Morton-Norwich” factors to help determining functionality, including:
- the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
- advertising by the applicant that touts the utilitarian advantages of the design;
- facts pertaining to the availability of alternative designs;
- facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
Some practitioners sometimes recommend pursuing a design patent along with the trade dress registration. A design patent is a patent application claiming the ornamental aesthetics of an invention and have no claim to any functionality. Obtaining a design patent can be very helpful to your case when obtaining a trade dress for this very reason to prove non-functionality. However, the design patent process can be lengthy and expensive. Additionally, the design patent route can be potentially be dangerous. If, for instance, the design patent dominates the market and essentially creates a monopoly, the non-functional design may become generic, which might create a de jure functionality and thus, invalidate the trade dress protection.
Acquiring Trade Dress Registration
A trade dress can be very important for you and your business it prevents consumer confusion similar to how trademarks prevent customer confusion by creating that association of trade dress to product. To register the trade dress, apply for a federal trademark with the help of a reputable intellectual property attorney. In addition to considering application, there are a few important things to consider:
- Consistency: Your product will likely have updates and alternative iterations, so it is important to be consistent with the overall appearance of the product even through these updates.
- Search: Be sure to do a trademark search with the trade dress elements with the help of an IP attorney to make sure these elements have not already been claimed.
- Overall Appearance: Remember this key phrase. Focusing too much on smaller details that have a minimal effect on the overall appearance of your trade dress may not help avoid customer confusion.