If you have done your due diligence as a business owner or designer, you’re probably already aware of the importance of trademarks and how they increase and protect your brand value. Trade dress is a type of trademark that protects the distinctive overall look and feel of a product or service. This may include elements such as the size, shape, texture, graphics, color scheme or even sales technique of the product or packaging. Some of the main categories of trade dress include product packaging or design, sounds and scents, business interiors or exteriors and color. Because trade dress falls within the umbrella of trademark protection, owners can enforce their trade dress rights against infringers.
A design patent can be granted to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the visual appearance of the article, not structural or functional features. An example of a design patent would be an intricate flower bow on a handbag. It can cover an entire product or only a portion of it. Design patents only last for 14 years and are only available if the design has not been publicly disclosed yet. Obtaining a design patent involves a more complex and detailed application process, ideally with the help of an experienced patent attorney or patent agent.
Trade dress also addresses non-functional design aspects, however, the features must have acquired “secondary meaning” such that the design is identifiable with the source. For example, the shape of a Coca-Cola bottle has become well-known as an identifier of Coca-Cola drinks. As long as the design continues to be used in commerce as a source identifier, trade dress rights do not expire.
As with trademark law, trade dress rights are protected primarily under the Lanham Act. Section 43(a) of the Act protects both unregistered and registered trade dress. However, registration provides additional protection under Section 32, including the right to bring an action against infringers. Trademark registration may be available under both state and federal law. At the federal level, the Lanham Act allows registration with the U.S. Patent and Trademark Office (USPTO) as a trademark if the trade dress is both distinctive and nonfunctional.
Infringement occurs when another party copies or uses the owner’s valid trade dress in commerce in such a way as to cause a likelihood of confusion with the owner’s trade dress. Most infringement actions involve unregistered trade dress. To establish your claim of infringement, you must generally show: (1) ownership of the trade dress, (2) that the trade dress is both non-functional and distinctive (whether inherently or acquired) and (3) that such use creates a likelihood of confusion among consumers as to the source of the product or service.
Under the Lanham Act, trade dress must be nonfunctional to be protectable. The design features must have been created for promotional rather than functional purposes. The court will examine factors such as whether the design has a utility or design patent, advertising claims regarding the usefulness of the design, the availability of alternative designs, whether the design serves to aid the purpose of the product and other factors.
The trade dress also must be inherently distinctive or be distinctive from acquiring secondary meaning within its class of goods or services in the marketplace. The design may be inherently distinctive if it is sufficiently unique or unusual to distinguish it from competitors in its area of goods or services. In order for trade dress to have acquired secondary meaning, the design must have become so well-known in the marketplace that the public understands the source of the product or service. Courts look at how long the trade dress has been used, consumer surveys and the extent of advertising and media. Federal registration is the best proof of distinctiveness.
Likeliness of Confusion
Infringement also requires proof that the defendant’s use of the trade dress resulted in a likelihood of confusion as to the source of the goods or services. Actual confusion does not need to be shown, just that confusion could be likely among a substantial number of consumers. Relevant factors include the similarity of the parties’ trade dress, products or services, marketing channels and techniques, and existing and projected demographic areas. In addition, courts assess the sophistication of the buyers of the product or service.
Typically, a defendant will attack the plaintiff’s proof of distinctiveness and functionality of the trade dress. If those elements are not sufficiently established by the plaintiff, the trade dress is not protectable, and the defendant is not liable.
Owners can also protect their trade dress from third-party use that “blurs” or “tarnishes” the trade dress and dilutes its value. Blurring occurs when the distinctiveness of the brand is impaired by association with the other party’s use. Typically, the defendant is using the mark for a different type of product or service. Tarnishment occurs when a mark similar to a famous mark harms the reputation of the famous trademark, usually because it is used to market an inferior product. Trade dress dilution only applies to “famous” brands. Courts consider multiple factors in determining whether a brand is “famous.”
A court can issue a preliminary and/or permanent injunction prohibiting the defendant from continuing infringing activity. In addition, the defendant may be ordered to pay monetary damages compensating the plaintiff for any losses or profits the defendant made in connection with the infringement. Attorneys’ fees may also be granted to the plaintiff. In certain cases, the plaintiff can also get the product recalled or order for destruction of the infringing materials.
Where the infringement involved willful use of counterfeited trade dress products, the court can award statutory damages of up to $2 million per counterfeit trade dress per type of goods or services sold or distributed.
Trade dress law provides valuable protections to brands, but experienced legal counsel can help ensure those rights are enforceable. Contact a member of our team today.
[This blog post has been updated from a previous version, published May 25, 2021]
Carlianna Dengel is admitted to practice law in New York and California.