What is Trade Dress?

We have already established that a trademark can be any word, phrase, symbol, design, or a combination of these things (typically referred to as a “mark”) that identifies your goods or services. It can often be a symbol of a person’s or company’s identity, reputation, and value.   Similarly, there is something called “trade dress.”  

Trade dress traditionally referred to the visual appearance of a product or the packaging of a good.  In some instances, the product configuration or the design and shape of the product itself, may be considered a form of trade dress. The common elements of trade dress are:

1. Product packing.  Examples of these would be - the shape of Coca-Cola bottle; the Tiffany blue box; the box of a McDonald’s happy meal.

2. Product design.  Examples of these would be the Dyson ball vacuum cleaner; the unique design of Apple’s iPhone; the design of a Tesla; the fish shape of Goldfish crackers; and the shape of a Hershey Kiss chocolate.

3. Color & color combinations. Examples of these would be – the red-sole of a Christian Louboutin shoe; the red tab on Levis jeans; the colors of the Reese’s Peanut Butter Cups wrapper; the brown color used on by the United Parcel Service (UPS) trucks.

4. Décor and atmosphere. Examples of these would be – the exterior and interior design and architectural features of Texaco or Chevron gas stations; the distinctive architectural design of McDonald’s golden arches; and the exterior and interior design and architectural features of the Taco Cabana’s restaurant chain.

How to Secure Protection for Trade Dress

The Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. In the case of TrafFix Devices, Inc. v. Marketing Displays, Inc. a court laid out the requirements for trade dress to be registered at the United States Patent & Trademark Office (USPTO). Although, it is possible to register trade dress as a trademark, for practical reasons most trade dress and product configurations are protected without registration.

In order for trade dress to receive protection in the United States it must meet two criteria:

1. A) Inherent Distinctiveness: Just like trademarks are categorized in the Spectrum of Distinctiveness from weak to strong, trade dress is similarly categorized as follows.

Generic trade dress • Descriptive • Inherently Distinctive

For trade dress to be distinctive it should be notable, memorable, a concept that separates the product from competitors, and distinct from the function of the object. 

B) Secondary Meaning: Sometimes trade dress can achieve distinctiveness by acquiring a secondary meaning.  A secondary meaning, is a meaning that consumers associate to the product or service via the packings, design, color, décor, or atmosphere or the product or service. In these situations, the elements of the trade dress are not inherently distinctive. Therefore, an applicant will face a substantial burden to prove that the trade dress demonstrated distinctiveness based on said secondary meaning. The following factors will be considered by the United States Trademark & Patient Office (USPTO) to determine if the trade dress achieved a secondary meaning:

• Length of use;

• Sales success;

• Amount spent on advertising

• Survey evidence; and

• Unsolicited media coverage

2. Non-functional: The design cannot serve a functional purpose in the product’s use. If the trade dress is functional, then it will not be eligible for protection. 

This seems like an odd requirement, but this requirement is based on public policy. The federal government wants to encourage market place competition by not allowing one producer or manufacturer to control or monopolize a useful product feature. Examples of this is with pinking shears that make it easier to cut woven cloth or a unique bottle shape that makes it easier to pour liquid. However, if a producer or manufacturer wishes to protect a utilitarian product feature, it should apply for a utility patent, which does not fall under trade dress protections.

3. In use in commerce: The trade dress must be used in commerce. Therefore, the trade dress must be used in the marketing and sale of goods or services across state lines to qualify for federal protection.

In our next blog we will discuss whether you should trademark your business name. 

If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.