What is Trade Dress?
Trade dress refers to the shape or design of a product. Trade dress may extend to the total image or overall appearance of a product and even include features such as size, shape, color or color combinations, texture, graphics, or particular sales techniques. Trade dress can be the packaging of a product, the shape of a product, or even the layout of a store. Think about the last time you walked into an apple store. If you had not noticed the apple logo in the front, would you have known you were in an apple store? Most people would response yes because they would immediately associate the long rectangular tables, clear glass storefront, multi-tiered shelving on the side walls, and the overall design of the store with apple. Apple’s consistent design in all their stores is an example of trade dress, which has federal protection under section 43(a) of the Lanham Act.
Trade dress may be registrable as a trademark or service mark with the U.S. Patent and Trademark office or may be protected through use in commerce like any other symbol that meets criteria for trademark protection. Your trade dress will be protected as long as it is inherently distinctive and nonfunctional.
What is Trade Dress Infringement?
If a party owns the rights to trade dress, then that party can sue subsequent parties for trade dress infringement. Trade dress infringement occurs when one product’s design or packaging copies that of another product to the degree that there is confusion in the minds of consumers.
To establish a trade dress infringement claim a party has to prove that their trade dress is (1) entitled to protection and that an (2) infringement of that trade dress has occurred.
When is my Trade Dress Entitled to Protection?
To prove that your trade dress is entitled to protection, you must show that the design or shape of the product is (1) nonfunctional and (2) distinctive.
When is my Trade Dress Non-functional?
To establish non-functionally, a party has to prove that the design feature is not essential to the use or purpose of the product. When determining functionality of a particular trade dress, you have to focus on the combined features, not just the individual features of the trade dress. Therefore, if you want to register the packaging of your product as trade dress you have to make sure that the packaging just adds an individual distinction to your product. Your packaging must not have features that a competitor must use to package their won product.
If the product has a feature that adds an individual distinction and that producers of competing brands do not need, then the feature is nonfunctional and thus protected. However, if the product contains features that a competitor has to include in their service or product to be able to effectively compete then the feature is functional.
When is my Trade Dress Distinctive?
To prove that your trade dress is distinctive you must prove that it is inherently distinctive or it has acquired distinctives through secondary meaning.
Trade dress is inherently distinctive if it identifies the particular source of the product or distinguishes the product from other products. To determine whether your trade dress is inherently distinctive, courts use the Seabrook test and ask whether:
- The design or shape was a common, basic shape or design,
- the design or shape was unique or unusual in a particular field, and
- the design or shape was a mere refinement of a commonly-adopted and well-known form of goods.
If your trade dress is inherently distinctive, then you do not need to prove that your trade dress has acquired secondary meaning. However, if you need to prove that your trade dress has acquired distinctiveness through secondary meaning then you have to prove that the public associates your trade dress with the producer or source rather than with the product itself. Courts consider various factors in determining whether secondary meaning exists, including:
- consumer testimony,
- consumer surveys,
- exclusivity, length, and manner of use,
- amount and manner of advertising,
- amount of sales and number of customers,
- established placed in the mark, and
- proof of intentional copying.
Additionally, if your trade dress falls within the product design category, it can never be inherently distinctive and you must prove that it has acquired secondary meaning. Product design covers a product’s shape and configuration. On the other hand, if your trade dress is categorized as product packaging then it may be inherently distinctive. Product packaging covers the overall combination and arrangement of the design elements that make up the product’s packing.
Lastly, if your trade dress is already registered then there is an assumption that your trade dress is automatically entitled to protection and you do not have to go through the process of proving that your trade dress is not functional and distinctive.
How do you Succeed on a Trade Dress Infringement Claim?
After proving that your trade dress is entitled to protection, you must prove that an infringement on your trade dress has occurred. To succeed on a claim of trade dress infringement, you must prove that there is a likelihood of confusion between your trade dress and the infringing design.
A likelihood of confusion exists when the infringing users trade dress is likely to cause confusion among consumers about the source of the product or services. In deciding whether consumers are likely to be confused, courts will typically look at a number of factors, including:
- the strength of the trade dress,
- the similarity of the trade dress,
- relatedness of the parties’ good or services,
- evidence of actual confusion,
- the similarity of marketing channels used,
- the degree of caution exercised by the typical purchaser,
- sophistication of purchasers
- defendant’s intent in selecting its mark,
- likelihood of expansion of the product lines
