Trade Dress

Trade dress is the commercial look and feel of a product or service that identifies and distinguishes the source of the product or service. It includes the various elements (such as the design and shape of materials) used to package a product or services. For example, the Hard Rock Cafe restaurant chain uses a distinctive decor, which is considered trade dress. This look and feel is protected if it serves to protect the ability to identify the source of goods just as a trademark does.

Trade dress is sometimes considered product design. Trade dress law can sometimes protect the design configuration and shape of the product itself, although in some cases obtaining a design patent may be more appropriate than using trade dress protection. Trade dress can be protected through common law rights. However, the Lanham Act also protects trade dress and allows it to be registered with the U.S. Patent and Trademark Office (USPTO) as a trademark.

Generally, an application to register trade dress must include all the same content as a trademark application. Trade dress must be both distinctive and nonfunctional. Most trade dress is protected without registration. Trade dress that is not inherently distinctive can be registered on the United States Supplemental Register. If an owner can show secondary meaning, it can be registered on the United States Principal Register.

To sue for infringement of trade dress, you must be able to articulate and prove that your trade dress is inherently distinctive, or has acquired secondary meaning, and that the junior use is likely to cause consumer confusion. Trade dress can be protected only if the owner of the trade dress can show the average consumer would be confused as to the origin of a product if another product appears in the same or similar packaging.

What Inherently Distinctive Means

Trade dress is inherently distinctive if its unusual and memorable nature serves primarily to designate the origin or the product or services, and is also conceptually separate from the product or services. For example, the United States Supreme Court has found that a Mexican restaurant chain's decor was inherently distinctive because it featured a mural, brightly colored pottery, distinctive outdoor umbrellas, neon border stripes, and a novel style of service. However, the “Cuffs & Collar” design mark that was used by exotic male dancers was found not to be inherently distinctive or reflective of Chippendale's.

In general, functional aspects of trade dress are not inherently distinctive. Only designs and shapes created solely for promotional purposes are protected as trade dress. For example, certain perfume bottles and the boxes they come in are designed to be identifiable with a particular brand.

Simply registering trade dress as a trademark may be insufficient in an infringement suit, however. Simply finding that a mark is inherently distinct does not mean that the trade dress is strong. For example, in a lawsuit involving trade dress of Calvin Klein's "Eternity" perfume, the court found that in spite of being registered, the trade dress was weak because it was quite similar to perfume bottles used by other designers and contained elements that were common in the industry, such as an hourglass shape. Moreover, it lacked secondary meaning.

How to Show Secondary Meaning in Trade Dress

To show secondary meaning in trade dress, plaintiffs have to show that in the public mind, the primary significance of the product feature is to identify the source of the product. The court can look at advertising expenses, consumer studies that connect the mark to its source, unsolicited media coverage of a product, sales success, attempts to copy the mark, and the length of exclusive use of the mark.

Ultimately, the trade dress of "Eternity" was not found to have a secondary meaning because these factors balanced against such a finding. Not all magazine ads contained the Eternity perfume bottle, and a flawed consumer survey came back with 21 percent of participants able to correctly identify the source of the bottle as Calvin Klein or even the Eternity perfume.

Trade Dress Dilution

Under federal law, the owner of protected trade dress can assert a claim of dilution by proving that the claimed trade dress is not functional and is famous, and that any unregistered matter is famous separate from the fame of registered marks if there are any.