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Trade dress is an area of trademark law that is often overlooked. Many business owners and entrepreneurs are familiar with copyrights and trademarks, but very few realize how valuable a trade dress can be in terms of protecting and defining their brand.
Trade dress capitalizes on the fact that a product’s appearance is very indicative of the product itself, and can therefore act as a source identifier—just like trademarks, names, and logos.
But what is a trade dress exactly, and how can brand owners stand to benefit from it? What are some examples of trade dress infringement? We will cover all these topics below.
What is a Trade Dress?
Trade dress is a form of intellectual property that refers to the visual characteristics and overall appearance of a product and its packaging—the likes of which identify the source of the product and distinguishes it from others.
Trademark vs. Trade Dress
Although trademarks and trade dress are both forms of intellectual property (IP) used specifically for commerce, they are distinctly different.
A trademark is a 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 its packaging. This includes the product’s size, shape, color/s, texture, pattern, and configuration. Even sales techniques or non-functional elements can be included in the trade dress.
Trade Dress Example
To further illustrate what a trade dress is or refers to, think of the following products:
- A Coca-Cola bottle
- A Hershey’s Kisses chocolate
- A Goldfish cracker
All these items, when they come to mind, have a very distinct look and shape—so much so that you could probably guess what they are just by their silhouette. The Coca-Cola bottle, in particular, has become so iconic and so well-known, it’s even used to describe a woman’s body type (i.e., an hourglass shape or “coke bottle figure.”).
Trade Dress: Overall Appearance
Why is the overall appearance (or overall commercial appearance) of a product so important?
Because this a trade dress allows for capturing of distinguishing elements that cannot be captured by a normal trademark. In fact, trade dress is used almost exclusively for the “non-functional” elements of a product.
Say you sell boxes of curated products, and your brand’s box has a very specific shape, dimension, and color to help it stand out. Simple trademark registration can protect your brand name, logo, and brand colors, but not the actual shape, dimensions, color scheme, or configuration of the box.
If you really want to protect the configuration of your box—i.e., the placement of the logo, the color scheme, the dimensions, the corners, etc.—then you’d apply for a trade dress registration.
Requirements of Trade Dress Registration
In order for you to properly register a trade dress, you must meet several requirements:
- The trade dress must be inherently distinctive in the marketplace or
- through a secondary meaning
- The trade dress must be primarily nonfunctional
Inherently Distinctive
Apart from other considerations, the trade dress must be inherently distinctive—which, in many cases, means it’s able to communicate to consumers as an identification of the product source rather than the product description.
According to case law, in order for a trade dress to be inherently distinctive, it:
“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.”
The law of unfair competition, in respect to trade dress, requires that all of the features be considered together, not separately. But it’s also important to note that the test for inherent distinctiveness may vary depending on jurisdiction and/or the industry in which trade dress protection is sought.
Think of the difference between flavored soft drinks versus shampoo bottles. A soda bottle with purple packaging typically corresponds to a grape flavor. Therefore, it’s safe to say that the purple color isn’t inherently distinctive in the case of soft drinks.
However, with shampoo bottles, the color purple may not be as indicative of the type of shampoo inside. This would, arbitrarily, mean the color could be considered inherently distinctive enough to meet the demands of trade dress registration.
It’s important to consider what is common in the industry in which the goods or services reside.
Secondary Meaning
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 prove that customers associate the overall appearance of the trade dress solely with your product.
There are several factors to consider when proving secondary meaning:
- direct consumer testimony
- consumer surveys
- exclusivity, length, and manner of use
- amount and manner of advertising
- amount of sales and number of customers
- established place in the market
- proof of intentional copying
Let’s use the box as our trade dress example again.
Let’s say that your box is a bright orange in color, has a giant black X on the top of the lid, and your logo is on the inside of the lid.
If, by going through the aforementioned factors, you can show that customers clearly associate the box’s appearance with your product, you will likely be granted trade dress registration through secondary meaning.
Primarily Nonfunctional
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.
Using the box example again, you cannot apply for trade dress registration to protect the hinge or scores or tabs of the box.
The courts used to consider functionality on two fronts: “de facto” and “de jure.”
- “De facto” functionality means if the design of a product has a function. For instance, a bottle—regardless of its shape or silhouette—holds fluid.
- “De jure” functionality means that the product has a particular shape because it “works better” with said shape. Courts would also find 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
We’ll explain de facto functionality using liquor bottles.
Liquor bottles are, in essence, containers used for holding and pouring liquor. 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 (like Crown Royal, for instance) relates to the shape, outline, dimensions, ribbing, labels, colors, and/or anything else that contributes to the overall appearance to create that product association.
These can be considered proper trade dress elements so long as these elements do not contribute to the functionality of the product.
De Jure
However, if some or all of the trade dress elements somehow improve or contribute to the functionality of the liquor bottle, it’s a completely different story.
Say the bottle’s dimensions improve portability or the ribbings improve grip. If this functionality is found to be a necessary element for the company 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 typically look to the “Morton-Norwich” factors to help determine functionality. These factors include:
- 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
Design Patent
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 has no claim to any functionality.
Obtaining a design patent can prove non-functionality of an element, and can, therefore, be very helpful to your case when obtaining a trade dress. Just bear in mind that the process of obtaining a design patent can be lengthy and expensive if you don’t know what you’re doing.
There are also instances when the design patent may cause more harm than good. Say, for instance, the design patent dominates the market and essentially creates a monopoly, the once non-functional design of your product may become generic. This would create a de jure functionality and thus, invalidate the trade dress protection.
Acquiring Trade Dress Registration
A trade dress has dozens of advantages for your business:
- Prevents consumer confusion
- Defines product brand/branding
- Encourages brand-product familiarization/association
When applying for trade dress registration, apply for a federal trademark with the help of a reputable IP attorney. In addition to considering the application, you must also take into account:
- 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 though these updates.
- Search. Be sure to do a trademark search of the trade dress elements. Enlist the help of a patent 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 and lower your trademark cost.
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Conclusion
To recap here is what we covered:
Table of Contents
- What is a Trade Dress?
- Trade Dress: Overall Appearance
- Requirements of Trade Dress Registration
- Acquiring Trade Dress Registration
It is our hope that we have provided you with all the information you need regarding what is a trade dress.
If you have any questions don’t hesitate to book a free consultation today!