“Trade dress” refers to a visual appearance of something—for example, a product, its packaging, or even the appearance of a store—that signifies, to customers, the source or seller of the product or service. It is related to trademarks in that, if it is distinctive enough to identify your business and product or service with customers, it is protectable from anyone who would try to use your trade dress to pass themselves off as you.
You’ve already seen—and will recognize—famous examples of trade dress:
- Tiffany & Co’s blue box and white ribbon;
- Coca-Cola’s hourglass glass bottle;
- Christian Louboutin shoes’ red sole;
- Toblerone chocolate’s triangular packaging box;
- Jeep automobile’s front grille; and
- the interior layout and design of Apple’s stores.
Trade dress is protected under U.S. trademark law, specifically through the Lanham Act.
Because it is a subset of trademark law, trade dress can cover many different aspects of a product or service’s appearance as an identifier or indicator of the company that sells that product. Trade dress includes elements like size, shape, color, texture, graphics, and even certain design aspects. However, unlike trademarks, which typically consist of logos or brand names, trade dress is about the overall look and feel of a product or its presentation.
What Do You Have to Show to Qualify for Trade Dress Protection?
To qualify for protection, your trade dress must meet two key requirements—it must be distinct and the features you use may not be functional.
Distinctiveness
To be protectable under U.S. law, your trade dress must be distinctive, meaning that members of the public who might buy your product or service recognize that your product or your packaging is from one company.
In fact, you can show your trade dress is protectably distinctive under either of 2 tests:
- inherently distinctiveness means your product / service is presented so as to be immediately recognizable as unique as soon as you debut it.
- acquired distinctiveness through secondary meaning means consumers come to associate your trade dress design with a specific company over time, as a result of your use, your advertising, and your customer education.
As the law stands today, your product packaging is protectible from use by others if you can show that it either is inherently distinctive or has acquired distinctiveness. For example, the Coca-Cola bottle is considered to be packaging that is both inherently distinctive and possessing acquired distinctiveness for the soft drink it contains. The Tiffany & Co. blue box with a white bow has acquired distinctiveness based on its extensive use and proven customer recognition as packaging for the jewelry that comes in that box.
On the other hand, Christian Louboutin’s red-soled shoes are protectable only through acquired distinctiveness through secondary meaning, not through the principle of inherent distinctiveness, as with the Coca-Cola bottle. Why? Current law says that a product’s configuration cannot be protected under the “inherently distinctive” principle. (Presumably, that allows too many companies to take too many elements off the table for others.) Instead, a product’s configuration can only be protectable as trade dress if it has acquired distinctiveness through secondary meaning. So, for example, Louboutin had to show that its red soles were recognizable by customers—in other words, that this red sole had acquired distinctiveness through secondary meaning—to gain protection from other would-be red-soled shoe sellers.
Non-Functionality
Separately, to be protectable, your trade dress must be non-functional.
This will sound odd to non-IP lawyers, but it basically means is you may not claim the exclusive right to use a feature of your product as a brand if that feature makes the product—
- work or function better or
- cost less.
Again, the idea is that U.S. law does not want to tip the scales and give one business exclusive and never-ending “trade dress” protection for something that makes the product or manufacturing of it better.
There is, of course, another form of protection available for such product improvements: Patents.
The “non-functionality” test to protect your product appearance strikes a balance between patent law and trademark law. The Supreme Court explained this thirty years ago:
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§ 154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
This non-functionality requirement is so important that the Supreme Court refused to give “trade dress” protection to a product’s useful feature even if people looking for that product recognize that distinctive useful feature as from a single company (or, as IP lawyers would say, even if your useful feature has acquired distinctiveness) because doing so would give that company a perpetual monopoly over an important function that many other companies could add to their products. Because trade dress is renewable and, therefore, potentially perpetual, but patents are not, giving never-ending trade dress protection to a functional element would effectively give that company a perpetual patent.
The test for non-functionality is whether that feature or design is “essential to the use or purpose of the article or if it affects the cost or quality of the article.”
Courts will look at the presence of the following (“Morton-Norwich”) factors to make this assessment:
- Are you trying to register, as your trade dress, a useful feature that has already been patented?
- Are you trying to register, as your trade dress, a feature that your marketing campaign promotes as better or cheaper or more useful in some way?
- Are you trying to register, as your trade dress, a useful feature that you could have designed differently? In other words, were alternative designs available to you?
- Are you trying to register, as your trade dress, a useful feature that resulted from a simple or inexpensive way of manufacturing your product?
If you are trying to get a “trade dress” monopoly over a feature that you are using in your product because it’s functionally better, because there is no other way for you to achieve that purpose in your product, that does not have any alternative designs, or that you arrived at because it was the cheapest way to make your product, courts are more likely to conclude that you are improperly using “trade dress” law to protect a feature that does not qualify for this protection. When you keep in mind that utility patents exist to give inventors of product improvements a related set of rights, it becomes less and less likely that the court will give you “trade dress” rights over your useful feature.
Finally, keep in mind that whether your product feature is “functional” is a separate question from whether your product feature actually performs a “function,” Most objects perform a function—for example, a bottle holds liquid; a lamp provides light. But, under trademark law, only certain configurations that allow an object to work better are deemed “functional” for the purposes of deciding whether it is protectable as “trade dress.” As the federal court of appeals said in Morton-Norwich, “it is the ‘utilitarian’ design of a ‘utilitarian’ object with which we are concerned.”
Registering Your Trade Dress
If you can demonstrate that your trade dress is both distinctive and non-functional, you can register the trade dress with the United States Patent and Trademark Office (USPTO) for added legal protection. Registration offers several advantages:
- your trade dress protection is presumed to be valid;
- your trade dress is protected in all markets, nationwide; and
- it will be easier for you to deter—or sue to stop—infringers.
Technically, unregistered trade dress also is protected under common law but, in a legal fight, registration strengthens your rights.
Conclusion
Protecting your trade dress is crucial to protecting your brand and its power in the marketplace. Understanding your rights and obligations if you decide to register your trade dress with the U.S. Patent & Trademark Office gives you additional choices and additional options when you come face to face with competition seeking to trade off of the look, feel, or style of your product and its packaging.
Lapple Ubell IP Law is an intellectual property law firm based in Irvine, California, dedicated to helping clients protect, manage, and enforce their innovations and creative assets. The firm provides strategic counsel on patents, trademarks, copyrights, and related IP matters for businesses of all sizes.
The author, Matt Lapple, is an experienced intellectual property attorney and a past-president of the Orange County Intellectual Property Law Association. If you have questions please contact Matt at matt@lappleubell.com or 949-756-4889.
