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Trade Dress (Au Naturel)

A request we often receive from clients goes something like this, “I want you to protect all of my IP.” Patent, copyright, and trademark rights are defined by federal statutes, which can make them easier to explain to a client. But what about trade dress?

WHAT IS TRADE DRESS AND HOW IS IT PROTECTED?

Courts hold that trade dress is protectable under the umbrella of unfair competition in the federal trademark statutes. However, what constitutes unfair competition depends on the particular facts. In most situations, trade dress is not protectable when our client first asks about such protection. To be entitled to protection, the trade dress in question must “acquire distinctiveness.” This takes time, persistence and patience.

When we mention the word “distinctive” for the first time to a client, we typically get a quizzical expression in return. When does something, and specifically “trade dress,” become distinctive? This article will not give you a definitive answer, but we hope you will gain some useful background. The easy way out is to engage the services of an experienced trademark attorney.

BACKGROUND ON TRADE DRESS

As you may recall from some of our previous articles, for a trademark right to exist (no matter its form) it must be distinctive. To be distinctive, a trademark must identify a source of goods or services to a buyer. The trademark may be a word, phrase, sound, or it may simply be the visual appearance of something. Visual appearance is generally viewed as trade dress.

Examples are a good way to illustrate trade dress. Trade dress may include the overall configuration of packaging such as the unique shape and contour of a Coca-Cola bottle, the appearance of packaging such as Tiffany & Co.’s distinctive robin-egg blue box with a white satin ribbon. It may also include the appearance of a vehicle such as United Parcel Service (UPS) trucks, the decor/ design of a restaurant such as In-N-Out Burger, or the layout and design of Apple Stores. Trade dress can even be a feature of the product such as the red lacquered sole on Louboutin shoes. When a buyer sees these recognizable and distinctive features, the buyer attributes the related goods or services with a particular source.

THE SUPREMES

The U.S. Supreme Court has helped define what constitutes trade dress. The first case, Two Pesos, Inc. v. Taco Cabana, Inc. (1992), involved Taco Cabana, a chain of fast-food restaurants specializing in Mexican cuisine. Two Pesos, a competing Mexican restaurant chain, began to open restaurants with a similar style and décor, leading Taco Cabana to file a lawsuit alleging that Two Pesos had infringed its restaurant décor trade dress. The main issue was whether Taco Cabana’s unregistered, yet inherently distinctive, trade dress was protectable under the U.S. Trademark Act without proof of secondary meaning—a legal concept that shows consumers associate the trade dress with a specific source. The Supreme Court ruled that inherently distinctive trade dress could be protected under the Lanham Act without the need to prove secondary meaning. As such, Taco Cabana prevailed.

A later U.S. Supreme Court decision, Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000), dealt with Walmart copying clothing designs of Samara Brothers. The Court noted that for trade dress to be protectable, it had to be distinctive and non-functional. In this context, non-functional means that the design elements are not essential to the use or purpose of the product, do not affect the cost or quality of the product, and are not dictated by considerations of functionality. The Court also held that product design cannot be inherently distinctive, and Samara Brothers lost.

FEDERAL REGISTRATION

If the trade dress is distinctive and non-functional, it may be registered as a trademark with the U.S. Trademark Office. However, registration may be difficult as considerable proof of distinctive- ness and non-functionality is required. Nonetheless, it can be done!

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