By Rich Stim
Trade dress consists of all the various elements that are used to promote a product or service. For a product, trade dress may be the packaging, the attendant displays, and even the configuration of the product itself. For a service, it may be the decor or environment in which a service is provided—for example, the distinctive decor of the Hard Rock Cafe restaurant chain.
As with other types of trademarks, trade dress can be registered with the U.S. Patent and Trademark Office (USPTO) and receive protection from the federal courts.
To receive protection, both of the following must be true:
- The trade dress must be inherently distinctive, unless it has acquired secondary meaning.
- The junior use must cause a likelihood of consumer confusion.
What’s inherently distinctive?
For trade dress to be considered inherently distinctive, one court has required that it “must be unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product.” (Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994).)
The U.S. Supreme Court found that a Mexican restaurant chain’s decor could be considered inherently distinctive because, in addition to murals and bright colored pottery, the chain also uses a specific indoor and outdoor decor based upon neon colored border stripes (primarily pink), distinctive outdoor umbrellas, and a novel buffet style of service. (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).) However, the Supreme Court ruled that product designs such as the appearance of a line of children’s clothing are not inherently distinctive and can only be protected if they acquire distinctiveness through sales or advertising. (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) ). Similarly, the “Cuffs & Collar” design mark used by Chippendale’s exotic male dancers was found not to be inherently distinctive. (In re Chippendales USA, Inc., 90 U.S.P.Q.2d 1535 (TTAB 2009), affirmed by the Federal Circuit in 2010).
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Functional aspects can’t be trade dress
Functional aspects of trade dress cannot be protected under trademark law. For example, a company that claimed trade dress on a round beach table lost their rights when the Seventh Circuit determined that the towel design was primarily functional (despite the fact that the trade dress had been registered and had achieved incontestable status). (Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010)). Only designs, shapes, or other aspects of the product that were created strictly to promote the product or service are protectible trade dress.
EXAMPLE: Many liqueur bottles have a unique shape designed for advertising rather than for any particular function. The tall, tapered shape of the bottle used for Galliano is not necessary to hold the product but helps to identify it and is therefore protectible as trade dress.
Packaging as a whole
The trade dress aspect of packaging may be protected if a showing can be made that the average consumer would likely be confused as to product origin if another product is allowed to appear in similar dress. Legal protection is provided under the Lanham Act provisions relating to registered and unregistered marks.
It’s also possible to assert a claim of dilution based on unregistered trade dress. To do so under federal law the trade dress owner must prove: (1) the claimed trade dress, taken as a whole, is not functional and is famous; and (2) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
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