Trade dress is the overall appearance or total feel of a particular product or service. It consists of all the various elements that are used to promote a product or service. Ultimately, the attributes and elements that make up the trade dress need to identify the source of the product or service to consumers.
For a product, trade dress might be the packaging, the attendant displays, and even the configuration of the product itself. For a service, it might be the decor or environment in which a service is provided—for example, the distinctive decor of the Hard Rock Cafe restaurant chain.
In more recent years, courts have categorized the particular "look and feel" of a website or mobile application's design and layout as trade dress.
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:
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).
Find out if your product qualifies for trademark protection.
Functional aspects of trade dress can't 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 protectable 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 protectable as trade dress.
There are many examples of trade dress. More commonly, it can include the shape of a product or design of a box. But it can also include the design of a mobile application or the flavor of a product. Below are two common examples of trade dress.
In the physical world, trade dress can refer to the packaging of products—literally the way they're "dressed." Think of the famous light blue Tiffany's box or the design of a Coca Cola can. These are instantly recognizable to an average consumer and protectable as intellectual property under the Lanham Act.
You can protect product packaging as trade dress if you can show that the average consumer would likely be confused as to product origin if another product is allowed to appear in similar dress.
Trade dress is different from separate and discrete elements of your site—for instance, a long essay or photograph that can be protected under copyright. Instead, trade dress describes the overall look and feel—the colors, the format, and the overall qualities.
Imagine that your website for your flower business had doodles of lilacs in the background, was mostly orange with blue navigation bars on the left and included animations of dancing flowers on the bottom. Now imagine that one of your flower competitors launched a website with almost the same general design. Even if the competitor's website used slightly different doodles, images, and text, your overall "look and feel" is still being copied. Because this could lead to consumer confusion, you might be able to sue for trade dress infringement.
If you have a protectable trade dress, it's important that you protect it from infringement and dilution. Infringement is when another company uses your trade dress or a trade dress that's very similar to yours for their own product or service. To qualify as infringement, the company's use of a similar trade dress would need to cause a "likelihood of confusion" in consumers' minds.
Dilution is when another company weakens the distinguishability of your trade dress. Another company can dilute your trade dress either by harming (or "tarnishing") your trade dress' reputation or by "blurring" your distinctive trade dress with the other company's trade dress.
While you have many rights and protections if your mark is registered, you can also assert a claim of dilution for an unregistered trade dress. To do so under federal law the trade dress owner must prove:
To learn more, see Patent, Copyright, and Trademarks.