What is trade dress in the United States?

Trade dress is a form of intellectual property which is closely related to trademark law. Trademarks are symbols that distinguish the products produced by one company from the products produced by another company. Trademarks are intended to protect consumers from low quality products by allowing a company to claim the exclusive right to use a symbol on products from the company. Trade dress is a similar concept which allows companies to claim the exclusive right to the way in which products are presented to consumers.

Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992) is a defining case in United States trade dress law. In that case the Supreme Court of the United States held that trade dress is defined as a product’s “total image” or “overall appearance” and “may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques.” Trade dress may be protected under § 43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat. 441, 15 U.S.C. § 1125(a).

The following things have been successfully protected as trade dress:

Product packaging;
The shape and color of pharmaceutical pills;
The design and format of magazine covers;
The shape and a combination of physical features on a briefcase;
Golf course holes;
The layout of point of sale displays; and
The decor of a restaurant.

Trade dress, like trademarks, has common law protections and can be registered with the United States Patent and Trademark Office. Registration of trade dress is not required to assert a claim of trade dress infringement but registration gives the person asserting a claim to the trade dress additional rights. Whether a company is attempting to register trade dress with the United States Patent and Trademark Office or attempting to sue for infringement of unregistered trade dress there are two major factors to consider, functionality and distinctiveness.

Functionality is broken into two minor tests. De facto functionality and de jure functionality. If trade dress is de facto functional it can be protected, if trade dress is de jure functional it cannot be protected. The turning point between de facto and de jure functionality it the effect on competition, if competitors must use some aspect of the trade dress because it is required to make a product function, than that aspect cannot be protected as trade dress. For instance the classic look of a bottle of coca-cola can be protected as trade dress because the artistic shape and ribs of the bottle do not relate to the function of the product, competitors are not at a disadvantage using a different shape for their bottles. If the shape of the bottle gave the product an advantage than it would be de jure functional and could not be protected as trade dress.

If trade dress is not de jure functional the next thing to consider is distinctiveness. If the trade dress has been registered with the United States Patent and Trade Mark Office than it is presumed to be distinctive. If the trade dress is not registered than the owner of the trade dress must show the trade dress is inherently distinctive. Trade dress is inherently distinctive if it is: (i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to primarily act as an indication of origin of the product. If the trade dress cannot be shown to be inherently distinctive than the owner of the trade dress must show it has acquired a secondary meaning. Evidence which help prove secondary meaning are consumer surveys, the length of time the trade dress has been used, advertising spent promoting the trade dress and the volume of sales related to the trade dress.

Trade dress is a useful tool for companies, it is a complicated form of trademark law and it is best to consult with an attorney to determine how best to protect your trade dress.

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