If you are a business owner, you may know about the various options you have for protecting your intellectual property rights, such as trademark, copyright, and patent rights. Depending on the nature of your business, another IP right that you might possess is trade dress. What is trade dress? In the broadest terms, trade dress refers to the visual appearance of a product or service, or its packaging, that lets consumers know the product’s source.
To learn more about trade dress, including how it differs from trademark, keep reading this blog.
What Kind of Intellectual Property Right Is Trade Dress?
Trade dress is an intellectual property right that specifically applies to the promotional aspects of a product or service. For example, trade dress would protect the packaging of your product against infringement by a competitor, as long as your packaging is unique and can be clearly distinguished from other kinds of packaging. In addition to product packaging, examples of trade dress for a product might include a product display, or even the design of the product itself. For a service, trade dress can apply to the décor or interior design of a business location or space. (E.g., the look, feel, and ambience of a restaurant chain or theme park.)
Just as with trademark rights, trade dress that has been registered with the U.S. Patent and Trademark Office (USPTO) can be protected in court by having an experienced California trade dress attorney file a Lanham Act claim. Trade dress is also similar to trademark in that there are common law trade dress rights: the use of a particular packaging design or logo is what creates trade dress, regardless of whether it is listed in the federal trademark register. If a competitor violates your trade dress by using packaging or other design aspects that might confuse consumers when it comes to the origin of the product, you may need to take legal action.
When Can Trade Dress Be Protected?
While trademark rights can be both common law and statutory, trade dress is typically a common law IP right. That’s because there are significant restrictions on the types of trade dress that may be recognized by the USPTO, and it can be extremely difficult to get your trade dress listed in the federal trademark register. One of the major advantages of receiving official trademark recognition from the USPTO is that the trademark will be enforceable in U.S. district court if you ever need to file a lawsuit against an infringing competitor, and the same is true for trade dress. That’s why, despite the potential difficulties in receiving approval, it may still be worth it to file a trade dress application with the USPTO.
In order to register your trade dress, certain conditions must be met:
- The trade dress must be inherently distinctive, or it must have a secondary meaning.
- The trade dress must be non-functional.
What Does “Inherently Distinctive” Mean?
An “inherently distinctive” trade dress is generally one that is novel, unusual, and largely inseparable from the product or service itself. In cases involving trade dress infringements, courts tend to issue more favorable rulings for plaintiffs looking to protect trade dress for services as opposed to products. The United States Supreme Court has ruled that the décor of a restaurant can be inherently distinctive in certain circumstances, whereas product designs alone cannot be inherently distinctive without having acquired uniqueness through advertising and consumer reaction.
If a product’s packaging is found to be similar to the packaging for other products on the market, this doesn’t necessarily doom a trade dress claim to failure. That’s because the plaintiff would still have an opportunity to show that, despite the similar packaging used by other brands, this particular brand’s packaging has acquired a “secondary meaning” among consumers who tend to associate the packaging, design, etc. exclusively with the one brand. For example, the design of the Coca-Cola bottle is shaped in a way that has come to be associated with the Coca-Cola brand. Even if other sodas or beverages use a similarly shaped bottle, consumers instantly connect this particular bottle’s shape to Coca-Cola. This is why Coca-Cola would have a viable claim if a competitor infringed on their trade dress.
Functional vs. Non-Functional Trade Dress
Since trade dress tends to focus more on a product’s packaging than on the actual product, courts have held that trade dress can only be protected legally when it involves visual qualities that are used to market a product or service. Although the Coca-Cola bottle is technically functional in that it contains the beverage being sold to consumers, that’s not the source of the company’s trade dress rights. Since a bottle with a different design and shape could serve the same function, it’s clear that the Coca-Cola bottle was designed primarily for advertising and promotional purposes. This non-functional aspect of the bottle’s design is why it can be afforded trade dress protection.
Contact the Los Angeles Trade Dress Attorneys at Tauler Smith LLP
Whether you’ve received a letter alleging a trade dress violation, or you’ve become aware that someone might be infringing on your trade dress, it is imperative that you speak with a knowledgeable intellectual property attorney as soon as possible. The Los Angeles trade dress lawyers at Tauler Smith LLP represent both plaintiffs and defendants in IP cases, and we are prepared to help you resolve your trade dress case.