Trade dress, like a trademark, serves to identify and distinguish sources of goods and services from each other. Trade dress encompasses non-functional aspects of physical objects such as packaging design,[i] overall product line designs,[ii] and even building designs[iii] or restaurant décor.[iv]
Trade dress can be pretty straightforward but still be distinctive and recognizable to the general public, with the red wax on a Maker's Mark whiskey bottle being an example. While trade dress is protectable under federal and common law regarding trademarks, most businesses tend to focus on protecting their trademarks and brand names/logos and focus less on their trade dress, sometimes to their detriment.
Trade dress is protectable under federal and state trademark law, common law, and federal design patent law.
As trade dress functions as a trademark, it may be registered under federal and state laws governing the registration of trademarks. In addition, trade dress may also be the subject of a U.S. design patent if the statutory requirements for a design patent are met. Under federal law, trade dress is protected under section 43 of the Lanham Act (US Trademark Act of 1946 as subsequently amended), codified at 15 U.S.C. §1125.[v]
While a trade dress may be registered as a federal trademark, an owner may still file a lawsuit under section 43 to protect unregistered trade dress. In this circumstance, the owner has the burden at trial of proving the trade dress is not functional,[vi] which can place the trade dress owner at a significant disadvantage.[vii] Accordingly, we recommend registering your trade dress with the USPTO, rather than trying to protect an unregistered trade dress in court.
As noted above, trade dress protection does not extend to functional aspects of a product or physical object. For instance, the aesthetic elements of a glass Coca-Cola bottle are all features of the trade dress of the bottle itself, which is registered as U.S. Trademark Reg. No. 696,147. These aesthetic elements include:
· Its fluted configuration,
· height to width ratio,
· placement of the Coca-Cola name on the bottle relative to the bottle lip and
· the font used.
Since the trade dress and trademark only protect the nonfunctional features of the bottle, if another company were to package its product in a glass bottle completely distinct in appearance from the Coca-Cola bottle, then Coca-Cola could not prevent the other company from doing so. However, suppose the other company's bottle was so similar that an average consumer might be confused into thinking they were the same product. In that case, Coca-Cola could assert its trade dress rights and force the other company to change its bottle design.
How Gallium Can Help
[i] E.g., the distinctive spotted boxes used by Gateway, Inc. to package computers for transport.
[ii] Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (For example, while one cannot claim trade dress in the overall design of a children's clothing line, since that overall design is functional and in any event in the public domain, the particular arrangement of shapes, colors, and materials in the clothing line may be protectible as trade dress.).
[iii] The trade dress design of the Empire State Building is protected as a trademark by several U.S. trademark registrations: U.S. Trademark Reg. No. 2,411,972, No. 2,413,667, No. 2,429,297, and 2,430,828.
[iv] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
[v] Specifically, this section provides as follows:
15 U.S. Code § 1125 - False designations of origin, false descriptions, and dilution forbidden.
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
[vi] 15 U.S.C. § 1125(a)(3).
[vii] During the trademark application process for trade dress the owner may also be required to show non-functionality by the trademark examiner. However, since that process is ex parte, meaning the application is on behalf of one party, it is often easier to demonstrate non-functionality to the examiner than to do so in a court trial where the defendant may be vociferously arguing that the trade dress is functional.