What Is a Trade Dress and How Can It Be Protected

Trade Dress and How to Protect It

The appearance and the feel of a commercial product or its packaging constitute a trade dress. It is one of the types of intellectual property. The term usually applies to the packaging, labeling, design and configuration, flavor and scent, and color of a product. It might also apply to the interior décor and layout of a retail store, restaurant, truck, etc.

What Is the Difference between a Trademark and a Trade Dress?

A trademark and a trade dress have essentially the same legal status. A trade dress might be considered a form of trademark. Therefore, just like an ordinary trademark, an unregistered trade dress is protected under the Trademark Act of 1946. However, to enjoy this protection, the owner must prove that the trade dress is distinctive and non-functional.

What Sort of Trade Dress is Registrable?

To register a trade dress at the USTPO, it must satisfy two prerequisites: distinctiveness and non-functionality. These were mentioned in the case TrafFix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 28-29, 121 S. Ct. 1255, 58 U.S.P.Q.2d 1001 (2001).

1. Non-functionality

If a trade dress is essential to the functionality, quality, or cost of the product, it cannot be protected under trademark laws. This stipulation ensures that any essential feature of a product is not monopolized by a single manufacturer and promotes competition in the market. Functionality is defined in Section 1202.02(a) of the Act. As addressed in re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 U.S.P.Q. 9 (C.C.P.A. 1982), the following are the most important things to be considered when deciding whether a trade dress is functional.

·         If a utility patent exists for the design of the product, it means that it has functional advantages.

·         These advantages might be mentioned in advertisements and during the marketing campaign.

·         Evidence might be presented that shows that alternate designs are available.

·         It might be revealed that the design of the product is a result of a simpler and cheaper manufacturing process.

2. Distinctiveness

Distinctiveness is broadly classified into two types: it may be inherent or acquired. Inherent distinctiveness is due to some immanent features of the design that distinguish it from those of other brands. If a trade dress lacks this sort of distinctiveness, it might still be registered if it is proved that it bears acquired distinctiveness (which is often referred to as “secondary meaning”); it means that consumers consider this specific design an indicator of the applicant’s brand. During the examination of a product packaging trade dress, the examining attorney will observe the following aspects of the subject.

·         If the design is common or has a shape or symbol that is commonly used

·         If the design is unique or if it resembles others in the same industry

·         If the design is just a modification of an already existing and well-known decorative item of pattern

·         If the design, apart from the text, can make an impression that distinguishes it from the rest

Meeting these requirements is not easy sometimes even for big companies. That is why applicants often seek the assistance of trademark counsels to guide them through the process. For example, Apple Inc. was able to get a trade dress application accepted by the USPTO for the layout of its retail stores

Proving the Secondary Meaning of a Trade Dress

Secondary meaning or acquired distinctiveness refers to the association of a trade dress with a specific company or brand. To establish this sort of distinctiveness, the applicant has to prove that the trade dress of the product distinguishes its source even though the design itself lacks any inherent distinctiveness. To ascertain the existence of secondary meaning, the following factors will be checked by the USPTO.

1. The length of the period during which the subject design has been used

2. The success in sales associated with the use of the design

3. The sum spent on advertising the product having the given design

4. The evidence obtained by surveying consumers and people related to the brand

5. Unsought media coverage i.e. coverage other than advertisements and other marketing attempts

If you happen to be an applicant who needs the help of professionals in getting your trade dress registered, you have come to the right place. Consider contacting us for a courtesy consultation and for clearing any query you might have regarding the application process.