Spring 2019

Legal Corner: Trade Dress By Angie Avard Turner

What is Trade Dress?

Trade dress is a form of intellectual property that is categorized under trademark law. Trade dress was originally defined as the way a product was packaged. Think of the little blue box with the white satin ribbon—Tiffany’s, right? That is the power of trade dress and trademark law. Trade dress emerged from a 1992 case where the court ruled that the way a product was “dressed” to go to market could be protected. The rule has since expanded to even include a certain way the interior of a business is styled or themed.

You may know that trademark law protects a logo, work, symbol, phrase, name or design. The purpose of this protection is for a company, through branding, to create ways for their customers to identify their brand. This is also known as a source identifier. The customer identifies the products because he or she recognizes the trademark—a source identifier. For example, when we see the “swoosh,” we know that is the brand, Nike. Or, when we see the fruit with the leaf and bite taken out of it, we know that is Apple. Trademark is a little easier to identify and quantify, so to speak than trade dress.

What are Specific Examples of Trade Dress?

To further illustrate, what seems like a difficult area of the law, I will offer a few examples of trade dress that could apply to the gift industry.

One of the more famous examples of trade dress may be the glass Coke bottles. These bottles have a distinct look, shape and feel. However, the look, shape and feel do not perform any function except to serve as a mark to distinguish or identify the brand, therefore the shape of the glass bottles may be protected under trade dress.

Another example is Levi Strauss. Think about the stitching on the back pockets of Levi Strauss. Those stitches too are distinctive, yet do not serve any functional purpose. The only purpose served is to identify the brand.

Yet another example of trade dress is Apple retail stores. The company was able to register the distinct layout of its retail stores.

Other examples of successful trade dress registrations include toys, cars, golf courses, the layout of a restaurant and décor, style, and even its menu, smell, color, and sound may be protected under this legal doctrine.

What Features MUST be Proved When Applying for Trade Dress? 

Functionality

This is a key factor that is not taken into consideration with regular trademark applications. Functionality hinges on whether the trade dress is used to make the product different or unique or whether it is necessary for the product to work or operate. This factor is highly subjective, and courts in various circuits treat it slightly differently. That is why it’s important to seek the advice of a trademark attorney.

Distinctiveness

The distinctiveness factor is what the Trademark Office examines to make sure that they are either inherent distinctiveness or distinctiveness acquired by secondary meaning. With inherent distinctiveness, the applicant must establish that the trade dress is memorable, unusual, fanciful, arbitrary, or suggestive. This is difficult to do as there is not one standard to apply.

Distinctiveness based on secondary meaning is where the applicant demonstrates that the consumer identifies the trade dress with the specific product. This is difficult to prove, however, in this instance, the applicant is allowed to rely on data such as sales volume, advertising, and how long the trade dress has been in use.

Permitted to Use

This element is what the examining attorney will look at for trade dress in light of any other registrants that exist in the Trademark office. If there are other registrants that the examining attorney feels would cause confusion among consumers, then the trade dress will be rejected. Here are some of the factors an examining attorney considers when trying to determine the likelihood of confusion:

• The strength of the trade dress.
• The similarity to other registrants’ trade dress.
• The intentions in using the trade dress.
• Are the products in the same class of goods and services?
• Are you using similar marketing channels?
• The level of sophistication the customers may use in purchase of your specific type of goods.
• Use of the branding increases or decreases the likelihood of consumer confusion.

Trade dress is a much more complex process than regular trademark registration, however, it can add a layer of protection that few if any other parts of the law can provide. As with any legal matter, you should always consider seeking the advice of an attorney who practices in that area. It will be an investment, but you are paying them to guide you through!

DISCLAIMER: The materials available in this article are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this website do not create an attorney- client relationship between Angie Avard Turner Law and the user or browser.

Angie Avard Turner

Angie Avard Turner is an attorney who exclusively represents clients in the gift industry including retailers, wholesalers, artists and bloggers. She is licensed to practice law in the state of Georgia, but she is able to handle copyright and trademark issues nationally. For more information regarding her practice, visit www.angieavardturnerlaw.com.