Trade Dress: What It Is, and How to Protect It

Trademarks and service marks inform consumers of the provider’ identity. Similarly, when the overall appearance of a product or service – including such elements as distinctive packaging, product shape, configuration, or even its color – becomes sufficiently fixed in consumers’ consciousness to serve to identify its source, those distinctive features may qualify for protection as “trade dress.”

To qualify for trade dress protection, the distinctive features cannot be primarily functional, but must mainly serve to identify or promote the product or service. It can do this either by being inherently distinctive or by acquiring very strong public identification with the source (the legal term for this type of popular fame is “secondary meaning”).

Striking or unusual product packaging (think of as McDonald’s Happy Meal boxes, decorated with McDonald’s characters, with golden arches for handles) may be inherently distinctive. But for the shape or design of a product itself to qualify for trade dress protection, it must be shown they have acquired secondary meaning, such that it would mislead or confuse consumers, and harm the producer, to allow a competitor to sell an identical or too-similar product.

Some well-known examples of protected trade dress include packaging (such as the curved, ribbed Coca-Cola bottle, the dimpled bottle favored by Pinch brand Scotch whiskey, or the ovoid containers Hanes uses for L’eggs pantyhose) or fashion elements (such as the red soles characteristic of Christian Louboutin shoes or the tartan plaid lining of Burberry jackets).

The U.S. Supreme Court has found trade dress protection available for the environment in which a service is provided (the distinctive décor and novel serving method of a chain of Mexican restaurants) and even for use of a well-established color (a distinctive green-gold color one company had used for decades for the pressing pads it sold to dry cleaners).

The legal support for trade dress protection comes from section 34(a) of the Lanham Act, which not only makes it illegal to use counterfeit or misleading trademarks, but also any “word, term, name, symbol, or device,” or any combination of those indicators, when doing so is likely to confuse or deceive consumers about the product or service’s nature or origin.

While trade dress can be registered with the U.S. Patent and Trademark Office, either in the Principal Register or the Supplemental Register, the trade dress owner need not do so to be able to move against infringers. Registration does convey a number of advantages, however, such as preventing others from registering it, and making it easier to protect in many other nations.

The same penalties exist in the U.S. for trade dress infringements as for trademark infringements: injunctions, damages (the defendant’s profits from the infringement, or the plaintiff’s actual damages, which a court can opt to treble, with award of attorney’s fees in cases deemed to be exceptional.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.