Trade Dress

Definition of Trade Dress

Trade dress is the overall appearance of a product or the packaging of a product when that overall appearance has become known to consumers as an indicator that the product originates from a particular source. Expressed differently, trade dress is the aesthetic features of a product to the extent that those aesthetic features have gained acquired distinctiveness or secondary meaning.

Since trade dress is an indicator of the source of a product, it is a form of trademark protection. Trade dress can be registered with the US Patent and Trademark Office as a trademark. Registering trade dress requires careful consideration of the features shown in the drawing, as well as careful consideration of the requirements discussed below. Please do not hesitate to call me to discuss the best way to protect your designs.

Requirements for Trade Dress Protection

Trade Dress Must Not Be Functional

In determining whether a design for which trade dress is asserted is functional or aesthetic, courts apply the following four factors.

1. Does the design provide a utilitarian advantage?

A design which provides a useful advantage will not be protectable through trade dress. Evidence of a useful advantage can include utility patents which describe and claim features of the design, A utility patent which claims the product features for which trade dress is asserted is strong evidence that the features are functional. Conversely, design patents are evidence that the design is aesthetic and nonfunctional.

2. Does the applicant’s advertising discuss a utilitarian advantage of the design?

If the applicant’s advertising includes descriptions of the functional advantages of the design, then such statements will be strong evidence that the design is functional.

3. To what extent are alternative designs available?

The availability of an alternative design can be evidence that a design is aesthetic as long as the design is not essential to the purpose of the product, and as long as the alternative design does not affect the cost or quality of the product. Conversely, if exclusive use of the design would put competitors at a disadvantage, then the design is functional.

Aesthetic Functionality

Aesthetic functionality exists when features of a product may not provide a truly utilitarian advantage, but provide other competitive advantages. Aesthetic functionality describes situations in which the issue is actual functionality, but evaluation of the functionality from a purely utilitarian standpoint is difficult. Aesthetic features which provide real and significant competitive advantages will be found to be functional and will not be protectable through trade dress.

For example, using the color black for an outboard boat motor provides no advantage in the functioning of the motor. However, black is easier to coordinate with various colors of boats, and gives the motor a smaller appearance, both of which provide a competitive advantage. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531, 1533, 32 USPQ2d 1120, 1122, 1124 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995).

Aesthetic functionality should not be confused with ornamental features. Ornamental features are those which are present for ornamental purposes, and which do not function as trademarks because they do not inform consumers that the product originates from a particular source. Ornamental material is neither functional nor capable of functioning as a trademark.

4. Does the design result from a comparatively simple or inexpensive manufacturing method?

If a product or its packaging are the result of a comparatively simple manufacturing process, then the design is functional. Although a design which is at least as difficult or expensive to make as alternative designs can potentially be aesthetic, such designs can still be functional if they affect the quality of the product.

Trade Dress Must Have Acquired Distinctiveness

In the context of trade dress, acquired distinctiveness means that consumers have learned to associate a particular product appearance or product packaging appearance with a particular source for that product. Acquired distinctiveness is also known as secondary meaning.

The design of a product is never inherently distinctive. Acquired distinctiveness must always be shown. Although the packaging of a product can potentially be inherently distinctive, functionality will still be closely examined, and applicants should be prepared to show acquired distinctiveness.

Acquired distinctiveness is evaluated using the following factors:

1. Association of the design with a particular source by actual purchasers. Determining the extent to which consumers make this association typically requires customer surveys linking the name to the source.

2. The length, degree, and exclusivity of use of the design. Although five years of continuous, substantially exclusive use is helpful, in some cases five years of use may not be sufficient.

3. The amount and manner of advertising.

4. The amount of sales of the product and number of customers; purchasing the product.

5. Intentional copying of the design by competitors.

6. Unsolicited media coverage, particularly if this coverage discusses the design and the association of the design with the source of the product.

Protecting Trade Dress

When designing similar types of products, consider including non-functional, consistent aesthetic features into the design. The same aesthetic features should ideally be used across multiple product lines so that consumers are more likely to associate the aesthetic features with the source of the products.

Prior to releasing the product, your intellectual property attorney should prepare and file a design patent application. A design patent can protect the design in the early stages of the product’s life cycle, before consumers begin to associate the design with the source of the product. A design patent can also help ensure the exclusive use of the design.

Once the product has been sold for at least five years, your intellectual property attorney can file an application to register the design as a trademark. As much evidence of advertising volume, sales volume, and unsolicited media coverage as possible should be included with the application. Rejections of the application can potentially be addressed by presenting evidence of alternative designs as well as evidence that the design does not result form simple or inexpensive manufacturing processes.

If the product was already released more than one year ago, then design patent protection is no longer available. In this instance, it is worth considering whether the evidence of acquired distinctiveness is sufficient to file an application to register the trademark prior to five years of use. Even if registration on the Principal Register is unavailable, registration on the Supplemental Register will prevent a competitor from registering a confusingly similar design.

Please do not hesitate to contact me to discuss how your product designs can receive the best protection.

Trade Dress Infringement

Trade dress is a form of trademark. Trade dress is therefore infringed by product designs or packaging designs which are likely to be confused to the protected design. If a consumer exercising ordinary care would be likely to purchase the accused design believing it to be the protected design, then the trade dress is infringed.

If you have received a cease and desist letter or a demand letter accusing you of trade dress infringement, please call me to discuss how I can help to resolve your situation.

Design Patent v. Trade Dress

Design patents and trade dress both protect the aesthetic features of a device, and have a similar scope of protection. However, the protection provided by each is useful at different times.

A design patent application can be filed prior to sales of the device, so that the appearance of the device can be protected from confusingly similar designs for 15 years from the issue date of the design patent.

Trade dress protection does not exist until consumers begin to associate the appearance of the device with the source of the device, fulfilling the requirement of acquired distinctiveness. Once acquired distinctiveness is established, trade dress protection