Trade dress is a type of trademark that extends to the configuration (design and shape) of a product itself. Like a trademark, a product’s trade dress is legally protected by the Lanham Act. (15 U.S.C § 22). The definition of trade dress is broad, extending to “the total image of a product,” and it “may include features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.” (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 (1992); American Greetings, 807 F.2d at 1141; Rose Art Industries, Inc. v. Raymond Geddes & Co., 31 F. Supp.2d 367 (D.N.J. 1998)). “The Lanham Act protection of product configurations extends to the total image of a product including features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.” (Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1439 (3d Cir. 1994)).
Trade dress creates a visual impression which functions like a word or design mark, as an indicator of source. For example, the Chanel No. 5 bottle is instantly recognizable as the Chanel No. 5 bottle, even without the “Chanel” name on it. The same holds true for the appearance/design of the Hermès Birkin bag.
Landmark cases in the area of law have established that the shape, color, and arrangement of the materials of a children’s line of clothing can be protectable as trade dress (though, the design of the garments themselves is not protected), (Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000)). Similarly, the design of a magazine cover may be protected as trade dress. (Reader’s Digest Ass’n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987)). The appearance and décor of a chain of Mexican-style restaurants is protectable. (Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992)). Lastly, a method of displaying wine in a wine shop is protectable. (Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000)).
Elements Required for Trade Dress Protection
Trade dress may be registrable as a trademark or service mark with the U.S. Patent and Trademark Office, or may be protected via common-law rights that are acquired through use in commerce. An application to register trade dress with the U.S. Patent and Trademark Office must include all of the same content as any other trademark application, including a description of the trade dress, identification of the products and/or services to be covered and payment of the appropriate fee. “Substantively, the trade dress must be both distinctive (i.e., recognizable to consumers as source identifying) and nonfunctional (i.e., not be essential to the use or purpose of the product or service and not affect the cost or quality of the product or service).” (INTA).
Trade dress that is not registered may still be protected under federal law if the following factors are met:
- The trade dress does not serve a “functional” purpose; (Merchant & Evans v. Roosevelt Bldg. Products Co., 963 F.2d 628, 635 (3d Cir. 1992); United States Golf Ass’n. v. St. Andrews Systems, 749 F.2d 1028, 1033-34 (3d Cir. 1984)).
- It is “distinctive” (either inherently or because it has acquired secondary meaning); and
- In an infringement case, there is a likelihood of confusion between the parties’ trade dress.
As indicated directly above, features will not be protected by trade dress if they confer any sort of functional or competitive advantage. So, for example, a brand cannot monopolize the use of a particular unique handbag shape if that shape confers some sort of functional advantage (e.g. is easier to grip). For trade dress to be considered “inherently distinctive,” it generally must be unusual and memorable, and it must be likely to serve primarily as a designator of origin of the product.
What if a Design is Not Inherently Distinctive?
If a court deems that a design is not “inherently distinctive,” the brand is not necessarily out of luck. Secondary meaning (another legal term of art) will do. So, what is secondary meaning and how can a brand show that its design has achieved it? Well, according to Cartier, Inc. v. Sardell Jewelry, Inc., a case heard by the Second Circuit Court of Appeals in New York in 2008, secondary meaning may be established through a combination of the following six factors: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use. (Cartier Inc. v. Sardell Jewelry, Inc, 294 F. App’x 615 (2d Cir. 2008)).
To put this simply, (1) Has the brand spent a significant amount of money to advertise the design at issue? (2) Do consumers tend to link the design to the brand that designed it? (3) Are magazines, blogs, etc. featuring this design without the brand paying for the coverage? (4) Has the design sold well? (5) Are other brands trying to copy the design? and (6) Has the brand been using the trade dress design for a long time exclusively? (TFL).
Let’s go back to the Hermès Birkin bag example. Hermès enjoys trade dress protection because the Birkin bag is so iconic that its appearance alone signifies the source of the product (Hermès) to consumers – much like the Hermès’ “H” logo or the Duc carriage with horse signifies the famous design house. As such, the following elements of the Birkin are protected: “a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle; a dimpled triangular profile; a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock; a padlock which fits through the center eye of the turn lock; and typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” (TFL).
What amounts to Trade Dress Infringement?
Like trademark infringement, in order for there to be a merited claim for trade dress infringement, the defendant’s trade dress must create a likelihood of confusion. Thus, the success of a plaintiff’s trade dress infringement claim turns on whether defendant’s mark causes a likelihood of confusion amongst consumers that the plaintiff has in some way endorsed defendant’s goods/services or is connected or affiliated with the defendant and its goods/services. (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)).
These same factors are normally considered in deciding the issue of likelihood of confusion in other trademark infringement cases as well as trade dress infringement cases. When determining the likelihood of confusion, courts use several factors derived from a 1961 case. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).) These factors, sometimes known as the “Polaroid factors,” may vary slightly as federal courts apply them throughout the United States:
- Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion. (Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976); Jeffrey Milstein, Inc. v. Greger, Lawler, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995));
- Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
- Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
- Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.
- The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
- Evidence of actual confusion. Proof of consumer confusion is NOT required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
- Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
- Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
- Relatedness of the products and services at issue.
The remedies for trade dress infringement are the same as those for trademark infringement, i.e., injunctions, recovery of damages in the form of the defendant’s profits or the plaintiff’s actual damages, and/or attorney’s fees in “exceptional” cases. (15 U.S.C. § 1114-1119).