Many business owners only think of protecting their logo or catch-phrase with a trademark. However, it's essential to be aware that various other aspects of a brand can be shielded from misuse. Not to be confused with a trademark, trade dress is just as important to protect. While a trademark can safeguard the words, logo, symbol, or phrases that encompass a brand, trade dress can safeguard a product's appearance — and prevent others from marketing goods with a similar design.
Trade dress can be defined as the overall commercial look and feel of a product. It's the way that consumers identify your goods and sets them apart from others. Like trademarks, trade dress is protected under The Lanham Act and can be registered with the U.S. Patent and Trademark Office (USPTO). Also similar to trademarks, it must be inherently distinctive — and non-functional — in order to receive federal protection.
The packaging of a product, how it is configured, and the visual aspects of the product used for promotional purposes are all elements of trade dress. Critically, any functional aspects of a product are not considered. Only the product's design can be protected as trade dress — an element that is useful for a specific functional purpose cannot.
Trade dress can apply to colors, shapes, sizes, textures, designs, ornamental arrangements, and other non-functional parts of a product's packaging. Some common examples of trade dress are the design of soda bottles, the colors on candy wrappers, or the shape of a cookie or cracker. For instance, the shape of Coca-Cola bottles or Hershey Kisses candies, and the style of a restaurant all constitute.
There's a lot of time and effort that goes into building a brand — and it is vital to ensure every measure is taken to shield it from wrongdoers who could profit by infringing upon it. Although common law provides limited trade dress rights, USPTO registration can provide federal protection. The USPTO will consider whether it is inherently distinctive in order for it to qualify for registration. However, even if the trade dress is not inherently distinctive, it may still be registered on the USPTO's Supplemental Register.
A USPTO application for trade dress registration is similar to the application for trademark registration. If the application is approved, the USPTO will usually issue a response in three months. But just as with a trademark application, there can be issues that arise during the registration process which result in delay. If the trade dress contains a scandalous or deceptive design — or a similar one has already been registered with the USPTO — the application may be denied.
Trade dress infringement can occur when the design or packaging of a product imitates another, leading to the likelihood of confusion among consumers. Importantly, a business owner can also make a claim of dilution when suing for infringement. For example, trade dress may be diluted if the design is blurred by another company’s impairment of the distinctiveness of the design by using it on unrelated products. A dilution claim can also be made if the product's design was tarnished as a result of an unsavory association.
In determining whether trade dress has been infringed, a court will consider four elements:
Typically, the relief sought in a claim for infringement is a court-ordered injunction, in addition to monetary damages. While an injunction can bar the defendant from using the trade dress or infringing upon it in the future, monetary damages can address the economic losses suffered by the plaintiff.
In a trade dress infringement action, the plaintiff may be entitled to recover the profit the defendant made due to the infringement, lost profit, litigation costs, and attorney's fees. They may also be able to recover the costs that must be expended to offset consumer confusion caused by the infringing activity. Additionally, a court may award statutory damages up to $2 million if it finds the infringement was willful.
Building a brand and building a consumer base can take years of hard work. By working with a skilled trademark attorney, you can develop a comprehensive strategy to protect your brand and the mark and trade dress that represents it. Trademark Lawyer Law Firm, PLLC offers knowledgeable counsel for various trademark and trade dress matters nationwide.
With more than 6,000 successful trademark registrations under our belt, we are dedicated to providing our clients with high-quality legal services and experienced representation.
Contact us today to schedule a free 15-minute consultation.