Trade Dress: Trademark’s All Dressed Up

The look of a product, all by itself, is sometimes the basis for a trademark, sometimes this is referred to as “trade dress”. Trade dress is a form of intellectual property that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers.

Under the Lanham Act a product’s trade dress is legally protected. For example, the shape, color, and arrangement of the materials, though not the garments themselves, of a children’s clothing line may be protectable trade dress. Similarly, the design of a magazine cover and the appearance and décor of a restaurants may be protectable.

Under section 43(a) of the Lanham Act, a product’s trade dress can be protected without formal registration with the PTO. In relevant part, section 43(a) states the following:

“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.”^[9]

Often the design of a product is protected by a patent, but sometimes, the appearance of a product or a particular feature of a product can be registered and/or enforced as a trademark.  To distinguish it from a design patent (a patent granted on the ornamental design of a functional item like ornamental designs of jewelry, furniture, beverage containers, and computer icons). Usually, you have to use the “mark” enough so that it may be inferred that consumers perceive it just as they would a brand name.  The most famous example is probably the Coca-Cola bottle, which was once protected by a design patent, but is now protected by a trademark.

The standard is the same for trade dress and “design” trademarks as all other trademarks. To get trademark protection, the trademark owner must show that the mark is not likely to be confused with other trademarks for items in the same general class. Unlike design patents, these trademarks can last indefinitely as long as they are used in commerce. Nevertheless, items can be covered by both trademarks and design patents.

Design patents are only granted if the design is novel and not obvious for all items, even those of different utility than the patented object. Unlike “design” trademarks, the validity of design patents is not affected by whether or not the design is commercialized.