Trade Dress Intellectual Property Protection
What is Trade Dress Intellectual Property Protection?
Copyrights, patents and trademarks are familiar concepts to most business owners when it comes to their intellectual property. But what about “trade dress” protection? What is trade dress anyway?
Trade dress is a trademark concept that consists of the overall look of a product’s packaging and/or of a product’s shape, such as the shape of the original Coca-Cola® bottle design, and combination of certain elements that appear on a product or its packaging. Trade dress may also include the method for displaying wine bottles in a retail shop, the appearance of a teddy bear toy, the design of a door knob, design of a handbag, a fish-shaped cracker, smells, sounds, cover of a book, distinctive display of products in a retail store and motif of a restaurant, such as the motif of Jimmy Buffet’s famous restaurant Margaritaville®.
Much like the traditional trademark (i.e., word mark or design logo), trade dress must be used in a manner that signifies product source. Thus, product features that serve ornamental design only, with no source-identifying role, cannot be protected under trade dress law. For example, if a certain product is coveted by consumers because the design is pleasing, no matter the source, then trade dress protection will not be granted under the law.
Packaging trade dress (i.e., restaurant motif, product packaging, cover of a book and retail display) may receive trade dress protection immediately upon use, as long as the trade dress is inherently distinctive, meaning that consumers would perceive the trade dress as a source identifier upon first use. However, some trade dress, including product configuration trade dress (i.e., the configuration design of a bottle used to hold cologne) will not receive trade dress protection upon first, but rather no protection will be granted until secondary meaning attaches to the design. Meaning that consumers have come to associate the product configuration as being a trademark or source identifier.
The best way for brand owners to develop trade dress is to use “look for” advertising. This is advertising that draws attention to the particular features claimed as trade dress. The purpose of “look for” advertising is to associate the trade dress features in the minds of consumers with a single source. However, brand owners must be careful not to promote only functional aspects of the product, since functional features of a product will not be given protection under trade dress law – although a certain combination of functional aspects may be protectable. What’s considered “functional” depends upon the specific product or packaging sought to be protected.
For example, although the color black is not functional for home insulation, the color black is considered functional for boat motors because black motors are perceived as being smaller than their actual size, which is a desirable characteristic. Therefore, because boat owners desire black motors for that reason, the color black cannot serve as a source identifier.
Because trademarks – and trade dress – may live on in perpetuity as long as they are put to continuous use, and because they serve as valuable company assets, companies should consider whether they own certain trade dress – and trademark – rights and, if so, whether those rights are being infringed by competitors. Brand owners should also seek to protect those rights by registering them with the federal governments globally.