Trade Dress Protection - Protect the shape of your packaging (Better than Design Patents!)

Trade Dress Protection - Protect the shape of your packaging (Better than Design Patents!)

  • 05 April, 2024
  • Nyall Engfield

Trade dress protection in the United States plays a crucial role in the realm of intellectual property law, safeguarding the visual appearance of products, packaging, or the design of a space that signifies the source of the product or service to consumers. Unlike trademarks, which protect brand names and logos, trade dress focuses on the overall look and feel of a product or service that distinguishes it from competitors. This protection covers features such as size, shape, color or color combinations, textures, graphics, and even certain sales techniques.

Understanding Trade Dress

The concept of trade dress originated from the broader umbrella of trademark law. Initially, trade dress referred to the packaging or wrapping of products but has since expanded to include the design of products themselves and the decor or environment where services are provided (such as the distinctive layout of a retail store). To qualify for trade dress protection, the features must be non-functional (i.e., not essential to the product’s use or purpose) and have acquired secondary meaning, indicating that when consumers see the trade dress, they associate it with a particular source.

An example of a trade dress application is for the "horsebit" design (shown below) on the front of the Gucci loafer, protected in US Reg. No. 6521111. See the photo from Wolf of Wall Street's promo poster above.

Legal Framework for Trade Dress Protection

In the United States, trade dress protection is governed by the Lanham Act, the federal statute that encompasses trademark law. Trade dress can be registered with the United States Patent and Trademark Office (USPTO) if it meets certain criteria, including distinctiveness and non-functionality. However, even unregistered trade dress can be protected under the Lanham Act's Section 43(a), which covers false designations of origin and misleading representations in the marketing of goods and services.

Trade Dress vs. Design Patents

While trade dress and design patents both protect the appearance of products, they differ significantly in scope, duration, and the nature of the protection they offer. Design patents are issued by the USPTO for new, original, and ornamental designs for an article of manufacture. The protection lasts for 15 years from the date of grant and prohibits others from making, using, or selling the design in the United States. Trade dress protection, on the other hand, can potentially last indefinitely as long as it continues to be used in commerce and retains its distinctiveness.

Design patents require a formal application and examination process, demonstrating that the design is novel and non-obvious. Trade dress protection, especially for unregistered trade dress, can be more nebulous, focusing on the overall impression that the design creates in the minds of consumers and its association with a particular source.

Examples of Trade Dress Protection

  1. Product Packaging: The Coca-Cola bottle (example below) is an iconic example of trade dress, with its unique contour and shape recognized worldwide.Trademark image
  2. Product Design: The layout and design of Apple’s retail stores, known for their minimalist design and distinctive glass fronts, are protected as trade dress.
  3. Color: The Tiffany blue box is protected as trade dress, immediately signaling the source of the jewelry to consumers.

Trade Dress Infringement and Enforcement

To enforce trade dress rights, the owner must prove that the defendant’s use of a similar design is likely to cause confusion among consumers as to the source of the goods or services. This involves demonstrating that the trade dress has acquired secondary meaning and that the contested use is not functional.

Advising on Trade Dress Protection

Businesses seeking to protect their trade dress should ensure that their designs are distinctive, non-functional, and likely to be recognized by consumers as indicating the source of the product or service. Documentation of the design’s development, consumer surveys, and marketing efforts can support a claim of secondary meaning. Additionally, considering registration of trade dress with the USPTO can provide legal advantages, including public notice of the claim of ownership and a legal presumption of the validity of the trade dress.

Trade dress protection offers a powerful tool for businesses to protect the unique visual aspects of their products or services that contribute to brand identity and consumer recognition. Understanding the nuances between trade dress and design patents is crucial for effectively navigating the protection of product designs in the US. While trade dress focuses on the overall look and feel associated with a brand, design patents protect novel and non-obvious designs for a limited time. Both forms of protection play essential roles in a comprehensive intellectual property strategy, safeguarding the aesthetic elements that distinguish a business in the competitive marketplace. Ask us for advice on protecting your trade dress with a trademark application.

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