The change of the calendar year often brings new opportunities, goals, and resolutions, both personally and professionally. For many business owners, a fresh new year means a fresh new “look and feel” for their business—including updated websites, logos, branding, or product packaging for 2018. In the legal world, we refer to the look and feel of a business as its “trade dress.” This article will discuss how trade dress differs from standard trademarks, what exactly it protects, and how you can go about protecting it.

What is Trade Dress?

Trade dress is a type of trademark that constitutes a symbol or device used to identify a unique or distinctive source identifier of goods or services. Initially, the U.S. Patent and Trademark Office (“USPTO”) exclusively reserved trade dress protection for the packaging of goods. Over time, however, trade dress has evolved to encompass the total look and feel of a business, including the overall image or appearance of a product or location (including websites, buildings, food trucks, etc.) or a particular element thereof. Such elements may include the size, shape, color, color combination, textures, or graphics used in connection with particular goods or services.

Accordingly, any time one of these elements has developed a secondary meaning in the mind of the consuming public, then the particular symbol or device has likely met the standards of serving as a source identifier. The Supreme Court has confirmed that “secondary meaning is acquired when in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.” Qualtex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).

The following are examples of registered trade dress:

 Walgreens Building (Reg. No. 3,008,035)

 Apple iPhone (Reg. No. 3457218)

Coca-Cola Bottle (Reg. No. 1,057,884)  

Emeco Chair (Reg. No. 2,511,360)  

Protecting Your Trade Dress.

There are two important factors when considering design or symbols as potential trade dress, namely: (1) whether the design or symbol offers any functional component and (2) whether the design or symbol is, in fact, unique or distinctive in connection with the particular goods or services.

(1) Functionality.

Trade dress cannot serve an essential function other than identifying the source of goods or services. “In general terms, trade dress is functional and cannot serve as a trademark, if a feature of that trade dress is ‘essential to the use or purpose of the article or if it affects the cost or quality of the article.'” TMEP §1202.02(a); Qualtex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10 (1982). The USPTO and courts determine functionality of trade dress on a case-by-case basis because any given design could, in one instance, have functional or advantageous benefits, yet be purely ornamental in connection with different goods or services.

(2) Distinctiveness.

To have a valid claim in any particular trade dress, the USPTO and courts must determine that the trade dress is sufficiently distinguishable from others in the marketplace. In making such a determination, the Supreme Court has established two types of trade dress—(a) product design and (b) product packaging. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000). It can be more challenging to protect product design as trade dress, because—according to the courts—the primary function of product design is to make the product more usable, rather than to identify the source of the product. Thus, if you're applying for trade dress protection in product design, you will always have to prove that the design has acquired distinctiveness, or secondary meaning. Product packaging, on the other hand, may be inherently distinctive. If it's not, you'll still have to prove that the product packaging has acquired secondary meaning.

Identifying Your Trade Dress.

Assuming your trade dress meets the above criteria, you'll have to appropriately identify the feature or features you'd like to be protected. Recent case law suggests that there is now an “articulation” requirement when applying for trade dress protection. The Fifth Circuit recently observed that “[w]hen alleging a trade dress claim, the plaintiff must identify the discrete elements of the trade dress that it wishes to protect.” Test Masters Educ. Servs., Inc. v. State Farm Lloyds, 791 F.3d 561, 565 (5th Cir. 2015).

Additionally, in Black & Decker Corp. v. Positec USA Inc., where the plaintiff generally claimed that its infringed trade dress consisted of a “yellow and black color combination appearing on . . .  power tools, power tool accessories, and associated packaging,” the court construed the defendant's citation of case law to impose “an articulation requirement, requiring plaintiffs to describe the specific elements of their trade dress.” Black & Decker Corp., v. Positec USA Inc., 115 U.S.P.Q.2d 1472, 1473 (N.D. Ill. 2015). Nevertheless, the court sided with the plaintiff, finding the written description of the trade dress to be sufficient when viewed in conjunction with the multiple pictures that Black & Decker submitted, which consistently presented its goods and packaging in solid yellow and black colors.

Trade Dress vs. Trademark.

If your trade dress meets all the above requirements, a trade dress registration operates in essentially the same way as a trademark or service mark registration. Trade dress is, after all, a type of trademark. Like a standard word or design mark, the owner of the trade dress registration will have presumptive rights to the design or symbol identified as the trade dress, such that the registrant can preclude other entities from using the same or a confusingly similar design or symbol in connection with use of the same or related goods or services in the United States.

The Takeaway.

So, what does this all mean for businesses contemplating a new look and feel for an upcoming line of products or services? The takeaway is, if you hope to gain rights in the trade dress such that you can preclude others from copying or infringing on your trade dress, the following considerations would be a good place to start:

1. Select trade dress that is arbitrary in that the trade dress is not designed to make the product or its packaging perform better or more efficiently;

2. Select trade dress that either has already acquired distinctiveness in the marketplace such that the public knows its source upon seeing it, or the design is so distinguishable from others that the public will not confuse the source with another; and

3. Be precise in selecting and identifying the elements of the trade dress you intend to protect, using a well-worded description and pictures that identify the claimed elements of the trade dress.

And, of course, you should consult an experienced intellectual property attorney to form a legal strategy for protecting your valuable trade dress, in addition to working with a branding specialist to figure out how best to hone the look and feel of your business.

Res Nova Law is an intellectual property and business law firm based in beautiful Portland, Oregon, and serving innovative companies and entrepreneurs across the Pacific Northwest. Our friendly and knowledgeable attorneys can advise you on patents, trademarks, copyrights, and trade secrets, and how developing and protecting your intellectual property can help your business generate revenue and grow. As experienced litigators, we can also help you resolve intellectual property disputes and avoid potential litigation.

Schedule a Free Initial Consultation