Trade Dress

Federal law provides protection and a claim for trade dress, which need not be registered to receive protection. Trade dress protects the “look and feel” or “image” of a product, but does not protect functional aspects of a product. In other words, it protects the arrangement of the identifying characteristic or decoration. For example, the shape of a Coca-Cola glass bottle is a famous example of a protectable trade dress. The look of distinctive “product packaging” that consumers associate with a particular company or source is also an example of trade dress, such as the red and white color scheme on a container of Campbell's soup. Examples of trade dress include the front grill on the Rolls-Royce automobile, the shape of a classic Ferrari sports car, or the round wall-thermostat by Honeywell. Even a Mexican restaurant's exterior may be protectable as trade dress if the decor of the restaurant is distinctive and identified exclusively with that business.

Trade dress is a 'company's image' within the marketplace and one can actually file a law suit if a competitor tries to present products that "look" like yours, but fall short of fraudulently representing their product as that of yours (though there are, of course, rules for when trade dress is applicable).

Trade Dress is a trademark concept. The law relating to trade dress can be traced to the doctrine prohibiting 'unfair competition'. Acting as a company identifier, trade dress is essentially an unregistered product trademark under Section 43(a) of the Lanham Act 15 U.S.C. 1125(a). Under the Act, the plaintiff in a trade dress action can seek trade dress protection for whatever products or packaging it sees fit. It is an expansive concept. Trade dress has been defined as "...a category that originally included only the packaging, or 'dressing,' of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product." [Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000)] Thus, trade dress protects a product's image encompassing the total image or overall impression created by the: 1) product and/or 2) its packaging.

The shape of a bottle containing shampoo can be trade dress. Similarly, the shape or ornamental features of a chair, and its configuration, can constitute trade dress. Thus, in some instances the trade dress is reflected in the combination of packaging and labels and in another, it is the product configuration itself that constitutes the trade dress.

To be registrable as a trademark or a service mark, the elements of the trade dress must be capable of being defined so that the public knows the exact parameters of the claimed exclusive right. If the trade dress constituting a combination of elements is unique, unusual or unexpected, one can assume that it will be automatically perceived by customers as an indication of origin, as a trademark. However, if the trade dress is descriptive (necessary for the use or purpose of the item), or not different from what others are using, it cannot be considered as “inherently distinctive” and can be protected only on proof of secondary meaning, i.e. acquired distinctiveness. (“Secondary meaning” , i.e. “acquired distinctiveness” can only be obtained through heavy volume of sales, advertising, extended duration of use, etc. which leads to the average consumer in his mind being able to connect and recognize the trade dress as emanating from a particular company or source).

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