Trade Dress Examples

When entrepreneurs and technology startups begin planning their intellectual property strategy, they often focus on common assets like trademarks, copyrights, and patents. However, there is another equally important but less frequently discussed form of intellectual property protection: trade dress. Trade dress is a crucial aspect of brand identity, offering legal protection to the distinctive look, feel, and design of a product or its packaging. Under U.S. federal law, trade dress refers to the overall visual appearance of a product that signifies its source to consumers, much like a trademark but covering more than just logos or words. In this blog we will define the scope of legal protection under trade dress law,  review some trade dress examples for reference, and highlight some of the most important trade dress litigation cases in the United States.

Trade Dress Defined

Under the Lanham Act (the primary federal trademark law in the U.S.), trade dress encompasses the design and shape of a product, its packaging, and even features like color schemes, textures, and overall visual presentation. Unlike a traditional trademark, which typically covers a logo or brand name, trade dress is about the overall aesthetic presentation that makes a product immediately identifiable to consumers. The key is that trade dress must be non-functional and must have acquired secondary meaning—a distinct association with the product’s source in the minds of the consuming public.

The exact text of trade dress protection law under 15 U.S.C. Section 1125 states:

§1125. False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) 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 affiliation, connection, or association of such person with another person, or 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 or is likely to be damaged by such act.

(2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

(3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.

(b) Importation
Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.

(c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief
Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definitions
(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3) Exclusions
The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

(4) Burden of proof
In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that—

(A) the claimed trade dress, taken as a whole, is not functional and is famous; and

(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

Trade Dress Examples in Industry

Many popular brands have successfully secured trade dress protection for distinctive features that are now synonymous with their identity. Some notable trade dress examples include:

• Coca-Cola’s Contour Bottle: The classic contour shape of Coca-Cola’s glass bottle is one of the most iconic examples of trade dress. The unique design distinguishes Coca-Cola from other beverages and instantly signals its source to consumers.
• Apple’s Retail Store Design: Apple has secured trade dress protection for the minimalist and sleek design of its retail stores, including the layout of tables, lighting, and even the overall look and feel of the space.
• Tiffany & Co.’s Blue Box: The robin’s-egg blue packaging used by Tiffany & Co. has become synonymous with luxury and high-end jewelry, protected under trade dress law.
• McDonald’s Golden Arches: While this may seem like a trademark example, McDonald’s has also protected the distinctive architectural design of its golden arches as part of its trade dress.
• Chick-fil-A’s Cow Mascots: While trade dress typically covers physical products, marketing campaigns can also qualify. Chick-fil-A’s use of its cow mascots in its advertising campaigns is an example of trade dress that signifies the brand.

How to Secure Protection

To secure trade dress protection in the U.S., businesses must meet several legal criteria. Trade dress must be:

1. Distinctive: The trade dress must have secondary meaning, meaning that consumers associate the design with the source of the product or service.
2. Non-functional: The design cannot serve a functional purpose in the product’s use. If the trade dress is functional (e.g., the design makes the product easier to use), it cannot be protected. For example, a unique bottle shape can be protected, but if that shape makes it easier to pour liquid, it might be considered functional and not eligible for protection.
3. In use in commerce: The trade dress must be used in commerce, meaning it must be used in the marketing and sale of goods or services across state lines to qualify for federal protection.

Landmark Cases

Several landmark cases have shaped the understanding and enforcement of trade dress law in the United States. Some key cases include:

• Two Pesos, Inc. v. Taco Cabana, Inc. (1992): In this landmark case, the Supreme Court ruled that a restaurant’s overall appearance (interior and exterior) could be protected as trade dress without showing secondary meaning, so long as it was inherently distinctive. Taco Cabana won the case, demonstrating that trade dress is not limited to packaging but can include a business’s look and feel.
• Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000): In this case, the Supreme Court held that product designs (as opposed to packaging) can only receive trade dress protection if they have acquired secondary meaning. The decision made it more difficult for businesses to claim trade dress protection for their product designs unless they can prove that consumers associate the design with the product’s source.
• Qualitex Co. v. Jacobson Products Co. (1995): This case focused on whether a color can be protected as part of trade dress. The Supreme Court ruled that a color (in this case, the green-gold color of Qualitex’s dry-cleaning press pads) could serve as a trademark if it has acquired secondary meaning, expanding the scope of trade dress protection.

Why Trade Dress Matters for Technology Startups

For technology startups, protecting intellectual property goes beyond patents and trademarks. In industries where visual presentation and brand identity are critical, trade dress plays a crucial role in maintaining a competitive edge. Trade dress protection is essential for startups that are developing innovative product designs, distinctive packaging, or unique store layouts. It ensures that competitors cannot copy these elements and trade on the startup’s goodwill.

Filing for Trade Dress Protection

The process for securing trade dress protection is similar to that of trademarks. Startups should begin by determining whether their product’s design, packaging, or other visual elements meet the requirements for distinctiveness and non-functionality. Once this is established, a company can file for protection through the United States Patent and Trademark Office (USPTO).

Best Practices for Protecting Trade Dress

• Document Everything: Startups should maintain thorough records of the design and development process for their products or packaging to demonstrate how the intellectual property has been used in commerce.
• Build Consumer Recognition: One of the keys to securing trade dress protection is showing that consumers associate the trade dress with the brand. Companies should invest in marketing and advertising efforts that emphasize the distinctive aspects of their product’s design.
• Monitor the Market: Once trade dress protection is obtained, startups should actively monitor the market for any potential infringements. Immediate action should be taken if a competitor copies the protected design to maintain the integrity of the trade dress rights.

Startup Intellectual Property Lawyer

If you’re an entrepreneur or technology startup and want to maximize your intellectual property protection, including trade dress, trademarks, and other proprietary rights, contact L.A. Tech and Media Law Firm. Our lead attorney, David Nima Sharifi, is an expert in intellectual property law and can help you navigate the complexities of trade dress protection. Reach out today to schedule a confidential consultation and discuss how to secure and enforce your company’s trade dress rights.