Trade Dress

A product's trade dress may provide protection for the product's overall image, including its size, shape, color, texture, or graphics.  Although distinct from trademark protection, effective trade dress functions hand-in-hand with trademark protection to prevent deceptive and unfair competition in the marketplace.  The goal of both is to secure to the owner of the mark or trade dress the goodwill of the associated business and to protect the ability of consumers to distinguish among competing producers.

In order to establish a protectable trade dress interest, one must first establish that the asserted trade dress is not functional.  Trade dress is functional if it is essential to the use or purpose of the device, or if it affects the cost or quality of the device.  Thus, those features that provide a utilitarian aspect of the product are ordinarily not the eligible for trade dress protection. Such protection may extend to either or both product packaging or even the product itself.

Also, a protectable trade dress must serve as an indication of source, either by being inherently distinctive or by having acquired secondary meaning.  While most packaging includes graphics, text or other symbols that almost automatically tell a customer that they refer to a particular brand, and thus render the packaging inherently distinctive, product design alone cannot be inherently distinctive.  Thus, in order to protect trade dress in a product design, the owner of the design must establish distinctiveness through secondary meaning in the marketplace; i.e., through evidence showing that consumers identify the particular trade dress with a single source.  Such evidence of secondary meaning may be shown through long term use of the design, large volumes of sales and advertising, unsolicited public comments concerning the design, licenses and requests to license the design, copying of the design, and consumer testimony concerning the design.

Similar to trademark protection, trade dress rights arise from use of the particular trade dress.  Generally speaking, the longer and more extensive the use, the stronger the trade dress rights become.  When a party is successful in establishing a protectable trade dress interest, they may assert those rights against others offering goods having a confusingly similar trade dress.  In such instance, the overall appearance of the articles or their packaging is compared to determine whether the trade dress at issue is infringed.

Our IP attorneys regularly advise clients on issues of available trademark and trade dress protections, and can analyze new product configurations and packaging, as well as those of competitors, both to maximize our own clients' available protections and dissuade would-be counterfeiters from using infringing packaging.