Do you recall the legal dispute between Marvel and DC Comics over the word "superhero"? Or perhaps you’ve been intrigued by the Louis Vuitton v. Louis Vuiton Dak case? Both are landmark trademark cases that have set important precedents in the world of intellectual property law. A trademark is any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of such person, ensuring that consumers recognize one’s brand amidst others.
If you have a unique brand name, logo, or slogan, you might want to consider registering it as a trademark to protect your intellectual property and prevent others from using it without your permission.
How about the unique design of the packaging that is used on your business product or the design and layout of your store? Can that be protected as well? The good news is—yes, it can also be protected under trade dress.
But what is trade dress, and how does it differ from a copyright, or a design patent?
Understanding Trademarks and Trade Dress
Trademarks and trade dress both serve as essential tools for distinguishing a business's goods or services in the marketplace. A trademark includes any word, phrase, symbol, design, or a combination of these that identifies and distinguishes the source of the goods of one entity from those of others. Common examples are brand names and logos.
Trade dress, on the other hand, includes features such as size, shape, color, texture, and graphics. Trade dress can extend to the design or configuration of a product, the packaging in which a product is sold, the color combinations used on the product or its packaging, or even the environment or decor of a business establishment. Examples of trade dress are the unique layout and decor of a Starbucks coffee shop, the identifiable shape of a Porsche automobile, or the distinctive packaging of an Apple iPhone. Trade dress protection is important for businesses to prevent consumer confusion and maintain their brand identity in the marketplace.
Trademark vs. Trade Dress
The main difference between trademarks and trade dress is the nature of protection. Trademarks typically protect names, logos, and other distinctive symbols directly associated with a brand. In contrast, trade dress focuses more on the look and feel of the product or service, which often includes the packaging or the overall presentation.
When it comes to functionality, a trademark does not concern itself with it but rather focuses on distinctiveness. Trade dress, however, must not include functional features; these are aspects necessary for the use or purpose of the item that are not protectable because they do not distinguish the product’s source. So, the coffee machines at Starbucks are not part of its trade dress, but the overall design, logos, and imagery in the store may very well be.
It is often more challenging to register a trade dress because it requires proof that the features are not functional and have acquired a secondary meaning unless the trade dress is inherently distinctive as discussed below.
Legally Protecting Trademarks and Trade Dress
For trade dress to receive legal protection, it must meet several conditions: distinctiveness, non-functionality, and marketplace association with one specific brand.
Trade dress must be distinctive, whether through inherent features or secondary meaning. Inherent distinctiveness typically applies to packaging; product design usually requires a secondary meaning.
Moreover, the features claimed to be trade dress must not be functional. They must not affect the product's cost or quality, and they should not include features that are essential to the item's use or purpose.
Lastly, the trade dress must be recognized in the marketplace as an indicator of the source of the product or service. For example, you most likely know you’ve walked into a Starbucks before you’ve even seen their name or logo.
Design Patents and Copyrights
Design patents also protect the visual, nonfunctional properties of certain goods, such as the configuration or shape of an item. A design patent protects the appearance of the article and not its structure or functionality. The nonfunctionality requirement for trade dress is scrutinized more closely than it is for design patents because trade dress protection exists for as long as the trade dress is being used in commerce, which could potentially mean centuries of protection. On the other hand, the owner of a design patent doesn’t need to even utilize the patent, but design patent protection generally lasts for only 15 years after a patent is issued. Also, patent registration can be expensive.
Copyright registration, on the other hand, is another form of protection in a design and is by comparison significantly less expensive. Copyright protection generally lasts for the life of the individual plus 70 years, or if it’s a company, 95 years from “publication” (which generally means public use) or 120 years from creation, whichever time period is shorter. However, unlike trademarks and patents that are scrutinized by the US Patent & Trademark Office, anyone can register a copyright by just submitting a drawing, but this means that the strength of that registration can be called into question at any time, including when the copyright owner might seek to enforce rights against an alleged infringer.
Notable Trademark and Trade Dress Cases
In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.763 (1992), the United States Supreme Court held that a restaurant's inherently distinctive trade dress could be protected under Section 43(a) of the Lanham Act (the federal statute that covers trademark protection), which in this scenario included “festive and vivid color scheme using top border paints and neon strips, bright awnings, and umbrellas.” But again, this is a case-by-case analysis.
Legally recognized trade dress not only enhances brand identity but also provides a competitive edge by differentiating products and services in the marketplace. When your business successfully registers its trade dress with the USPTO, you gain significant legal leverage against imitation or trade dress infringement.
If you have further questions about trade dress protection or any intellectual property questions, contact Horn Wright at (855) 465-4622. Our New York intellectual property attorneys will be ready to help you and your business. Don't hesitate to reach out for a consultation today.