Over my 25 years as an intellectual property and media litigation attorney, no cause of action has proven more versatile and useful in protecting clients’ commercial goodwill than trade dress infringement. It is made even more useful for litigators by virtue of the fact that so few attorneys truly understand it and fewer still have had the opportunity to put it to good use. Whether you are a business owner or a lawyer representing one, mastering the basics of this area of law is certain to improve your ability to nurture and defend the business’s goodwill and reputation.

DEFINING OUR TERMS

As the name implies, trade dress refers to the manner in which a good or service is “dressed up” when presented to the public. Originally, it only referred to product packaging — the box or wrapping in which a good was displayed on a shelf.¹ The modern understanding of the term, however, is much broader. The U.S. Court of Appeals for the Sixth Circuit has made clear that “because we can conceive of no thing inherently incapable of carrying meaning, any thing can come to distinguish goods in commerce and thus constitute a mark within the meaning of the Lanham Act. In short: any thing that dresses a good can constitute trade dress.”²

Today, trade dress refers to the image and overall appearance of a product. It embodies that arrangement of identifying characteristics or decorations connected with a product ... that makes the source of the product distinguishable from another and promotes its sale. Trade dress involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques ... [It] is a complex composite of features including, inter alia, size, color, texture, and graphics, which must be considered together, not separately.³

LEVERAGING THE POWER OF TRADEMARK LAW

Trade dress is a subset of trademark law. A trademark “can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”⁴

Trademarks typically take the form of a word, phrase, or logo. But they are not limited to that or any other format; trademark law equally protects any designation or device that consumers perceive as signifying a particular source of goods or services. We see examples of this every day. The robin-egg blue jewelry box is all one needs to see to understand that what’s inside it came from Tiffany. The iconic shape of a glass Coca-Cola bottle has long distinguished it from other sodas. And there are several restaurants whose architectural and decorative choices are unique enough that customers immediately recognize the brand merely from these cues.

The power of owning a trademark is the ability to prevent competitors from using not only the same mark, but also any other indicator likely to cause confusion with your mark.⁵ Applied to trade dress, this means that if the color, shape, décor, or other features of your product or service are sufficiently distinct to act as a trademark, you can use trademark law to keep competitors from imitating these important aspects of your commercial goodwill.

CASE IN POINT: RESTAURANT DÉCOR

The example of restaurant décor, which I’ve had the chance to litigate, can be used to see what a plaintiff must show to prevail. To begin with, it is beyond question that restaurant décor can be protectable as trade dress.⁶ And it doesn’t have to be flamboyant or as nationally known as McDonald’s golden arches in order to get protection — merely distinctive. No less than the U.S. Supreme Court has held that trade dress could protect a combination of décor features used by one Mexican restaurant from being copied by another.⁷ The Two Pesos vs. Taco Cabana case demonstrates that a trade dress action can be successful when the plaintiff is able to specifically enumerate the elements of trade dress which, as a whole, are recognizable as a single source.

Courts must evaluate the overall look and feel of an establishment when defining its trade dress. The plaintiff’s complaint “should ... [separate] out and identif[y] in a list ... the discrete elements which make up that combination [of elements that forms the trade dress.]”⁸ But while the plaintiff “must provide a precise expression of the character and scope of the claimed trade dress so that courts can sensibly evaluate claims of infringement and fashion relief tailored to the distinctive combination of elements that warrant protection[,] [t] he trade dress itself is not the combination of words which a party uses to describe or represent its total image, but, rather, the trade dress is that image itself, however it may be represented in or by the written word.”⁹ “In the context of restaurants, all of the elements that make up the décor of the restaurant comprise the trade dress.”¹⁰ The elements that form “[a] restaurant’s trade dress can include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior floor plan, the appointments and decor items, the equipment used to serve the food, and the servers’ uniforms.”¹¹

Further, courts analyze these features together rather than as distinct elements — even if that combination incorporates elements separately registered as trademarks in their own right.¹² This combination, taken together, must be “distinctive in the marketplace, thereby indicating the source of the good it dresses.”¹³ Moreover, the plaintiff need not show that consumers can name the company associated with the dress; under the anonymous source rule, it only needs to show consumers associate it with a single company.¹⁴

Plaintiffs must also show that the trade dress is “primarily nonfunctional.”¹⁵ Goods that perform a function are the subject of patent, not trademark, law. Restaurant décor does not, in and of itself, perform a function other than identifying the source. A trade dress feature is only functional if it is “essential to the use or purpose of the article or it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.”¹⁶

A design of a folding chair that improves the user’s view or provides certain back support, for example, “looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark).”¹⁷ By contrast, “an aesthetic design that merely communicates the source of the article — rather than anything about [its] use, purpose, cost, or quality — is not functional.”¹⁸ Even where individual elements such as cups or tabletops perform a function, they are claimed as part of the trade dress only for their appearance (e.g., the decorative symbols adorning a cup or the color of the tables). In this way, functional elements can form part of a non-functional trade dress.¹⁹

A VERSATILE TOOL

The ability to mix and match the elements of a trade dress hints at its utility for litigators. For one thing, it opens a back door into what would otherwise be the sole realm of patent law by allowing one to take advantage of the aesthetic aspects of even obviously functional goods. In one case, I lost a summary judgment motion in a case asserting trade dress in the knobs used to adjust the focus on an optical scope on the grounds that it was a clearly functional feature. But the Sixth Circuit Court of Appeals unanimously reversed, correctly separating the functionality of the knobs from the aesthetic element in which we claimed trade dress — namely, the distinct pattern of the knurling on the knobs. While knurling itself clearly performs the function of enhancing grip, the choice of pattern that makes up the gripping surface can be an entirely subjective design decision and thus qualify for trade dress protection.

Similarly, design elements that are nothing special by themselves — such as colors, geometric shapes, and fonts — can be combined in unique ways that together form a distinctive and protectable design that is more than the sum of its parts.²⁰ This opens the door to protecting all manner of subtle and unremarkable product and packaging elements so long as they are distinctive.

Second, trade dress can be (and often is) defined retroactively. It isn’t always obvious to business owners which aspects of their products, designs, or décor will end up resonating with customers. Some design elements only become distinctive after they’ve been used several times in various ways over the course of years — and that’s okay. Armed with hindsight, elements that customers find distinctive about your company’s design language can become clear.

Third, the definition of your trade dress need not stay the same from case to case. It’s natural to emphasize certain elements of the dress in response to a particular infringer’s design and other aspects as necessary in other cases. Of course, if you decide to obtain federal registration for your trade dress — which you can do exactly as you would for any other trademark — then you’ll need to specify its elements. Otherwise, your dress need not be one unchangeable thing. You can have more than one combination of elements that combine into something distinctive, and it doesn’t have to be the same combination you asserted in a prior dispute. I have even had cases in which I asserted both registered and unregistered aspects of a restaurant’s trade dress at the same time.

Fourth, trade dress and other trademark rights can be asserted in either federal or state courts. Both courts have concurrent jurisdiction over Lanham Act claims. The Lanham Act statute offers nearly as strong of common law protection to unregistered trademarks as it does to those covered by federal registrations, and the Michigan common law of trademarks is essentially identical to federal law.

BEING PROACTIVE

As flexible and robust as trade dress law is when applied retroactively, it is much more likely to be useful for those who plan ahead. Businesses are well-advised to think carefully and creatively about which aspects of their goods, services, packaging, and décor are distinctive of their brand and put effort into protecting these valuable features before a competitor imitates it.

There are a number of proactive strategies that can put businesses in the best possible position to develop and protect their assets. Why not consult an experienced attorney to explore whether your company or client have trade dress that is currently going to waste?