Trade Dress Infringement: Here’s What You Need to Know

Trade Dress: What is it?

Trade dress is a legal term of art and is indeed a fairly exotic legal doctrine under Trademark law. The “Trade Dress” of a given thing is not so easily defined but rather consists of the amalgamation of a series of elements that are used to develop the “overall commercial image” and appearance of a given product/package/label/design. For products, trade dress may very well include but is certainly not limited to the aesthetics of the product including the size, shape, colour etc. of the item,. Trade Dress, in the context of services, is slightly more challenging to articulate but speaks to the aesthetic feel of the place. Relevant features include the establishment’s décor, the styling of the environment, the layout of the furniture/paintings – all of the design features that contribute to the larger image of the brand. Consider for the moment the fact that every single Starbucks looks the same – same colors, the same type of furniture, same wood paneling, same fabrics. A Starbucks in New York City has the same design layout as a starbucks in Mexico City because of the Trade Dress.

The purpose of establishing the Trade Dress of a given product/service layout is to protect the proprietary branding rights of that company from competitors in the same industry. We can all intuit the injustice of a new coffee shop designing its store to mimic the Starbucks model – the legal Doctrine of Trade Dress codifies this right. Contact a Trademark Lawyer to learn how you can benefit from Trade Dress rights.

Trade Dress Essentials

Trade Dress Eligibility: Essential Points

1. In order for the design/layout to qualify for trade dress protection, the item must be sufficiently (inherently) distinctive so as to serve as a bonafide source identifier – when a consumer sees the trade dress, he must be capable of ascertaining that it represents a product/service from a given place

2. The doctrine of Trade Dress does not apply to those designs which are functional – simply, if the design is important in effectuating the use of the product or service, it no longer is there simply to be a source identifier but rather as a functional tool. Functionality is a preclusive characteristic to Trade Dress.

Trade Dress

Passing the Threshold of Distinctiveness

Like all of Trademark Law, the USPTO cares first and foremost about the distinctiveness of the alleged Trade Dress. The key here is to consider whether or not there is something particularly unique and/or unusual about the design and shape (individually or weighed together) that would distinguish, in a meaningful way, this Trade Dress, from a competitor’s Trade Dress. Can this Trade Dress be an effective indicator of origin? Of course, even if the answer is no, the applicant may still rely on a secondary meaning exception where the product’s design is so sufficiently known in the marketplace as to imbue in the public an understanding of the source of the product. To establish secondary meaning, the courts may look to the duration of use, sales success, advertising expenditure and salience, and survey evidence (which is unfortunately challenging and expensive to acquire).

Functionality: A Key Barrier to Trade Dress Protection

Remember, if the alleged Trade Dress is functional, or provides a certain utility, it will not be eligible for trade dress protection.

Functional features – such as the design or packaging created to hold a certain product part – are prohibited from qualifying as protectable trade dress, so as to not allow one producer or manufacturer to monopolize the said product feature. Indeed, the spikey ridges on an ice tea bottle which allow it to stay in the drinker’s hands more consistently cannot be claimed as a protectable trade dress element because of this feature’s utility.

Trade Dress Infringement

What is Trade Dress Infringement

Remember, at its core, a Trade Dress is a visual representation – it is the look and feel of a thing which notifies consumers of the source of that given thing. Trade Dress Infringement, then, is a junior company’s copying of a senior’s Trade Dress in such a way as to cause consumer confusion as to the source of goods/services. To determine whether or not Trade Dress infringement has occured, the courts will look to a series of factors and consider these factors in their totality – meeting or not meeting just one is not enough

The inherent distinctiveness (and therefore strength) of the Trade Dress
The junior’s (defendant’s) intent when using the allegedly infringing Trade Dress
The degree to which the product/services covered by the Trade Dress are Similar
Evidence of “consumer confusion”
The sophistication of buyers and the extent to which a buyer would casually purchase the goods/services

Remember, Trade Dress is both an art and science and courts must rely on the wisdom and experience of the judge to make determinations of the scope of the Trade Dress and if/when infringement has taken place.

Trade Dress Infringement Claims: Step By Step

Trade Dress Infringement Claims

Trade Dress Infringement suits are governed by the preponderance of the evidence standard and require a plaintiff to show, by the preponderance of the evidence, that trade dress infringement has indeed taken place. See

The plaintiff must first demonstrate that the Trade Dress is indeed protectable under trademark law (that it is sufficiently distinct and non-functional) and indeed owned by the plaintiff
The defendant’s use of the Trade Dress is an infringement of the Senior’s because of the likelihood of confusion (as to the source of goods/services) stowed in the consumer’s mind

See Trademark Enforcement for more details.

Defenses to Trade Dress Infringement Claims

Naturally, the defendant will not sit idly by while these claims are made against him and will likely mount the one or many of the following defenses (similar to Trademark Infringement Defenses):

Non-Distinctiveness: Here, the defendant will argue that the plaintiff has no right to the protections afforded under Trade Dress law because the product/package/display is NOT sufficiently distinct
Functional: Here, the defendant will argue that element claimed under Trade Dress is, in fact, functional and therefore ineligible for Trade Dress protection

Still have questions? Contact a Top Trademark Lawyer to discuss your case.

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