TRADE DRESS LITIGATION ATTORNEYS,
Dallas, Texas
The trade dress appearance of a product or packaging is a valuable company asset, and our experienced attorneys can represent you in trade dress litigation in federal & state courts.
TRADE DRESS INFRINGEMENT & PROTECTION
What Is A Trade Dress?
While there is no exact definition of a trade dress, a trade dress has been found to include a symbol or device within the Lanham Act definition of a trademark. The Lanham Act defines a trademark to include any word, name, symbol, or device, or a combination thereof, used to both: i) identify and distinguish goods from those manufactured and sold by others; and ii) indicate the source of the goods, even if the source is unknown. A federal claim for trade dress infringement may be brought under Section 43(a) of the Lanham Act:
"Any person who, on or in connection with any goods or services, . . .uses in commerce any word, term, name, symbol, or device, or a combination thereof, or any false designation of origin, . . . , 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 . . .
shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act."
Section 43(a) of the Lanham Act
The courts have interpreted "trade dress" as describing the total image, which may include the following features: Size; Shape; Color or color combinations; Texture; Graphics, and Particular sales techniques. In simple terms, a “trade dress” means the overall appearance of a product or business in commerce – how a product is “dressed” for sale. Trade dress is the commercial look and feel of a product or service that identifies and distinguishes the source of a product or service from the products and services of others. Trade dress may include the design and shape of materials in products and product packaging; For example, in services, trade dress protection could consist of visual elements such as a restaurant’s décor, theme, layout, service style, and overall customer-facing presentation and consumer impression. Trade dress litigation recognizes the importance of protecting the public from the confusion and deception arising from a defendant's attempt to “palm off” products resembling your trade dress. For more information regarding trade dress, see our Trade Dress Registration & Protection web page.
What are the Categories of Trade Dress?
While any distinctive combination of elements of a product or service may constitute a trade dress under the Lanham Act, there are five main categories of trade dress:
- Product packaging and containers (labeling, wrappers, and cartons, etc.);
- Product design (footwear, vehicles, and handbags, etc.);
- Product color (pink for fiberglass, etc.);
- Business exteriors and interiors (appearance of the exterior, interior, signs, floor plan, menus, equipment, etc.); and
- Sounds and accents (NBC chime, themes, etc.);
A trade dress is an often overlooked but powerful area of law to protect your business endeavors. Trade dress is a valuable business asset exemplifying a company's product, services, reputation, and goodwill. How a product is packaged, configured, or colored may constitute a trade dress. For instance, a restaurant's trade dress may include the shape and general appearance of its exterior features, signage, floor plan, decor, menu, equipment, and employee uniforms.
What Is Not A Trade Dress?
Wholly functional product features are not protectable under the Lanham Act and, are not a trade dress. The U.S. Supreme Court has identified two methods to determine whether a trade dress is functional:
- Utilitarian functionality; and
- Aesthetic functionality.
A functionality analysis is fundamental because granting trademark rights in a product design is more likely to prevent competition than is granting rights in product packaging.
Dallas Trade Dress Litigation Lawyers
Our Dallas trade dress litigation attorneys have earned a reputation for aggressive, responsive, efficient, and most importantly, successful trade dress litigation. While we are prepared to take every case to trial, we know from our clients' perspective that often, the best litigation is the one that settles in mediation. Our straight forward unbiased guidance can help you avoid litigation whenever possible. However, if needed, our litigators are skilled in negotiation techniques and have a reputation for achieving very favorable results for our clients both in-court and out-of-court.
Additional Trade Dress Litigation Focus
Federal Registration of a Trade Dress in Texas
Trade dress is most often protected through common law rights and without the need for registration. However, if your trade dress meets the requirements of a trademark as well, the Lanham Act allows your trade dress to be registered with the U.S. Patent and Trademark Office (USPTO) as a trademark. Like a trademark, your trade dress must be both distinctive and non-functional to be registered with the USPTO; however, even if not inherently distinctive, your trade dress may still qualify for registration on the United Stated Supplemental Trademark Register. For more information regarding trade dress, see our Trade Dress Registration & Protection web page.
Trade Dress Infringement
Enforcement of protectable trade dress under the Lanham Act is similar to enforcement of other types of trademark litigation. Trade dress claims under the Lanham Act include i) infringement of registered or unregistered trade dress; or ii) trade dress (mark) dilution. To establish a claim of trade dress infringement, a plaintiff must prove:
(1) that it owns protectable rights in and to the trade dress, including that the trade dress (i) is inherently distinctive or has acquired a secondary meaning and (ii) is not functional;
(2) that it began the use of its trade dress prior to the defendant's use of its similar trade dress (or, if the trade dress is not inherently distinctive, that its trade dress acquired secondary meaning before defendant's trade dress did); and
(3) that the defendant's use of its trade dress is likely to confuse to the consuming public as to the source and origin of goods or services or as to affiliation or sponsorship of a party or its goods or services.
Trademark dilution is available for famous brands where such famous brands are either blurred or diluted/tarnished by a competing product. Trade dress blurring is where a trade dress (mark) is weakened by being identified with dissimilar products or goods. Trade dress tarnishment occurs when a mark (trade dress) is damaged through its association with inferior or unseemly goods or services. This form of dilution does not require a plaintiff to show the likelihood of confusion.
Defenses To A Trade Dress Infringement Claim
Utilitarian Functionality Not Protectable as Trade Dress:
Under the Supreme Court's traditional utilitarian functionality test, a product feature is functional if it either: i ) is essential to the use or purpose of the product; or ii) affects the cost or quality of the product. Some courts also focus on whether permitting a product feature to be a trade dress would impair competition; however, generally, a product or design that is functional, as a whole, is not entitled to registration as a trademark under the Lanham Act.
Aesthetic Functionality Not Protectable as Trade Dress:
If aesthetic features of the product are intended to enhance the design and make that good more commercially desirable, trademark protection may be denied because the consumer is drawn to the design. The mark's distinctiveness serves to identify the product rather than the source, and trademark protection becomes inappropriate. The rationale is that the more the aesthetics become integrated with functionality and the resulting product strongly resembles product design. It is not entitled to trademark protection absent secondary meaning.
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