TRADE DRESS REGISTRATION AND PROTECTION

What Is Trade Dress?

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. Protecting your trade dress is very important as a trade dress distinguishes your goods and services from the goods and services of your competitors.   The following are examples of trade dress:

• The shape of a Coca-Cola bottle;

• Packaging of a Starbucks cup;

• Look and feel of the Fridays Restaurants;

• The architectural design of McDonald's Golden Arches; and

• Packaging of a Red Bull can. 

However, when bringing a trade dress infringement suit, the trade dress owner must plead and prove that the trade dress is inherently distinctive or has acquired a secondary meaning; the defendant's use of that trade dress is likely to cause consumer confusion. If the trade dress owner cannot prove that such trade dress would confuse an average consumer about the source or origin of a product, then there is no trade dress infringement. Our Dallas trade dress infringement lawyers can assist in trade dress infringement litigation, as well as the trade dress identification and registration.  For more information regarding trade dress, see our Trade Dress Litigation web page.

What Makes A Trade Dress Inherently Distinctive?

Trade dress is inherently distinctive if it's unusual and memorable and primarily designates the origin or source of a product or service.  This distinctness must be conceptually separate from the product or services themselves. For example, in 1985, a Mexican restaurant named Two Pesos was opened to compete against an existing Mexican restaurant called Taco Cabana.  Two Pesos was born out of the failed negotiation between a Houston restaurateur and the then-current owner of Taco Cabana. When Taco Cabana entered the Houston market, they sued Two Pesos for stealing their business concepts and "trade dress." After many appeals, the U.S. Supreme Court confirmed the lower court's ruling and found that Taco Cabana's restaurant decor was inherently distinctive because it featured a mural, brightly colored pottery, distinctive outdoor umbrellas, neon border stripes, and a novel style of service (i.e., the restaurant’s décor, theme, layout, service style, and overall customer-facing presentation).  Two Pesos was restrained from using Taco Cabana's distinctive trade dress.

Trade Dress Cannot Protect Solely Functional Aspects

If an element of  goods or services is purely functional, then it does not qualify for trade dress protection; however, "the fact that a design feature performs a function does not make it essential to the performance of that function; it is instead the absence of alternative constructions performing the same function that renders the feature functional." Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987)." Simply, a design that also performs a function may still qualify as a trade dress so long as there are alternative means of performing the same function (e.g. different designs could have performed the same function.)  For example,  the shape of a Coca-Cola bottle is inherently distinctive as it instantly identifies the product as coming from the Coca-Cola company. Coca-Cola, the liquid product drink, could be packaged in many different shaped bottles; therefore, the shape of a Coca-Cola bottle is not primarily functional, and the law of trade dress can protect its' shape. So if you must protect a purely functional aspect of a product or service, you should consider the Patenting Process  or the Copyright Process  and not trade dress.

How To Enforce A Trade Dress

Given that a trade dress can take a long time to develop, trade dress infringers can't quickly erode distinctiveness and brand trust by illegal copyright. Our attorneys have experience in trade dress protection to protect your intellectual property and brand identity by any legal means necessary. We know that trade dress overlaps with other areas of intellectual property law, such as copyrights and patents, and our Dallas trade dress lawyers have the experience to protect your brand. We represent clients in trade dress identification, trade dress registration, and trade dress infringement throughout the United States, including the U.S. District Courts for the Eastern District of Texas, the Northern District of Texas, and the Western District of Texas.