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Alt Legal Connect Session SummaryTrade Dress for Success: Strategies for securing trade dress protection

Alt Legal Team | February 07, 2023
4 min read

On Tuesday, February 7, Jamie Sternberg of Saunders & Silverstein LLP presented the session, “Trade Dress for Success: Strategies for securing trade dress protection.” During this session, Jamie discussed what qualifies as trade dress and provided tips for successful trade dress registration and enforcement.

Presentation Materials: Click here

View Recording: Click here

Jamie began by defining trade dress:

  • Distinctive and non-functional designs or non-verbal devices that identify source
  • Product Packaging: The overall appearance of labels, tags, wrappers, packaging, envelopes, displays, etc., including graphics, fonts, and color combinations
  • Product Design: The size, shape, configuration, color, texture, patterns, etc., of products

She also described what is not trade dress:

  • Merely ornamental features whose only impact is decorative or aesthetic
  • Functional features that are essential to the use or purpose of the product or affect the cost or quality of the product
  • Generic design that is so common it cannot identify a particular source

In terms of enforcing trade dress, the trade dress must be nonfunctional. Then, determine whether the trade dress is product design and secondary meaning applies, or if the trade dress is product packaging which must be distinctive, either inherently or by acquired distinctiveness.

Jamie provided examples of product packaging including the Vans label, the Fiji water label, the Essie nail polish bottle, and the colors and labeling of the Red Bull can. She also provided examples of product design including the Coke bottle shape, designs on sneakers, design of eyeglasses, design of Apple Air Pods, and a makeup brush.

Next, Jamie discussed the classic case Two Pesos, Inc. v. Taco Cabana, Inc. regarding restaurants that were similar in appearance. Taco Cabana sued claiming common law trademark rights in the trade dress of their restaurants. The Supreme Court determined that the restaurant design was akin to product packaging that was inherently distinctive.

Jamie then discussed another classic case Wal-Mart v. Samara Bros. where Walmart commissioned a company to create clothing that was similar to Samara Bros.’ designs. The Supreme Court determined that unlike Two Pesos, the designs on clothing were closer to product design rather than product packaging, which requires a showing of secondary meaning.

In another set of store layout cases, the Drybar layout was found to be inherently distinctive whereas the Apple store layout was determined to meet acquired distinctiveness because the store looks like a normal mall store. Apple had to demonstrate that customers know that it is an Apple store without looking at the sign/logo. In contrast, the Drybar store layout wasn’t a typical salon layout with color and stylization.

Based on her own experience with filing a trade dress mark in relation to clothing, Jamie recommended that if you have viable arguments that a mark is inherently distinctive, you should follow that path because it is more favorable to have on record that your mark is inherently distinctive rather than having to demonstrate acquired distinctiveness or amend the registration to the supplemental register.

Inherently Distinctive in Trade Dress

When arguing that your trade dress is inherently distinctive, the USPTO will consider whether the trade dress meets any of the Seabrook factors:

  • Common shape or design?
  • Unique or unusual in a particular field?
  • Mere refinement of a common and well-known form of ornamentation for a particular class of goods
  • Capable of creating a commercial impression distinct from accompanying words (if any)

Jamie described the application of the Seabrook factors in several cases including the design of the Scope mouthwash bottle (inherently distinctive), Kodiak pancake mix (inherently distinctive), Lululemon omega design (ornamental and not inherently distinctive).

Acquired Distinctiveness in Trade Dress

Jamie noted that acquired distinctiveness applies to product design, and may apply to product packaging. It may be proven by:

  • Demonstrating use for five years proceeding the claim of distinctiveness
  • Submitting the following evidence by declaration: length of use, exclusivity of use, attempts to copy, consumer surveys, advertisements, unsolicited media coverage, sales and sales revenue, advertising expenditures, channels of trade, social media and website analytics, etc.

Color Marks

In order to protect a single color in connection with a product, you must demonstrate acquired distinctiveness. As examples, Jamie presented Tiffany blue, the Pink Panther pink insulation, and Christian Louboutin red soled shoes. Jamie referenced a recent case, In re Forney, where the Fed. Cir. determined that a combination of colors could be inherently distinctive, as it is more like a logo or design.

Functionality and Trade Dress

Jamie noted that case law says that trade dress cannot be functional and it must not be “essential to the use or purpose of the article or affect the cost or quality of the article.” Additionally, trade dress cannot have any utilitarian functionality. Nor can trade dress have aesthetic functionality, where a feature makes a product particularly desirable, giving a competitive advantage. Jamie gave the example of a Christian Louboutin shoe (red sole and black upper) as compared with a YSL shoe (red sole and red upper) where Louboutin’s design was deemed not aesthetically functional and Louboutin could not enforce their trademark against YSL.

Functionality Refusal

The USPTO must make a prima facie case with some evidentiary support that the trade dress is functional. Once the USPTO raises the issue of functionality, the burden shifts to the applicant to rebut the functionality refusal.

Filing an Application for Trade Dress

Sometimes you may need to file more than one application to show different views of the product, but you will need to make a petition to the director to do that. Patent application artists can help with trade dress drawings to ensure dotted lines that are not claimed are properly placed. You also need to prepare a very clear description and color claim. Also be sure to advise the client about potential refusals, determine a budget, and collect evidence you may need to overcome refusals.

Enforcing Trade Dress

Registered trademarks are preferable, but if you only have common law rights to rely on, you can still enforce your trade dress, but it is more expensive and time consuming. It will be easier to enforce trade dress with a registration because the presumption of strength is already there. It is important to monitor trade dress as much as you can and deal with it by sending a demand letter, particularly if you are relying on common law rights. Jamie advised that some clients will be amenable to relying on common law rights rather than having a registration on the supplemental register, but this is something to discuss and strategize with your client.

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