Trade dress

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Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. [1] Trade dress is an aspect of trademark law, which is a form of intellectual property protection law.

Contents

Overview

Trade dress is an extension of trademark protection to "[t]he design and shape of the materials in which a product is packaged, [primarily]. 'Product configuration,' the design and shape of the product itself, may also be considered a form of trade dress." [2]

Product configuration applies particularly to situations where the product can be seen within the packaging (e.g. a toy car sold in packaging that operates as a shadow box for commercial display within—the collective look it creates is trade dress), or where the packaging is part of the product (e.g. the bottle of a soft drink, along with its visible contents, are trade dress, though the bottle is actually part of the product that retains its value to the consumer for as long as its contents last).

Like all intellectual property law other than patent law, trade dress and other trademark elements are subject to the bar on functional features (e.g. a handle cannot be protected, though it may contain trade dress features that can prevent exact replicas of a particular trade dress handle). It is a question of which elements of the packaging are intrinsic to the basic function of the packaging.

In the United States, the Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. It is possible to register trade dress as a trademark, but for practical reasons most trade dress and product configurations are protected without registration under 15 U.S.C.   § 1125(a) . [2]

By country

United Kingdom

Trade dress can be protected as getup under the law of passing off in the UK. Passing off is a common law remedy for protecting an unregistered trade mark. [3] Getup, packaging, business strategy, marketing techniques, advertisement themes etc. can also be protected under passing off.

United States

Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. [1] For example, the shape, color, and arrangement of the materials of a children's line of clothing can be protectable trade dress (though, the design of the garments themselves is not protected), [4] as can the design of a magazine cover, [5] the appearance and décor of a chain of Mexican-style restaurants, [6] and a method of displaying wine bottles in a wine shop. [7]

Statutory source

Trademark law is not explicitly mentioned in the Constitution of the United States (as opposed to patent and copyright protection law); as such, trademark law—and thus, trade dress—is enforced on the state level in addition to the federal level.

In the U.S., like trademarks, a product's trade dress is legally protected by the Lanham Act, the federal statute which regulates trademarks and trade dress. [8] Under section 43(a) of the Lanham Act, a product's trade dress can be protected without formal registration with the United States Patent and Trademark Office (USPTO). [9] In part, section 43(a) states the following:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

  • (A) is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
  • (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act. [10]

This statute allows the owner of a particular trade dress ("container for goods") to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any formal agency or system (unlike the registration and application requirements for enforcing other forms of intellectual property, such as patents). It is commonly seen as providing "federal common law" protection for trade dress (and trademarks). [11]

Formal registration

Trade dress may be registered with the PTO in either the Principal Register or the Supplemental Register. [12] Although registration is not required for legal protection, registration offers several advantages. In the Principal Register, a registrant gains nationwide constructive use and constructive notice, which prevent others from using or registering that registrant's trade dress (without contesting the registration). [13] Further, a registrant in the Principal Register gains incontestable status after five years, which eliminates many of the ways for another party to challenge the registration. [14] Registration under the Supplemental Register allows the registrant to protect its trade dress in foreign countries, although the protections are much more limited than protections under the Principal Register in the U.S. [15]

It can be difficult to obtain protection for trade dress, as applicants must prove that the design has secondary meaning to consumers and is then further limited by the functionality doctrine. [16]

Functionality

To gain registration in the Principal Register or common law protection under the Lanham Act, a trade dress must not be "functional". That is, the configuration of shapes, designs, colors, or materials that make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer's mind. [17] For example, even though consumers associated a distinct spring design for wind resistant road signs with a particular company, the spring design was not protectable for trade dress purposes because the springs served the function of withstanding heavy wind conditions. [18]

What is considered "functional" depends upon the specific product or thing sought to be protected. [19] For example, the color red in a line of clothing may not be functional (and thus part of protectable trade dress) whereas the same color on a stop sign would be functional because the color red serves the function of putting drivers on alert (and thus would not be part of a protectable trade dress).

Distinctiveness

To gain registration in the Principal Register or common law protection under the Lanham Act, a trade dress must be "distinctive." This means that consumers perceive a particular trade dress as identifying a source of a product. [6]

Claimed trade dress in the product design—as opposed to product packaging—context can no longer be "inherently distinctive"; it must acquire distinctiveness through "secondary meaning". [20] Distinctiveness through secondary meaning means that although a trade dress is not distinctive on its face, the use of the trade dress in the market (the "goodwill" of the trade dress) has created an association between that trade dress and a source in the mind of the consumer.

Although the law is evolving, as it stands now, product packaging (including packaging in very general terms, such as a building's décor) may be inherently distinctive. [6] However, product design, that is the design or shape of the product itself, may not be inherently distinctive, and must acquire secondary meaning.

Protection for electronic interfaces and websites

Although the exact boundaries of protection are still uncertain, courts are beginning to allow trade dress protection for the overall "look and feel" of a website. In Blue Nile, Inc. v. Ice.com, Inc., the plaintiff sued the defendant in the United States District Court for the Western District of Washington for copying the overall "look and feel" of plaintiff's retail jewelry websites, including the design of plaintiff's search pages. [21] Although the court ordered more factual development before it could rule definitively on the issue, the court did hold that it was possible for the look and feel of the websites to have trade dress protection if the plaintiff's copyright claims did not already cover those parts. In SG Services, Inc. v. God's Girls, Inc., the United States District Court for the District of Oregon denied trade dress protection for the plaintiff's website because the plaintiff did not demonstrate that the website was non-functional or distinctive. [22] This case shows the court's willingness to consider trade dress protection for a website, even though the court did not find protection in this case. However, the SG Services court did not look at the overall "look and feel" of the website, but rather, at specific characteristics (such as color) of the website that the plaintiff claimed were infringed.

Although the future of trade dress protection for websites is still very unclear, much thought has been given to this area and it will likely continue to be actively developing area for courts and litigants. [23] [24]

Similar concepts in other countries

China

Although Chinese law does not recognize a concept of trade dress, the Anti–Unfair Competition Law (反不正当竞争法) does protect the packaging, decoration, or appearance of a "well-known commodity"; this provision accomplishes something similar to trade dress protections. [25]

See also

Related Research Articles

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.

An industrial design right is an intellectual property right that protects the visual design of objects that are purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

<span class="mw-page-title-main">Lanham Act</span> United States trademark law

The Lanham (Trademark) Act (Pub. L. 79–489, 60 Stat. 427, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.

Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub. L. 106–113 ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. Senator Leahy stated that "it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others".

A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services.

<span class="mw-page-title-main">Design patent</span> US Patent Law

In the United States, a design patent is a form of legal protection granted to the ornamental design of an article of manufacture. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of objects that are covered by design patents.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), was a United States Supreme Court decision in the area of trademark law, holding that a functional design could not be trademarked, and that a patented design was presumed to be functional.

A colour trade mark or color trademark is a non-conventional trade mark where at least one colour is used to perform the trade mark function of uniquely identifying the commercial origin of products or services.

<span class="mw-page-title-main">Canadian trademark law</span>

Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off.

<i>Kirkbi AG v Ritvik Holdings Inc</i> Supreme Court of Canada case

Kirkbi AG v. Ritvik Holdings Inc., popularly known as the Lego Case, is a decision of the Supreme Court of Canada. The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks.

In United States trademark law, the functionality doctrine prevents manufacturers from protecting specific features of a product by means of trademark law. There are two branches of the functionality doctrine: utilitarian functionality and aesthetic functionality. The rationale behind functionality doctrine is that product markets would not be truly competitive if newcomers could not make a product with a feature that consumers demand. Utilitarian functionality provides grounds to deny federal trademark protection to product features which do something useful. Patent law, not trademark, protects useful processes, machines, and material inventions. Patented designs are presumed to be functional until proven otherwise. Aesthetic functionality provides grounds to deny trademark protection to design features which are included to make the product more aesthetically appealing and commercially desirable. Aesthetic features are within the purview of copyright law, which provides protection to creative and original works of authorship.

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), was a United States Supreme Court case in which the Court held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market.

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees. Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.

In Canada, passing off is both a common law tort and a statutory cause of action under the Canadian Trade-marks Act referring to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers. The law of passing off protects the goodwill of businesses by preventing competitors from passing off their goods as those of another.

Intel Corporation v. CPM United Kingdom Ltd., Case 252/2007 was a case of the European Court of Justice in which the ECJ interpreted the meaning of Article 4 (4)(a) of the EU Trade Marks Directive. The ECJ considered what elements are required to show that a later mark was causing dilution to an earlier mark. The case laid out a clear basis on which grounds a court can find that trademark dilution has occurred.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), was a United States Supreme Court case where the Court held that Two Pesos, Inc. infringed upon the trademark of Taco Cabana, Inc. by copying the design of their restaurants. Writing for a majority of the court, Justice Byron White concluded that trade dress is inherently distinctive under the Lanham Act and that plaintiffs are not required to prove secondary meaning in suits to protect their trademark. The Court upheld an award of $3.7 million in damages, and Taco Cabana ultimately acquired all of Two Pesos' assets in 1993 for $22 million.

<span class="mw-page-title-main">Design infringement</span> Breach of intellectual property rights

Design is a form of intellectual property right concerned with the visual appearance of articles which have commercial or industrial use. The visual form of the product is what is protected rather than the product itself. The visual features protected are the shape, configuration, pattern or ornamentation. A design infringement is where a person infringes a registered design during the period of registration. The definition of a design infringement differs in each jurisdiction but typically encompasses the purported use and make of the design, as well as if the design is imported or sold during registration. To understand if a person has infringed the monopoly of the registered design, the design is assessed under each jurisdiction's provisions. The infringement is of the visual appearance of the manufactured product rather than the function of the product, which is covered under patents. Often infringement decisions are more focused on the similarities between the two designs, rather than the differences.

References

  1. 1 2 Merges, Robert P.; Menell, Peter S.; Lemley, Mark A. (2007). Intellectual Property in the New Technological Age (4th rev. ed.). New York: Wolters Kluwer. p. 29. ISBN   978-0-7355-6989-8.
  2. 1 2 "Trade Dress". LII / Legal Information Institute. Retrieved 2021-07-08.
  3. ↑ Clark, Birgit; Hitchens, Ben. "United Kingdom: The perils and powers of passing off". World Trademark Review. Globe Business Media Group. Retrieved 12 September 2017.
  4. ↑ Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000)
  5. ↑ Reader's Digest Ass'n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987), http://bulk.resource.org/courts.gov/c/F2/821/821.F2d.800.86-7004.86-5495.html
  6. 1 2 3 "Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992)". Google Scholar. Retrieved 12 September 2017.
  7. ↑ "Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000)". Google Scholar. Retrieved 12 September 2017.
  8. ↑ Lanham Act, 15 U.S.C.   § 22
  9. ↑ Merges at 650; Lanham Act, 15 U.S.C.   § 1125(a)
  10. ↑ 15 U.S.C.   § 1125(a)
  11. ↑ Merges at 650
  12. ↑ PTO website, http://www.uspto.gov/
  13. ↑ Lanham Act § 7(c), 15 U.S.C. § 1057(c)
  14. ↑ Lanham Act § 15, 15 U.S.C. § 1057(c)
  15. ↑ Menell at 696
  16. ↑ Michael Best & Friedrich, LLP (10 June 2012). "Entrepreneur's Guide to Intellectual Property – Blog Series: Protecting Your Products and Packaging with Trade Dress". The National Law Review. ISSN   2161-3362 . Retrieved 17 November 2014.
  17. ↑ "Qualitex Co. v. Jacobson Products Co., 514 US 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995)". Google Scholar. Retrieved 12 September 2017.
  18. ↑ "TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001)". Google Scholar. Retrieved 12 September 2017.
  19. ↑ Feisthamel, Karen; Kelly, Amy; Sistek, Johanna (November 2005). "Trade Dress: Best Practices for the Registration of Product Configuration Trade Dress with the USPTO". The Trademark Reporter. 95 (9). Retrieved 12 September 2017.
  20. ↑ "Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S. Ct. 1339, 146 L. Ed. 182, 54 USPQ2d 1065 (2000)". Google Scholar. Retrieved 12 September 2017.
  21. ↑ "Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash., 2007)". Google Scholar. Retrieved 12 September 2017.
  22. ↑ "SG Serv., Inc. v. God's Girls, Inc., non-reported case, 2007 WL 2315437 (C.D. Cal. 2007)" (PDF). WebsUpp. Archived from the original (PDF) on 5 July 2010. Retrieved 12 September 2017.
  23. ↑ Nguyen, Xuan-Thao N. (2001). "Should it be a Free for All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites in the Evolving Internet" (PDF). American University Law Review. 49 (6): 1233–1277. Archived from the original (PDF) on 2009-03-25.
  24. ↑ Scott D. Locke, Trade Dress in the Age of E-Commerce: The Challenge of Protecting the "Look and Feel" of Websites and Mobile Apps, 27 Alb. L.J. Sci. & Tech. 213 (2017). http://www.albanylawjournal.org/archives/pages/article-information.aspx?volume=27&issue=3&page=213
  25. ↑ "Reconstruction on the "Well-known" Element of Trade Dress Protection in China". Intellectual Property (in Chinese). 2013 (7): 54–58. Retrieved 30 March 2023.
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