Trade Dress Infringement

What is the difference between trademark and trade dress? Trademark protects the product or service itself. Whereas, trade dress protects the way a good is dressed or packaged on the market. It can also protect the decor or atmosphere of a service. 

Trade dress is the part of trademark rights that protects product appearance, design, and packaging. Trade dress applies to both goods and services. In terms of products, it protects things like the total appearance of a motorcycle. When it comes to services, an example of trade dress protection would be the design or color scheme of a fast-food franchise. The feel and look of websites and mobile apps is also protected by trade dress. Business owners may obtain the highest level of intellectual property protection by registering trade dress with the United States Patent and Trademark Office (USPTO). 

Four Components of Trade Dress Infringement

As with other forms of intellectual property, business owners must be aware of the possibility of infringement. Trade dress infringement is generally broken down into four components. These are functionality, definition, distinctiveness, and likelihood of confusion. 

Functionality

The literal, common functional components of a product are not protected by trade dress. So, if a product is packaged in a box, that would be a generic part of its functionality. On the other hand, if a product has a label or is contained in an unusual shaped package, as seen in certain bottles, that can be protected by trade dress. 

From a legal perspective, a court will examine the overall feeling of trade dress. In order to determine if a design’s functionality is protected by trade dress, the United States Court of Appeals for the Federal Circuit (CAFC) relies on what is called the Morton-Norwich factors. The first factor is if the product has a utility patent that applies to the design of the product. Secondly, if the business has advertised the product in a way that describes or alludes to the utility-based function of the design. Third, if any alternative designs exist and/or are available. And ultimately, if the design in question was created by simple or inexpensive manufacturing methods, in comparison with like products. 

Altogether, functionality is contextually defined within a particular industry. A blaze-orange hunting cap, for example, would be considered functional. Whereas, if a pair of running shoes were manufactured in the same color, that might not be considered functional. When it comes to infringement, if the trade dress of a product is registered with the USPTO, the onus to prove functionality or non-functionality may fall on the plaintiff or defendant, depending on the court.  

Definition 

To prove infringement upon trade dress, any given plaintiff must provide a definition of the elements of the product that are protected. USPTO registration serves as proof of protection. If the trade dress was not registered, an infringement case may still be made. In this scenario, a brand would have to give the court a description of the elements of the trade dress. In addition, the brand needs to identify how the combination of those elements defines the trade dress. Every aspect of the elements and their combination must be cohesively defined in terms of design to successfully determine trade dress. 

Distinctiveness 

Trade dress must serve as a “source identifier” or possess “secondary meaning.” For a trademark to be a source identifier, consumers must identify the brand when they see the product and/or its package. Secondary meaning refers to the associated components of a product or service, like smells, text, sounds, and appearance. Basically, if consumers have a stimulus-response relationship with the brand – see this, feel that, in a specific way that is unique to the product or service. 

Registering trade dress with the USPTO requires brands to demonstrate distinctiveness. That registration is the simplest way to prove distinctiveness in a court of law. There are common law trade dress rights, as well, which may also be used to claim infringement. 

In infringement cases, courts seek to determine if the trade dress in question is inherently distinctive. To show inherent distinctiveness, an assessment will be made of whether the trade dress is comprised of a common shape or design. They will also examine: 

• If the product design or packaging is out-of-the-ordinary in the industry.
• If the product design or packaging has a stylized or refined version of a component that is commonly seen in the relevant class of goods/services.
• If the product design or packaging has the potential to make an impression on consumers that is distinct from any text that accompanies the good or service. 

Product packaging may be distinctive in an inherent sense. Meanwhile, product design may only be seen as distinctive via secondary meaning. 

Secondary Meaning or Acquired Distinctiveness

Secondary meaning or acquired distinctiveness is determined by: 

• Press coverage 
• Consumer testimonials 
• Advertising spend 
• Trade dress usage in commerce 

Components like color are not distinctive in an inherent sense. To obtain infringement protection for color, the brand that owns the trade dress needs to demonstrate that the use of a particular color has secondary meaning in the right class. 

Likelihood of Confusion 

When a trade dress infringement claim is made, the plaintiff has to show that there is a likelihood of confusion. The court will examine the how the public consumer may be confused according to the DuPont Factors. These factors are analyzed as part of a trademark infringement test. 

DuPont Factors assess the similarity and difference of the trade dress appearance, commercial impression, and connotation; type of goods or services; and trade channels. They also analyze who the consumer is and under what circumstances did they purchase the good or service. Further examination is made of the trademark’s recognition, how similar marks are used with the same kind of products, and if confusion did happen, among other details. 

For famous brands, plaintiffs have to establish the fame of the brand. They will need to also demonstrate that the unlawful use of the trademark on the market has caused damage. This type of claim is called a dilution claim. Which is to say, the unauthorized and infringing use of the trademark negatively impacted the value of the brand. In these cases, rather than having to show a likelihood of confusion, the owner of the trade dress must demonstrate a likelihood of dilution. 

How Trade Dress Infringement Damages Brand Value 

When it comes to infringement lawsuits, the plaintiff usually wants a court-ordered injunction. The result of the injunction is that the defendants (infringers) cannot continue with their unauthorized activity. In the initial stages of the case, brands can try to get a preliminary injunction, as well. This is meant to prevent additional brand value damage as the case proceeds. Plaintiffs seeking a preliminary injunction have to show that there will be irreparable harm without the injunction. They also have to show that it is fair and in the public interest. And, that there is a likelihood of success. When the case is concluded, a permanent injunction may be granted. 

Monetary Damages 

With trade dress infringement cases, the Lanham Act permits the plaintiff to recover a particular set of monetary damages. Plaintiff’s can recover actual loss due to infringement, litigation costs, and any profit earned by the defendant. The Act also states they can recover the cost of advertising aimed at correcting consumer confusion, and the royalties they are owed for the unauthorized use of the trade dress. In the event that a court finds that the defendant willfully used counterfeit trade dress, a maximum of $2 million in statutory damages can be awarded, for each type of good or service distributed or sold. 

Cease and Desist Letter for Trade Dress Infringement 

When infringement occurs upon your trade dress, the best course of action to take is to write a cease and desist letter. This letter, sent to the infringing party, will contain how the trade dress rights were infringed upon, registration information, and a full explanation of the infringement. The cease and desist letter will also include a demand for the infringing party to stop their activity and submit proof that they complied with the demand in three days. Perhaps most importantly, the letter will state that failure to comply may lead to the filing of a federal lawsuit over trade dress rights. Trade dress owners should enforce their rights so they can maintain the exclusive rights of their products. 

If you are experiencing trade dress infringement issues, we can help! The team at Stockman & Poropat, PLLC will develop a solution that works for you. Contact us today for a free consultation! 

Up next we will be discussing How to Trademark a Book Title.