Intellectual Property Law

All You Need to Know About Trade Dress Law

By Michael Atkins

Happy New Year!

At the outset of 2011, I thought it’d be useful for some to review the basics of trade dress law. (I assure you it’s purely coincidental I’m teaching the ins-and-outs of trade dress tomorrow morning!)

Following is really all a restaurateur or small business owner needs to know about trade dress:

• Trade dress is the overall look-and-feel of product packaging, design, or decor that functions like a trademark, i.e., that collectively identifies the source of the goods or services connected with the dress.
• Trade dress is protectable (and is even registrable) just like an ordinary word or design mark.
• For that reason, trade dress that is “suggestive,” “arbitrary,” or “fanciful” is immediately protectable and does not depend on a showing of secondary meaning, i.e., a showing that consumers have grown accustomed to associating the dress with a particular source of the goods or services sold in connection with the dress.
• Similarly, trade dress that is “descriptive” needs proof of secondary meaning.
• Unsure how a court would categorize your trade dress? Can’t blame you; attorneys and courts struggle with that all the time. But you’ll have to do your best to place your trade dress on the Abercrombie spectrum of trademark distinctiveness.
• That said, color and product design elements always need proof of secondary meaning.
• In addition, functional elements — those elements that serve a useful purpose other than identifying the source — are not protectable at all. Indeed, the trade dress owner has the burden of proving nonfunctionality. All restaurants have tables, chairs, a kitchen, and a cash register, so for good reason those features can’t serve the trademark purpose of identifying a particular source.
• If you tout a particular feature as being useful in advertising or the feature has been protected by a utility patent, then it’s probably functional and isn’t subject to protection as trade dress.
• If you need to prove secondary meaning and can’t — don’t fret — you still might be able to protect your dress under copyright or design patent laws.

In my opinion, that’s all you need to know.

But if I’ve forgotten something, I’m sure folks won’t be shy about chiming in! They haven’t been in the past!

Full post as published by Seattle Trademark Lawyer on January 03, 2011 (boomark / email).