A Guide to Trade Dress in the United States

Definition

In the United States when we talk about Trade Dress we are referring to the overall commercial image (look and feel) of a product or service that indicates or identifies the source of the product or service and distinguishes it from those of others. Depending on the jurisdiction, it may, for example, include the design or configuration of a product, the packaging of goods, or the décor or environment in which services are provided. Trade dress can consist of such elements as size, shape, color, texture, etc., to the extent such elements are not functional.

For a product, trade dress might be the packaging, the attendant displays, and even the configuration of the product itself. For a service, it might be the decor or environment in which a service is provided-for example, the distinctive decor of the Hard Rock Cafe restaurant.

According to the modern view of Trade Dress, as noted in Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763, 112 S. Ct. 2753 (1992). Ct. 2753 (1992), is essentially the product's total image and overall appearance as defined by its overall composition and design, including size, shape, color, texture, graphics, and even sales techniques.

Registration

Having determined what our trade dress consists of, to obtain its registration it must comply with two requirements. The first is that it must be distinctive. When considering the distinctiveness factor, product designs and product packaging are analyzed differently. Under the Supreme Court’s holding in Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000) product design cannot be inherently distinctive, but can only acquire distinctiveiness through a showing of secondary meaning.

Product packaging, on the other hand, may be inherently distinctive or may have acquired distinctiveness by secondary meaning. For trade dress to be considered inherently distinctive, "must be unusual and memorable, conceptually separable from the product, and capable of serving primarily as a designator of the product's origin" Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994). We will need to use the Sebrook test to determine if it is inherently distinctive. This test consists of 4 parts:

(1) whether it is a "common" basic shape or design;

(2) whether it was not unique or unusual in the particular field;

(3) whether it was "a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods regarded by the public as clothing or ornamentation of the goods"; or

(4) whether it was capable of creating a commercial impression distinct from the accompanying words.

If it is recognized to be inherently distinctive then the trade dress may be protected, if it is not recognized then secondary meaning must be proven, which will mean that the consuming public can identify the origin of the goods or services based on the packaging alone. The factors to be considered are:

1) Direct consumer testimonials.

2) Consumer surveys.

3) The amount and form of advertising.

4) Sales volume and length.

5) Form of use.

The second requirement for registration of Trade Dress is that it must not be functional. This means that the design or shape of a product cannot serve a practical, functional, or utilitarian purpose. Instead, it must be primarily for aesthetic or decorative purposes.

When discussing functionality, we first need to consider the Utilitarian Functionality Doctrine, which allows us to apply the Inwood Labs Test. This test states that a product design or feature is functional in a utilitarian sense if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article.

This test give us a broughter perspective on why funtional features should not be trademarked. We are going to consider two factors:

(1) is "essential to the use or purpose of the article", or

(2) "affects the cost or quality of the article".

What is sought to be avoided is if functional features of a product could be used as trademarks, however, a monopoly on such features could be obtained regardless of whether they qualify as patents and could extend forever (because trademarks can be renewed in perpetuity). Qualitex Co., 514 U.S. at 164-165 (1995); MPEP 1202.02(a)(ii).

Having applied the Inwood Lab Test, we will need to resort to the "Morton-Norwich" factors that provide a more detailed, case by case, analytical framework for determining functionality in trademark law:

(1) The existence of a utility patent disclosing the utilitarian advantages of the design. Plaintiff has the burden of proving that the characteristic for which protection is sought is not functional—but having a patent for a design raises a very strong presumption that the product design is functional. Traffix Devices v. Mktg. Displays, 532 U.S. 23 (2001).

(2) Advertising by the applicant touting the utilitarian advantages of the design.

(3) Facts regarding the availability of alternative designs.

(4) Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Infringement in the United States of America

Four elements are typically examined in trade dress infringement cases:

A) Definition; the applicant must define its trade dress.

B) Functionality. We will have to use Utilitarian Functionality Doctrine and the Morton-Norwich Factors.

C) Distinctiveness. The trade dress can be inherently distinctive or we will have to proof secondary meaning.

D) Likelihood of confusión: When examining whether there is a potential likelihood for confusion, courts look at the DuPont factors E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), which include, for example:

• The similarity of the trade dress in their ove rall appearance and commercial impression;

• The similarity between the plaintiff’s and the defendant’s products;

• Which channels do the two parties use to market their products, and the similarities between these channels and marketing techniques;

• Likelihood of each brand to expand into the same geographic or marketing area;

• The sophistication of the product's intended consumers.

The previous analysis allows us to understand, in a comprehensive way, the key points of how Trade Dress is treated in the United States. Without a doubt, it is a type of trademark that is not commonly pursued or utilized in Latin American countries. However, it is extremely important in countries like the United States.