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How do you describe your trade dress?

September 27, 2016

     Trade dress is a form of trademark protection and is protected by § 43 of the Lanham Act.  Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992).  Trade dress protects the overall commercial appearance of a "product" that indicates or identifies the source of that “product”.  Trade dress can be found in a product's design or configuration, or a product packaging.

     To establish trade dress, you must show two elements:  (1) the trade dress is not functional, and (2) the trade dress is inherently distinctive or that it has acquired secondary meaning.  Ashley Furniture Indus., Inc. v. Sangiacomo N.A. Ltd., 187 F.3d 363, 368 (4th Cir. 1999); Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2nd Cir 1997). 

     Trade dress cannot protect features that are functional.  A feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."   Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)).

     Whether trade dress is inherently distinctive or has acquired secondary meaning depends on what is being claimed.  It is important to note that most Circuit Courts of Appeals, apart from the Eighth Circuit, distinguish between trade dress claims for a product's design or configuration and a product's packaging.  Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780, 788 (8th Cir. 1995) (declining to create a distinction between protection of packaging and product configuration).  Because a product's design or configuration generally doesn't identify the source of the product, a trade dress claim for a product's design requires a showing of secondary meaning.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000).  However, because labeling and packaging choices are virtually unlimited, a product's packaging trade dress typically will be inherently distinctive or require a showing of secondary meaning.  Fun-Damental, 111 F.3d at 1000.

     Thus, if you are identifying your trade dress, you would not want to describe it as follows:

 

[T]he combination of multiple features, including: the tool size; the shape of the handles; the shape of the gripping jaws including the selection, shape and placement of the gripping jaw features (needlenose, arcuate gripping surface and cutters); the mirror image of the tool handles; the brushed stainless steel finish on the handles; the selection, arrangement and shape of all of the various tool blades both individually and collectively; the combination and arrangement of all the above features; the proportional sizes of components in relation to each other; and, the type and appearance of the pivot joint on the pliers head.

 

Leatherman Tool Group, Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011 (9th Cir. 1999).  As the Court found, this description violates the tenet that trade dress cannot protect features that are functional.  Id. at 1013. 

     It is also important that you clearly articulate your trade dress:

 

The Petoskey trade dress incorporates large three-inch tubing, with a powdered cosmetic finish, bent in gentle turns that roll around the perimeter of the furniture which in combination with the various seating surfaces gives the viewer a floating or suspended feeling. 

 

Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381-82 (2nd Cir. 1997).  The Court found that a "claim for site furniture which is at once massive, yet appears to float, is too abstract to qualify as trade dress".  Id.  Moreover, the plaintiff failed to identify the specific features that constitute its trade dress because the purported trade dress did not apply to all of the items in the Petroskey furniture line, and bent tubing was commonly used in outdoor furniture.


     Finally, because of the different treatment between product configuration and product packaging trade dress claims, you want to frame your trade dress, to the extent possible, as a product packaging claim:

 

Tetris Holding claims its trade dress is comprised of the following: "the brightly-colored Tetriminos, which are formed by four equally-sized, delineated blocks, and the long vertical rectangle playfield, which is higher than wide."

 

Tetris Holdings, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394, 415 (2012) (noting the trade dress claims were based on "the manner in which Mino advertised and packaged its game to potential users").

 

 

updated on 10/1

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