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Product colors, labels and packaging often catch the eye of consumers. Businesses work very hard to ensure that consumers recognize their products, because not only will they purchase a product that is aesthetically pleasing, but also brand mark that they trust. So how can business owners protect their mark and the physical appearance of their goods and services?
A trademark is a mechanism for identifying the source of a good or service and a technique for providing marketing advantages for the owner of the trademark. According to the United States Trademark and Patent Office (hereinafter USTPO), it is “any word, name, symbol, or device, or any combination thereof, other than a trade name in its entirety, adopted and used by a person to identify their goods and distinguish them from similar goods made or sold by others.”
A form of trademark protection that is used to protect the physical appearance of a product or service and which protect businesses from competitors is known as trade dress. According to the International Trademark Association (hereinafter INTA), ”[t]rade dress is 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. It may include the design or configuration of a product; the labeling and packaging of goods; and/or the décor or environment in which services are provided. Trade dress can consist of such elements as size, shape, color and texture, to the extent such elements are not functional. In other countries, Trade dress can be referred to as ‘get-up’ or ‘product design’. For example, an appellate court found that a restaurant’s décor, menu, layout and style were protectable under trade dress.
Trade dress in the United States is regulated by both federal and state laws. The Lanham Act, which governs federal trademark law, provides protection for trade dress. On the state level, some statutes offer protection for trade dress, and are usually modeled after the federal Lanham Act. The USPTO provides a list of states and a link to the applicable trademark law or registration documents here.
According to the INTA, “[a]n application to register trade dress with the USPTO must include all of the same content as any other trademark application, including a description of the trade dress, identification of the products and/or services to be covered and payment of the appropriate fee”. The trade dress must be:
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The Lanham Act, in Section 43(a), protects unregistered trademarks in order to prevent “unfair competition.” According to Al-Site Corp. v. VSI Intern., Inc., to prove trade dress infringement or unfair competition, the plaintiff must show:
(1) the inherent distinctiveness or secondary meaning of its trade dress,
(2) the essential nonfunctionality of its trade dress, and
(3) the likelihood of customer confusion as to its origin, sponsorship, or approval due to similarity between its and the defendant’s trade dress. 174 F.3d 1308, 1326 (1999).
For more information about trade dress, contact Revision Legal’s trademark attorneys. Use the form on this page or call (855) 473-8474.
Trade dress protection has expanded beyond physical products and packaging to cover the user interfaces and visual design of software applications and websites. Courts have recognized that a software application’s overall visual appearance — the combination of color scheme, layout, iconography, and navigation structure — can function as a source identifier in the same way that product packaging does in the physical goods market. To succeed on a software or UI trade dress claim, the plaintiff must still prove secondary meaning and non-functionality. Functionality is particularly contested in software trade dress cases because most UI elements serve a utilitarian purpose; the plaintiff must show that the specific combination of design choices goes beyond functional necessity and creates a distinctive commercial impression.
Once a trade dress plaintiff establishes distinctiveness (or secondary meaning) and non-functionality, the third element requires proving that the defendant’s trade dress creates a likelihood of consumer confusion as to source, sponsorship, or approval. Courts apply the same multi-factor likelihood of confusion analysis used in trademark infringement cases, weighing factors including: the strength of the plaintiff’s trade dress; the proximity of the parties’ goods or services in the market; the similarity of the trade dress; evidence of actual confusion; the similarity of marketing channels; the sophistication of the typical buyer; and the defendant’s intent. The strength of the plaintiff’s trade dress — how distinctive and commercially well-known it is — is typically the most important single factor in the analysis.
Evidence of actual consumer confusion, while not required, significantly strengthens a trade dress claim. Instances where consumers contacted the plaintiff believing they were dealing with the defendant, or vice versa, carry substantial weight. Screenshots of social media posts, customer service tickets, and email inquiries that reflect confusion are admissible and persuasive in trade dress litigation.
A successful trade dress plaintiff under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a), may recover: (1) the defendant’s profits attributable to the infringing trade dress; (2) the plaintiff’s actual damages; (3) the costs of the action; and (4) in exceptional cases, enhanced damages up to three times actual damages. Under Romag Fasteners, Inc. v. Fossil Group, Inc., 590 U.S. 212 (2020), a plaintiff seeking the defendant’s profits in a trade dress case no longer must prove willfulness — though willfulness remains a relevant factor in the court’s equitable discretion. Injunctive relief is the most common remedy, requiring the defendant to discontinue use of the infringing design and sometimes mandating a full redesign of the infringing product or packaging.
Protecting your trade dress requires strategic planning before infringement occurs, rigorous evidence collection, and experienced litigation counsel when competitors cross the line. Revision Legal’s trademark attorneys advise businesses at every stage — from building the evidentiary foundation for a trade dress claim to litigating before federal courts. Contact us today to discuss how trade dress protection can secure a competitive advantage for your brand.
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