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What is trade dress, image from Jordanhill School D&T Dept

What is Trade Dress and Can I Trademark It?

By John DiGiacomo

Generally, “trade dress” is a legal term of art that refers to the “look” of a product, including how it is designed and the manner in which it is packaged. These are how products are “dressed” in the same manner as how persons are dressed in clothing, hairstyling, and makeup. Some of the more famous examples of trade dress include the famous design of the Coca-Cola bottle (with the somewhat hourglass shape and ridges) and the red soles of Louis Vuitton shoes. The overall appearance of a product can include various elements or features like shape, form, configuration, size, color, color combinations, texture, and graphic designs. The same is true for product packaging. Note that packaging can be trade dress distinct and different from the trade dress of the product. Thus, trade dress is applicable to services as well as products.

Under U.S. trademark laws, trade dress CAN be registered as a trademark, but it can be difficult. Those seeking to register trade dress as trademarks have a couple of hurdles to overcome. The first is that trade dress must be deemed “distinctive” in order to be registered. Generally, though, U.S. courts have held that trade dress is NOT inherently distinctive. Thus, trade dress must have acquired distinctiveness through use in commerce. So, considering the red soles on Louis Vuitton shoes, by itself, the red soles are legally NOT distinctive. However, over time, those red soles acquired distinctiveness in the minds of the relevant consuming public. For purposes of registering a trademark, whether distinctiveness has been acquired is a matter of proof. After five years of continuous use, a legal presumption exists that the trade dress has acquired distinctiveness. Other evidence can also be used, like consumer surveys.

Another hurdle to overcome is the rule that trade dress cannot be functional in any way to the product’s use. The rule is that if trade dress is functional, it cannot serve as a trademark and cannot be registered as a trademark. This is because how something functions are, generally speaking, a matter of patent law. Whether trade dress is functional is evaluated on these factors:

  • Is a feature of that trade dress essential to the use or purpose of the article?
  • Does a feature of the trade dress affect the cost and/or ease of manufacture?
  • Does a feature of the trade dress affect quality?

Let’s continue using color as an example. Color can, under some circumstances, impact the absorption of environmental light and heat. Depending on the product, that absorption can be relevant to how the product works and with respect to issues like product efficiencies, repair, and maintenance. For those types of products, color — as a trade dress — will be deemed functional. Therefore, the trade dress will not be allowed as a trademark. For other products, like shoes, color has no impact on how the product works. Thus, color — as trade dress — can be allowed as a trademark for such products.

The functionality of trade dress is also used by trademarking authorities to evaluate the anti-competitive impacts of registering a trademark. This is generally referred to as “aesthetic” functionality. If a trade dress has aesthetic functionality, then trademark registration will be denied. Trademarks allow an owner to prevent others from using the trademark, and trademarks can exist indefinitely as long as they are used in commerce. So, trademarks have anti-competitive effects. On the basis of aesthetic functionality and impacts on competition, trademark status has been denied for the color black on outboard motors for boats and colors used for trade dress packaging in the floral industry.

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