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 factors including whether the design yields a utilitarian advantage, whether the design results from a comparatively simple or cheap method of manufacture, whether the design is essential to the use or purpose of the article, and whether the design affects the quality or cost of the article.

Product Packaging vs. Product Configuration Trade Dress

U.S. courts treat product packaging trade dress and product configuration trade dress differently on the question of inherent distinctiveness. In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), the Supreme Court held that product design (configuration) trade dress is never inherently distinctive—it always requires proof of acquired distinctiveness to be protectable. The Court reasoned that consumers rarely look at product design as an indicator of source in the way they regard brand names and logos. Product packaging, by contrast, can in theory be inherently distinctive, though the bar is high and courts scrutinize packaging trade dress carefully.

This distinction matters practically: a business claiming trade dress protection for the shape of its product faces a higher evidentiary burden than a business claiming trade dress protection for distinctive packaging. Both must ultimately demonstrate that consumers identify the claimed trade dress with a single commercial source, but configuration trade dress requires more evidence and a longer commercial history to support a successful registration or infringement claim.

Registering Trade Dress with the USPTO

Trade dress can be registered on the USPTO’s Principal Register if the applicant can establish distinctiveness and non-functionality. The application process follows the same general path as a standard trademark application—filing through TEAS, examination, publication for opposition, and registration—but with additional documentation requirements specific to trade dress:

• A detailed written description of the trade dress claimed, identifying each element of the design that constitutes the mark.
• Evidence of acquired distinctiveness—typically five or more years of substantially exclusive and continuous use in commerce, supported by sales figures, advertising expenditures, customer declarations, and consumer survey data.
• A statement that the trade dress is not functional, supported by evidence demonstrating that the claimed features serve no utilitarian purpose that competitors need to freely copy to compete in the market.

If the USPTO’s examining attorney determines that the trade dress is functional—even in part—the application will be refused. This is one of the most technically demanding aspects of trade dress registration and one where experienced trademark counsel adds the most value. The attorney must anticipate the functionality arguments the examiner may raise and build the evidentiary record to counter them from the outset.

Trade Dress Infringement: Elements and Remedies

Even without a federal registration, trade dress that has acquired secondary meaning can be protected against infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). To establish trade dress infringement, a plaintiff must prove three elements: (1) the trade dress is inherently distinctive or has acquired secondary meaning; (2) the trade dress is non-functional; and (3) the defendant’s use of similar trade dress creates a likelihood of confusion as to the source, sponsorship, or affiliation of the goods or services.

The likelihood-of-confusion analysis for trade dress applies the same multi-factor test used in standard trademark cases, adapted to the visual comparison of product appearance and packaging. Courts look at the overall commercial impression created by the trade dress in its entirety, not individual features in isolation. This “overall impression” standard means that a competitor cannot avoid liability simply by changing one element of a copied design while keeping all other elements that contribute to the overall look.

Remedies for trade dress infringement under the Lanham Act include injunctive relief, the infringer’s profits, actual damages, enhanced damages for willful infringement, and attorney’s fees in exceptional cases. For businesses that have invested significantly in product design and packaging to create a distinctive brand identity, trade dress litigation can protect that investment against competitors who try to trade on the goodwill built by the original brand.

Trade Dress in the Restaurant and Service Industry

Trade dress protection is not limited to physical products. The “look and feel” of a restaurant—its interior design, color scheme, layout, uniform style, and overall ambiance—can constitute protectable trade dress for a service business. The Supreme Court recognized restaurant trade dress protection in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), where the Court held that inherently distinctive restaurant decor is protectable under Section 43(a) without proof of secondary meaning. The restaurant chain in that case successfully protected its festive Mexican-themed decor against a competitor that had copied the overall visual theme.

For service businesses—restaurants, retail stores, spas, hotels, and similar operations—trade dress can protect the entire customer experience environment that the brand has developed. This makes trade dress an important tool for franchise systems seeking to protect the consistent visual presentation of their locations against unauthorized copying.

If you believe your product design, packaging, or service environment qualifies for trade dress protection—or if a competitor is copying your distinctive look—the trademark attorneys at Revision Legal can evaluate your options and pursue the appropriate legal strategy. Call us at 231-714-0100 or 855-473-8474.