No matter the industry, all businesses benefit from strong intellectual property (IP) protection. Within IP, your brand’s image is a valuable asset that can help businesses maintain a competitive edge and protect their innovations. In this blog post, we’ll discuss a type of trademark protection: trade dress protection. We’ll explain what it is, how it works, and why businesses need to consider it. Keep reading!
Most people think that when you’re starting a new business, the first thing you need to do is come up with a clever name and logo. And while that’s certainly important, there’s another aspect of branding that’s often overlooked: trade dress protection.
The trade dress protection
Trade dress refers to the overall look and feel of your product or packaging. It’s what makes your product distinctive and recognizable, and it’s a valuable part of your intellectual property portfolio. A trade dress typically includes a color scheme, packaging, wrappers, labels, shapes, and all other materials utilized in the presentation of a product to the consumer.
When a product or service looks different and special enough to be easily recognized, it might be able to get trade dress protection. This means that no one can copy the look of the product or service without permission. Although, the distinctive qualities in that trade dress cannot be functional. We’ll circle back to this a little bit more later.
There are three main categories of distinctive features that qualify as a trade dress.
- Product design or configuration
This usually just means the shape or configuration of a product. Simply put, an Apple iPhone. It is easy for anyone to imagine what an Apple iPhone looks like, right? Another example is Weber Grill. Hearing the name, you can think of that specific silhouette of a Weber grill.
And though that distinctiveness needs to be acquired, it cannot be inherently distinctive. So Apple and Webber had to provide evidence to the USPTO to show that when consumers see that silhouette, design, or shape, they think Apple, they think Weber Grill.
- Product packaging (Labels, wrappers, and or boxes)
Unlike product design, product packaging can be inherently distinctive. For example, the Coca-Cola bottle. Product packaging is extremely popular for protection in the alcohol and cannabis industry.
Think of all the different types of wine, liquor, and beer bottles with their different labels and different designs. They all put an immense amount of effort into protecting their intellectual property.
- Other kinds of non-traditional trademarks
Examples of such are color schemes, motion marks, gifs, sound marks, and store layouts. Included as well are scents and flavor, advertisements, websites, and so much more. Think of the inside of an In-N-Out restaurant or the inside of a Chipotle. If you were to walk into a store, but there were no signs saying it was Chipotle, could you recognize what it was?
That’s because companies like In-N-Out, Chipotle, and many others have spent years, if not decades, developing a customer experience that is unique to their brand.
You can do the same
Wondering how you can receive trade dress protection?
To receive trade dress protection, first, your trade dress must be distinctive. As mentioned earlier, your trade dress must have acquired distinctiveness or be inherently distinctive. This rule applies differently to the different types of trade dress that you might be looking for.
Now the second requirement for trade dress protection is non-functionality. Non-functionality can be utilitarian or aesthetic.
The trade dress feature is set to be functional If the feature is vital to the purpose of the product. A trade dress is set to have aesthetic functionality if it is essential if it is a competitive necessity of the product offered.
Aesthetic functionality usually comes up in luxury goods, for example, the red color of a Louis Vuitton shoe. Recently a court held that Yves Saint Laurent could make shoes with a red bottom, as long as the red bottom was a full shoe and not just the sole.
In that scenario, Louis Vuitton’s red bottoms protection is limited to the red sole.
Benefits of having a trade dress protection
- Presumption of ownership invalidity
- Public notice
- Exclusive right to use that trade dress nationwide
- The potential for an indefinite term of protection
- The ability to litigate federally, if ever in the position to litigate
- A basis for registering in foreign countries
You might ask, are there other intellectual property strategies that are closely related to traders’ protection?
Yes, there are in the form of copyrights and design packages. Design patents protect the ornamental or decorative features of a manufactured article. They’re limited to the non-functional aspect of the product, similar to a trade dress.
Usually, people pick the design patent process because it’s faster than the trade dress process. A copyright application would protect the design of the product. As mentioned in my copyright video, the copyright application must be filed within three months of the first public notice of the product design.
Think of the first thing that comes to your mind when you think of a candy wrapper, a store layout, or a color scheme. If you can think of something distinctive enough, and it’s the first brand that you think of when you think of these three different categories, make a list of those. This way, you can think about how these companies have spent decades trying to get you to identify them when you think of these features.
If you’re looking for a tool to expand your intellectual property protection, trade dress might be right for you. Trade dress is a type of IP that can help businesses protect their distinctive branding and packaging. It can also help businesses protect the overall appearance of their products and stores.
To learn more about how trade dress could benefit your business, schedule a free discovery call with our team today. We would be happy to discuss this valuable form of IP protection with you and answer any questions you have. Thanks for reading!
If you found this interesting and would like to have your trademark inquiries answered, please feel free to register for a discovery call here.
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Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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