trade dressTrademarks provide important intellectual property protection to businesses and to their products. Trademarks identify the source or origin of goods or services. A related sub-concept of trademarks that also provides broad intellectual property protection to a business is the concept of trade dress.

Trade dress protects a product’s unique design, look and feel. It covers the overall image generated by the product or package. Trade dress comprises traits such as shape, package, size, color, color combination, texture, and graphics. In general, trade dress protects the image of a product. For example, a bucket full of chicken is the trade dress for KFC, the sensual shape of a Coca-Cola bottle is the trade dress of the trademark Coca-Cola, a sophisticated blue box is the trade dress of Tiffany, a yellow and red color combination package is the trade dress of Kodak films.

Trade dress protection may also be available for products, packaging, or business forms and stationery for which a design patent, utility patent or copyright protection may not be available after its expiration. If these other types of protection were never obtained, then trade dress rights may nonetheless be available. For example, it is possible to concurrently protect a design with both trade dress rights and a design patent. Also, trade dress protection is available to protect a design after a design patent has expired.

To obtain trade dress protection for product configurations, it is required to show that the design of the product at issue is inherently distinctive, or has acquired secondary meaning. However, trade dress protection cannot be obtained for a product functional in nature if the product is utility patent protected. Furthermore, to obtain protection of a product under trade dress, the concept protected must be non-functional in nature. For example, if a disputed product configuration is part of a claim in a utility patent, and the configuration is descriptive of the inventive concept, then the doctrine of trade dress which is necessarily functional in nature is not available until the patent for that product has expired and has entered the public domain.

In one of the most important trade dress cases to date, the Supreme Court, in Two Pesos, Inc. v. Taco Cabana, Inc.,(505 U.S. 763, 112 S.Ct. 2753 (1992), held protectable the trade dress of Taco Cabana’s restaurant, and described it as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead doors; the stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme”.

Feel free to drop us a line if you have a product, which may qualify for trade dress protection.

–Ash Tankha, Esq.