TRADE DRESS – Another Way to Protect Against Copycats

Trade dress applies to the “total image and overall appearance” that distinguishes a product or service offering. To be protected, trade dress must be “non-functional,” which means that it must be separate from the product or service. It must also be unusual and memorable.

Trade dress covers the “distinctive packaging,” the “look and feel.” Hence, it is broader in scope than trademark protection. Trade dress can include the design, size, shape, color, color combinations, graphics and texture. Trade/service mark protection covers any word, phrase, name, symbol, sound … that identifies or distinguishes the product or service from those made or sold by others.

For example, a restaurant can use trademark to protect its name and seek trade dress to protect its “décor, menu, layout and style of service.” Examples of restaurants with distinctive trade dress include McDonalds, Wendys and Fuddruckers.

Trade dress also complements other forms of intellectual property protection such as patent and copyright. For example, a software program may seek patent protection for the novel functionality and copyright protection for the expression of the idea (the written code). Trade dress protection may cover the “look and feel of its graphical user interface.”

To be protected from infringement by others, trade dress must pass three tests:

• Non-functional.
  Trade dress protects appearance, not functionality. To be trade dress, it must not be essential to the use or purpose. If you remove the trade dress, what is left?
  
• Distinctive.
  To be protected, trade dress must be “inherently distinctive” or have “acquired secondary meaning” by established use.
  
• Likelihood of Confusion.
  It must be shown that an “ordinary buyer” would be “confused” (unable to tell the original from the copy).
  

Factors considered to determine infringement (as opposed to OK competition) include:

• the strength and distinctiveness of the trade dress;
• the intent to copy and “cash in;”
• the similarity in the goods/services;
• the area, manner and degree of concurrent use;

Trade dress v. design patents.

Another way of protecting the design and ornamental aspects is with a “design patent.” Obtaining a design patent requires that the design be novel, unobvious and non-functional. Design patents are good for 14 years from the date of issuance and are expensive to obtain. Trade dress protects the overall look and feel, is obtained through usage (and/or registration) and is not time-limited.

Trade dress protection can be both broader than and complementary to copyright, patent and trademark protection. Trade dress protection can be especially important to Internet or “virtual” businesses which are interactive and service-based because it is the user-experience and appearance (like a restaurant) that distinguish one business from another.

In conclusion, trade dress is another “tool” to legally protect you from copycat competitors.

Jean D. Sifleet, Esq. CPA
Business Attorney
120 South Meadow Road
Clinton, MA 01510 USA
t. 978-368-6104
f. 978-368-6105
c. 978-618-2162