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Trade Dress

Probably the best way to describe trade dress is to quote some notable and recent Supreme Court rulings on the subject.

It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects protection for trade dress exists to promote competition. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 - Supreme Court 2001

Pay particular attention to the phrase above, "assuming other requisites are met". Trade dress is not an automatic nor does the assertion of trade dress by the rights owner, or the corporate attorney of the rights owner, establish that trade dress exists. Like secondary meaning, trade dress is often falsely asserted during the chest-beating stage of communications between the parties. One reason for the rights owner to so frequently make the false claims of trade dress is that it serves as the poor man's alternative to obtaining a patent or other such protections. It is also a substitute for the fact that the rights owner cannot get other protections for the product and therefore must lie about such things as secondary meaning and trade dress to stifle competition. In today's markeplace, more and more trademark and copyright owners are improperly attempting to extend their limited intellectual property rights to either control the secondary market or to limit competition. Some do it out of ignorance of the law and its application but many are aided by corporate lawyers whose first loyalty is to the billable hours and the fee it generates and not to the ethics involved. In TrafFix Devices, the Supreme Court also said:

Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 160 (1989). In finding for MDI on the trade dress issue the Court of Appeals gave insufficient recognition to the importance of the expired utility patents, and their evidentiary significance, in establishing the functionality of the device. The error likely was caused by its misinterpretation of trade dress principles in other respects. As we have noted, even if there has been no previous utility patent the party asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress features. MDI could not meet this burden. The Lanham Act, furthermore, does not protect trade dress in a functional design simply [page 35] because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller.

Many products do acquire trade dress status. In Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763 (1992), the Supreme Court found that the trade dress of a restaurant that was "inherently distinctive is protectible under § 43(a) without a showing that it has acquired secondary meaning". But the one underlying theme in all of the court decisions is the issue of functionality. If some quality of the product is functional, that is, necessary for the use of the product, then it cannot be afforded trade dress protection. And, "the party asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress features." When functionality is an issue, simply making the claim of trade dress fails. It must be proven.