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Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of
trademark law A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from othe ...
, which is a form of
intellectual property Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognize more than others. The best-known types are patents, co ...
protection law.


Overview

Trade dress is an extension of trademark protection to " e design and shape of the materials in which a product is packaged, rimarily 'Product configuration,' the design and shape of the product itself, may also be considered a form of trade dress." Product configuration applies particularly to situations where the product can be seen within the packaging (''e.g.'' a toy car sold in packaging that operates as a shadow box for commercial display within—the collective look it creates is trade dress), or where the packaging is part of the product (''e.g.'' the bottle of a soft drink, along with its visible contents, are trade dress, though the bottle is actually part of the product that retains its value to the consumer for as long as its contents last.). Like all intellectual property law that isn't patent law, trade dress and other trademark elements are subject to the bar on functional features (''e.g.'' a handle cannot be protected, though it may contain trade dress features that can prevent exact replicas of a particular trade dress handle). It's a question of which elements of the packaging are intrinsic to the basic function of the packaging (''e.g.'' a bottle of water shaped like a rectangular prism put corners on the package that enable variation to its look among any combination of the prism's dimensions that would hold the same amount and fit in a cupholder, so it etches for itself a niche range of appearances as wide as the eye cannot discern apart). In the United States, the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
protects trade dress if it serves the same source-identifying function as a trademark.  It is possible to register trade dress as a trademark, but for practical reasons most trade dress and product configurations are protected without registration unde
15 USC § 1125(a)


United Kingdom

Trade dress can be protected as getup under the law of
passing off Passing off is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting ...
in the UK. Passing off is a common law remedy for protecting an unregistered
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...
. Getup, packaging, business strategy, marketing techniques, advertisement themes etc. can also be protected under passing off.


United States

Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For example, the shape, color, and arrangement of the materials of a children's line of clothing can be protectable trade dress (though, the design of the garments themselves is not protected), as can the design of a magazine cover, the appearance and décor of a chain of Mexican-style restaurants, and a method of displaying wine bottles in a wine shop.


Statutory source

Trademark law is not explicitly mentioned in the Constitution of the United States (as opposed to patent and copyright protection law); as such, trademark law—and thus, trade dress—is enforced on the state level in addition to the federal level. In the U.S., like
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...
s, a product's trade dress is legally protected by the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
, the federal statute which regulates trademarks and trade dress. Under section 43(a) of the Lanham Act, a product's trade dress can be protected without formal registration with the
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alex ...
(USPTO). In part, section 43(a) states the following:
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which :(A) is likely to cause confusion, or to cause mistake, or to deceive ..as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or :(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.
This statute allows the owner of a particular trade dress ("container for goods") to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any formal agency or system (unlike the registration and application requirements for enforcing other forms of intellectual property, such as patents). It is commonly seen as providing "federal common law" protection for trade dress (and trademarks).


Formal registration

Trade dress may be registered with the PTO in either the Principal Register or the Supplemental Register. Although registration is not required for legal protection, registration offers several advantages. In the Principal Register, a registrant gains nationwide
constructive use Although the general English usage of the adjective constructive is "helping to develop or improve something; helpful to someone, instead of upsetting and negative," as in the phrase "constructive criticism," in legal writing ''constructive'' has ...
and
constructive notice Constructive notice is the legal fictionThe phrase "legal fiction" should not be construed to mean that the concept of constructive notice is legally invalid. that signifies that a person or entity should have known, as a reasonable person would hav ...
, which prevent others from using or registering that registrant's trade dress (without contesting the registration). Further, a registrant in the Principal Register gains incontestable status after five years, which eliminates many of the ways for another party to challenge the registration. Registration under the Supplemental Register allows the registrant to protect its trade dress in foreign countries, although the protections are much more limited than protections under the Principal Register in the U.S.


Legal requirements

It can be difficult to obtain protection for trade dress, as applicants must prove that the design has secondary meaning to consumers and is then further limited by the functionality doctrine.


Functionality

To gain registration in the Principal Register or common law protection under the Lanham Act, a trade dress must not be "functional." That is, the configuration of shapes, designs, colors, or materials that make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer's mind. For example, even though consumers associated a distinct spring design for wind resistant road signs with a particular company, the spring design was not protectable for trade dress purposes because the springs served the function of withstanding heavy wind conditions. What is considered "functional" depends upon the specific product or thing sought to be protected. For example, the color red in a line of clothing may not be functional (and thus part of protectable trade dress) whereas the same color on a stop sign would be functional because the color red serves the function of putting drivers on alert (and thus would not be part of a protectable trade dress).


Distinctiveness

To gain registration in the Principal Register or common law protection under the Lanham Act, a trade dress must be "distinctive." This means that consumers perceive a particular trade dress as identifying a source of a product. Claimed trade dress in the product design—as opposed to product packaging—context can no longer be "inherently distinctive"; it must acquire distinctiveness through "secondary meaning". Distinctiveness through secondary meaning means that although a trade dress is not distinctive on its face, the use of the trade dress in the market (the "goodwill" of the trade dress) has created an association between that trade dress and a source in the mind of the consumer. Although the law is evolving, as it stands now, product packaging (including packaging in very general terms, such as a building's décor) may be inherently distinctive. However, product design, that is the design or shape of the product itself, may not be inherently distinctive, and must acquire secondary meaning.


Protection for electronic interfaces and websites

Although the exact boundaries of protection are still uncertain, courts are beginning to allow trade dress protection for the overall "
look and feel In software design, the look and feel of a graphical user interface comprises aspects of its design, including elements such as colors, shapes, layout, and typefaces (the "look"), as well as the behavior of dynamic elements such as buttons, box ...
" of a website. In ''Blue Nile, Inc. v. Ice.com, Inc.'', the plaintiff sued the defendant in the
United States District Court for the Western District of Washington The United States District Court for the Western District of Washington (in case citations, W.D. Wash.) is the federal district court whose jurisdiction comprises the following counties of the state of Washington: Clallam, Clark, Cowlitz, Gray ...
for copying the overall "look and feel" of plaintiff's retail jewelry websites, including the design of plaintiff's search pages. Although the court ordered more factual development before it could rule definitively on the issue, the court did hold that it was possible for the look and feel of the websites to have trade dress protection if the plaintiff's copyright claims did not already cover those parts. In '' SG Services, Inc. v. God's Girls, Inc.'', the
United States District Court for the District of Oregon The United States District Court for the District of Oregon (in case citations, D. Ore. or D. Or.) is the federal district court whose jurisdiction comprises the state of Oregon. It was created in 1859 when the state was admitted to the Union ...
denied trade dress protection for the plaintiff's website because the plaintiff did not demonstrate that the website was non-functional or distinctive. This case shows the court's willingness to consider trade dress protection for a website, even though the court did not find protection in this case. However, the ''SG Services'' court did not look at the overall "look and feel" of the website, but rather, at specific characteristics (such as color) of the website that the plaintiff claimed were infringed. Although the future of trade dress protection for websites is still very unclear, much thought has been given to this area and it will likely continue to be actively developing area for courts and litigants.Scott D. Locke, Trade Dress in the Age of E-Commerce: The Challenge of Protecting the "Look and Feel" of Websites and Mobile Apps, 27 Alb. L.J. Sci. & Tech. 213 (2017). http://www.albanylawjournal.org/archives/pages/article-information.aspx?volume=27&issue=3&page=213


See also

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Geschmacksmuster Under German law, the registered design (German: ''eingetragenes Design''), formerly called ''Geschmacksmuster'' ("aesthetic model"), is a form of intellectual property that extends industrial design rights over the visual design of objects that is ...
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Trademark infringement Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may ...
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Fashion design copyright Although elements of fashion design copyright may be traced in Europe to as early as the 15th century, as of 2016 most countries (including the United States and the United Kingdom) fashion design does not have the same protection as other creative ...


References

{{DEFAULTSORT:Trade Dress Intellectual property law Trademark law