THE BLOG
03/30/2015 01:00 pm ET Updated May 30, 2015

Designing Something? Protect Your Trade Dress

Trade dress involves the overall nonfunctional appearance and design characteristics of items including such elements as shape, color, graphics, and packaging. Great trade dress can make an already good product sizzle. It is that important.

If you find an item inherently attractive or immediately associate appearance with a product or service, then you have an intuitive understanding of what trade dress involves. We instantly recognize the golden arches when incorporated into a building. Trade dress is conceptually related to trademark and the two frequently overlap. This comment provides a very brief educational overview of an important intellectual property right. Specific situations must be addressed by experienced legal counsel.

Trade dress may be registered with the U.S. Trademark and Copyright Office, although registration is not mandatory in order to have ownership. A related protection, the design patent, might be obtained for the nonfunctional visible ornamental aspects of an object. Formal registration is typically desirable as it documents and dates usage or the intent-to-use and puts third parties on notice of a claim.

Courts require that the alleged trade dress be distinctive or have secondary meaning. Secondary meaning involves a generic characteristic that consumers now uniquely associate with a particular product. Widely used customary packaging is unlikely to be trade dress. But what happens, for example, if a pink mustache is placed on an ordinary automobile?

A classic 1992 U. S. Supreme Court decision (Two Pesos, Inc. v. Taco Cabana, Inc.) granted trade dress protection to the decorations in a Mexican restaurant involving vivid colors, designs, and paintings to create a "festive atmosphere." There may be a fine line in a particular situation between generic decor and protectable trade dress.

An equally famous 1998 federal Fifth Circuit case found service mark and trade dress infringement of a golf course hole (Pebble Beach v. Tour 18 Limited). Building and store designs, bottle shapes, vehicle grills, and the color and shape of pills may be protected by trademark and trade dress, among many examples. Do you think of particular products when you hear the phrases "the purple pill" or "the little blue pill?" A designer must think broadly concerning the potential marketing advantage that a particular appearance may provide.

Proving trade dress infringement requires that: 1. the trade dress is nonfunctional; 2. is either inherently distinctive or has secondary meaning and; 3. there is a substantial likelihood of consumer confusion concerning the origin or maker of the item in question. Litigation typically begins with a request for an injunction prohibiting the use of particular packaging or designs.

To what extent a website's "look and feel" may have trade dress protection is an unfolding and debated area of the law. Here trade dress and copyright law intersect with courts attempting to apply historic legal concepts to new technologies. Design patent protection may be possible. It is desirable to seek multiple forms of intellectual property protection in a specific situation.

When multiple parties work together on designs, it is advisable to have an agreement concerning the ownership of trademarks and trade dress among many issues. Act promptly to protect intellectual property.

This comment only provides a brief educational overview of a complex topic and is not intended to provide legal advice or counsel. Always consult an experienced attorney in specific trade dress and intellectual property situations.