Another category of Intellectual Property (IP) is trade dress. Let’s start with the definition of trade dress. This definition is essential in order to understand how to protect trade dress rights and why these rights are often forgotten or overlooked by clients and practitioners alike. Trade dress is an important arrow in an IP quiver or portfolio.
Historically, trade dress "referred only to the manner in which a product was 'dressed up' to go to market with a label, package display card and similar package elements. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1992).
However, just like anything else, the notion of trade dress has evolved. The modern view of trade dress is much more expansive than the traditional view. Today, trade dress is defined as a product's "total image" or "overall appearance" and "may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983), cited with approval in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992).
More specifically, a trade dress is a combination of several functional and nonfunctional elements that are unique to the trademark owner and cannot be confused with other brands' designs. A nonfunctional element can be any identifying element, such as a distinctive shape or ornamental design. For example, in what is the most important trade dress case 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, described 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 garage 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.
In 1985, the Ninth (9th) Circuit, in Fuddruckers, Inc. v. Doc's B.R. Others, Inc., agreed with Fuddruckers' assertion that the "restaurant's decor, menu, layout, and style" was a protectable trade dress. The features for which Fuddruckers sought protection included food preparation areas which are visible to its customers, the storage of bulk food items in the main dining area, "ubiquitous" two-by-four inch white tiles on the walls, the bar and the counters, neon, mirrors, and brown directors' chairs, and a "Mother Fuddruckers" bakery area.
In 1992, seven (7) years later Two Pesos was decided. The Supreme Court only described Two Pesos' infringing trade dress as "very similar" to Taco Cabana's trade dress. Fast forward to a more recent time, in 2013, Apple gained protection for the design of its stores based on its distinctive features. It goes without saying that corporations that invest in designing stores and packaging products should also invest in protecting their trade dress.
Having comprehensively defined trade dress, let’s now look at what is trade dress registration.