Intellectual Property, Advertising, Art and Fashion Law

A trade dress refers to the total commercial image of a product or its packaging, which may include elements such as size, shape, color, texture, or even packaging style. The distinctiveness of these elements creates a unique visual identity that makes the product easily recognizable in the marketplace. Think of it as the overall “look and feel” of a product that allows consumers to immediately associate the product with a particular company without ever needing to see a logo or brand name.

The concept of trade dress is encompassed within the definition of a trademark and is therefore protectable under trademark law. To obtain trade dress protection, your product design or packaging must meet two key requirements: it must be distinctive, and it cannot be functional.

The shape of a glass Coca-Cola bottle for example, is protected by trade dress.   The specific blue color that Tiffany & Co’s uses for their gift boxes is also protected by trade dress. As soon as you see the iconic packaging of that little blue box, you think beauty, luxury, and elegance – you think Tiffany’s – even before seeing what is inside.   Similarly, as soon as you see the shape of that classic glass Coca-Cola bottle, you think of that classic cola taste (and perhaps childhood memories of a refreshing drink on a hot summer day).  That’s trade dress, and it is driven not only by branding but consumer recognition.

For a trade dress to be considered distinctive, it must allow the customer to easily identify the product’s source. When a trade dress is so unique that this identification is clear and immediate, it may be considered inherently distinctive. Otherwise, you must prove that your trade dress has acquired secondary meaning. Secondary meaning is when a trade dress, through extensive commercial use or advertising, becomes associated with a single brand in the minds of the public. For example, the shape of a Ketchup bottle, a Birkin bag, or an iPhone, or even the distinctive configuration of a restaurant. These shapes, colors and designs have all achieved secondary meaning through extensive commercial use and advertising.

The second requirement is that the product’s design cannot be purely functional. Design elements are considered functional if they serve a practical purpose or are essential to the product’s use or effectiveness. For example, a shoe sole pattern that improves traction or a bottle shape that makes the bottle easier to hold. Neither of these elements would be protected under trade dress. Trade dress protection covers the aesthetic elements that make up a product’s signature style and unique branding identity, rather than the product’s functionality.

While trademarks are important for safeguarding your brand’s name and logo, trade dress is essential for protecting the overall look and feel of your products. Both serve as powerful tools in protecting your brand’s identity, reputation and market value.

Yes, you should.  Trademarks are like a muscle, the more you use it, the stronger you become. Using this muscle analogy, you know that exercise does not magically create a muscle, it rather develops it and makes you stronger overall.  Registration at the USPTO works in a similar fashion.  Registration does not grant you trademark rights, it rather enhances them, and makes your brand stronger overall.  Without a federal registration, you are limited in your development and will face difficulties in warding off infringers.  In other words, your muscles are weak, and you lack the strength needed to defend yourself.

Trademark rights in the United States are based on the “first-to-use” rule, not the “first-to-file” rule.  This means that trademark rights are given to marks that have been used in commerce the longest.  It is actual use that matters, rather than registration.  So the moment you start using a trademark in commerce (i.e. selling goods or services using the mark), it is your baseline from which you can determine whether someone is infringing upon your mark.  This is called “common law” use of a trademark.  These are rights based solely on use of the trademark in commerce within a particular geographic area.  In other words, your rights in that “common law” trademark are limited to the specific geographic area where the trademark is used.

Registering your trademark with the USPTO, however, creates rights throughout the entire United States and its territories.  Once you submit an application, your application is immediately visible in a publicly accessible database of registered trademarks and pending applications.  This application gives you priority over subsequently submitted applications for confusingly similar marks. This visibility is important, as it provides public notice to anyone searching for similar trademarks.

There are other significant benefits.  A registration can provide you a basis for filing for trademark protection in foreign countries.  It also gives you a legal presumption that you own the trademark and have the right to use it (i.e. you do not need to spend loads of attorneys’ fees trying to prove the mark is yours).  You can also register your trademark with the United States Customs and Border Protection, which can stop the importation of goods with an infringing trademark.  It also grants you the right to bring a lawsuit concerning the trademark in federal court, which can be a significant strategic advantage.  You can also use the federal trademark registration symbol ® to show that you are registered with the USPTO, which can have a deterrent effect on potential infringers.

Does that mean that if you have “common law” rights, you have no rights against a subsequent filer at the USPTO?  No, as long as you are the senior user.  You may be able to challenge the legitimacy of a registration at the USPTO if you are the “first-to-use” a similar trademark.  However, the path to do so can be expensive, time consuming, and could have been avoided simply by registering in the first place.   There are contested proceedings (i.e. a lawsuit) before the Trademark Trial and Appeals Board that require you to hire an attorney to prove you are the senior user.  These can cost anywhere between $5,000 and $100,000 or more in legal fees.  In other words, registration saves you money in the long term.

We wrote here about prior searches (https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/).  Many would-be filers at the USPTO merely conduct a search on the USPTO database to determine whether someone else is using a similar mark.  If you are a “common law” user, your mark will not appear in these searches, and thus your mark will not prevent someone from registering their mark at the USPTO.  This means that the only way for you to prevent this subsequent use is to file a contested proceeding at the TTAB, or a federal lawsuit.  Both are very expensive options.

So save yourself the aggravation, and register at the USPTO.  You may find these other articles useful in navigating that process:

• Do I need an attorney to register my mark? https://dunnington.com/do-i-need-an-attorney-to-register-my-trademark/
• Should I conduct a prior trademark search? https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/
• What makes a trademark “strong”? https://dunnington.com/trademark-talk-what-makes-a-trademark-strong/
• What is a trademark? https://dunnington.com/trademarktalk-whatisatrademark/

This is a simple question that requires a nuanced answer.  As a law firm, we always recommend use of counsel in the filing of a trademark.  An attorney provides you guidance on the selection of a mark https://dunnington.com/trademark-talk-what-makes-a-trademark-strong/, and prior searches https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/.

But as a practical matter, no, you are not legally required to have counsel file a trademark application if you are domiciled in the United States.  If you are a foreign domiciled trademark applicant or registrant, however, you must have a US-licensed attorney represent you.

The trademark registration process can take years, and may entail multiple substantive correspondences with an examining attorney from the USPTO.  In the long run, hiring an attorney can save you money, as experienced counsel can help you navigate the clearance and registration process, and address post registration issues such as potential infringements and the maintenance of your mark.

The short answer is yes, you should. Conducting a prior search can help you identify whether the mark you have chosen is already in use. This is a necessary first step before choosing labels, marketing materials, a domain name and creating a website. A branding change after all of these have been selected would be very disruptive.

The United States Patent and Trademark Office (www.uspto.gov) provides an online search system which is both intuitive and easy to use (https://tmsearch.uspto.gov/search/search-information). This includes helpful videos on how to search for trademarks. If you believe you came up with a unique mark, doing a search may help you confirm whether the mark may already being used by someone else. These “knockout” searches are a good starting point but it is usually best to rely upon a full search and the professional opinion of legal counsel.

A full search includes business registrations, domain names, state trademark registrations, social media and other databases. An experienced trademark attorney needs to review the search results and provide advice. For example, a trademark application for WILD ROSE NO. 8 for women’s perfume might be rejected if there is already a registration for WILD ROSE NO. 8 for vitamin supplements. This is because businesses that produce women’s beauty products sometimes also produce vitamin supplements. Another concern is that English terms need to be translated into their foreign equivalents. For example, a prior registration for WILD ROSE NO. 8 in French for women’s perfume would be a bar to registration.

A full prior search of a potential trademark is also important because it may prevent or reduce your potential damages if you are faced with a trademark infringement lawsuit. The failure to conduct a full search can be a factor that indicates “willful” trademark infringement. This could result in a court forcing you to turn over all of your profits to the plaintiff in the lawsuit. For these reasons, the cost of an initial search is far less than the potential legal bills arising from defending yourself in court.

So yes, conduct an initial search early on in the process and be creative in choosing a strong mark (https://dunnington.com/trademark-talk-what-makes-a-trademark-strong).

Bob Marley once said “you never know how strong you are, until being strong is your only choice.”  He was not talking about trademarks, but he certainly could have been.  Trademarks are only as strong as their ability to sustain challenges.  While you cannot anticipate all challenges ahead, you can certainly lay the groundwork to have a strong trademark.  It starts by picking the right components to your mark (https://dunnington.com/trademarktalk-whatisatrademark/).

A strong trademark is an “inherently distinctive” mark.  An inherently distinctive mark is a mark that clearly identifies the sources of your goods and services as coming from you. The mark is strong because it is uniquely associated to you.

The strength of a trademark will be judged on a sliding scale from weak to strong.  Weak marks are descriptive or generic.  For example, a generic mark would be “MILK” for milk products or “BICYCLE” for bicycles.  These types of marks do not function as trademarks because they are merely the common name for the products. They do not indicate the source of the products. Examples of descriptive marks would be “CREAMY” for yogurt or “STYLISH” for a clothing line.  These types of marks only describe the products without, again, indicating the source of the products.

Descriptive marks can only be registered if they have been used for an extensive period of time and therefore have become “distinctive”.  This requires years of use, and the ability to prove that consumers recognize the mark as the source of the products.   This can be a time consuming and expensive process.  For example, BOOKING.COM went all the way to the Supreme Court of the United States to prove that it had a valid trademark for online “booking” services.  It took years and, presumably, extensive legal fees to do so.

A stronger mark will be a “suggestive” mark.  Suggestive marks are words that suggest some quality of the product, but do not explicitly state it.  For example, “TINT TONE” for hair coloring, “SNO-RAKE” for a snow removal tool, or “NOBURST” for liquid antifreeze.  These marks are suggestive because it requires some imagination or thought to reach a conclusion as to the nature of those goods. Suggestive marks are stronger marks and are considered acceptable as trademarks.

The strongest trademarks are fanciful and arbitrary marks.  Arbitrary marks are words that have no association with the underlying goods or services.  For example, the use of “APPLE” for a family of  computers when clearly fruit has no relation to electronic equipment.  Fanciful marks are invented words and only have meaning with respect to the product with which they are associated. For example, “PEPSI” for a soft drink or “EXXON” for petroleum products.

The stronger marks that are suggestive, arbitrary or fanciful will offer the best trademark protection. Of course, for every mark that you are considering you should conduct a prior search to see whether anyone is already using that mark.  Find out more about trademark searches in next week’s post.