Dressed For Success – How to Use Trade Dress To Protect Your Brand – Klinck LLC

Dressed For Success – How to Use Trade Dress To Protect Your Brand

We’ve written quite a bit about trademarks, which generally involve words, names, or symbols on your product, but what about the packaging or total look of your product?  Can how you present your product be protected under intellectual property laws as well?  Yes, it can.

Trade dress law protects your product’s overall image and appearance.  This includes the product’s packaging, presentation, and shape and design – hence the “dress.”  Think about a bottled beverage you last purchased at a store:  its size, shape, color, texture, and graphics are features that may be protected.   The shape of a Coca-Cola bottle is a popular (and successful) example of trade dress.  Looking merely at the bottle’s shape, a consumer can identify that that product is from the Coca-Cola Company.

This area of intellectual property law serves the same purpose as a trademark in that it distinguishes your product from others (i.e., prevents the likelihood of consumer confusion).  It tells consumers the source or origin of the product.   Like a trademark, trade dress must be distinctive.  It has to identify the product’s particular source.  Check out our blog post Trademark Basics For Entrepreneurs and Small Businesses for a refresher on categories of distinctiveness.

In addition to being distinctive, trade dress must also be non-functional.  In other words, the feature must not be essential to the product’s use or purpose or affect its cost or quality.  After all, like a trademark, trade dress is not intended to protect functionality (patents) or expression (copyrights) – it is to protect consumers and legitimate competition.

You can apply registration with the U.S. Patent and Trademark Office (“PTO”).  The process is similar to that for trademarks.   There is a Principal Register for strong trade dress (those that are inherently distinctive or have secondary meaning) and a Supplemental Register for weaker ones.  The examining attorney will determine whether your proposed trade dress is distinctive and non-functional.  The attorney can refuse to register your trade dress on either or both grounds, although refusal usually is based on the latter.

Under the federal Lanham Act, a registered trade dress comes with significant legal benefits such as those that come with a registered trademark.  Remedies include monetary relief (e.g., damages the owner experienced given the infringement, the accused party’s profits based on the infringement, the cost of the lawsuit, attorney’s fees) and equitable relief (e.g., an injunction to have the accused stop using its infringing design).

Just like trademarks, trade dress can be a vital tool for your business especially when first starting out.  Make sure to consider this form of protection in your intellectual property management plan.  The earlier you plan on creating a distinctive and non-functional trade dress, whether in the form of product packaging or product design, the earlier you can start obtaining exposure for your product and gaining consumer recognition.

About the Author

I’m a lawyer and entrepreneur based in Washington, DC. My legal practice focuses on helping innovators, entrepreneurs, and startups navigate intellectual property issues. My books about IP Law are available for sale on Amazon.

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