CHAPTER 10 - § 10.06

• Jurisdiction: United States

§ 10.06 CORRECTIVE ADVERTISING

As discussed above, courts have the authority to issue injunctions requiring defendants to take affirmative measures to undo or correct the harm or confusion caused by their trade dress infringement.¹²² Perhaps the most common such measure requires defendants to issue corrective notices and/or advertisements to affected consumers, or to the public at large.¹²³ If, for example, a defendant's conduct implies some sort of connection to a trade dress plaintiff or to its products or services, the plaintiff may seek an injunction requiring the defendant to advertise a disclaimer that disavows any connection between the parties.¹²⁴ Where a defendant has issued misleading or deceptive advertisements, the defendant may also be required to advertise corrections to the misleading advertisements¹²⁵ and to send corrective information directly to those consumers who had previously received the defendant's misleading advertisements.¹²⁶

In instances where the trade dress infringement involves copying structural designs or appearances (e.g., copying McDonald's Golden Arches), a trade dress plaintiff may ask a court to order physical or structural changes to the defendant's property (as an alternative or in addition to corrective advertising) to remedy the trade dress infringement.¹²⁷ For example, one court ordered a defendant to remove a certain lighthouse structure (considered to infringe the plaintiff's trade dress) from its two golf courses,¹²⁸ while another defendant was ordered to modify the structural appearance of its restaurant and to issue corrective advertisements acknowledging that the defendant had unfairly copied the plaintiff's trade dress.¹²⁹

In addition to seeking an injunction requiring a defendant to undertake affirmative corrective advertising measures, a trade dress plaintiff may also request payment or reimbursement for its own corrective advertising expenses.¹³⁰ Indeed, where the plaintiff is required to engage in corrective advertising in order to mitigate or counteract the defendant's infringement, the plaintiff may recover its actual advertising expenditures.¹³¹ In cases where a plaintiff's actual corrective advertising expenses are unavailable or difficult to ascertain, or where the plaintiff has not yet initiated a corrective advertising campaign, a court may nonetheless award estimated corrective advertising expenses to the plaintiff. One methodology involves awarding 25 percent of the defendant's advertising...