CHAPTER 3 - § 3.01

• Jurisdiction: United States

§ 3.01 SCOPE

Between the Haig decision of 1958 and the Two Pesos decision of 1992,¹ trade dress was understood to refer to the "total image of a product," including "characteristics of size, shape, color or color combinations, texture or graphics."² During this time period, trade dress went from protecting labels to protecting the overall look and appearance of a product, including product packaging, product configuration, and color. Most of the enforcement efforts in this time period were conducted under the original (1946) version of the Lanham Act and the subsequent clarifying amendments of 1988 (which officially accorded statutory protection to unregistered trade dress).

For unregistered trade dress, section 43(a) of the Lanham Act provides the basis for all enforcement actions against

[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.³

Where trade dress is registered on the Principal Register, section 32 of the Lanham Act states:

Any person who shall, without the consent of the registrant—(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.⁴

Basically, a plaintiff must allege "that a competitor's product design or packaging [was] likely to confuse consumers as to the product source."⁵ With regard to claims for infringement of unregistered trade dress, the plaintiff generally bears the burden of proving three things:

1. That the trade dress as a whole is non-functional.⁶

2. That the trade dress has acquired a secondary meaning by providing evidence showing that consumers identified the visual characteristics of the product with its source.⁷

3. That a likelihood of confusion

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