CHAPTER 7 - § 7.02

• Jurisdiction: United States

§ 7.02 TRADE DRESS RIGHTS

As discussed in earlier chapters, trade dress seeks to protect the value or "goodwill" associated with the overall look or impression created by a product or its packaging.¹ In many respects, trade dress's closest intellectual property kin is trademark law. The difference between trade dress and trademarks, however, lies in the means by which the public is apprised of the owner's rights. Indeed, a trademark typically consists of one or more discrete words, images, numbers, and/or other symbols affixed to a product to designate its origin. Trade dress, on the other hand, is much broader, encompassing the overall image or impression created by a product or its packaging. For example, some common trademarks may include the word Coke, the NBC peacock logo, or the Nike swoosh, whereas the McDonald's golden arches, the shape of a Volkswagen Beetle, and the Coke bottle itself are all examples of trade dress.

Unregistered or "common law" trade dress is entitled to protection under section 43(a) of the Lanham Act if it is inherently distinctive (in the case of product packaging or restaurant décor, for example)² or, in the case of a product design, if it has acquired distinctiveness (or secondary meaning—"so that, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself")³ through use over time. In addition to being distinctive, unregistered trade dress must be non-functional.⁴ In the context of trade dress protection, non-functional trade dress features are those that are not "essential" to the use or purpose of the particular product or package in question.⁵

Trade dress may be registered with the U.S. Patent and Trademark Office (USPTO) on the Principal or Supplemental Register upon a showing of distinctiveness and non-functionality and by complying with other statutory requirements.⁶ Although registration is not required for legal protection, registration provides evidence of the validity of the trade dress registration, of the registrant's ownership in the trade dress, and of the owner's exclusive right to use the registered trade dress.⁷ In addition, registration on the Principal Register establishes "constructive use" of the trade dress nationwide, which gives the trade dress owner the ability to prevent all others from using or registering the registered trade dress in the United States.⁸

Once trade dress protection is established, whether...