Trade Dress

Trade dress is a brand’s distinctive aesthetic design features (package or product design). To be protectable, trade dress must be nonfunctional and distinctive (or have acquired a “secondary meaning,” that is, source-identifying characteristics). The more nonfunctional differentiating features one can build into a product and its packaging, the more likely it will be that infringement can be proved.

It is easy for a competitor to say “I developed this very similar product independently” when it is fairly generic (such as a birthday card with a floral design that says simply “happy birthday”). It is more difficult to convince a courtroom of that claim when your product has many of the same random, nonfunctional elements that a competitor’s product has (e.g., a line of greeting cards of an unusual size that open from the top with rounded edges printed on green-tinted recycled paper, all at 99 cents, and all addressing the theme of friendship). For a competitor to develop a similar line of cards with similar features independently is highly unlikely. It points to copying.

To protect its trademarks and trade dress, a company must constantly be watchful for and strenuously defend against infringement. For instance, Apple has filed several lawsuits to defend its iPhone against knockoffs, winning a major legal battle against Samsung in summer 2013. Trademark rights can be enforced through lawsuits at a state or federal level. Proving infringement requires proof that the infringer had second use of the mark and that the second user’s mark is confusingly similar to the senior party’s mark.

When launching brand extensions, companies should be careful to maintain the same brand identity and trade dress in those new items. If the brand’s name and logo are the only common elements across all of a brand’s products, it weakens the power of the other trade dress elements to differentiate and legally protect the mark.

(c) 2015 Brad VanAuken. Excerpted from Brand Aid, second edition. Order your copy here now.