Trade Dress

Protecting Trade Dress

Which features of this product can be protected as trademarks? Not only is the name GOLDFISH¨ a registered trademark, but so is the shape of the cracker. Why? Because of the product's "trade dress."

"Trade dress" is a visual image or appearance of a product. Simply put, it refers to the manner by which a product is "dressed up" to go to market. "Trade dress" includes the shape of the product (or its container), as well as any of the other identifying elements making up the total visual image presented to the customer.

Through a series of cases - most notably Wal-Mart Stores v. Samara Brothers -the U.S. Supreme Court has clarified the rules for protecting trade dress:

  • No trade-dress feature is protectable unless it is aesthetic. If it is strictly utilitarian in nature or driven by the function of the product (like the black that comes from the oxidation during a manufacturing process), then the trade dress is not protectable.
  • If the trade dress is not functional, it is protectable as a trademark provided:
    • the feature is "inherently distinctive" (i.e., immediately recognizable as an indicator of the product's source); or
    • the feature has acquired "secondary meaning" (i.e., through extensive advertising and usage the public has come to associate that the feature indicates a single, albeit anonymous, source for the product).

Very few product features are "inherently distinctive." Most litigants must prove that secondary meaning (customer recognition) exists for the features they're seeking to protect, such as color and product shapes.

To prove that, surveys are conducted to try to approximate the marketplace and establish that an appreciable percentage (typically, 30% or greater) of potential or existing customers associate a specific feature with a single source. As one might suspect, surveys are extremely difficult to craft and conduct so that they pass muster.

Usually, it takes about 250-500 people (located throughout a product's sales area) for a judge to feel comfortable that a sufficient "universe" has been sampled. Each person is first screened to determine his/her familiarity with that type of product.

For example, have they ever bought this type of product before? Within the last two years? If both answers are yes, the person qualifies to take the full survey.

During the full survey, the interviewee may be shown the product, along with two or three other similar products. The interviewee may be asked if he/she associates any features of those products with a single company. If the majority pinpoints a feature with a single source, courts will typically find that feature to be protectable as a "trade-dress" trademark.

The drawback with surveys is that they get picked apart by the infringer's attorneys and are quite costly ($40,000-$90,000). Sample successful surveys, commissioned by Holland & Bonzagni, are available upon request.

It is prudent to seek a federal trademark registration for trade dress prior to the trade dress being copied. Usually, the Trademark Office can be convinced that the registration is warranted without a survey. Unlike the courts, the Trademark Office will normally accept detailed affidavits of long-term usage, including promotional literature (preferably "look-for advertising" that highlights the trade dress), a history of sales, and annual advertising expenses (for that product) to establish "secondary meaning."

With trade-dress registrations in hand, IP counsel are often able to convince copiers to stop, before proceeding with litigation. If litigation occurs, judges often accept the Trademark Office's prior ruling and grant a preliminary injunction prohibiting the copier's product, without a survey.