TRADE DRESS - THE FORGOTTEN TRADEMARK RIGHT
Robert B. Golden*
I. Defining Trade Dress
To understand how to protect trade dress rights, and why these rights are often forgotten
or overlooked by clients and practitioners alike, a clear definition of the term is essential.
A. The Traditional Approach
Historically, trade dress "referred only to the manner in which a product was
'dressed up' to go to market with a label, package display card and similarpackage elements. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d
27, 31 (2d Cir. 1992).
B. The Modern View
The modern view of trade dress is much more expansive than the traditional view.
Now, trade dress is defined as a product's "total image" or "overall appearance"
and "may include features such as size, shape, color or color combinations,
texture, graphics or even certain sales techniques." John H. Harland Co. v. Clarke
Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983), cited with approval in Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992).
C. The Bases and Standards for Trade Dress Protection
1. Bases For Protection
a. "Common Law" Rights
If the trade dress is unregistered, the basis for protection is section
43(a) of the Lanham Act (15 U.S.C. §1125(a)), which provides
protection for "any word, term, name, symbol, or device, or any
combination thereof" used "on or in connection with any goods or
services, or any container for goods."
b. Registration Rights
Based upon the Lanham Act's definition of a trademark, "any
word, name, symbol, or device, or any combination thereof" used
"to identify and distinguish [ ] goods or services, including a
unique product, from those manufactured or sold by others . . ."
(15 U.S.C. § 1127), a trade dress can be registered on either the
principal or supplemental register.
2. Standards for Obtaining Protection
Like unregistered trademarks, an unregistered trade dress is
entitled to protection if it is distinctive, either inherently or through
an acquired distinctiveness (or secondary meaning). If an
unregistered trade dress is inherently distinctive, there is no need
to prove that the dress has a secondary meaning; if the dress is
descriptive, it is protectable upon a showing of secondary
meaning; and if it is generic, it is not entitled to protection. Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753
(1992). As discussed in more detail below, depending upon the
nature of the trade dress for which protection is sought, and the
jurisdiction in which protection is sought, the tests for determining
inherent distinctiveness vary greatly.
In addition to being distinctive, in order to be entitled to
protection, the trade dress cannot be functional. In the trade
dress context, to be functional, a feature must be one that "is
essential to the use or purpose of the article or [that] affects the
cost or quality of the article." Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844 (1982). "A design feature of a
particular article is 'essential' only if the feature is dictated by the
function to be performed; a feature that merely accommodates a
useful function is not enough..." Warner Brothers, Inc. v. Gay
Toys, Inc.,724 F.2d 327, 331 (2d Cir. 1983). "[T]he fact that a
design feature performs a function does not make it essential to
the performance of that function; it is instead the absence of
alternative constructions performing the same function that renders
the feature functional." Brandir International, Inc. v. Cascade
Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987).
Depending upon the circuit in which a trade dress dispute is
litigated, non-functionality may be part of the plaintiff's prima
facie case, e.g., Merchant & Evans v. Roosevelt Bldg. Products,
963 F.2d 628, 633 (3rd Cir. 1991); HWE, Inc. v. JB Research,
Inc., 993 F.2d 694, 696 (9th Cir. 1993), or functionality may be
an affirmative defense. E.g., LeSportsac Inc. v. K Mart Corp.,
754 F.2d 71, 76 (2d Cir. 1985), citing Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844 (1982) (White, J.,
concurring, "functionality is a defense to a suit under § 43(a) of
Lanham Act"); Computer Care v. Service Systems Enterprises,
Inc., 982 F.2d 1063, 1068 (7th Cir. 1992).
c. Registration Standards
The statutory requirements for registration of a trade dress are the
same as those for traditional word or logo marks. 15 U.S.C. §§
1052 and 1091. As a practical matter, practitioners should
expect descriptiveness rejections to all applications for trade
dress. Functionality rejections are also common. The costs
associated with overcoming these rejections, by proving
secondary meaning (for a principal register registration) and non-functionality (typically by evidencing alternative designs), can be
significant and therefore, must be weighed against the benefits of
obtaining the regsitration. See generally, In re Hudson News Co.,
39 U.S.P.Q.2d 1915 (T.T.A.B. 1996) (color blue for retail news
stand services); In re Bio-Medicus Inc., 31 U.S.P.Q.2d 1254
(T.T.A.B. 1994) (generally conical configuration for a blood
II. WHY TRADE DRESS RIGHTS ARE OFTEN FORGOTTEN
A. Trade Dress Must Be Viewed As a Whole
Based on the accepted definition of trade dress (the total image or overall
appearance), when characterizing a particular dress or seeking to protect it, all of
the claimed features must be viewed as a whole. "Trade dress is a complex
composite of features" and "[t]he law of unfair competition in respect to trade
dress requires that all of the features be considered together, not separately."
American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3rd
Cir. 1986), quoting S K & F Co. v. Premo Pharmaceutical Labs., 481 F.Supp.
1184, 1187 (D.N.J. 1979), aff'd, 625 F.2d 1055 (3rd Cir. 1980).
Thus, a party may claim protection for a unique combination of features, even
though all of the features, individually, may have been used previously by others.
As the Second Circuit explained: "One could no more deny protection to a trade
dress for using commonly used elements than one could deny protection to a
trademark because it consisted of commonly used letters of the alphabet."
Paddington Corp. v. Attiki Importers & Distrib., 996 F.2d 577, 584 (2d Cir.
1993) (finding inherently distinctive the "simple, even stark" overall appearance of
an ouzo bottle).
Similarly, a trade dress may be protectable even if it incorporates elements that are
generic or descriptive. "Where the plaintiff's overall trade dress is distinctive, the
fact that it uses descriptive (or generic) elements does not render it unprotectable."
Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063 (7th Cir.
Since packaging and products are often created by borrowing successful features
from competitors, when reviewing intellectual property assets, many clients fail to
realize that their unique combination of features may be protectable. The careful
practitioner should thoroughly review the client's design process to determine just
how the product or packaging was created. Knowledge regarding the industry
generally, and the client's closest competitors particularly, is vital to analyzing a
trade dress, because what may be inherently distinctive in one industry, may be
generic in another. "For example, packaging lime-flavored soda in green twelve-ounce cans is so common in the soft drink industry that such packaging probably is not inherently distinctive, although, without the industry practice green cans would be either suggestive or arbitrary and therefore inherently distinctive." Paddington Corp. v. Attiki Importers & Distrib., 996 F.2d at 584.
In the context of litigation, a trade dress plaintiff must be wary of a defense based
upon the segregation of the dress features and andattack on the features
individually. As the Sixth Circuit explained many years ago:
It will not do for a subsequent maker of a product . . . to segregate details of the earlier trade package and dress, and then, on the theory that the first user does not possess an exclusive right to them separately, appropriate them in whole or substantial part by piecemeal.
O&W Thum Co. v. Dickenson, 245 F. 609 (6th Cir. 1917), cert. denied, 246
U.S. 664 (1918).
B. Stretching the Bounds of Trade Dress Protection
Based on the extremely broad definition of trade dress, the concept has been used
to protect a wide assortment of assets, which, at first blush, would seem to be
incapable of protection. Trade dress theories have been used to protect restaurant
"atmospheres," a "signature" golf hole, the appearance (or configuration) of a
variety of products, colors, the presentation style of a trade show, a comedian's
style, smells, and even sounds.
1. Restaurant Atmospheres
a. Taco Cabana
In what is the most important trade dress case to date, (1) the
Supreme Court, in Two Pesos, Inc. v. Taco Cabana, Inc. (505
U.S. 763, 112 S.Ct. 2753(1992)), held protectable the trade
dress of Taco Cabana's restaurant, described as:
a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead arage doors, The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.
Two Pesos' infringing trade dress, was described by the Supreme Court only as "very similar" to Taco Cabana's trade dress.
The Ninth Circuit, in Fuddruckers, Inc. v. Doc's B.R. Others,
Inc., agreed with Fuddruckers' assertion that the "restaurant's
decor, menu, layout, and style" was a protectable trade dress.
The features for which Fuddruckers sought protection included
food preparation areas which are visible to its customers, the
storage of bulk food items in the main dining area, "ubiquitous"
two-by-four inch white tiles on the walls, the bar and the counters,
neon, mirrors, and brown directors' chairs, and a "Mother
Fuddruckers" bakery area.
Doc's interiors incorporated many of the Fuddruckers features,
including: exposed food preparation areas, the ubiquitous white
tiles, neon, mirrors, directors' chairs, and a "Mother Other's"
2. "Signature" Golf Holes
In Pebble Beach Co. v. Tour 18 I, Ltd., 942 F.Supp. 1513 (S.D.Tex.
1996), the owners of the Pebble Beach, Pinehurst No. 2, and Harbour
Town (at Sea Pines) golf courses brought suit against Tour 18 for
operating two public golf courses which comprise copies of holes from
famous golf courses around the country. The plaintiffs alleged infringement
of their service marks, as well as infringement of the trade dress residing
in their respective, individual holes that had been duplicated on the
The Court analyzed the inherent distinctiveness of Pebble Beach Hole No.
14, Pinehurst Hole 3, and Harbour Town No.18, the "Lighthouse Hole."
Trade dress protection was denied for Pebble Beach No.14 and Pinehurst
No. 2 because, while the courses were famous, the individual holes copied
by Tour 18 were not the courses' signature holes, and were not so
"arbitrary and distinctive as compared to other golf holes such that the
design automatically serves as identifiers of source."
Harbour Town No. 18, however, "because of its association with and
incorporation of the lighthouse, contains arbitrary source- identifying
features that make its design inherently distinctive." Based upon this
finding, and an ultimate finding of a likelihood of confusion, Tour 18 was
ordered to remove its replica of the lighthouse from their golf courses (but
was not required to alter the playable surface of the holes).
3. Product Configuration
The law regarding the protection of a product's configuration (the shape
and appearance of the product itself rather than its packaging) is currently
undergoing great changes, and the standards used to determine if a
configuration is entitled to protection vary greatly from circuit to circuit.
Accordingly, anyone seeking to protect (or defending against a claim
based upon) a configuration must pay particular attention to the venue
chosen for an infringement suit.
The Eight Circuit feels constrained to apply the Abercrombie categories
endorsed by the Supreme Court in Two Pesos to determine whether the
configuration is entitled to protection, by placing the configuration in one
of five categories of distinctiveness: generic, descriptive, suggestive,
arbitrary, or fanciful. Configurations falling in the latter three categories
are considered inherently distinctive and thus entitled to protection, while
descriptive configurations are entitled to protection only upon a showing
of secondary meaning. Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d
780 (8th Cir. 1995); Abercrombie & Fitch Co. v. Hunting World, Inc.
537 F.2d 4 (2d Cir. 1978). To the Eight Circuit, Two Pesos does not
permit distinctions, and thus differing tests, among trade dress types.
The Third Circuit has expressly rejected the use of the Abercrombie
categories in the context of product configuration, and has instead
fashioned an entirely new test for determining when a configuration is
inherently distinctive, which asks if the configuration is: "unusual and
memorable;" conceptually separable from the product; and serving
primarily as a designator of the source of the product. The basis for the
rejection of the Abercrombie categories is two-fold. First, the categories
do not translate well to the context of product configurations. "Does the
shape of a chair seat 'suggest' a chair seat? Does it 'describe' a chair
seat? Or is it just a chair seat? No matter how beautifully designed, an
industrial product is what it is." Krueger International Inc. v. Nightingale
Inc., 40 U.S.P.Q.2d 1334, 1341 (S.D.N.Y. 1996). And second, the
restaurant atmosphere at issue in Two Pesos is more similar to packaging
than to a product configuration, and thus not controlling in the
The Second Circuit has chosen a middle ground, by acknowledging that
the Abercrombie categories do not translate well to the context of product
configuration cases, but refusing to go as far as the Third Circuit because
parts of that test are "not rooted in the language of the Lanham Act."
Instead, the Second Circuit asks only if the configuration is "likely to serve
primarily as a designator of origin." e.g., Knitwaves, Inc. v. Lollytogs
Ltd., 71 F.3d 996 (2d Cir. 1995).
The Fifth Circuit very recently declined to take a position on the issue.
Sunbeam Products, Inc. v. The West Bend Co., 44 U.S.P.Q. 2d (5th Cir.
Registration for product configurations may also be obtained. Some
examples of configuration registrations are reproduced below at pages 15
-17. Such registrations are extremely valuable tools in the context of
litigation because of the evidentiary presumptions of ownership and validity
they create they create.
a. The Ferrari Daytona Spyder and Testarosa
Though using pre-Two Pesos language requiring a showing of
secondary meaning, the overall appearance of the Ferrari cars
was protected from copying, by a kit-car manufacturer, based, in
part, upon the finding that the designs were "instantly identifiable"
as Ferarris. [Ferrari] Esercizio v. Roberts, 944 F.2d 1235 (6th
b. "Tizio" Halogen Desk Lamps
The defendant was preliminarily enjoined from copying the Tizio
desk lamp, which is included in the permanent collection of
designs at the Museum of Modern Art. Artemide SpA v.
Grandlite Design and Manufacturing Co. Ltd., 4 U.S.P.Q. 2d
1915 (S.D.N.Y. 1987).
c. Calloway "Big Bertha" Golf Clubs
In Calloway Golf Co. v. Golf Clean Inc., 39 U.S.P.Q. 2d 1737
(M.D.Fla. 1995), Calloway successfully obtained a preliminary
injunction against the sale of defendant's "Big Bursa" and "Big
Brother" clubs. Based upon the inherent distinctiveness and non-functionality of the trade dress in the Big Bertha clubs, which
includes individual elements that are non-distinctive and functional,
the defendant was enjoined from selling its look-alike clubs.
d. The Sunbeam "American Classic Mixmaster"
The trade dress in the Sunbeam American Classic Mixmaster,
which includes a torpedo-shaped housing, a handle which
attaches to the front of the housing and arches over the housing,
and a tear-drop shaped face plate on the front of the housing, was
protected from copying by West Bend. The court had the
opportunity to join the configuration protection fray, but declined,
instead basing its decision upon a finding that the Mixmaster had
acquired distinctiveness. Sunbeam Products Inc. v. West Bend
Co., 44 U.S.P.Q. 2d 1161 (5th Cir. 1997).
The Supreme Court, in Qualitex Co. v. Jacobson Products, 115
S. Ct. 1300 (1995), resolved a split among the circuit courts, and
determined that a single color can be protected (and registered)
as a trademark. At issue in Qualitex was the green-gold color of
the plaintiff's dry cleaning press pads.
b. Think Pink
Another notable example of color successfully being used as a
trademark is Owens-Corning's use of the color pink in connection
with its Fiberglas insulation products. The color pink serves
absolutely no functional purpose, and, in fact, increases the
manufacturing costs, but effectively identifies the source of
Owens-Corning's goods. Owens-Corning has obtained a
number of registrations for the color pink on its products. For a
sample Owns-Corning "pink" registration, and other color
registrations, see pages 18 - 20, below.
5. Trade Shows
Trade dress rights have been recognized in the overall style of trade
shows. For example, the defendant in Toy Manufacturers v. Helmsley-Spear, 960 F.Supp 673 (S.D.N.Y. 1997), was enjoined from conducting
a trade show, in competition with the annual TOY FAIR, in such a way
as to mislead the public as to the sponsorship of the two shows. The
protectable features of the TOY FAIR included "the name, the date, the
location and the registration process." See also Heller v. Lexton-Ancira
Real Estate Fund, Ltd, 809 P.2d 1016 (Colo.Ct. App. 1990), rev'd on
other grounds, 826 P.2d 819 (Colo. 1992) (decided under the Colorado
Consumer Protection Act, with provisions equivalent to § 43(a) of the
6. You Might Be A Redneck
Jeff Foxworthy, best known for his "redneck" humor, successfully
enjoined the sale of t-shirts bearing "you might be a redneck" jokes.
Foxworthy v. Custom Tees, Inc., 879 F.Supp. 1200 (N.D.Ga. 1995).
The court determined that "you might be a redneck" had become
Foxworthy's "hook or catch phrase" by which he came to be known, and
thus was inherently distinctive.
The Foxworthy court found Carson v. Here's Johnny Portable Toilets,
Inc., 498 F.Supp 71 (E.D.Mich. 1980), vacated in part on other grounds,
698 F.2d 831 (6th Cir. 1983), to be "significant." In Here's Johnny, the
court found that phrase to be identified with Johnny Carson, and thus
protectable. Accordingly, the court enjoined defendant's use of the
phrase in connection with its portable toilet business.
In In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990), the Trademark
Trial and Appeal Board reversed the Examining Attorney's final rejection,
and allowed registration for the "high impact, fresh, floral fragrance
reminiscent of plumeria blossoms" as applied to sewing thread and yarn.
Sounds, provided they serve the fundamental trademark purpose of
identifying a single source of goods or services, can be protected, either
with common law rights or through registration. The most notable
example of a sound trademark is probably the NBC three tone chime, for
which a registration was granted. For a discussion of sound trademarks
generally, see In re General Electric Broadcasting Co. Inc., 199 U.S.P.Q.
560 (T.T.A.B. 1978) (granting registration for the sound of a ship's bell
C. Trade Dress Rights and Other Forms of Protection
Trade dress protection may also be available in connection with products,
packaging, or business forms and stationery which are worthy of design patent,
utility patent or copyright protection.
If these other forms of protection have expired or were never obtained, trade
dress rights may nonetheless remain available. Like protecting configurations, this
area of the law, especially with respect to patents, is constantly evolving and varies
from circuit to circuit.
1. Trade Dress and Design Patents
It is possible to simultaneously protect a design with both trade dress
rights and a design patent. An example is attached at pages 21 - 22.
Similarly, trade dress rights can be used to protect a design after a design
patent has expired. This is possible because patent and trade mark laws
have different origins and purposes.
As Judge Sottomayor, of the Southern District of New York, explained
in an extremely clear and well-written opinion:
When a design patent expires, the design
becomes copyable. It may not,
however, be copied in such a way that
customers are deceived about what they
are buying. 'Federal trademark laws,
independent in origin from design patent
law, have the dual purpose of protecting
both the trademark owner and the public
from confusion, mistake and deception.'
Krueger International Inc. v. Nightingale Inc., 40 U.S.P.Q.2d 1334, 1341
(S.D.N.Y. 1996) (overall look of a stackable plastic chair protectable
trade dress), citing In re Mogen David Wine Corp., 372 F.2d 539, 543
(C.C.P.A. 1967) (Smith, J., concurring).
The existence of a design patent may either help or hurt the assertion of
trade dress rights. If, during the term of the patent monopoly, the design
so dominates the market, it may become generic of the goods, or
considered functional, and thus trade dress protection will not be available.
See e.g., Kellog Co. v. National Biscuit Co., 305 U.S. 111 (1938)
(pillow shape of shredded wheat).
Design patents, however, are only granted for non-functional designs. 35
U.S.C. § 171; In re Morton-Norwich Prods., Inc., 671 F.2d 1332
(C.C.P.A. 1982). Thus, a design patent is some evidence (varying from
circuit to circuit and seemingly, from judge to judge) of non-functionality
in the trade dress context.
2. Trade Dress and Utility Patents
In the Tenth Circuit, it has recently become more difficult to assert trade
dress rights in a product that is or was covered by a utility patent.
Vornado Air Circulation Sys. Inc. v. Duracraft Corp., 58 F.3d 1498
(10th Cir. 1995)(trade dress protection sought for the spiral grill design of
a fan). As discussed in Vornado, the difficulty in using trade dress laws
to protect a product that had been covered by a utility patent (or no patent
at all) is the theory that absent patent protection, designs are free to copy.
See e.g., Sears, Roebuck & Co v. Stiffel Co., 376 U.S. 225 (1964);
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964); Bonito
Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141 (1989).
Acknowledging that "distinguishing Sears, Compco and/or Bonito Boats
has become a veritable jurisprudential art form in recent years," the Tenth
Circuit not only upheld the principles of those cases, but added a new
requirement. Now, "where a disputed product configuration is part of a
claim in a utility patent, and the configuration is a described, significant
inventive aspect of the invention, see 35 U.S.C. § 112, so that without it
the invention could not fairly be said to be the same invention, patent laws
prevent its protection as trade dress, even if the configuration is
nonfunctional." This last, highlighted standard is a departure from
previous holdings, which allowed protection for the non-functional
configuration of products with patented inventive aspects.
3. Trade Dress and Copyright
As illustrated in Computer Care v. Service Systems Enterprises, 982 F.2d
1063 (7th Cir. 1992), trade dress rights can be used to protect written
materials, such as Computer Care's sales brochure, reminder letters, and
monthly reports used in connection with auto service reminder letter
business. Service System, which had opened in competition with
Computer Care, was enjoined from using brochures, letters, and reports
which were confusingly similar to those of the plaintiff. The brochures,
letters and reports at issue were reproduced by the Court as an appendix,
and are included here as pages 23 - 25.
The pendulum appears to be swinging back from the apogee of expansive trade
dress protection. Courts are increasingly placing hurdles in front of trade dress
plaintiffs seeking to protect non-traditional trade dress formats. This trend is most
evident in the product-configuration context and where utility patent rights and
trade dress rights converge.
Nonetheless, trade dress rights remain a powerful tool for plaintiffs. Though never
put down in words, many decisions seem to be based on fundamental notions of
right and wrong. Using trade dress theories, courts can protect against a wide
variety of unfair practices. Those confronted by unscrupulous competitors with a
penchant for copying products, atmospheres, or selling styles, which fall outside
the scope of patent, copyright, or traditional trademark protection, would be wise
not to forget their trade dress rights.
*Robert Golden is head of the Litigation Department at Lackenbach Siegel.
Mr. Golden specializes in litigating trademark and trade dress cases, and prosecuting trade
dress and color trademark applications for a diverse client base that includes everything
from hand-tool manufactures to cosmetic companies, and some the world's leading
He is the author of numerous trademark and trade dress articles, including "Are the
Circuits Adrift From Major Trade Dress Test?" (The National Law Journal, May 12,
1997) and "Global Color Blindness to Trademarks is Dying" (The National Law Journal,
June 5, 1995) and is a contributing author to "Protecting Designs by Trademarks,
Copyrights, and Design Patents" in 1 Intellectual Property Counseling and Litigation,
(Horwitz and Horwitz, eds., Matthew Bender & Co. 1996).
1. The importance of Two Pesos comes not from its protection of the restaurant atmosphere, a concept that
previously had been found protectable by lower courts, but from its resolution of a conflict among the circuit courts
regarding the standards of protectability of an unregistered trade dress under § 43(a) of the Lanham Act. The Court
concluded that if the dress is inherently distinctive, there is no need to prove secondary meaning.