TRADE DRESS - THE FORGOTTEN TRADEMARK RIGHT

by

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

a. Distinctiveness

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.

b. Non-functionality

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 pump).

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. 1992).

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.

b. Fuddruckers

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" bakery area.

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 defendant's courses.

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 configuration context.

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. 1997).

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 Cir. 1991).

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).

4. Color

a. Qualitex

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 Lanham Act).

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.

7. Smells

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.

8. Sounds

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 clock).

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.

III. Conclusion

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 clothing designers.

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.