Image Courtesy: Dominic Lockyer @ Flickr

When we think about intellectual property (IP) we think about copyrights, trademarks, or patents. Trade dress is never the first thing that pops up during heated IP law debates (yes, at Traklight we have heated IP law debates). Trade dress is often overlooked but worth understanding. It is the protection afforded for a particular form of packaging used by a company that attains secondary meaning.

But a form of packaging that has been used by a company in the industry for a number of years alone cannot be protected under trade dress. Some uniqueness must be present and the packaging must not be functional. Furthermore, the packaging, coloring, so on and so forth, must confuse and mislead a consumer. Under Section 43(a) of the Lanham Act, trade dress is protected even if it is not formally registered. Although it is distinguishable from trademarks, service marks and trade names, a number of companies opt to trademark their trade dress, such as Coca-Cola, as it provides a number of additional benefits.

The shape of Ferrari cars, Dom Perignon champagne bottles, and Hershey’s Reese’s Cups are just a few examples of trade dress. Speaking of Hershey’s Reese’s Cups, a couple of months ago Hershey sued a Seattle-based medical marijuana dispensary for selling ‘Reefer Cups’ that were packaged deceptively similar to the now famous peanut butter cups.

Trade dress and design patents are two forms of IP protection that may run concurrently. Design patents protect the ornamental appearance of a product rather than its utilitarian purpose. The main difference lies in the fact that trade dress protects the packaging while design patent protects the product’s design, which in some cases overlap. In such cases, one must consider which protection works best for them. Trademarking a trade dress takes months and costs less than patent applications, but acquiring secondary meaning in the market takes years and a lot of money spent on advertising. On the other hand, design patent applications cost more and take longer to be granted from date of application but do not require creating market presence and can be filed as soon as the product is created. Trade dress protection is perpetual (as long as it’s continually in use) while design patents expire in 14 years.

Trade dress is protectable under unfair competition laws if it satisfies three conditions. First, it must be non-functional. Second, it must be distinctive, either due to the fact that it is unique or because the dress has acquired secondary meaning in the marketplace. And third, there should be a likelihood of confusion between the packaging of products of the parties involved in the dispute.

The remedies for trade dress infringement are covered under Section 34 and 35 of the Lanham Act. Similar to most IP rights, the remedies include preliminary or permanent injunctions, actual damages or defendant’s profits. Although not necessary, in some instances the courts also award treble damages, statutory damages, and attorney’s fees.

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