OMG! The Complete Guide to Trade Dress is Here

Can you look at a hot chocolate mug and identify whether or not it is from Starbucks? Yes; right? Congrats, you just learned what trade dress in layman’s terms means. It is the various elements of a brand that differentiates it from others.

WIPO considers trade dress along with symbols, sounds, visual images, etc. to be the key elements that make a brand.

What is the Meaning of Trade Dress?

Trade dress is a domain under the term “Trademark” used to identify and differentiate the source of goods and services. Some famous examples of trade dress are: the classic Starbucks Coffee Mug or Domino’s packaging, their aesthetics are their biggest identifiers, thus known as trade dress. Both trademark and trade dress are important forms of intellectual property.

Trade dress may include all or a few of the following elements:

  • Design of the material
  • The shape of the material
  • Size of the package
  • Color and color combinations of the packaging
  • Textures and graphics of the packaging

A trade dress is a collection of functional as well as non-functional features that are exclusive to the trademark owner and cannot be confused with the layouts of other companies. Any distinguishing feature, such as a distinctive shape or ornamental design, might be a nonfunctional element.  

How Long is Trade Dress Protected?

Trade dress registrations in the USA have a life of 10 years. After expiration, you can renew it again for 10 years. Also, you will be paying USD 670 on average for trade dress registration in the USA. Moreover, the costs of registration vary from country to country.

Did You Know How Trademark Can Take Your Brand to New Heights of Success?

What Are Examples of Trade Dress?

One can get registration for a trade dress for different types of products and services ranging from the shape of a box, interior design aesthetics of a brand showroom, etc.

Trade Dress TypeExamples of Trade Dress
Product PackagingDomino’s Pizza
Mountain Dew Neon Green Bottle with neck aberrations.
Product ConfigurationConverse Shoes
Hershey Kiss chocolate  
ColorLouis Vuitton red-soled shoes
The red tab on Levis jeans
ShapeFish Shape of Goldfish crackers  
Interior Design AestheticsMcDonald’s Showroom or Apple’ Showroom
Famous Examples of Trade Dress

What is the Difference between Trade Dress and Trademark?

The marked difference between trade dress and trademark is that while a trademark is used to legally protect a word, phrases, signs, logo, symbol, and designs, trade dress is just the overall getup of the product or its packaging. Thus, it encompasses the overall image of the product or service instead of just its name or logo as does the trademark. Moreover, just like trademarks, trade dress is also inherently distinctive.

The Lanham Act describes the term trade dress as “anything capable of carrying a meaning.

How Do You Prove a Trade Dress?

The Lanham Act places certain restrictions for qualifying as trade dress, here are the restrictions:

  • Secondary Meaning: There must be a secondary meaning for something to be fit for trade dress.
  • Functionality: Functionality is a broad topic aimed to prevent the monopoly of a company or brand on something significant for the functionality of all producers offering similar goods or services. As per court jurisdictions in the USA, a trade dress is functional if:
  1. The alleged look of the product or service is fundamental to the objective of the product and impacts its cost or value in the market
  2. It is necessary for the applicant to use the specific style due to the level of competition.
  • Distinctiveness: The trade dress must possess a differentiating factor to be approved as one. The court considers the uniqueness in shape or designs of a product. The common designs can’t be determined apt for trade dress. Also, only color or shape is not enough to claim the protection under the intellectual property laws.

Trademark registration at USPTO and other national trademark offices is the best way to prove the distinction of your trade dress.

Are Trade Dresses Registerable?

Yes, you can register your brand’s Trade Dress in various countries to protect them from infringement. The registration of a trade dress prevents infringement, i.e., imitation of the unique originality of the brand’s products and services.

While applying for trade dress registration, here are a few must do’s:

  1. Filing under the owner’s name of the brand. The owner can be an individual, company, LLP, or partnership. Also, if the owner is not an individual but a business entity, the application should also include details about its nationality and type.
  2. Show whether or not their product’s appearance looks similar to a registered trade dress
  3. Include ornamental as well as non-functional design elements in the application.
  4. A schematic explanation of the product’s appearance along with specimen (if the application is of actual use type)

You must be confused about what is the actual use? Let us see the 2 types of trade dress applications.

What are the types of Trade Dress Applications?

There are 2 categories of trade dress applications, 1. For Actual Use & 2. Intent to Use

  1. Actual Use: You will be attaching the specimen showing how the product’s design is put to use.
  2. Intent to Use: The applicant needs to attach a statement saying that the owner is intending to use the trade dress but will not be registering it until he/she actually starts the business.

For the Intent to Use cases, the USPTO issues an allowance notice providing a 6 months period during which the applicant can either start using it or apply for an extension.

How to File for Trade Dress Registration with USPTO?

  1. Begin a fresh registration at the USPTO’s official website.
  2. Include a crystal clear description of the trade dress, comprising design visuals, schematics, functionality, and uniqueness.
  3. Demonstrate the usefulness of both functional and non-functional components.
  4. Demonstrate your product’s uniqueness.
  5. Wait eight weeks for the Trademark Examiner’s verdict.
  6. The USPTO grants the Trade Dress registration in 8 weeks if there are no legal objections.

In most cases, when a layman tries to get trade dress registration, they face opposition or objections delaying the process. This is why you should hire a trademark attorney to make sure your registration of is successful.

What are Some Famous Trade Dress Infringement Cases?

Ferrero Rocher’s Trade Dress Infringement in India

This Italian brand started its operations in India during the 2000s and secured many trademarks and Trade Dress. The infringement happened when a brand called Ruchi International started selling chocolates under the name “Golden Passion.” Their packaging, color scheme, etc. were remarkably similar to the Ferrero Rocher’s ones. But the Ferrero Rocher had an upper hand as they had trade dress (color, label, design, packaging style) registration under Section 11(6) of the Trade Marks Act, 1999.

In an ex parte decision, the Delhi High Court ordered that the trademark and trade dress of Ferrero Rocher are unique to the brand. Also, the court found the Golden Passion’s chocolates deceptively similar to Ferrero Rocher, thus recognizing the likelihood of confusion and infringement. Ferrero Rocher received a permanent injunction against the infringers restricting them from selling or trading the products. In addition, the court penalized the defendant of INR 1 million based on monetary damages along with a 10% interest rate per year from the date the lawsuit was filed.

How Can You Prove Trade Dress infringement?

To prove the trade dress infringement in courts, the trade dress owner must prove that the overall looks of their products or services are exclusive to their products and their recognition by the customers. If the court finds the infringer trade dress to be confusing, it may order any or all of the following actions:

  1. Stop the selling of products or services by the infringer under that particular trade dress
  2. Destroy the existing products or services in the market under that particular trade dress
  3. Ask the defendant to pay the penalty

Let us understand trade dress infringement with an example. We all know the Dominos Pizzas and how the packaging, color schemes, and shape of their boxes are all unique. The overall aesthetics scream that this pizza box is from Dominos, right? But what if a new brand starts imitating its style? This may lead to consumers confusing between the two, ending up buying similar-looking products thinking they are original, and revenue loss to the trade dress owner, i.e. Dominos. In such cases, trade dress registration comes into the picture.

What is First Use in a Trade Dress?

In USA, the Trade Dress rights starts to develop either from the first day of using the trade dress on the articles or promotional materials linked to services in interstate or international export-import from the date of filing an “intent-to-use” application if it is later used. Thus, if the owner of an identical or similar looking product can prove that they used the Trade Dress earlier than the plaintiff, their chances of winning the case multiply.

Trade Dress vs. Design patent

USPTO gives Trade Dress Rights to goods and services that can also get a design patent or Copyright,. This option is available even if these other forms of intellectual property protection have expired or were never secured. There are 3 ways to protect a design from infringement:

  1. Design patent
  2. Trade Dress registration
  3. Copyright registration

Moreover, the trademark laws allow the use of all or any of these intellectual property protections at the same time. This is because the origins and aims of copyright, patent, and trademark laws are all different. If the design fits specific criteria and the inventor applies with the US government, a design patent is possible for new, original, and ornamental designs for manufactured items. A patent protects the owner for 14 years after it is granted.

For works of creation, one must opt for copyright protection if the original design is separate from the utilitarian part of the object and is recognized by the USA government.

Can trade dress be diluted?

Yes, trade dress dilution can happen in 2 ways, by tarnishment and blurring, just like trademark dilution.

  1. Dilution by Tarnishment: Someone is degrading your trade dress by negatively associating it with illegal grounds or bringing it in the wrong limelight.

2. Dilution by Blurring: When some other brand’s activities negatively impact the uniqueness of your trade dress.

In the case of dilution, the Trade Dress owner can opt for injunction. The option is available even if:

  • There is no likelihood of confusion
  • The dilution causes no economic damages

In these cases, the owner of the trade dress rights has the option to claim injunction. That right applies regardless of the likelihood of potential or actual confusion and regardless of whether any economic injury has occurred.

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