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Ever walk into a store looking for mouthwash and see two choices, both looking alike? One is a national, well-known brand while the other turns out to be a store brand of a national chain. Both bottles have the same shape and same color.

You know the two mouthwashes are different brands, even though at a distance the two bottles look almost exactly the same (except for the different names on the labels). As a business attorney, you get the feeling that there may be something unfair about this, but is there?

Why does the nationally known brand “allow” the national chain to simulate the appearance of its packaging? Is there actionable intellectual property involved? Can you protect how a package looks, like its configuration, layout and use of color? The short answers to these questions: It depends. Maybe. Sometimes.

Trade Dress

“Trade dress” is the term used to describe this type of intellectual property. Simply stated, trade dress is a how a product is “dressed up” for sale. It can include features such as shape, size, color(s), texture, graphics, images etc. In other words, trade dress is the overall impression or total image of the product and/ or its packaging.

Two things (at least) need to be kept in mind for trade dress to be protectable. The trade dress has to be distinctive. When a consumer sees the shape and the color of that mouthwash bottle, he or she thinks of the national brand. The other is that the trade dress cannot be functional. For example, if the mouthwash itself was a red hue due to an active ingredient in it, then that red as a color for mouthwash would be functional, and that red would not be a protectable component of the trade dress for that mouthwash.

Trade Dress vs. Trademark

What’s the difference between trade dress and a trademark? To help explain, consider the traditional Coca Cola bottle. When a consumer views the unique shape of this bottle (like the bottle’s curves and ribbing) the soda’s trademark Coca Cola need not be on the bottle for the consumer to know that the beverage in that bottle comes from The Coca Cola Company. In other words, this trade dress is distinctive.

Can trade dress serve as a trademark? Absolutely! Can trade dress be a registered trademark? Of course, but often with difficulty due to the U.S. Trademark Office’s position that the applicant has to prove distinctiveness (and in some situations that the trade dress is not functional). Clients should be prepared to spend some money to federally register trade dress as a trademark.

Distinctiveness and non-functionality are also characteristics of a registerable trademark. What is the difference between a trademark and trade dress? Under the federal trademark statute (The Lanham Act) it is arguable there is no difference except in the form of the mark. The Lanham Act 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.” 15 USC § 1125.

Dress Smartly!

As you have probably surmised, some package appearances are not protectable. As a general guideline, a package with black font on a white background is not a good candidate for trade dress protection, as it would be quite difficult to prove distinctiveness for such a design. Advise your client to “dress up” its product packaging. The more the overall appearance of the package stands out on a shelf and captures the eye of a potential buyer, the better a candidate for trade dress protection such packaging becomes.

Of course, your client should also be aware of the packaging appearances of competitive products and steer clear from using the same packaging components that make its competitor’s packaging distinctive. It is the responsibility of a junior user (later in time) to avoid creating a likelihood of confusion between its packaging and an existing competitor’s packaging.

More Than Just for Packaging

Trade dress is not limited to just packaging. Packaging is an easy example for explaining why and how trade dress can be protected. Trade dress has been used to provide a way to protect a variety of products and even services. For example, trade dress has been used to protect the atmosphere in a restaurant (Fuddruckers), a signature golf course hole (Harbour Town No. 18, Hilton Head), color (Owens Corning pink fiberglass insulation) and many product configurations such as Honeywell’s round thermostat design, Big Bertha golf clubs, the Sunbeam American Classic Mixmaster and the Ferrari Daytona Spyder and Testarossa.

Trade dress does not preclude other types of IP protection such as copyright, design patent and even utility patents. The fun thing about trade dress is can be virtually anything, as long as it is distinctive and it acts as a source indicator to consumers. Z. Peter Sawicki and James L. Young

Z. Peter Sawicki and James L. Young

Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and effective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either [email protected] or [email protected].

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