Find a Lawyer Near You

A request we often receive from clients goes something like this, “I want you to protect all of my IP.” Patent, copyright, and trademark rights are defined by federal statutes, which can make them easier to explain to a client. But what about trade dress?


Courts hold that trade dress is protectable under the umbrella of unfair competition in the federal trademark statutes. However, what constitutes unfair competition depends on the particular facts. In most situations, trade dress is not protectable when our client first asks about such protection. To be entitled to protection, the trade dress in question must “acquire distinctiveness.” This takes time, persistence and patience.


PPC for Legal

When we mention the word “distinctive” for the first time to a client, we typically get a quizzical expression in return. When does something, and specifically “trade dress,” become distinctive? This article will not give you a definitive answer, but we hope you will gain some useful background. The easy way out is to engage the services of an experienced trademark attorney.


As you may recall from some of our previous articles, for a trademark right to exist (no matter its form) it must be distinctive. To be distinctive, a trademark must identify a source of goods or services to a buyer. The trademark may be a word, phrase, sound, or it may simply be the visual appearance of something. Visual appearance is generally viewed as trade dress.

Examples are a good way to illustrate trade dress. Trade dress may include the overall configuration of packaging such as the unique shape and contour of a Coca-Cola bottle, the appearance of packaging such as Tiffany & Co.’s distinctive robin-egg blue box with a white satin ribbon. It may also include the appearance of a vehicle such as United Parcel Service (UPS) trucks, the decor/ design of a restaurant such as In-N-Out Burger, or the layout and design of Apple Stores. Trade dress can even be a feature of the product such as the red lacquered sole on Louboutin shoes. When a buyer sees these recognizable and distinctive features, the buyer attributes the related goods or services with a particular source.


Dram Shop Experts


The U.S. Supreme Court has helped define what constitutes trade dress. The first case, Two Pesos, Inc. v. Taco Cabana, Inc. (1992), involved Taco Cabana, a chain of fast-food restaurants specializing in Mexican cuisine. Two Pesos, a competing Mexican restaurant chain, began to open restaurants with a similar style and décor, leading Taco Cabana to file a lawsuit alleging that Two Pesos had infringed its restaurant décor trade dress. The main issue was whether Taco Cabana’s unregistered, yet inherently distinctive, trade dress was protectable under the U.S. Trademark Act without proof of secondary meaning—a legal concept that shows consumers associate the trade dress with a specific source. The Supreme Court ruled that inherently distinctive trade dress could be protected under the Lanham Act without the need to prove secondary meaning. As such, Taco Cabana prevailed.

A later U.S. Supreme Court decision, Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000), dealt with Walmart copying clothing designs of Samara Brothers. The Court noted that for trade dress to be protectable, it had to be distinctive and non-functional. In this context, non-functional means that the design elements are not essential to the use or purpose of the product, do not affect the cost or quality of the product, and are not dictated by considerations of functionality. The Court also held that product design cannot be inherently distinctive, and Samara Brothers lost.


If the trade dress is distinctive and non-functional, it may be registered as a trademark with the U.S. Trademark Office. However, registration may be difficult as considerable proof of distinctiveness and non-functionality is required. Nonetheless, it can be done!


Personal Injury Summit

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].

Leave a Reply

Your email address will not be published. Required fields are marked *

Related Posts