Andrew J. Sherman, Partner, Dickstein Shapiro Morin and Oshinsky LLP
Trade dress is a combination or arrangement of elements that comprise the interior and/or exterior design of a business, usually in the context of a retail or restaurant business. Symbols, designs, product packaging, labels and wrappers, exterior building features, interior designs, greeting cards and uniforms, all of which build brand awareness and loyalty with consumers, can be considered elements of trade dress. Trade dress is protected by federal and state trademark laws if it distinguishes the goods or services of one company from those of its competitors.
Protectable trade dress consists of three elements: (1) a combination of features (used in the presentation, packaging or "dress" of goods or services) (2) which is nonfunctional and (3) whose distinctiveness reveals to consumers the source of goods or services. For example, in Taco Cabana International Inc. v. Two Pesos, the jury found the following combination of restaurant decor features to be protectable:
- interior and patio dining areas decorated with artifacts, bright colors, paintings, and murals;
- overhead garage doors sealing off the interior from the patio areas;
- festive exterior paintings having a color scheme using top border paint and neon stripes;
- bright awnings and umbrellas;
- a food-ordering counter set at an oblique angle to the exterior wall and communicating electronically with the food preparation and pickup areas;
- an exposed food preparation area accented by cooking and preparation equipment visible to the consumer; and
- a condiment stand in the interior dining area proximate to the food pickup stand.
Companies can do a number of things to enhance the strength of claims that their symbols, designs and other visual arrangements constitute trade dress, including but not limited to the following:
- Adopt a combination of several features.
- Ensure that several of the features are unique.
- Avoid using features that can be seen as functional.
- Use the features consistently and continuously.
- Include as many of the features as possible in advertising.
- Refer to trade dress features in advertising and promotional literature.
- Advertise as extensively as possible.
- Carry the "theme" of the trade dress throughout the entire business.
- Keep competitors from adopting similar combinations of features and from using features that are unique to your trade dress.
- Where possible, federally register the trade dress or the components of it.
- Do not advertise utilitarian advantages of any trade dress you wish to protect.
- Keep detailed records of instances of possible consumer confusion between your trade dress and a competitor's subsequently adopted trade dress.
The best way to avoid trade dress infringement claims is prevention. To prevent such claims, avoid copying competitors' trade dress, investigate competitors' potential trade-dress rights, and consult a skilled trademark attorney. Also, it may also be advisable to use disclaimers and to be more cautious when your company has a potentially aggressive opponent.