Trademarks and Trade Dress

on 08/11/2015 by David Szostek

Trademarks and Trade Dress

Trade dress refers to the visual appearance of a product or its packaging that convey the source of the product to consumers.

Trade dress protection is intended to protect consumers from packaging or appearance of products designed to imitate other products, to prevent consumers from buying one product under the mistaken belief that it is another.

For example, the shape, color, and arrangement of materials of a children’s line of clothing can be protected as trade dress, or the appearance and décor of a particular restaurant chain.

The Trade Dress of a product involves the product’s “total image” and can include the color of the packaging or product configuration.  Examples include the packaging for Sunbeam Bread and the color scheme of Quiznos sub shops.

A product’s Trade Dress is separate from the actual working of a product or package. Visual elements must be ornamental, not functional. Trade Dress is also a distinctive feature which distinguishes one manufacturer’s goods or services from another’s.

Trade Dress Protection

To establish a superior right to your business’s unique Trade Dress, it must be distinctive towards your particular business or product. You can accomplish this distinctiveness by showing that the public associates your Trade Dress with a particular source – your company. For example, consider the coloring, shape and/or overall packaging of your products.

You also need to be on the lookout for a competitor’s Trade Dress that resembles your company’s Trade Dress sufficiently to create a false sense of affiliation or collaboration between the two companies to the public as a result.

You can claim Trade Dress protection if: 1) your Trade Dress is distinctive and indicates your company as its source, or 2) the public associates other products with your Trade Dress and believes the source to be your company, thus causing a likelihood of confusion for consumers.

Maximize the Protection for your Business by Registering Your Trade Dress

A trade dress can be registered with the U.S. Patent and Trademark Office (USPTO). Although it is not required for legal protection, registration offers several advantages.

Legal requirements: Distinctiveness, Functionality, Secondary Meaning

Trade dress applicants must prove that the design of their product or other entity for which they want a Trade Dress hassecondary meaning” to consumers and passes the law’s “functionality” test.


To be protected under the Lanham Act, a trade dress must be “distinctive.” This means that consumers perceive a particular trade dress as identifying a product’s source (its manufacturer).


To gain registration under the Lanham Act, a trade dress must not be “functional.” This means its combination of shapes, designs, colors, or materials that make up the trade dress must not serve a function other than to promote consumers’ recognition of the product.

What is “functional” depends upon the specific product being protected.  For example, the color red in clothing would not be functional (and thus part of protectable trade dress) while the same red color on a stop sign would be functional because the color red serves the function of alerting drivers to stop.

Secondary Meaning

Secondary Meaning is a legal term of art. In the context of trade dress, it means (generally) that a consumer associates the look/feel/color/distinctiveness that the product has with that specific product, from a specific vendor.

Federal Statutory Protection: The Lanham Act

A product’s trade dress is legally protected by the Lanham Act, the federal law which regulates trademarks and trade dress. Under section 43(a) of the Lanham Act, a product’s Trade Dress can be protected without formal registration with the USPTO. The law allows the owner of a particular trade dress (“container for goods”) to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any agency or system.

Registering Your Trade Dress

Trade Dress is registered with the USPTO or with the state of Michigan Department of Licensing and Regulatory Affairs (LARA). Federal registration provides greater protection because it is national.

As owner, you must file your Trade Dress registration under your name. You must provide the goods or services under the Trade Dress. An owner may be an individual or business entity.

  • If a business entity, your application must specify the type of entity (sole proprietor, corporation, limited liability co, other)
  • The application must be based on “actual use” or an “intent-to-use” the Trade Dress in commerce
    • An “actual use application” must include a description of the products or the advertising or promotional materials on which the Trade Dress has been placed.
    • An “intent-to-use” application requires a good faith statement that you as owner intend to use the Trade Dress in commerce, but that the Trade Dress will not be registered until it is actually used.
  • The USPTO will issue a Notice of Allowance granting you as owner six months to either use the Trade Dress in commerce or file for an extension. Once you file the Statement of Use the USPTO will issue a registration certificate to you.
  • As owner and applicant you must include a drawing of the Trade Dress. You must also submit a specimen with your application if it is based on “actual use”. (A specimen is a real-world example of how the mark is actually used on the goods or in a service.)

Depending on the type of application, the drawing should depict the Trade Dress as it has been used or how you as owner intend to use it.

The mark and any logo or drawing must identically match the mark and logo or drawing on the specimen.

Legal Status and Issues

The USPTO often issues an “office action letter” which provides the legal status of your Trade Dress application along with any administrative or substantive issues which you need to address.

Four Practical Steps to Begin Your Product Distinctiveness and Trade Dress Registration

  • Devise a distinctive design for you product, service or package;
  • Apply to register your product’s Trade Dress with the USPTO;
  • Start establishing distinctiveness by promoting the link between “the look” of your product and its brand; and
  • Protect the look by using it in commerce, thus acquiring distinctiveness for it (a USPTO requirement for registering it as a Trade Dress).

Additional protections a Trade Dress registrant receives after registration with the USPTO

Registration with the USPTO offers several advantages:

  • Trade Dress registration puts on record that the Federal Government considers such Trade Dress to be distinctive.
  • A registrant gains nationwide constructive use and constructive notice, which prevent others from using or registering that registrant’s trade dress (without contesting the registration).
  • Legal enforcement: The owner of a dress mark may sue a party which infringes its registered dress.
  • A registrant also gains uncontestable status after five years. This eliminates many of the ways for another party to challenge the trade dress registration.