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By Purple Fox Legal

August 17, 2022

It’s easy to get swept away in the creative process when designing a new product or service. Choosing just the right color shade to conceptualize unique packaging or styling the shape in just the right way to perfectly reflect your brand’s theme takes time and effort. However, there is something threatening your brilliant ideas and your brand’s identity–copycats. Trade dress trademarks can help with this issue.

Trade dress is a form of intellectual property protection under trademark law that protects the look and feel of the packaging and design of products and services. This article examines trade dress in more detail and explains how it differs from other forms of intellectual property protection. 

What is Trade Dress?

Protecting your company’s brand is vital to success and growth. This means protecting your company’s intellectual property, including trade dress, must be a priority. Protecting trade dress gives your brand two major advantages. First, it distinguishes the quality of your brand from competitors. Second, it allows you to enforce your intellectual property rights and prevent others from copying your brand. You’ve worked hard to get to where you are today, and you shouldn’t let others take advantage of your success. Your brand’s trade dress ensures that your brand remains unique in the eyes of consumers. 

But what is trade dress protection? In essence, it is a type of intellectual property protection under trademark law that protects the look and feel of distinctive packaging and design elements associated with products and services. Trade dress makes it possible to protect the color of packaging that a brand uses to sell its products. Another example of trade dress protection may include the shape of a brand’s flagship product so long as the shape is non-functional. The level of trade dress protection varies but is often protected through common law rights. 

However, trade dress can also be registered with the U.S. Patent and Trademark Office (USPTO). With a USPTO trademark registration, trade dress is protected throughout the United States and includes several other statutory benefits not available to trademarks protected under common law.

For a product or design to be awarded trade dress protection, it must have “no function.” That is to say that if you are trying to protect the way something works (i.e., the ergonomics of a product or the efficiency of its purpose), trade dress is not appropriate. Protectable trade dress must also be distinct, memorable, or notable.  

Two Types of Trade Dress

There are two main types of trade dress protection: product packaging trade dress and product design trade dress. Brand owners may rely on common law rights to protect trade dress, but registering trade dress with the USPTO offers several advantages, including nationwide protection and enforcement power. 

1. Product Packaging Trade Dress

As the name suggests, product packaging trade dress helps to protect the aesthetic of the packaging itself. For example, Tiffany & Co.’s product is jewelry. However, one way Tiffany & Co. protects its brand is by maintaining a federal trademark registration for the robin blue color of its jewelry bags and boxes. Another example of product packaging trade dress includes the foil packaging used to cover Klondike ice cream bars.

2. Product Design Trade Dress

The second type of trade dress is the product design trade dress. This protects the actual product’s non-functional design and allows the trade dress owner to prevent the design from being replicated by others. Examples of product design trade dress include the triangular pyramid shape of the Toblerone bar and the fish shape of Goldfish crackers.

Product Packaging vs. Product Design

The fundamental question in determining whether trade dress is product packaging or product design is whether the element being protected is something that, by itself, would be sold to consumers. 

For example, Tiffany & Co. does not sell robin blue jewelry bags and boxes; it sells jewelry. Therefore, the robin color of Tiffany & Co.’s jewelry bags and boxes is product packaging. 

As another example, consumers buy Goldfish crackers to eat. Thus, the unique shape of the Goldfish crackers is product design trade dress. 

Recent Trade Dress Lawsuits

Due to trade dress protecting the essence and aesthetic of how a brand offers its goods and services, it’s unsurprising that companies will vigorously protect their intellectual property rights from potential competitors. In 2017, John Deere sued FIMCO Inc., an agricultural spraying company, for using the iconic John Deere yellow and green color combination. The court ruled in favor of John Deere because allowing FIMCO Inc. to continue using green and yellow for goods and services similar to those offered by John Deere would result in a likelihood of confusion amongst consumers. 

In 2017, Monster Energy, renowned for its energy drinks with the green and black “M” emblem, filed a trade dress infringement case against Integrated Supply Networks, an automotive toolmaker, for using the black and green combination and the “M” symbol itself. The jury awarded Monster Energy $5 million in punitive damages after supplying evidence of direct infringement of Monster Energy’s trade dress. 

Trademarks vs. Copyrights and Design Patents

As consumers look to recognizable brands and products for familiarity, the likelihood of a popular, well-designed product being copied increases. As such, businesses must protect themselves by registering and enforcing their intellectual property rights. 

Here are some examples of other ways brands can protect their creative identifiers. 

• Trademark

A trademark is a wide-ranging term used to protect any signal or symbol that identifies one source of a particular good or service from the offerings of others. Trademark law can protect a variety of brand identifiers, such as words, logos, colors, sounds, jingles, smells, flavors, domain names, trade dress, and other distinctive elements. 

• Copyright

Copyright law protects creative works fixed in a tangible medium of expression. For a creative work to gain copyright status, it simply must have an iota of creativity. Copyrights are not required to be great masterpieces, but rather the expression of an idea fixed within a tangible medium, such as a piece of paper or a digital file. 

Copyrights protect creativity, not function. For a copyright infringement to occur, the subsequent work must be either identical or substantially similar to the original.

• Design Patent

A design patent protects functional designs from being reused by others. However, in order to obtain a design patent registration from the USPTO, the functional design must be novel or relatively unique. Patent protection will not be granted to functional designs that are similar to things already existing in the marketplace. Design patents are best used on unique inventions or innovative products with a unique and functional design element. 

Final Thoughts on Protecting Your Brand With Trade Dress

Trade dress protection begins with a company developing a ledger of creating and using distinctive trade dress. In order to register trade dress with the USPTO, the trademark applicant must be able to prove the date when the trade dress was first used in interstate commerce. If registering a color, this proof may entail a screenshot of the company website displaying that color on the date the website was first launched. 

Protection of trade dress, like other types of intellectual property, can be confusing for brand owners and it may be helpful to have an attorney in your corner to develop an intellectual property strategy, including registration and enforcement of trademarks.