Trade Dress Protection in the U.S., and How Certification Marks Differ

What trade dress covers

Trade dress is a form of trademark. It can cover the shape and colour of packaging, the layout of a label, a product's shape or design, or the décor and layout of a restaurant or shop.

In Two Pesos v. Taco Cabana (1992), a dispute between two Texas Mexican-restaurant chains over similar décor, the Supreme Court held that inherently distinctive trade dress is protected under §43(a) of the Lanham Act without proof of secondary meaning.

Colour alone can sometimes work as a trademark, when it identifies the source and serves no other significant function (Qualitex v. Jacobson, 1995).

The two tests: distinctiveness and functionality

Functionality is a hard bar. A feature is functional if it is essential to the use or purpose of the product or affects its cost or quality. In TrafFix Devices v. Marketing Displays (2001), a dual-spring sign stand once covered by utility patents could not be protected as trade dress; the Court said a utility patent is strong evidence that the claimed features are functional.

Matter that is functional as a whole also cannot be registered (15 U.S.C. §1052(e)(5)).

Proving secondary meaning

Secondary meaning exists when the relevant public sees the look as pointing to one source. Evidence commonly includes:

• how long, and how exclusively, you have used the trade dress;
• advertising that points to the look itself, with its spend and reach;
• sales volume and unsolicited media coverage;
• consumer surveys designed for litigation;
• evidence that a competitor copied the look on purpose.

Registering trade dress

Trade dress can be registered with the USPTO like other marks. For registration, the USPTO may accept 5 years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness (15 U.S.C. §1052(f)), though product designs usually need more.

A registration on the Principal Register brings presumptions of validity and ownership. It also removes the burden that §1125(a)(3) puts on owners of unregistered trade dress to prove non-functionality in court.

Trade dress that is not yet distinctive but can distinguish goods may go on the Supplemental Register, which expressly covers packages and configurations of goods that are not functional (15 U.S.C. §1091(c)).

The application needs a drawing and description that claim only the non-functional features, and specimens showing the trade dress in use. Only Principal registrations can be recorded with U.S. Customs and Border Protection, at $190 per class, to stop infringing imports (19 CFR 133.1, 133.3).

Infringement and dilution

To win an infringement claim, the owner must show protectable trade dress, distinctive and (if unregistered) not functional, and a likelihood that buyers will be confused about the source.

Dilution is a separate claim. The owner of a famous trade dress, widely recognised by the general U.S. public, can stop blurring or tarnishment even without confusion or competition. For unregistered trade dress, the owner must prove it is not functional and is famous as a whole, apart from any registered marks within it (15 U.S.C. §1125(c)(4)).

Design patents: protecting the look from launch

Because product design needs secondary meaning before trade dress protection begins, many companies also file a design patent for a new product's ornamental appearance. A design patent lasts 15 years from the date of grant (35 U.S.C. §173).

File before your own public disclosure is a year old: disclosures by the inventor 1 year or less before filing do not count as prior art (35 U.S.C. §102(b)(1)). Other countries may have no such grace period.

Certification marks

A certification mark is used by people other than its owner to certify regional or other origin, material, mode of manufacture, quality or other characteristics, or that union members did the work (15 U.S.C. §1127). Labels certifying organic produce, products not tested on animals or sustainably sourced goods are familiar examples.

• The owner sets written standards and must control the mark's use; the application must include a copy of the standards (37 CFR 2.45).
• The owner must not produce or market the goods or services it certifies, except to promote the certification programme.
• The owner must certify anyone who meets the standards. A registration can be cancelled at any time if the owner fails to control the mark, sells the certified goods, allows non-certifying uses or discriminately refuses to certify (15 U.S.C. §1064(5)).
• Certification marks are classified in U.S. Class A for goods or Class B for services.

Collective marks are different

A collective mark is used by the members of a cooperative, association or other group, and includes marks indicating membership in a union or association (15 U.S.C. §1127). Members use it on their own goods or services, which a certification mark owner may not do.

Practical steps for a brand with a distinctive look

1. List the visual features you want to protect, and set aside the functional ones.
2. File a design patent for a new product design before or soon after launch.
3. Use the look consistently and advertise it as a sign of your brand.
4. Register packaging trade dress with the USPTO when it is distinctive; consider the Supplemental Register while it builds secondary meaning.
5. Record Principal registrations with Customs if copies arrive through U.S. ports.
6. Keep evidence: dated photos, sales figures, advertising spend and press coverage.