™️Trademark Law Unit 14 – Trade Dress, Color & Sound Trademarks

What's Trade Dress?

• Refers to the overall appearance and image of a product or its packaging that signifies the source of the product to consumers
• Includes features such as size, shape, color, texture, and graphics
• Protects the visual appearance or image of a product
• Must be distinctive and serve as a source identifier in the minds of consumers
• Includes product design (configuration) and product packaging
• Can be registered as a trademark if it is distinctive and not functional
• Differs from a design patent which protects the ornamental design of a functional item

Key Elements of Trade Dress

• Must be distinctive, meaning it is capable of identifying the source of the product
  • Inherently distinctive: Intrinsically identifies a particular source (Coca-Cola bottle)
  • Acquired distinctiveness: Has developed secondary meaning over time through use (Tiffany Blue box)
• Must be nonfunctional, meaning the design feature is not essential to the use or purpose of the product
  • Functional features are not eligible for trade dress protection
• Should be consistently used by a single source
• Can be a combination of elements that create a distinctive overall impression (Apple store layout)
• Color alone can sometimes be protected as trade dress (Owens-Corning pink fiberglass insulation)
• Includes the total image of a business (restaurant decor)

Color as a Trademark

• Single colors can be registered as trademarks if they acquire distinctiveness (secondary meaning)
• Must not be functional, meaning the color does not provide a utilitarian advantage
• Color must be used in a particular way on a product or its packaging
• Difficult to prove that a color has acquired distinctiveness
• Factors considered include amount of advertising, length of use, exclusivity of use, and consumer recognition
• Examples of color trademarks: Tiffany Blue for jewelry boxes, UPS Brown for delivery trucks
• In the US, no colors are inherently distinctive for trademark purposes

Sound as a Trademark

• Sounds can be registered as trademarks if they are distinctive and serve as source identifiers
• Must not be functional or commonplace sounds (alarm clock sound)
• Can be musical (NBC chimes) or non-musical (Harley-Davidson motorcycle engine sound)
• Consumers must recognize the sound and associate it with a particular source
• Sound must be unique and different from sounds commonly used in a particular industry
• Examples of famous sound marks: MGM lion's roar, Intel Inside bong sound
• Challenges in representing sound marks and determining likelihood of confusion with other sounds

Famous Trade Dress Examples

• Coca-Cola glass bottle shape
• Tiffany & Co. blue box and white ribbon
• Toblerone triangular chocolate bar shape
• Converse All Star sneaker design
• Hermès Birkin bag shape
• Longchamp Le Pliage bag design
• Christian Louboutin red outsoles on shoes
• Apple iPhone design and layout

Legal Challenges and Landmark Cases

• Two Pesos, Inc. v. Taco Cabana, Inc. (1992): Inherently distinctive trade dress is protectable without secondary meaning
• Qualitex Co. v. Jacobson Products Co. (1995): Color alone can serve as a trademark with acquired distinctiveness
• Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000): Product design can never be inherently distinctive
• TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001): Functionality doctrine strengthened
• Valu Engineering, Inc. v. Rexnord Corp. (2002): Federal Circuit's Morton-Norwich factors for determining functionality
• Apple, Inc. v. Samsung Electronics Co. (2011): $1 billion verdict for infringement of iPhone trade dress
• Christian Louboutin v. Yves Saint Laurent (2012): Red outsoles valid trademark with secondary meaning

Protecting Your Trade Dress

• Conduct a trade dress search to ensure your design is available and not confusingly similar to others
• File a trademark application with the USPTO to register your trade dress
• Use the ® symbol once your trade dress is registered
• Monitor the market for potential infringers and send cease and desist letters
• Prove your trade dress has acquired distinctiveness through long use, advertising, and consumer recognition
• Avoid functional features in your trade dress that are essential to the use or purpose of the product
• Consistently use your trade dress and avoid changes that may weaken its distinctiveness
• Educate consumers about your brand's trade dress through advertising and social media

Future Trends in Non-Traditional Trademarks

• Increase in applications for non-traditional marks like colors, sounds, scents, and textures
• Advances in technology leading to more unique product configurations and designs
• Greater emphasis on secondary meaning and acquired distinctiveness for product design trade dress
• Stricter functionality doctrine may limit scope of trade dress protection
• Globalization and need for international trade dress protection in multiple jurisdictions
• Rise of virtual and augmented reality may lead to trade dress issues in digital environments
• Sustainability concerns may influence packaging design and materials
• Potential for more trade dress litigation as companies seek to protect their brand identities