For every startup, protecting intellectual property can be a complex legal challenge because of the potential complexities of businesses, products, and ideas. Nowhere is this more evident than in navigating the solid IP protection that undergirds trade dress and trademarks. At M&D, our IP lawyers bring deep experience to bear in how best to protect all aspects of a product or service. This can often begin with understanding the differences between trade dress protections and trademarks. While a trademark protects words, phrases, logos, symbols, or designs associated with a good or a service, a trade dress protects the overall appearance of a product. This can include “sizes, shapes, colors, textures, and graphics” among others. The “overall appearance” aspect of a trade dress allows for capturing of distinguishing elements that cannot be captured by a normal trademark.

Trade Dress Requirements

Trade dress registration is a legal process that rests on meeting a set of standards that may be perceived as ambiguous by someone who is not experienced in IP law. The reality is that trade dress requirements are highly specific based on very detailed and deep legal precedent. For example, the USTPO states that a trade dress must be primarily non-functional and inherently distinctive in the marketplace. 

The USTPO further states that the legal precedent for trade dress requires that it be “unusual
and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product.” Meeting this standard for registration rests on the ability to present all the features of a product together rather than separately. This is meant to avoid unfair competition where minor changes in one aspect could open the door to infringement without legal recourse.

The concept of “inherent distinctiveness” can vary depending on the industry and its norms. For example, colors or shapes can be inherent to a product category’s functionality which can classify it as not being inherently distinctive. On the other hand, colors or shapes could be deemed arbitrary in specific industries and product categories, which could make them inherently distinctive.

Secondary Meaning

In some cases, it can be argued that a particular trade dress appearance aspect is associated
with a particular company. This requires proving that a substantial segment of consumers and
potential consumers associate those aspects of the trade dress with a particular company,
which requires gathering the following types of evidence:

  • Direct consumer testimony
  • Consumer surveys
  • Exclusivity, length, and manner of use
  • Amount and manner of advertising
  • Sales and customer figures
  • Established place in the market
  • Proof of intentional copying

In many cases it is highly recommended to pursue both a design patent along with the trade dress registration. This is because a design patent can bolster proof to meet the non-functionality standard of trade dress registration. Startups must keep in mind that the design patent process can be lengthy and expensive with property right protection lasting for a 15-year term. Trade dress exclusivity can be protected, with caveats, for as long as it is being used in commerce by the owner as a source identifier.

The importance of a trade dress to a business’ IP protection strategy in technology and communications sectors cannot be understated. By associating trade dress and trademark to a product, the skilled IP attorneys of M&D define the legal parameters of IP protection while helping the company defuse any potential customer confusion among product within a category.