As a business owner or creator, the world of intellectual property protection can be confusing. Copyrights, trademarks, patents and the often confused trade dress may drive you to the point of ignoring it all. But resist that temptation. Understanding a few key things about each area of IP is vital to protecting what you create. In this week’s info share we explore trade dress, and the most important aspects of it for you to know.
- Trade Dress is NOT the same thing as a Trademark. A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. The definition of a trademark has broadened to include fragrances, sounds, colors and shapes. Trade Dress, on the other hand, considers the overall look of a product, taking into account the packaging or design and shape of materials.
- Trade Dress falls under Federal Trademark Law. Despite explaining that a trademark and trade dress are not one in the same, actions for trade dress are brought under Federal Trademark Law – the Lanham Act. Common law or state law claims may also apply.
- Trade Dress must be Protectable. A trade dress must be protectectable in order to be enforced against an infringer. A protectable interest in a trade dress is established by evidence that the “look” 1) is inherently distinctive OR 2) is descriptive and has acquired a secondary meaning; AND 3) is not functional. If a trade dress is not inherently distinctive, then it must have acquired a secondary meaning. The crux of the secondary meaning doctrine is that the dress identifies not only the goods, but – more importantly – the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the dress in the minds of consumers is not the product but the producer. Whether a trade dress is functional is a topic for a separate blog – but in general – functionality may be akin to utility. If the dress is not useful to the good or service, then the dress is likely non-functional.
- Likely to Cause Confusion among Consumers. Actual confusion is not the standard for trade dress infringement; rather, it is sufficient for to show that confusion is likely among consumers. The likelihood of confusion is determined on the basis of the overall visual impression of the parties’ products or services in light of a number of factors. Confusion, however, must be likely among a substantial number of consumers. Only a few misled consumers are insufficient to maintain a cause of action.
- Federal Courts. Since actions for trade dress infringement concern a federal question, U.S. Federal court is the proper venue for bringing a lawsuit against an infringing defendant. The venue for a proceeding will be either i) where the Infringer resides, ii) where the claim arose, iii) wherever customer confusion is most likely, or iv) any judicial district which subjects the defendant corporation to personal jurisdiction when the action is commenced.
 See 15 U.S.C. § 1127.
 See Qualitex v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).
 15 U.S.C. §§ 1051
 Factors court considers in determining likelihood of confusion in trade dress infringement action, include: (1) strength of dress; (2) proximity of goods; (3) similarity of dresses; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by purchaser; (7) defendant’s intent in selecting dress; and (8) likelihood of expansion of product lines. See Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002).