Trade dress is a type of trademark intellectual property right that can protect almost any unique identifying aesthetic design used by a company, from the shape of a product, to the appearance of a website, to the decor of a storefront. Unlike patents, which have an expiration date, trade dress rights can last indefinitely, as long as the owner actively uses the trade dress. Because of this potentially wide reach, the law sets strict limits on what can qualify for trade dress protection. But even if a company has valid trade dress rights, a deceptively simple threshold question can often derail attempts to enforce them: What are they? Most designs are composites of commonplace building blocks, and it is only the particular combination and arrangement of those building blocks that may be unique and protectable. So how does one define that combination with enough specificity to be understood, yet with enough breadth to encompass infringing variations? Understanding how to answer this question is critical not only to litigating trade dress claims, but also to identifying and developing trade dress rights in the first instance.

The Law Of Trade Dress

In order to understand how to identify and articulate trade dress rights, it is necessary to understand what qualifies for trade dress protection under the law. Courts universally say that trade dress protects the “overall appearance” of a company’s products or marketing motifs. Historically, trade dress has been used to claim rights in everything from the look of a car’s front grill, to a themed restaurant’s distinctive decor, to a soft drink bottle’s iconic shape, to the identifying color patterns and markings on product packaging or a website.

No formal registration with the Trademark Office is required to claim trade dress rights. Rather, a company asserting unregistered rights has the burden of proving the validity of its trade dress by showing two things: (1) that the design has a strong arbitrary aesthetic component, i.e., that its form is not dictated by its function, which could improperly result in indefinite patent-like protection for something that should have been the subject of a utility patent; and (2) that the design is inherently distinctive or has acquired “secondary meaning” in the eyes of the public such that many consumers recognize the design as associated with a single company. Once validity is established, liability is proven by looking to the standard likelihood of confusion factors that are applied in all trademark cases.

If a trade dress design is formally registered at the Trademark Office for more than five years, it acquires “incontestable” status, which means that in a litigation it will be presumed to have secondary meaning, and the burden will be on the accused infringer to prove that the design is functional. In order for a design to be placed on the Principal Register, the applicant must make a prima facie case of non-functionality and secondary meaning. While no design can claim to have secondary meaning when it is first adopted, it is beneficial for companies to use their designs consistently over time, and track metrics such as revenue and advertising spending related to the design, in order to support a prima facie case that the design has acquired secondary meaning.

The Problem Of Identifying Trade Dress

Even armed with knowledge of the legal test for trade dress validity, it can be a challenge to articulate precisely which aspects of a company’s myriad and often complex designs constitute the company’s trade dress. While the law defines trade dress as the “overall look” of something, accused infringers have successfully attacked pleadings that claim the “overall look” of a design by arguing that such pleadings are too ambiguous to appraise the defendant of the scope of the trade dress rights at issue.

For example, in Homeland Housewares, LLC v. Euro-Pro Operating LLC, 2014 U.S. Dist. LEXIS 156675 (C.D. Cal. Nov. 5, 2014), the makers of a popular kitchen appliance had filed a complaint alleging that a competitor infringed the plaintiff’s product packaging trade dress. The problem, however, was that the product packaging was a collage of different and overlapping elements: pictures of the device, pictures of people, pictures of food, various text bubbles, and a multi-colored background. The defendant won dismissal of the complaint on the grounds that the plaintiff had failed to articulate which particular combinations and arrangements of elements constituted the trade dress, i.e., what else beyond an exact copy of the design would be deemed to infringe. Similarly, in Mike Vaughn Custom Sports, Inc. v. Piku, 15 F. Supp. 3d 735 (E.D. Mich. 2014), the plaintiff filed a complaint for infringement of the trade dress of its hockey pad products, yet the plaintiff sold different versions of the same product with different colors and stitching patterns. The court dismissed the complaint stating that the allegations were “insufficient to provide the defendant notice as to the plaintiff’s trade dress, which products the defendant infringed, and what aspect of the plaintiff’s trade dress the defendant infringed.”

Courts have explained that the reason they are wary of imprecise pleadings in trade dress litigation is that they may give rise to “shifting sands” as the case progresses, with ever more design variations being deemed to infringe. For example, in Sleep Sci. Partners v. Lieberman, 2010 U.S. Dist. LEXIS 45385 (N.D. Cal. May 10, 2010) the court dismissed trade dress allegations relating to the aesthetic appearance of a website explaining that “plaintiff employs language [in its complaint] suggesting that these components are only some among many, which raises a question of whether it intends to redefine its trade dress at a future stage of litigation. Without an adequate definition of the elements comprising the website’s ‘look and feel,’ [defendant] is not given adequate notice.”

Strategies For Asserting (Or Attacking) Trade Dress Claims

What cases like those cited above show is that trade dress plaintiffs typically face two pitfalls: (1) the failure to define which particular combination of elements of a design are protectable; and (2) the failure to identify a specific universe of accused infringing designs.

With respect to defining the trade dress, although the law says that trade dress is the “overall look” of a design, a company asserting trade dress rights may want to create a checklist of certain combinations and arrangements of core design elements that, if copied, would likely be deemed infringing. That list of elements could not only be used in court, but could also be employed by the company as a “recipe” when developing new versions of the design so that the design has a consistent look over time, and hence greater equity can be built in the trade dress rights. If a company has markedly different iterations of a given design, it could consider classifying them as separate trade dress to avoid confusion, and define a separate set of core elements for each. The more complicated a design, the more carefully a trade dress owner should define the underlying elements. This listing of core elements does not equate to the trade dress per se (since trade dress is legally defined as an “overall look”), but rather is a guidepost that can be used help identify the trade dress, and what infringes it.

In litigation, ambiguities in the articulation of the trade dress may be alleviated by specifically defining a universe of accused designs. This tackles the definitional problem from a different angle by making it clear which designs the trade dress owner believes incorporate the protected underlying elements. Identifying a specific universe of accused designs also addresses the concern courts have about “shifting sands” in litigation, and appraise the defendant of which of its designs it must defend in the lawsuit. A trade dress defendant who sells or uses many different designs may have grounds to dismiss a complaint that fails to adequately identify which of those several designs is deemed infringing and which is not.

Conclusion

Trade dress rights can be a powerful asset given their potentially indefinite lifetime. Just as a company would with any other kind of important asset, trade dress rights should be inventoried and protected. As shown above, being able to articulate which particular combinations and arrangements of design elements constitute trade dress will not only aid in litigation, but will help a company maintain a consistent look for its trade dress designs over time, thereby building greater brand equity in them.