Everyone knows that a company’s trademark portfolio is a critical asset. The Apple brand, for example, is valued at $124.2 billion dollars—making it the most valuable brand in the world. Many people do not know, however, that part of that $124.2 billion portfolio is Apple’s federal trademark registration for the distinctive design of its retail stores.
To elaborate, Apple has acquired a trademark registration, both in the U.S. and in Europe, for the unique look and feel of the interior design of its stores. Apple’s trademark consists of a clear glass storefront, rectangular recessed lighting on the ceiling, display cases on the outside walls, tables in the middle of the store, and video screens mounted against the back wall. See Reg. No. 4,277,914, Jan. 22, 2013.
Apple’s trademark is therefore one that protects its trade dress, or the “total image” of its business, defined by its “overall composition and design, including size, shape, color, texture and graphics.” See Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006).
Apple is not the first to have obtained this protection, nor will it be the last. Retail stores should therefore strongly consider adding federal trade dress protection to their intellectual property portfolios and making this important investment in their brands.
Obtaining Federal Trade Dress Protection
To obtain a federal trademark registration for the interior design of a store, an applicant must demonstrate several things. First and foremost, the combined elements of the store design must create a distinctive overall look and feel to customers. In other words, the overall design must result in a “unique and distinctive trade dress” that “demonstrates a unique theme in order to distinguish the end product.” See Happy’s Pizza Franchise, LLC v. Papa’s Pizza, Inc., 2013 WL 308728 at *4 (E.D. Mich. Jan. 25, 2013).
This does not mean that every element of the store design must be unique. Instead, it is the combination of the design elements that is evaluated for distinctiveness. Moreover, if a design is not inherently distinctive, an applicant may submit evidence showing the extent of the applicant’s efforts to associate the goods and services with the store’s design. This evidence could persuade the Trademark Office that the store design has acquireddistinctiveness through use over time. If a store has been exclusively and continuously using a store design for 5 years, the applied-for mark may be presumed to have acquired such distinctiveness. See 15 U.S.C. § 1052 (f).
It should be noted that an applicant may not attempt to trademark a general mood—instead, an applicant must point to the specifically defined elements that constitute the trade dress. Retail stores with multiple outlets will also likely need to ensure that their designs are employed uniformly throughout all of their locations. It is also fundamental that trade dress will not be protected if it is merely functional.
The Scope of Federal Trade Dress Protection
A federal trademark registration for a store’s unique trade dress provides brand protection in multiple, related ways. Because it is a federal registration, a store’s trade dress is given national protection going forward from the date of registration—even in areas that you do not presently operate in. Without a federal registration, a store would not be able to prevent someone on the other side of the country from using the exact same store design.
A strong trade dress registration may also enable a store to oppose or cancel a competitor’s pending registration for similar trade dress. Registration further serves as a disincentive for competitors to mimic a brand’s unique store designs since the competitor could be subject to a trade dress infringement suit.
A federal registration therefore enables a store to bring a trade dress infringement suit against other companies throughout the country that adopt your unique designs. To win a trade dress infringement suit, however, a plaintiff must show a “likelihood of confusion” between its trade dress and the defendant’s.
This “likelihood of confusion” analysis turns on a multitude of factors. These factors include the strength of a plaintiff’s trade dress, the similarity of the parties’ trade dress, the similarity of the relevant marketing channels, the knowledge and care of purchasers, the defendant’s intent, and evidence of actual confusion.
As one might guess, this analysis is very fact intensive and the subject of much discussion and litigation. Nevertheless, a federal trade dress registration may be critical in preventing the exploitation of a brand’s good will with its customers by a competitor’s confusingly similar store designs. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
Obtaining a federal trademark registration for your unique store design is likely to be a long and delicate process. For many brands, it may not be worth the time and resources. But for others, like Apple, it is an extremely worthwhile investment in a company’s relationship with its customers. Trade dress protection for your retail store design could therefore play a crucial role in standing out in the marketplace and adding value to your brand.