Trade dress is the unique appearance of a product — that combination of visual elements that identifies the source of a product. Trade dress can be applied to the look and feel of a business, including the interior of a restaurant.

In a trade dress infringement case involving two Indian fast food restaurant (see copy of opinion here), a New Jersey federal court preliminarily ordered a restaurant that appeared mimicked its better-established competitor to change its appearance so as to avoid the likelihood of confusion between the two.

Remodeling of the restaurant was required in a trademark and trade dress infringement action brought under the Lanham Act Sections 32(1) and 43(a), 15 U.S.C. 1114(1) and 11259(a). In Katiroll Company, Inc., v. Kati Roll and Platters Inc., the U.S. District Court in New Jersey issued a preliminary injunction that prohibited the continued use of a color scheme in defendant’s establishment because it was too similar to the restaurants operated by plaintiff.

Trade Dress Distinguishes Products

Trade dress is typically associated with packaging and design, but it can apply to almost any aspect of the appearance of a product, as long as that feature is not a functional part of the product, that is distinctive and has become identified with a particular company. Courts have also applied the concept of trade dress to protect the unique appearance of stores from imitators.

The Court, in granting the injunction for Katiroll’s trade dress claim, explained that “trade dress” is the total image of the business, and can include such things as the color, shape, and general appearance of a restaurant/sign/interior or other identifying elements of a business. The Court applied the likelihood of confusion analysis present in trademark infringement claims, finding that not only was there a likelihood of confusion, also that a number of customers had actually been confused by the appearance of the restaurant.

Trade Dress Infringement from Appearance of Restaurants

KatiRoll, the plaintiff, operates three Indian fast food restaurants specializing in the “katiroll,” a type of street food that originates from India. Two of these stores are located in New York City, and the third in London. Katiroll owns a trademark for “The Katiroll Company” and has been operating these restaurants under that name since 2002. The Katiroll restaurants have a distinctive look about them, with similar layouts and color schemes associated with all the locations.

Katiroll was approached by Defendant sometime in 200, who proposed opening a franchise of Katiroll in New Jersey. Katiroll declined this invitation. Defendant then proceeded to open a store in New Brunswick, New Jersey, under the name “Kati Roll and Platters.” The court noted, the defendants restaurant was eerily similar in layout, and shared the same color scheme and overall feel of the original Katiroll stores of New York City.

These similarities also gave rise to substantial confusion between the ownership and management of the stores. Katiroll supplied testimony from various individuals expressing this confusion.

Elements of Trade Dress Infringement

To prove “trade dress” infringement, a plaintiff must show that (1) the alleged infringing design is non-functional (thereby preventing one manufacturer from acquiring a monopoly); (2) that the design is inherently distinctive or has secondary meaning (thereby eliciting some identifying significance to the product); and (3) that consumers are likely to be confused as to the source of the product.

In trademark infringement disputes, the intent to imitate a more successful product – whether that intent is shown directly or inferred from the circumstances – is a significant element in determining whether infringement has occurred. In this case, the plaintiff was helped by the defendant’s behavior, including some questionable postings on the Internet, that indicated that the defendant may not have been acted with innocent motive. The order entered by the Court required the defendant remove any statements that suggest affiliation to Katiroll on the Internet and to change the appearance of its store and marketing so as to distinguish itself from Katiroll.