Perhaps you've read last week that the U.S. Patent and Trademark Office granted Apple a trademark registration on the interior design of its retail stores. Initially rejected on grounds that the design is not inherently distinctive, Apple introduced evidence of substantial business activity generated by its stores, promotional events tied to the stores, photographs of the stores on Apple's website, examples of unsolicited media coverage, and other evidence to show that its trade dress has acquired distinctiveness and deserves trademark protection. The registration issued on January 22, 2013. The covered design comprises "a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store's ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark."

On the other hand. and also last week, pizza retailer Happy's Pizza Franchise, LLC of Farmington Hills, MI failed in its attempt to enjoin competitor Papa's Pizza, Inc. from using an allegedly similar interior restaurant design. Happy's claimed common law protection in the following elements of the interior or its restaurants:

  1. Granite countertops and tabletops
  2. Ceramic tiled walls and faux-Venetian plaster finished walls
  3. Extensive neon lighting
  4. Ceramic floors
  5. Large back-lit menu with faux-Venetian plaster walls
  6. Large, black industrial style rugs
  7. Back-lit pictures of menu items
  8. Stainless steel shelving units behind service counter
  9. Stacks of pre-folded pizza boxes and large coin-operated candy and bubble gum dispenser.

Happy's sought trade dress protection under Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a). Trade dress is the total image of a product, including all of its identifying characteristics, e.g., size, shape, package, and sales techniques, which make it distinguishable from other products on the market. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763. 764 n.1 (1992). To succeed on such a claim, the plaintiff must show that: (1) the trade dress is distinctive, (2) the trade dress is primarily non-functional, and (3) the competitor's trade dress is confusingly similar. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (2d Cir. 1976). Descriptive trade dress can be protected upon proof of acquired distinctiveness (secondary meaning), but generic trade dress cannot be protected under any circumstances.

The United States District Court for the Eastern District of Michigan ruled that Happy's alleged trade dress was generic because of Happy's failure to introduce evidence that each of its restaurants uses the specific trade dress in question, that other fast food restaurants do not use those elements, that customer's exclusively associate those elements with Happy's, that other restaurants do not offer similar food combinations, and that all of the defendants restaurants also use the same elements. The evidence showed that Papa's used the elements in only one of its restaurants and that many other fast food chains used similar elements.

In specifically finding the Happy's trade dress generic, the Court stated "[T]here is an important distinction between arbitrarily selecting design elements that result in nothing more than a generic design. The former demonstrates a unique theme in order to distinguish the end product; the latter results in general overhead cost of doing business...Happy's used generic elements to create a fast food restaurant setting otherwise indistinguishable from any others. Without the use of the Happy's name and logo within the design or on the menu, there is nothing that would alert the average consumer that they are in a Happy's restaurant."

Clearly it is not enough to incorporate a series of design elements into a store design and hope for the best. Thought must be given to what aspects of a design can and cannot form the basis for a protectable trade dress and subsequent marketing efforts must focus to some degree on highlighting the design as a proprietary source indicator.