Fights over trade dress are legendary, costly and complicated but sometimes very necessary. The entire point of the product’s trade “dress” is to identify its source, i.e., the manufacturer, etc., in the eyes of the public. In this way, an excellent distinctive product may establish an outstanding reputation for the business.

Under the law, the subject “trade dress” must be: 1) used in commerce; 2) non-functional; and 3) distinctive.

The dictionary meaning of “distinctive” is “characteristic of one person or thing, and so serving to distinguish it from others.” In this context, the “it” is the product source, not the product itself.

The marked distinction

Trade dress differs from the more commonly known and understood “trademark.” A

trademark is typically a word or a symbol of some sort placed on the product itself or perhaps its packaging, or both. For example, Shell Oil used a mark in the form of a shell from the ocean.

The mark’s purpose is to protect those engaged in commerce from unfair competition. When someone attempts to sell inferior goods under another’s mark, this skullduggery is

known at common law as “passing off.” That is, “representing one’s goods or services as

those of another.” Two Pasos, Inc., 505 U.S. 763, 778 (1992).

The so-called Lanham Act, a federal statute enacted in 1947, “creates a federal cause of action for trademark and trade dress infringement claims.” Id. 780. “Marks are often classified in categories of generally increasing distinctiveness.” Id. at 768.

The classic definitions for a trademark are: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir. 1976).

“The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection.” Two Pasos, Inc. at 768.

It is well-established that “[m]arks which are merely descriptive of a product are not inherently distinctive. When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected.” Two Pasos, at 769.

Trade dress defined

Trade dress involves “the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” Gurglepot, Inc. v. New Shreve, Crump & Low LLC, 153 F. Supp. 3d 441, 448 (D. Mass. 2015).

Trade dress has also been defined as “‘the design and appearance of a product together with elements making up the overall image that serves to identify the product presented to the consumer.’” Hillside Plastics, Inc. v. Dominion & Grimm USA, Inc., 2018 WL 4537205.

Design itself is not fine

Trade dress can be manifested as a product’s packaging. A company claiming a trade dress violation must demonstrate to the court that its product’s dress is, in fact, distinctive inherently, or by acquiring distinctiveness, also known as “secondary meaning.”

In this context, “inherently” means that the intrinsic nature of the product identifies a particular source. A product’s design or configuration, standing alone, has been found, never to be inherently distinctive. Wal-Mart, 529 U.S. at 213-214 (product’s design/configuration trade dress can never be found inherently distinctive).

The Supreme Court opined that “a product’s design-based trade dress ‘is distinctive, and therefore protectable, only upon a showing of secondary meaning.’”

Secondary meaning occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Inwood

Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n. 11 (1982).

Unlike trade dress, “[t]he attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.” Wal-Mart at 212. “[W]here product design is concerned we have little confidence that a reasonable clear test [for inherent distinctiveness] can be devised.” Id. at 213.

Product packaging may be inherently distinctive. Smartling, Inc. v. Skawa

Innovation Ltd., 358 F.Supp.3d 124, 148 (D. Mass. 2019). Indirect proof of secondary meaning requires consideration of the following factors:

the length and manner of the use of the trade dress;
the nature and extent of the advertising and promotion;
the efforts used to promote a conscious connection between the public, the trade dress and the source;
the products’ established place in the market (possibly through continuous use in the market); and
proof of intentional copying.

Genesis Strategies, 50 F.Supp.3d at 67 (D. Mass. 2014).

The inquiry is highly fact intensive. As to the fifth factor set forth above, in the context of a competitor copying the design and look of a website, the court found:

“There is … little doubt that [defendant] copied other aspects of Smartling’s trade dress. Although it may be that [defendant] copied Smartling’s website out of mere laziness, it would not be unreasonable for a jury to conclude that [defendant] copied features of Smarling’s [sic] website because they viewed [it] as distinctive and attractive to consumers.” Id. at 150.

The court in Smartling found that there was enough evidence to show a possible likelihood of confusion.

Secondary meaning is primary

The proof of the existence of secondary meaning, or acquired distinctiveness, “‘entails vigorous evidentiary requirements.’” Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 43 (1st Cir. 2001).

These include proof of “actual confusion,” as well as intentional copying of the trade dress at issue. Other items of proof include, but are not limited to: similarity of the goods; juxtaposition of advertising; and classes of purchasers.

In Big Top USA v. Wittern Group, 998 F. Supp. 30 (D. Mass 1998), the District Court refused to grant preliminary injunctive relief to the plaintiff, who made giant gum ball machines. I represented the defendant accused of copying the design of said machines, and selling same in competition with the plaintiff. After taking live testimony from the parties, the court made the following findings:

“… the Court concludes that Big Top has failed to demonstrate a likelihood of confusion. On Big Top’s side of the ledger is the following evidence: (1) [defendant’s] intent to copy Big Top’s trade dress … (2) the similarity of the fanciful trade dress; (3) the similarity of the product; and (4) the similarity of the channels of trade, with both sides marketing their gumball machine primarily to vendors.”

It is critical to note that the owner of a product who wants to preserve it via trade dress can register the design with the U.S. Patent and Trademark Office. Such registration serves as constructive notice of the registrant’s ownership of the trade dress.

For the defendant “copier’s” side, the court found:

“… the following factors: (1) the high level of sophistication of the vendors; (2) compelling evidence that the vendors were never confused and fully understood that [defendant] manufactured [similar machines]; (3) little possibility that consumers are likely to be confused based on the large differential in price between the machines; (4) the relative weakness of the Big Top trade dress given Big Top’s new in the gumball market; and (5) the lack of evidence that Big Top had established goodwill in the marketplace.” Big Top USA at 53-54.

Ultimately, the court refused to issue the requested injunction, which would have effectively put the defendant out of the market. Id. at 54.

The court noted from the outset that copying per se is not illegal: “One has the right to ape — if he can — the unpatented product.” Hypertherm, Inc. v. Precision Prods., Inc., 832 F.2d 697, 700 (1st Cir. 1987). “‘Copying is not only good, it’s a federal right — a necessary complement to the patent system’s grant of limited monopolies.’” Id. at 42.

Which test is best for trade dress?

In a subsequent 1998 1st Circuit case, the appellate court pointed out:

“Courts have struggled with whether the Abercrombie test, originally designed for words, should be imported wholesale into that specialized area of trade dress claimed to come from product design.” I.P. Lund Trading APS v. Kohler Co., 163 F.2d 27, 39 (1st Cir. 1998).

The Lund court also opined that “‘[t]he functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.’” Id. at 36.

It is critical to note that under the Lanham Act, the owner of a product who wants to preserve it via trade dress can register the design with the U.S. Patent and Trademark Office. Such registration serves as constructive notice of the registrant’s ownership of the trade dress. The effect is to shift the burden of proof from the plaintiff, who in a common law infringement action would have to establish his right to exclusive use, to the defendant. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 373 (1st Cir. 1980).

Thus, registration should be attempted for all trade dress.

Andrew P. Botti practices in the litigation department at McLane Middleton, which has offices in Massachusetts and New Hampshire.