The requirements to protect unregistered trade dress are well established. Still, it’s worth revisiting this subject from time to time, whether for trademark novice or pro.
At one time, trade dress only included packaging or “dressing” of the goods, but modern courts have pretty much universally expanded the meaning of trade dress to include the design of a product. For example, the shape of the Coke bottle, the red sole of a Christian Lorboutin shoe, the shape of the Weber BBQ kettle. See, Stuart Hall Co., Inc. v. Ampad, 51 F.3d. 780 (8th Cir. (1995)). Unregistered trade dress is protected. If not registered, the burden is the owner’s to prove if the trade dress meets all requirements to make it protectable. Lanham Act Section 43(a)(3) specifically refers to a civil action for trade dress infringement for trade dress not registered on the principal register. If registered on the principal register, it is presumed that the trade dress is distinctive, with the owner having demonstrated secondary meaning to the examiner.
Section 43(a) provides little guidance as to under what circumstances unregistered trade dress is protectable, and the Supreme Court was faced with this question in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000). The Court was quick to point out that to be protectable, in any case, it must be non-functional and its use by the junior user must be likely to cause confusion. Nothing novel in those two requirements, of course.
There is nothing in Section 43(a) that would require trade dress to be distinctive, but as the Court pointed out, if it is not distinctive, likelihood of confusion probably wouldn’t result because consumers would not associate product configuration with a source.
Marks other trade dress can be distinctive in one of two ways. They can be inherently distinctive because they are categorized as fanciful, arbitrary or suggestive, or if merely descriptive they can acquire secondary meaning through use – that is, an association with the source of the goods or services in the minds of consumers.
The Supreme Court distinguished trade dress from other marks, holding, “It seems to us that [product] design like color, is not inherently distinctive.” The Court did not believe that in the case of product design, as like color, that consumers were predisposed to equate the feature with the source.
Accordingly, the rule is that product design cannot be protected as trade dress under Section 43(a) unless the mark’s owner is able to establish secondary meaning. This occurs when the design becomes associated with a source in the minds of consumers; this happens through volume of sales, large advertising expenditures, manner and term of use of the mark.