Under the United States trademark law, trade dress is a legal concept and legal term pertaining to the art used to characterize the visual appearance of a product or its packaging. As a subcategory of trademark and a type of intellectual property, trade dress signifies the source of the product.
Because trade dress creates a visual impression that functions similar to a word or symbol used in a trademark, it is sometimes referred to as a visual trademark.
The primary purpose of trade dress law is to promote healthy competition in the marketplace by discouraging imitators and protecting consumers from producers who imitate the physical appearance or packaging design of another more popular product, thus preventing the general public from buying one product under the belief that it is another.
In other words, trade dress law is another way from discouraging the production and consumption of counterfeit items.
Legal foundation of trade dress law in the United States
Like trademark, constitutional and statutory laws are the basic legal sources or foundation of trade dress law in the U.S. Take note of the following:
United States Constitution: Under Article I, Section 8, Clause 3 of the U.S. Constitution, otherwise known as the Commerce Clause, the U.S. Congress has the power to regulate congress. This serves as the constitutional foundation of trade dress law in the U.S.
Trademark Act of 1946: Also known as the Lanham Act, the Trademark Act of 1946 is the primary federal statutory law that governs trademark and trade dress in the U.S.
United States Code: Title 15, Chapter 22 of the U.S. Code codifies and outlines all laws pertaining to trademark in the U.S. It describes the scope and limitations of trademark, the two different trademark registers, the conditions and remedies for patent infringement, and the functions of the U.S. Patent and Trade Office.
Acquiring and registering trade dress right in the United States
According to the Lanham Act, the trade dress of a product can be protected without formal registration with the U.S. Patent and Trade Office. Unregistered trade dress may be protected by federal and state competition laws.
Trade dress may be registered as a trademark with the U.S. PTO in either the Principal Register or the Supplemental Register. As mentioned, even though registration is not required, a registered trade dress provides several advantages. These advantages are guaranteed under the trade dress law of the U.S.
When registered under the Principal Register, the trade dress acquired nationwide constructive use and constructive notice. This prevents other from using the trade dress. In addition, registering under the Principal Register gives the trade dress an incontestable status after fives. This status prevents another party from legally challenging the registration in its attempt to acquire the ownership of the trade dress.
On the other hand, the trade dress can also be registered as a trademark under the Supplemental Register. However, take note that the Principal Register offers more protection than the Supplemental Register.
Similarities between trade dress and design patent
There are several apparent similarities between a design patent and trade dress. Both intellectual property protections give owners the legal capacity to prevent others from making, using, or selling a product that so resembles his or her patented and trademarked product.
Hence, both trade dress and design patent are legal concepts intended to promote the non-existence of similar-looking products in the market.
Another similarity between a design patent and trade dress is that both take into consideration the aesthetic and visual characteristics of a product. These intellectual property protections are applicable if they do not serve a utilitarian function, and must be “distinctive” or that they must identify the source or manufacturer of the product.
With design patent and trade dress thereby, dual protection from both patent law and trademark law may coexist. This also means that the owner of the patent and trademark rights can also charge an alleged infringer with multiple offenses.
Differences between trade dress and design patent
Of course, there are critical differences between trade dress and design patent. The first is difference in legal justification. Design patent is intended to encourage inventors or businesspersons to develop novel ornamental designs for their products. The legal justification is merely ornamental and thus, to encourage design novelty and progress in the market.
On the other hand, trade dress is intended to prevent the public from being confused due to similar-looking products. The legal justification is to position design as an indicator of source and thus, to prevent competitors from passing off a product using an identified of an established source.
The second difference between trade dress and design patent is tenure. Design patents grant a would-be owner exclusive rights to the product for a period of 14 years. However, at the end of this period, the exclusivity of the design characteristics becomes available to the public.
On the other hand, trade dress being a category of trademark, can exist forever through proper maintenance.
The third difference between trade dress and design patent is infringement determinant. Infringement of design patent is determined by two stages. In the first stage, one determines what ornamental features of the patented design are not shown in the prior art and whether one or more of these were appropriated by the product alleged to infringe. If not, there is no infringement.
In the second stage, if there was appropriation of one or more of the unique features, then a second test is applied. One looks at both the similarities and differences between the two products to determine if there is sufficient overall similarity to deceive the ordinary observer. If so, infringement exists.
On the other hand, infringement of trade dress is determined by three factors: non-functionality, secondary meaning, and likelihood of confusion
Between design patent and trade dress, the latter has stringent infringement determinant. To be specific, the “secondary meaning” determinant factor is not something that the owner of rights can easily create. Take note that this factor is normally acquired after several years through marketing and advertising.
EDITOR’S NOTE: This article is part of a series about intellectual property rights in the United States. (1) An introduction to intellectual property rights in the United States; (2) Understanding copyright law in the United States; (3) Facts about patent law in the United States; (4) The basics of trademark law in the United States; (5) An overview of trade dress law in the United States; (6) Background on trade secret law in the United States