In addition to the words or logos accompanying a product or service, the physical structure and/or packaging of a product or the distinctive locations where a service is offered also can serve as powerful mechanisms to identify and differentiate the product or service in the marketplace. The shape of a Coca Cola® bottle or the seven vertical slots in the front grill of a Jeep® or the red and white color scheme of a Target® store all serve the same essential functions for their associated brands as do the names of those brands. In light of this, protection of such “trade dress” can be one of the most important parts of many business’ intellectual property enforcement initiatives.
As with trademarks, practical trade dress protection begins with registration. In order to be eligible for the protections that registration provides, trade dress first must satisfy the same basic, initial test as trademarks – that is, does the dress primarily serve to identify or distinguish associated goods or services in the marketplace? The important part of that question to keep in mind especially when considering trade dress is the word primarily.
Most trade dress serves – or originally served – some other purpose. A Coca Cola® bottle holds liquid. The slots in a Jeep® grill allow air to pass to the engine compartment. A Target® store houses merchandise and store operations. However, over time the designs of these items have become more important as indicia of the associated brands than as functional packages or structures. It is at the point where the design of a product becomes primarily non-functional that its eligibility for trademark registration and strong protections begins.
There is a long history of business disputes being waged in and out of court over the question of where on the primary purpose spectrum a product design falls. Most recently, we have seen high-profile disputes involving Louis Vuitton® purses as well as a contentious battle between Jeep® and Hummer® over the protectability of that famous grill. Many businesses would do well to consult with counsel in the establishment of a strong trade dress registration, monitoring, and enforcement program to protect their distinctive designs.