Consumers are accustomed to seeing words and images used as brand names but the federal law that protects trademark rights defines a trademark to include any device or symbol that identifies a source of a product or service, i.e. a brand. 

That includes things that are not words or images, such as sounds, colors and even smells. Trade dress is the term normally given to these nontraditional devices that function as trademarks. 

Trade dress is a broad category – it can protect a number of different aspects of a product. Examples of trade dress include: the configuration of a product (Nutter Butter cookies); product packaging (the fluted Coca-Cola bottle); the interior of a restaurant (McDonald’s); color (Louis Vuitton red soled shoes); and possibly even flavor. The Supreme Court of the United States has said that almost anything capable of carrying meaning can be trade dress.

Trade dress has to meet the same requirements that traditional trademarks must meet, but there are two requirements that are problematic. First, the trade dress elements cannot be functional. Functional elements are essential to the product’s purpose or use or they affect the cost or quality of the product.

For example, orange flavoring for medicine makes it more palatable to patients, and the pillow shape of shredded wheat biscuits is cheaper to produce than other shapes. Therefore, they are functional elements.  The purposes of trademark law would be circumvented if it allowed competitors to monopolize useful product features that are not otherwise protectable under patent or copyright law.

Second, the trade dress elements must be distinctive. Some forms of trade dress are considered “inherently distinctive.” Inherently distinctive trademarks are assumed to function as trademarks because consumers immediately see them as being indicative of a particular source. Made-up words and words that have no logical association with the products and services they identify are considered inherently distinctive. Good examples are “Exxon” for service stations and petroleum products and “Apple” for computers and other electronics.

However, other marks are not inherently distinctive but can be protected upon a showing of “acquired distinctiveness.” There are certain types of trade dress that are not considered to be inherently distinctive – namely, product design, color, flavor and scent. If the trade dress elements are not inherently distinctive, then acquired distinctiveness must be proven.

Proving acquired distinctiveness means showing the consuming public has come to recognize the applicant’s trade dress as signifying a particular source. For example, evidence of extensive advertising expenditures targeted to the trade dress itself, not just the products or services being sold, makes for good evidence of acquired distinctiveness.
The applicant can also submit evidence of which media channels were used when advertising and the frequency with which the advertisements were circulated.

Sales figures also make good evidence of acquired distinctiveness. Sworn statements from customers and company officials that large numbers of people recognize the trade dress as being distinctive can be persuasive. While expensive, surveys and market research showing the general public associates the applicant’s trade dress as distinctive of their brand are great evidence of acquired distinctiveness.

Generally, proving acquired distinctiveness involves providing a combination of the above categories of evidence.

Other types of evidence are generally unpersuasive. Proving that the applicant is the only one in the market that sells the product is unhelpful. Evidence of a competitor copying the trade dress does not prove acquired distinctiveness either, as competitors may copy something for a number of different reasons.

State trademark registrations of trade dress are not given any deference because they are issued according to different standards. 

Proving the trade dress is the subject of a design patent only proves it is ornamental. Proving that competitors stopped using trade dress in the face of the threat of litigation does not prove distinctiveness. 

Evidence presented to prove acquired distinctiveness must directly demonstrate an association in consumers’ minds between the trade dress elements and the source of the good or service.

Trademark law doesn’t just apply to words and symbols; it also applies to any device that can communicate the source of a good or service to a consumer. A number of nonverbal devices can be protected just like traditional trademarks, including the design, size, shape, texture, product color, color combinations, and graphics of a product. Trade dress can be a very effective way of protecting a product that is not otherwise subject to patent or copyright protection.

Russell is a native of Wilmington, N.C. and has been practicing law in Eastern N.C. since 2004. Prior to that, he worked in Chapel Hill and Durham as a research technician on teams exploring RNA-based gene therapies, viral fusion inhibitors, and the role Galactocerebroside plays in protein localization near nodes of Ranvier. After passing the patent bar in 2003 and becoming a registered patent agent, Russell received his law degree from Georgetown in 2004. He began his legal career representing clients in personal injury matters but later left personal injury to provide patent prosecution services to law firms in China and Taiwan prior to joining The Humphries Law Firm in 2014. Russell helps individuals and businesses protect their innovations, creations and business information using strategies based in patent, trademark, copyright and trade secret law. His work includes both strategic planning and dispute resolution. He assists clients who want to buy and sell businesses, and license or transfer their intellectual property assets. Russell also assists with the firm’s litigation practice, particularly in insurance and employment disputes.