Protection & Litigation

The trade dress attorneys of Klemchuk Kubasta LLP understand that businesses often overlook a potentially valuable asset by neglecting to identify, protect, and enforce their trade dress rights.  When properly developed and protected, trade dress rights can be used to prevent competitors from confusing consumers with “knock-off” products.  Although trade dress can take many forms, the most common types of trade dress are product packaging or product configuration, each of which can be particularly valuable when distinguishing from competitive products.  It is thus advantageous for a business to be proactive by taking reasonable steps to protect and enforce any trade dress rights it may have.

Trade dress is a sub-category of trademark law that can be broadly defined as the total image and overall appearance of a business or its products.  A trade dress is protectable if it is: (a) non-functional; and (b) inherently distinctive or has acquired distinctiveness (secondary meaning) in the minds of consumers.  If either requirement is not satisfied, then the trade dress cannot be protected against copying by competitors even if consumers are being confused (subject to the possibility that other legal remedies may be available).

It requires substantial time and expense to create and promote a distinctive trade dress that provides a competitive advantage.  It thus stands to reason that such trade dress should be identified, protected, and enforced to prevent competitors from adopting confusingly similar trade dress features and eliminating such competitive advantage. 

Features Subject to Trade Dress Protection  

The definition of trade dress is quite broad, thus it is impossible to create an exhaustive list of all features that can form part of a protectable trade dress.  Nevertheless, following is a partial list of features that can form all or part of a protectable trade dress: 

• Size
• Shape
• Color (or color combinations)
• Texture
• Graphics
• Sales Techniques 

To illustrate how the above features can form part of a trade dress, following is a partial list of examples of trade dress deemed protectable by various courts:  

• Restaurant decor
• Beverage bottle shapes
• Automobile overall design
• Overall look of line of greeting cards
• Building shapes
• Pill capsule colors and shapes
• Fiberglass insulation color
• "Signature" golf holes

Registration of Trade Dress 

Just as a word or logo trademark can be registered with the U.S. Patent and Trademark Office (www.uspto.gov) pursuant to the Lanham Act, so can a trade dress that satisfies the requirements of non-functionality and distinctiveness. Depending on the circumstances, registration of the trade dress may be on the Supplemental Register rather than the Principal Register.

Although an unregistered trade dress can still be protectable under federal and state unfair competition laws, registration of a trade dress offers substantial benefits.  Among others, federal registration of a trade dress on the Principal Register: (a) offers prima facie evidence of a registrant’s exclusive right to use the trade dress; (b) shifts the burden to the accused infringer to challenge the validity of the registration; and (c) provides nationwide priority over subsequent users.

Litigation of Trade Dress and Related Claims

K&K trade dress lawyers regularly advise clients on enforcement and/or defense of trade dress claims, as well as causes of action that often accompany claims of trade dress infringement, such as unfair competition, business disparagement, and trademark infringement.  Our attorneys are experienced in seeking and resisting preliminary injunctions and temporary restraining orders in state and federal courts.  K&K also acts as local counsel to out of state plaintiffs and defendants involved in trade dress infringement and unfair competition cases in federal and state courts in Dallas, Texas. 

For a claim of trade dress infringement to succeed, the requirements of non-functionality, distinctiveness, and likelihood of confusion must all be satisfied.  Trade dress infringement is highly fact dependent, thus each case will vary widely.

The trade dress practice group of Klemchuk Kubasta LLP has substantial experience in advising clients on all manner of trade dress matters, including trade dress registration, trade dress enforcement, defense of trade dress claims, and causes of action that often accompany claims of trade dress infringement, such as unfair competition, business disparagement, and trademark infringement.  Contact us for more information. 

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