HINT: It’s not a word, or a logo
Apple has a trademark registration for the Apple Store Design. Building a valuable brand begins with selecting, then protecting a word and logo to represent the good will of a company. Brand names and trademarks are the means by which the public recognizes a particular product. Once established, a brand name conjures up an association in the consumer’s mind albeit unconscious, and hopefully the association is positive.
Trademark registration is available for more than words and logos. Trademark registration can be obtained for trade dress. Protection for trade dress should not be overlooked by new brands, especially where there is a product which introduces a distinct look and feel to the product design.
Examples of protectable trade dress include store designs, the shape of a classic automobile, a magazine cover design, the “G” shape of the frame of a GUCCI watch, the appearance of a video game console, a fish shaped cracker, just to name a few. Trademark registration and protection for these oddities are called trade dress. My favorites are the layout and appearance of a Mexican restaurant, and the look of a musical group on stage!
In legal circles, the common accepted definition of trade dress is: “The total appearance and image of a product, including features such as size, texture, shape, color or color combinations, graphics, and even particular advertising and marketing techniques used to promote its sale.”
Trade dress is the composite tapestry of visual effects.
Definitions are fine, but trade dress is best recognized by seeing it
As the saying goes, a picture is worth a 1000 words. So, here are some pictures. Can you recognize what’s protected in these photos? Note, one of the four is not protected at all since the court ruled the claimed trade dress was functional. Can you guess which one? The answers are provided below.
Trademark registration for trade dress
In order to be registered, trade dress must be distinctive, and the elements must be capable of being identified and defined in order for the public to exactly know rights what are being claimed. The Trademark Office requires that the claimed trade dress be “inherently distinctive.” Even if registered, when it comes time to sue over infringement, there’s one big defense namely that the claimed trade dress is “functional.”[note]In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”Inwood Labs. Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)[/note]
Let’s start with the product above whose appearance was recently held functional.
HINT: Anyone have an iPhone? Apple may have succeeded in protecting its store design but it hasn’t fared so well with the product configuration of the iPhone. In 2015, Apple lost an appeal to the Federal Circuit in its law suit against Samsung over the appearance, including the shape of the iPhone. (Apple one a huge verdict for claims of patent infringement in the same case).[note]Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983 (Fed Cir. 2015)[/note]
Why? Trade dress does not cover functionality. As a result, configuration of a product is more difficult to protect.[note]There are four factors that the Ninth Circuit uses to analyze functionality: “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.1998)[/note] Further, when it comes to product configuration, there can be no registration unless the applicant can submit evidence that the configuration has acquired secondary meaning, i.e. that the configuration of the product is recognized by the public and associates is as a brand.[note]Trademark Manual of Examining Procedure 1202.02(b)(i)[/note]
A trade dress, taken as a whole, is functional if it is “in its particular shape because it works better in this shape.”
A product feature need only have some utilitarian advantage to be considered functional.
Answer as to what’s protected about the other three products
Adidas’ 3 stripes on the side of their shoes are non-functional. They adorn every pair of shoes and are highly protected as a trademark.
The Lifesaver Hole. A candy doesn’t need to have a hole, so the hole in the Lifesaver is not functional! It’s highly recognized by the public. So when it comes to candy, “no holes allowed.”
The Christian Louboutin Red Sole. Just the red sole alone is not distinctive. However, the red shoe sole in combination with a different color shoe is. See those red soles on a black stiletto. That’s a strong trademark.
When building your brand, think outside the proverbial box. There may well be a strong element of your product or service that is highly protectable besides a word or logo.