Ever wonder how Apple secured rights over its distinctive look? How can you create your own product or brand so that it stands out from competitors and is easily recognizable? This article will guide you through the process. It covers trade dress laws and practices, including:
- How to understand trade dress as a legal concept and valuable asset.
- How to document and register your product or brand’s trade dress and the costs associated with doing so.
- How to distinguish trade dress protections from a design patent.
What Is Trade Dress In Layman’s Terms?
Trade dress is a complex legal concept because it aims to capture something that is quite difficult to articulate: how the look and feel of a product or place create an association in consumers’ minds with a particular source, brand, or company.
There are many well-known examples of trade dress in action, some of which you may already be familiar with without even realizing it.
What Are Some Examples Of Trade Dress In The Market?
Consider the shape of the Coca-Cola bottle; that is trade dress. People recognize that bottle shape and immediately think of Coca-Cola. Similarly, when people see white packaging with a thin font, they often think of Apple.
These are considered trade dress because the look and feel of something, usually the product, instantly identifies the company or brand, thanks to the secondary meaning associated with it in consumers’ minds.
What Can Be Considered Trade Dress?
While trade dress can include product design, it extends beyond just that. If you walk into a store with glass surroundings and wooden tables displaying products and immediately think you are in an Apple store, you are experiencing trade dress in action.
Ultimately, almost anything a consumer links to a particular product or company based on its look or feel can be considered trade dress. It is incredibly valuable but also challenging to obtain.
What Is The Legal Basis For Trade Dress Protection?
Is Trade Dress Federal Or State Based Intellectual Property Protection?
Like virtually all trademark law, trade dress is federal law. State laws also provide some protections, but the foundational basis of trademark and trade dress law is anchored in federal law. For example, Lanham Act provides the basis for most American trademark law, which also protects trade dress. This applies across the United States.
Additionally, trademark laws are fairly uniform across different nations. Most countries have strong cooperation in terms of agreements over trademarks and trade dress. Unlike patents, you can obtain trademark or trade dress protections across national boundaries relatively easily by using the Madrid Protocol.
What Is The Process For Registering Trade Dress With The USPTO?
Trademark and trade dress registration with the United States Patent and Trademark Office (USPTO) require different types of proof.
To register your mark as a trademark with the USPTO, you only need to show your use of the mark. The level of public recognition of your mark is not relevant. As long as you are using the mark or intend to use the mark, you can get it registered.
Obtaining trade dress protection is considerably more difficult. To obtain trade dress protection, you have to prove that the look and feel of your products have attained a secondary meaning, that is, the look and feel of your product evokes an association with your brand in eyes of the public. Since it takes time for the public to form a perception of your product, you may need to consistently package your product in specific ways over many years for the look and feel of your product to be recognize by the public.
Attorney John Lin is a skillful California intellectual property lawyer whose tech and engineering background have set him up perfectly to excel in the field. His firsthand knowledge and unique insider perspective also mean that he understands exactly what innovators and entrepreneurs need to build their companies or products on sound legal footing.
Do you have a product or look you would like to protect with a trademark or trade dress?
Contact John Lin today to schedule an initial consultation.
How Can I Document My Product’s Trade Dress?
To register for trade dress protection, you need to provide proof that the public is already associating the look and feel of your product with your brand. To provide such proof, you may perform some of the following to document how your product is perceived by the public:
- Conducting consumer surveys to demonstrate public perception of your product
- Providing proof that you control the advertising of your product.
- Demonstrating media coverage of your product
- Showing evidence that competitors or ordinary individuals are copying your product.
This process can be challenging and is typically more expensive than trademark protection.
How Much Will The Trade Dress Registration Process Cost My Company?
Obtaining a trademark is generally affordable. The USPTO fees for a trademark are reasonable, around $500, with a total cost of $800 to $1,500, including attorney fees and other expenses.
For trade dress, the USPTO fee is roughly the same, but attorney fees will be significantly higher. This is because you must work closely with an attorney to provide sufficient proof of the secondary meaning of your commercial impression. Due to the subjective nature of proving secondary meaning, the process of securing trade dress protection may take significantly longer than trademark registration.
How Long Does It Typically Take To Obtain Trade Dress Protection?
It is wise to estimate roughly two years to obtain trade dress protection. Just like with trademarks, it usually takes around two years after you submit the application, though it can significantly longer for more complicated cases, such as when secondary meaning is difficult to demonstrate.
What’s The Difference Between Trade Dress Protection And A Design Patent?
Trade dress protects the public perception associated with the look and feel of your product, space, or other customer-facing aspects of your brand or company. In contrast, a design patent is meant to protect the specific ornamental appearance. While ornamental appearance and look and feel may sound similar, it is important to emphasize that design patent requires novelty while trade dress does not.
As a strategy, when you create a new look and feel for a product, you should apply for a design patent to protect its novelty. You may apply for trade dress protection later, when the look and feel of the product has established a secondary meaning in the market and in the mind of consumers.
Why Do I Need Trade Dress Protection If I Have A Design Patent?
Trade dress protection may allow your product’s innovative design to continues to be associated with your unique brand, company, and approach, even after the design patent’s 15-year protection expires.
Indeed, in many ways, design patents and trade dress are opposites. A design patent protects the novelty of the design, but that novelty is not advantageous when applying for trade dress protection for the design. For trade dress, you want a well-established secondary meaning once people recognize and associate your company with the design. Despite their differences, design patent and trade dress can be complementary.
Take the Coca-Cola bottle, for example: when first imagined, the company might apply for a design patent. Once the bottle design becomes popular and well-known, the company may apply for trade dress protection. Unlike the design patent, which lasts only 15 years, trade dress protection can last indefinitely. As long as you provide evidence of the secondary meaning of the design and re-register with proof, you can benefit from trade dress protection forever.
What Do I Have To Be Careful To Avoid When Applying For Trade Dress?
Design patents, trade dress, or trademarks require that the item you are trying to protect is non-functional.
Trade dress or design patents must be purely ornamental, focusing on look and feel. Unfortunately, if you have a utility patent on the product, it indicates that what you are protecting is actually functional. As a result, you cannot protect a design with a design patent, trademark, or trade dress if you have applied for a utility patent on the design. Therefore, if you believe something has the potential to become an iconic look or feel associated with your company, avoid obtaining a utility patent on it.
This also means that if you receive a warning letter from someone claiming you have infringed upon their registered design patent, trademark, or trade dress, their claim may be challenged or overturned if there is already a utility patent protecting an element of the claimed design patent, trademark, or trade dress.
For more information on Understanding Trade Dress, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (949) 844-5505 today.
Attorney John Lin is a skillful California intellectual property lawyer whose tech and engineering background have set him up perfectly to excel in the field. His firsthand knowledge and unique insider perspective also mean that he understands exactly what innovators and entrepreneurs need to build their companies or products on sound legal footing.
Do you have a product or look you would like to protect with a trademark or trade dress?
Contact John Lin today to schedule an initial consultation.
