Trade Dress

How Trade Dress Differs from Other IP

Trade dress occupies a unique space between trademark and design patent protection:

Key Legal Principles

Distinctiveness

Trade dress must be distinctive — meaning consumers associate the overall appearance with a particular source. The Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc. (1992) held that inherently distinctive trade dress is protectable without proof of secondary meaning.

For product design (as opposed to product packaging), the Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000) held that product design is never inherently distinctive — it always requires proof of acquired distinctiveness (secondary meaning).

Non-Functionality

The functionality doctrine prevents trade dress from being used to grant perpetual monopolies on useful product features. If a design feature is essential to the use or purpose of the product, or affects its cost or quality, it cannot be protected as trade dress.

The Supreme Court in TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001) held that if a feature was claimed in an expired utility patent, there is a strong presumption that the feature is functional and not protectable as trade dress.

Likelihood of Confusion

Trade dress infringement uses the same likelihood of confusion analysis as trademark infringement. Courts consider factors including the strength of the trade dress, similarity between the designs, proximity of the products, evidence of actual confusion, and the defendant's intent.

Trade Dress Online

In e-commerce, trade dress protection matters because:

• Product photography — Knockoff products that copy a product's distinctive appearance (without using the brand name) can be identified through visual similarity monitoring
• Website design — A website that copies the overall look and feel of a brand's online store may infringe trade dress
• Packaging imitation — Sellers using similar packaging design to create source confusion, even with a different brand name

Trade dress claims are more complex to enforce online than trademark claims (which benefit from automated keyword matching), but they provide an important tool against sophisticated counterfeiters who copy the design while avoiding the trademark.