Ten ways to “trade dress” for success

This article is for informational purposes only. It should not be construed as legal advice for any individual matter, nor does it create an attorney-client relationship between you and the author or the publisher. Guidelines pertain to U.S. law only.

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Words and logos are often the most recognizable signifiers of brands, so it’s no accident that they are the most common types of trademarks. In recent decades, however, a growing category of trademarks has opened new opportunities for the clever strategist or brand manager to define and protect a brand. When an item’s “total image and overall appearance” successfully identifies its source like other trademarks do, that look and feel can function as a trademark. The components comprising that look and feel are called trade dress.

Anything that distinguishes one item in the marketplace from another and that identifies the source of that item can be a trademark—it tells consumers who makes the item bearing the mark. Any “word, phrase, symbol or design” works. The standard building blocks of brand identity are individual terms and images, combined or standing alone. In 1958, the USPTO determined that a product’s package—its dress—was also a “symbol or device.” Since then, the law of what can function as trade dress has expanded rapidly.

Determining whether trade dress is registrable prompts a new question unnecessary for other marks: is the mark functional? Functional components either:

1. are essential to a product’s use or purpose;
2. affect its cost or quality; or
3. primarily make it more aesthetically appealing.

Functional components are ineligible for trade dress protection. However, nonfunctional trade dress creates new ways for brands to communicate with consumers, making trade dress a formidable tool in the savvy brand builder’s belt. Here’s a top ten list of types of trade dress:

 

Packaging

Sometimes, packaging is so distinctive that consumers don’t need to see a brand name to know what the package contains. The nature or purpose of the product cannot dictate a package’s shape, since that would make the packaging functional.

 

 

Product design

Product design is tricky, since most products are designed with function in mind. However, certain designs are effective because they stick in consumers’ minds for their uniqueness, not because the design improves the product’s usefulness or appearance. Such designs are trade dress.

 

 

Color

Hotly contested, color can become a forceful brand signifier when applied to a particular product or service. Two notes on color marks: First, color marks are not the same as marks including color as one component. Color marks occur when colors themselves indicate the product’s source. Second, colors are never inherently distinctive. Applicants for color marks must show that the consuming public associates that color with that entity. Such associations often take years to build, so these can be expensive investments. But the investment can pay off because color marks are often effective matriarchs of brand families.

 

 

To build its “brown” family, UPS has registered the slogan WHAT CAN BROWN DO FOR YOU⁴, as well as the words BROWN and BIG BROWN for transportation services and clothing items⁵, showing how color marks can extend into other types of marks.

 

To build its “blue” family, Tiffany has since registered marks including the blue shade, or words referencing it. These include the terms TIFFANY BLUE BOX (jewelry), TIFFANY BLUE (jewelry), and THE BLUE BOX CAFE (pending, restaurant services).

 

Architectural marks

Ever pass a store and intuitively know what it is before you see signage, just by how it looks? That’s good trade dress. Architectural marks typically don’t include any signage, names or logos – the marks are the look and feel of the buildings themselves. Examples: the Space Needle outline or a Walgreen’s retail store exterior.

 

Scent or fragrance

Scent marks are fairly rare. Functionality is a concern; if a product naturally smells like something, its scent is not protectable. Protectable scents are not used as an inherent quality of a product whose purpose is to smell good, like perfume.

Examples:

• Verizon’s “flowery musk scent” used in its retail stores¹¹. This scent is irrelevant to cell phones, making it an arbitrary mark.
• Eddy Finn Ukulele’s “scent of a piña colada” on its instruments¹², evoking a tropical environment where ukulele music might be common, making it a suggestive mark.

 

Sounds

Can’t get that jingle out of your head? Sounds can forge powerful connections between consumers and a brand. Note that sound marks do not protect artists’ right to perform or sell sounds, or taglines set to music. Consider using short sonic bursts that identify a particular item, especially for media, Internet and other content-heavy brands.

Examples:

• NBC’s chime¹³, described as “the musical notes G, E, C played on chimes.”
• 20th Century Fox’s orchestral introduction¹⁴, described as “nine bars of primarily musical chords in the key of B flat; the chords consisting of four, eighth and sixteenth notes.”

 

Motions

If sounds can identify items, so can movements. Sometimes they combine with sound (e.g., MGM’s Leo the Lion movie intro), sometimes not. The trademark is the motion that identifies the company using it, not the tangible design permitting the motion.

 

Shapes, patterns, and background designs

Beware aesthetic functionality. Patterns should elicit a consumer response of “This product comes from Company X, so I should buy it,” not “This product looks nice, so I should buy it.” Sometimes they include colors, sometimes not.

 

Flavor

Flavor marks are extremely rare. A unique combination and arrangement of flavors may identify the source of a product, like the one shown below. For another example, consider this hypothetical: if Katy Perry’s cotton candy-scented packaging for her album Teenage Dreams were edible and tasted like cotton candy, and consumers came to know that her albums (and only her albums) tasted like cotton candy, that could work as trade dress. (The mismatch between the product and its flavor is crucial. Cotton candy bags that taste like cotton candy would be generic.) Flavors might be a fun way for the right brand to break new ground.

 

3D marks

Is this really different than package design? Maybe not yet, but in a world where 3D printers are changing manufacturing, it’s worth considering whether a brand can leverage multidimensionality. Either way, the same parameters and cautions of package design marks apply, and 3D marks will almost always include some element of package design as well.

 

Conclusion

Brand strategists and marketers should carefully consider the options trade dress provide to define and protect a brand beyond words and images. The other senses and dimensions can also create strong connections between buyers and brands, and the legal guidelines that direct their protection and use have developed rapidly.

Do you have any stories of how your brand uses trade dress to create new forms of consumer engagement? Let us know in the comments below!

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Perry Gattegno leads the Trademarks and Branding practice at Litwin Law in Chicago and is the co-founder of Derby Fantasy Wins League. He focuses on clearance of trademarks for branding and naming agencies, trademark prosecution for entrepreneurs and businesses, and intellectual property strategy and counseling for all. A recovering journalist, he retains a soft spot for a good story. He likes short sentences and hates legalese.

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Notes:

1. U.S. Reg. No. 4151831 (Brown-Forman’s Chambord raspberry liqueur bottle)
2. U.S. Reg. No. 0911237 (Toblerone’s “mountaintop” chocolate bar)
3. U.S. Reg. Nos. 2901090, 2131693 and 2159865 (UPS’s brown, for its transportation and delivery services, uniforms, and trucks)
4. U.S. Reg. No. 2649286 (UPS slogan WHAT CAN BROWN DO FOR YOU)
5. U.S. Reg. Nos. 2688340, 3668335 and 3822439 (UPS marks BROWN and BIG BROWN for transportation services and clothing items)
6. U.S. Reg. Nos. 2184128, 2359351, 2416795: Tiffany & Co. blue
7. U.S. Reg. Nos. 4550678, 4804204, 5176498: Tiffany & Co. bag
8. U.S. Reg. No. 4177892: Tiffany & Co. key ring
9. U.S. Reg. No. 2775235: Space Needle outline
10. U.S. Reg. No. 3008035: Walgreen’s retail store exterior (canceled after registration)
11. U.S. Reg. No. 4618936: Verizon’s “flowery musk scent” used in retail stores
12. U.S. Reg. No. 4144511: Eddy Finn Ukulele’s “scent of a piña colada” on instruments
13. U.S. Reg. No. 0916522: NBC’s chime
14. U.S. Reg. No. 2000732: 20th Century Fox’s orchestral introduction
15. U.S. Reg. No. 2793439: Lamborghini’s scissor doors
16. U.S. Reg. Nos. 2728709; 3529814: Burberry plaid patterns
17. U.S. Reg. No. 1623869: The flavors of the Original Rainbow Cone
18. U.S. Reg. No, 3334940: Tea Forte’s pyramidal tea bag

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