Trade Dress Protectionfor Retail Store Designs CHEAT SHEET ■■ Clear description. A holder must By Erica J. Weiner and Monica Richman articulate the specific elements that comprise its distinct trade dress he Coca-Cola soda bottle, Kodak’s red and yellow so a court can evaluate film packaging of days gone by, the dripping wax on claims of infringement. Ta Maker’s Mark bourbon bottle —­­ these are all well- ■■ Distinctiveness. In known examples of trade dress in the form of product design order to claim acquired and packaging. Beyond such typical registrations, however, distinctiveness, applicants more and more companies in the retail sector have been typically submit evidence seeking trade dress protection for store design. documenting: (1) the Indeed, the United States and Trademark Office length and exclusivity (USPTO) granted Apple federal trademark registration for of use of the mark in the trade dress of its Apple Store interior (Reg. No. 4,277,914, the United States; (2) Jan. 22, 2013). The mark comprises the layout of the Apple the details concerning Store, featuring, among other things, a clear glass storefront, advertising of the mark; rectangular recessed lighting on the ceiling, recessed display and (3) the applicant’s spaces along the side walls, rectangular tables lined up in the efforts to associate the middle of the store and an oblong table with stools below mark with the source of video screens flush mounted on the back wall. The registration the goods and/or services. was the culmination of a multi-year prosecution and nearly ■■ Uniformity. For retail a thousand pages of submissions, where Apple carried the stores with multiple burden to prove that the spare, Scandinavian-inspired theme outlets or a national for its retail stores had acquired distinctiveness. reach, it is important Next, on July 10, 2014, the Court of Justice of the European that every store employ Union reversed the finding of the German Trademark a uniform theme so Office and ruled that Apple’s store layout was entitled to consumers exclusively trademark registration as “capable of distinguishing the associate the trade dress services of the applicant for registration from those of elements with the . other undertakings.” Apple Inc. v. Deutsches Patent-und ■■ Selective imitation. Markenamt, Case No. C-421/13 in the Court of Justice of A company might the European Union. incorporate a single element from a competing enterprise and perhaps escape infringement liability.

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While most companies are vigilant The standard for assessing distinc- US 205, 215 (2000), which describes about registering and policing their tiveness depends on the category of interior décor as either product marks, trade dress, particularly for trade dress for which protection is packaging or a “tertium quid” akin to retail store design, can be an over- sought — product design or prod- product packaging. Accordingly, it is looked segment of an otherwise uct packaging. The Supreme Court appropriate to analyze a retail store’s strong trademark portfolio. Beyond ruled that interior décor, such as a design under the product packaging increasing brand awareness, trade retail store, should be analyzed under standard for inherent distinctiveness, dress can bolster infringement claims, the product packaging standard for which generally classifies trade dress as evidenced by recent jury verdicts inherent distinctiveness. See Wal-Mart on a spectrum of increasing distinc- awarding substantial verdicts in favor Stores, Inc. v. Samara Bros., Inc., 529 tiveness, ranging from generic to of plaintiffs. For instance, this past February, Mixed Chicks, a maker of hair care products, won a $8.1 million trademark and trade dress infringe- ment verdict against a retail beauty supply store. Defining trade dress The term “trade dress” is the “total image” of a business, good or service “as defined by its overall composition and design, including size, shape, color, texture and graphics.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006). Examples of trade dress include pill capsule shapes and colors, a magazine’s cover format, the shape of perfume and wa- ter bottles, a briefcase style, restaurant décor and, perhaps, the look and feel of a website.1 In the retail arena, trade dress might include distinctive coun- ters or point of sale displays,2 overall store layout,3 signage4 or exterior building features.5 A claim for infringement requires showing that the plaintiff’s trade dress is distinctive, that it is not functional6 and that the defendant’s trade dress is confusingly similar to the plaintiff’s. 15 U.S.C. § 1125; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769-70 (1992). Trade dress must be “distinc- tive” in one of two ways: (1) “inher-  Erica J. Weiner is corporate counsel, IP and for MICHAEL KORS, where she is ently distinctive” because its “intrinsic responsible for IP and anti-counterfeiting issues worldwide. Weiner formerly served as Trademark nature serves to identify a particular & Counsel for Georgia-Pacific LLC and Trademark Counsel for Revlon. source”; or (2) possessing secondary [email protected] meaning, which occurs when, in the minds of the public, the primary sig- Monica Richman is a partner in Dentons IP & Technology practice and legacy chair of its nificance of the mark is to identify the Fashion, Apparel and Beauty group. She represents many known names in entertainment, source of the product rather than the fashion and financial services, and is ranked as a leading attorney by Chambers USA. product itself. [email protected]

102 ASSOCIATION OF CORPORATE COUNSEL TRADE DRESS PROTECTION FOR RETAIL STORE DESIGNS

Suggestive and arbitrary or fanciful trade dress are deemed “inherently distinctive,” but if a trade dress is merely descriptive, then a mark owner must establish that the trade dress has acquired “secondary meaning.”

descriptive to suggestive to arbitrary changing video images on the walls. characterized by the color yellow or fanciful. Suggestive and arbitrary or Microsoft registered a separate mark, and images of circles in yellow, red, fanciful trade dress are deemed “inher- Supp. Reg. No. 4,039,957 (Oct.11, orange, blue, green and brown colors, ently distinctive,” but if a trade dress is 2011), covering the wrap-around con- each with a white letter “m” inside merely descriptive, then a mark owner tinuous video screen band. the circle, throughout the display. The must establish that the trade dress has Floyd’s 99 Holdings: Reg. No. entire ceiling is yellow. acquired “secondary meaning.” A ge- 3,467,850 (July 15, 2008): The mark neric trade dress is never protectable. consists of a barber shop interior Noteworthy decisions with vapor lock lights in metal cages, Some recent court decisions offer Some retail examples: pendant lighting with exposed bulbs, excellent examples of retail trade dress Below are some recent examples of stainless steel countertops, a vertical distinctiveness, as well as the burden registered trade dress comprising the wall sign and a display wall for music- of proof needed to provide consumer interior and layout of retail stores; the themed posters. confusion in such cases. In Best Cellars, final trade dress example is still pend- Stuart Weitzman: Supp. Reg. No. Inc. v. Wine Made Simple, Inc., 320 F. ing with the United States Patent and 3797782 (June 1, 2010): The mark Supp. 2d 60 (S.D.N.Y. 2003), a wine Trademark Office (USPTO). consists of a retail store interior with retailer claimed that a competing shop Flight 001 Holdings, Reg. No. a color white ribbon pattern travers- copied its distinctive trade dress, which 3,453,856 (June 24, 2008): The mark ing walls and making up the design centered around organizing wines by consists of a retail store interior in the of tables, counters and chairs, and the taste category rather than by grape theme of an airplane cabin and 1960s- color white background covering the type or country of origin, and selling era airline travel, with curved walls, walls, ceiling and floor. The ribbon de- modestly-priced wines in a modern items on either side of the aisle, wood sign consists of long bands that invert, store with a color coded “wall of wine” paneling, a flight map, a rectangular fold and twist to give the illusion of a that stored the wines horizontally in light panel over the center aisle and large scale ribbon. The broken lines are tubular racks according to eight taste recessed lighting on the ceiling on not part of the mark and serve only to categories. The court found that the either side. show the position or placement of the plaintiff’s trade dress was inherently Microsoft: Supp. Reg. No. 4,036,534 mark. distinctive, because, on the whole, (Oct. 4, 2011): The mark consists of re- Mars, Inc.: Serial No. 85-614911 the elements made up a distinct and tail store interior with four curved ta- (Application approved July 2013; arbitrary total visual image to consum- bletops at the front and rear side walls application abandoned March 2014): ers. The court noted that even though and a rectangular band displaying The mark consists of a retail interior certain articulated elements were

104 ASSOCIATION OF CORPORATE COUNSEL TRADE DRESS PROTECTION FOR RETAIL STORE DESIGNS

“functional” for the purpose of retail wine sales (e.g., point-of-sale cards at a comfortable height, the use of display bottles, horizontal storage), the overall impression could still be protectable. However, the court declined to grant the plaintiff’s motion for summary judgment, finding material issues of fact regarding the consumer confu- sion factors. The district court noted that while the defendant mimicked plaintiff’s wine rack system and wine categories, it did not “slavishly” imitate the plaintiff’s decor, but “deviated shops is a question of fact. ...” Id. at 75- however it may be represented in or by from it in very significant ways.” The 76. This reasoning regarding proximity the written word.” court questioned whether the similar is instructive in other retail sectors be- Looking at the mark, the court features of both stores, or the diver- yond wine and can influence whether a found that Pure Power’s arrangement gent ones, dominated the consumer’s viable infringement case can be made of obstacles, in combination with its response (or confusion) to the overall or whether customer surveys and deft military-inspired design elements, was look of the wine shops. The plaintiff’s advertising practices could overcome a inherently distinctive and that the look store was characterized by light wood competitor’s legal defenses. and feel of the trade dress was source- paneled walls, stainless steel accents Most recently, in Pure Power Boot indicating and unique. However, in and brightly colored computer- Camp, Inc. v. Warrior Fitness Boot finding no infringement, the court held generated icons, while the defendant’s Camp, LLC, 813 F.Supp.2d 489 (2011), that the similarity of the marks was not store had an atmosphere of white an owner of a marine boot camp likely to cause consumer confusion. stucco walls with dark wood beams, style gym brought breach of contract The court held that the look and feel rusted metal signs and a painting of and loyalty claims and trade dress of the two gyms was not confusingly the Roman god Bacchus. The similarity infringement claims, among others similar, nor was there any meaningful of the wine rack system was apparent, against a competing gym founded by proof of actual confusion: “Pure Power but it was merely one element in the ex-employees. The trade dress (Reg. enjoys protection only with respect to general appearance of the stores. No. 3,580,542) consisted of an exercise its own distinctive blend and manner The discussion of the “proximity of facility mimicking a military boot camp of implementing these elements and goods” likelihood of confusion factor training course, replete with a camou- concepts, and that implementation is was notable for retailers in bustling flage wall, crushed rubber flooring, a quite different from the ‘look and feel’ metropolitan cities. The court found it tire run, climbing walls and hurdles. of [Warrior Fitness].” Id. at 543. debatable whether “New York,” or even The court initially commented that the A trade dress dispute from earlier “Manhattan,” could constitute a single plaintiff’s assertion of trade dress was this year involving competing pizzerias market for in-store retail sales of inex- too expansive and improperly included is instructive for the retail environ- pensive wines. In much of the country, concepts and innovations centering ment, and an interesting counterpoint a competitor within two miles would on merely being the first boot camp to the aforementioned cases. In Happy’s likely be deemed direct competition, exercise facility. The court stated that Pizza Franchise, LLC v. Papa’s Pizza, but in New York, or another large city, such a general concept, however, was Inc., 2013 WL 308728 (E.D. Mich. Jan. stores located in geographically and not protectable as a trade dress, rather 25, 2013), the plaintiff’s trade dress socially distinct neighborhoods may it was the particular “look and feel” of comprised its big menu, granite coun- not be direct rivals at all: “Whether Pure Power’s facility that was protect- tertops, black industrial-style rugs, Manhattanites would get on public able. See Cartier, Inc. v. Four Star Jewelry back-lit signage, neon signage, steel transportation to shop for a $10 bottle Creations, Inc., 2003 WL 21056809, at *5 shelving, stacked pizza boxes, and ce- of wine, rather than systematically (S.D.N.Y. May 8, 2003), which explains ramic tiled floors and walls. In finding patronizing the nearest shop, is surely that trade dress is not “the combination that the plaintiff failed to establish dis- debatable, and the extent to which con- of words which a party uses to describe tinctiveness and non-functionality for sumer confusion would be generated or represent [its] ‘total image,’” but, “[r] its restaurant décor, the court stressed by occasional encounters with both ather, the trade dress is that image itself, that generic elements creatively

106 ASSOCIATION OF CORPORATE COUNSEL TRADE DRESS PROTECTION FOR RETAIL STORE DESIGNS

combined might form a protectable each individual element’s level of To claim protected trade trade dress, but that an ordinary retail distinctiveness. As noted in Best dress, one should stress that environment is far from the distinctive Cellars, “although each element of a the combined articulated design evidenced in Best Cellars: trade dress individually might not elements of the trade dress “There is an important distinction be inherently distinctive, it is the between arbitrarily selecting design combination of elements that should for the store, or portion elements that result in a unique and be the focus of the distinctiveness thereof, form a distinctive distinctive trade dress and arbi- inquiry. Thus, if the overall dress is presentation to consumers. trarily selecting elements that result in arbitrary, fanciful or suggestive, it is nothing more than a generic design. distinctive despite its incorporation The former demonstrates a unique of generic [or functional] theme in order to distinguish the end elements.” To claim protected trade product; the latter results in general dress, one should stress that the distinctive. In seeking to overcome overhead cost of doing business. The combined articulated elements this hurdle by claiming acquired plaintiffs in Best Cellars used elements of the trade dress for the store, or distinctiveness, applicants typically to create a unique way of displaying portion thereof, form a distinctive submit additional evidence and describing wine through use of presentation to consumers. documenting (1) the length and unique elements. Here, Happy’s used ■■ Distinctiveness: Often, a registrant exclusivity of use of the mark in the generic elements to create a fast food must respond to multiple Office United States; (2) the type, expense restaurant setting otherwise indistin- Actions from the USPTO before and amount of advertising of the guishable from any others.” Id. at *4. its trade dress is accepted for mark; and (3) the applicant’s efforts, registration on the Principal or such as unsolicited media coverage Practical considerations Supplemental Register. One of the and consumer surveys, to associate Below are some guidelines for re- most common bases for denial is the mark with the source of the tail store owners who seek to create that the trade dress is not inherently goods and/or services. enforceable trade dress protection for a store layout. ■■ Clear description: While the protects the “overall image or appearance” created by a product’s design or packaging, generally speaking, a trademark holder must articulate the specific elements that comprise its distinct trade dress so a court can evaluate claims of infringement and fashion injunctive or other relief that is tailored to the protectable elements. Besides being essential for trademark prosecution, many courts require trade dress claims to include a specifically-defined list of elements that comprise the trade dress.7 This articulation requirement also helps to ensure that trade dress claims are properly pled because the Lanham Act does not protect a generalized retail appearance or mood.8 ■■ Overall effect: While it is important to articulate the elements of one’s trade dress, there is no need to parse

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■■ Supplemental register: If the USPTO determines that a company’s trade dress is not distinctive, and therefore not eligible for registration on the Principal Register, but is capable of becoming distinctive in the future, the mark holder may opt for the Supplemental Register. See 15 U.S.C. § 1091. While registration on the Supplemental Register is not prima facie evidence of ownership, validity or the exclusive right to use, and such a mark cannot become incontestable. Still, such registration enables the registrant, among other things, to bring suit in federal court. Eventually, the majority of the evidence presented store. See e.g., Reg. 4,101,082 (Feb. mark might acquire “secondary by the applicant demonstrates 21, 2012) in regards to Abercrombie meaning,” perhaps based upon the success and popularity of & Fitch’s mounted moose head the five-year legal presumption of the applicant’s retail stores. […] centered above the enclave exclusive and continuous use of the However, the same evidence containing cash registers. mark. 15 U.S.C. § 1052(f); Jewish demonstrates that the applicant’s ■■ Advertising: The amount of Sephardic Yellow Pages, Ltd. v. DAG stores vary widely in appearance. resources spent on advertising Media, Inc., 478 F. Supp. 2d 340 …” (Office Action Aug. 23, 2011). is one evidentiary factor in (E.D.N.Y. 2006). It should be noted See also Pure Power Boot Camp, establishing distinctiveness or that functionality is an absolute bar Inc. v. Warrior Fitness Boot Camp, secondary meaning. To bolster a to registration on both the Principal LLC, 813 F. Supp. 2d 489, 542 n.18 claim, ads should highlight the Register and Supplemental Register. (2011) (“[the] strength of Plaintiffs’ distinctive aspects of the company’s ■■ Uniformity: For retail stores with trade dress, however, is weakened, trade dress (“Visit our Purple Room multiple outlets or a national to some extent, by the fact that the on your next shopping visit”) and reach, it is important that every trade dress is not consistent in the feature images of the retail store store employ a uniform theme so two Pure Power locations”). design in ads. consumers exclusively associate the ■■ Trademark areas: Similar to a ■■ Photographs: When corresponding trade dress elements with the brand. restaurant featuring trademark- with an accused infringer or filing The USPTO raised this issue during protected menu items, a retailer a complaint in federal court, Apple’s prosecution of its retail store might seek trade dress protection photographs of the trademarked trade dress application: “The vast for a unique section or aspect of the features and elements are effective in communicating the look and feel of the protected trade dress. See ACC EXTRAS ON… Trade dress and non-traditional e.g., R.F.M.A.S., Inc. v. Mimi So, 619 F.Supp.2d 39, 78 n. 19 (S.D.N.Y.2009) InfoPAKSM Presentation Intellectual Primer: , The Explosion of Non-Traditional Trademarks for an example of how overall image Trademarks, and Trade Secrets (Oct. 2013). www.acc.com/presentation/ of the product for which plaintiffs – An Introduction to for trademarks_oct13 sought trade dress protection was In-house Counsel in a Global Dimension 4th ACC HAS MORE MATERIAL ON THIS SUBJECT adequately conveyed by means of Edition (Sept. 2012). www.acc.com/infopaks/ ON OUR WEBSITE. VISIT WWW.ACC.COM, the pictures in the complaint. ipprimer_july08 WHERE YOU CAN BROWSE OUR RESOURCES BY ■■ Historical motifs: Some retailers Webcast PRACTICE AREA OR SEARCH BY KEYWORD. Top 10 Tips for Developing Protectable Trade are inspired by history, but a Dress (May 2014). www.acc.com/webcast/ reproduction of established design tradedress_may14 may not garner protection. For example, in HRP Creative Services

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Inns, Inc. v. Ameritel Inns, Inc., Co. v. FPI-MB Entertainment, 616 other dissimilar facets in its trade 1995 WL 762148 (D. Ida. Oct. 19, F. Supp. 2d 481 (D. Del. 2009), a dress to avoid consumer confusion 1995) (hotel’s mere refinement of theme park owner brought trade between the two retail stores. commonly–adopted hospitality décor was functional and non-distinctive and dress claims against a competitor not capable of trade dress protection). over design elements that the Conclusion 7 See e.g., Treat, Inc. v. Dessert plaintiff borrowed from classic The interior of your retail chain can Beauty, 2006 WL 2812770, at architecture. In denying the trade have significant value to your company *14-15 (D. Or. 2006) (finding trade dress allegation insufficient because dress claim, the court rejected, if designed intentionally to achieve the discreet elements that made as “preposterous,” the plaintiff’s this goal. First, create a store design up the alleged trade dress were not assertion of intellectual property that is distinctive and uniform. But do separated out and identified in a list); rights in replicas of Georgian not clutter your trade dress. Second, Sherwood 48 Associates v. Sony Corp. of America, 76 Fed.Appx. 389, architecture, the Statue of Liberty promote your distinctive trade dress — 391 (2d Cir. 2003) (a “focus on the and traditional fonts used by British invest in making it your brand. Third, overall look of a product does not pubs for centuries. obtain a federal trademark registration permit a plaintiff to dispense with an ■■ Selective imitation: Far from the for your store design, preferably on the articulation of the specific elements which comprise its distinct dress”). wholesale copying of an entire Principal Register. Finally, protect your 8 See Abercrombie & Fitch Stores, Inc. design scheme, a company might trade dress from third parties — do v. Am. Eagle Outfitters, Inc., 280 incorporate a single element from a not let your trade dress get diluted by F. 3d 619, 630-31 (6th Cir. 2002) competing enterprise and perhaps imitators. The end result? A fabulous (“The aura about a product, the cachet that ownership or display of it escape infringement liability. Trade store design that is distinctively your creates, and the kind of appeal it has dress typically covers the overall brand that consumers will seek out — to certain consumers do not dress a grouping of interacting elements of and hopefully spend many delightful good in trade. Rather, those intangible an entire store, or portion thereof, shopping hours. ACC “things” emanate from the good, its dress, and the marketing campaign and another business “[does that promotes the dressed good. Trade not] infringe by appropriating NOTES dress is tangible or otherwise objectively the marketing concept, or any 1 See e.g., Conference Archives, Inc. v. observable by the senses...”); In re Sound Images, Inc., 2010 WL 1626072 particular element of plaintiff’s Hudson News Co., 39 USPQ2d 1915, (W.D. Pa. Mar. 31, 2010) (plaintiff 1923 (TTAB 1996), aff’d per curiam, design, unless the overall dress is stated a claim for trade dress protection 114 F.3d 1207 (Fed. Cir. 1997) (“[f] sufficiently similar to generate likely of the “look and feel” of its website). or the ‘blue motif’ of a retail store to consumer confusion.” For example, 2 See e.g., USPTO Supp. Reg. No. be registrable on the Principal Register 3,968,163 (Walgreen’s pharmacy in Best Cellars, Inc. v. Wine Made without [a showing of secondary workspace within a retail store). meaning], the trade dress would Simple, Inc., 320 F. Supp. 2d 60, 72 3 See e.g., USPTO Supp. Reg. No. have to be immediately recognizable (S.D.N.Y. 2003), the New York court 4,284,195 (Hearts On Fire’s retail as a distinctive way of identifying noted that while categorization store interior with veil walls comprised the source of the store services”). of rods, a filtered light effect, and of wine by taste was relevant to floating veil display cases). plaintiff’s trade dress to the extent 4 See e.g., USPTO Reg. No. it impacted the store’s interior 2,161,437 (Boston Market’s design, that element standing alone storefront with striped awning). 5 See e.g., Reg. No. 4,021,593 was not protected, and “plaintiff (Apple’s cube-shaped building design could not prevent other sellers from constructed almost exclusively of categorizing wine by taste either in transparent glass). See also Fotomat their general marketing scheme or Corp. v. Ace Corp., 208 USPQ 92 (S.D. Cal. 1980) (distinctive color and shape in their interior design.” Id. at 72-73. of the roof of Fotomat’s small buildings ■■ Too much of a good thing? A vast were distinctive enough for protection). array of design elements bolsters a 6 Trade dress is functional when “it is claim of distinctiveness. However, essential to the use or purpose of the device or when it affects the cost or the same emphasis of multiple quality of the device,” the “exclusive elements makes it correspondingly use of [which] would put competitors difficult for a mark holder to prove at a significant non-reputation-related likelihood of confusion because a disadvantage.’” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. savvy competitor might cherry-pick 23, 32 (2001). See also Hampton some elements while portraying Reprinted with permission of the authors and the Association of Corporate Counsel as it originally appeared: Erica J. Weiner and Monica Richman, “Trade Dress Protection for Retail Store Design,” ACC Docket volume 32, Number 7 (September 2014): Page 100. Copyright © 2014, the Association of Corporate Counsel. All rights reserved. If you are interested in joining ACC, please go to www.acc.com, call 202.293.4103 x360, or email [email protected]. ACC DOCKET SEPTEMBER 2014 111