What Is Trade Dress Law?

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BY GREG SATER

LEGAL In the April issue, I wrote a column, mark is, the harder it is, in litigation, to “Copyright Litigation Over TV persuade a judge that it is protectable. If Commercials and Infomercials,” about the it is descriptive, for instance, the judge legal protections provided by the United will require proof that it has been used States Copyright Act for creative works enough in commerce, for instance, such as DRTV spots and infomercials. I through significant advertising on televi- explained how, when one is faced with a sion, to achieve “secondary meaning.” knockoff but regrettably one lacks “hard After one has established the basic pro- IP” protection; i.e., a patent, one neverthe- tectability of one’s trademark, then one has less, can win in court. What’s more, in the to prove that the junior user—the second- right case, one can win millions of dollars comer who is the alleged infringer—is in damages by using copyright law, the using a mark that is so similar to the senior patent law’s lesser known, but not to be one that it is “likely to cause confusion” CHANNEL CROSSING: underestimated, “soft IP” step-sibling. Too among the consumers the parties are tar- many people in our industry focus on geting with their ad campaigns. Judges patents, or on the lack thereof, when faced look at many factors to decide whether with a competitor with a knockoff, and there is such a likelihood of confusion, don’t think enough about their “soft IP” such as: (a) whether there has been any rights, such as their copyrights. actual confusion; and (b) the similarity In this column, I will address another between the appearance, sound and mean- equally powerful non-patent remedy for ing of the two marks, in the specific man- dealing with a knockoff: trade dress law. ner in which those marks are usually seen In the absence of a patent, trademark or or heard by the consumer, e.g., on TV, copyright that has been infringed, a online, etc. (Context matters. Thus, even in knockoff lawsuit likely is going to invoke the case of similar marks if there is some- “trade dress.” But what exactly is that? thing else about the junior user’s presenta- tion of its product that would eliminate or Trade Dress Law Basics greatly reduce the risk of confusion, then it The best way to understand trade dress can be an uphill battle to prove infringe- law is to first understand trademark law. ment. Every case is fact-specific.) Everyone is familiar with trademarks. We The same basic procedure, explained all recognize brand names above, is followed in a trade dress case. In like Snuggie, Proactiv, a trade dress case, you are required to Extenze, etc. If a name is dis- first, prove the basic protectability of the tinctive because it’s unique or alleged trade dress; and second, that there different from others—or, if it is a likelihood of confusion. isn’t inherently distinctive but So what is protectable as trade dress? it has had enough advertis- Trade dress can be anything that’s used in ing behind it to develop the “dressing up” of one’s product, to make “acquired distinctiveness,” it attractive or to help in making the sale. It also known as “secondary can be the packaging of the product, it can meaning”—it is pro- be the product’s color scheme, and in some tectable, because it means cases, it can even be the product’s own something to the con- unique design features or configuration. sumer. It is an identifier of Are there limitations? Yes. For one source. It is a brand. The thing, there is no protectable trade dress less inherently distinctive a right in anything that is functional. If it’s

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a feature of your claimed trade dress they would do in a trademark case, limbo undecided for many months, and it’s found to be functional, as the judge or jury in your trade dress until those findings are finally made opposed to artistic, it won’t count as case will compare your trade dress by a judge or jury; they can require a trade dress. Second, if the trade dress to your competitor’s, by looking at lot of discovery, depositions and you’re claiming is the design or con- the ads of the parties in the same expert witness work; and therefore, figuration of the product itself—as manner as those ads are usually can become very expensive very opposed to some aspect of its “dress- encountered by consumers in the quickly, if they don’t settle. ing up”—then, just as you would real world, after which the judge or What do you win in a trade dress have to do with a non-distinctive jury will decide whether or not con- case, if you win? Depending on the descriptive mark in a trademark sumers are likely to become con- facts, the answer can be, a lot! You case, you must prove that your trade fused as to who’s who. can win the same or even more than dress has obtained “secondary mean- you can win on a patent. “Soft IP” ing” among the consumers. Proving Infringement cases such as trademark, trade dress The same is true if it’s the color or In a trade dress case though, there and copyright cases can be every bit color scheme that you’re claiming as often is an extra issue to consider as potent. You can win a temporary your trade dress. You’ll need to prove and it is the issue of the parties restraining order, which stops the “secondary meaning.” using different names. What I mean infringement; you can win a perma- Thus, if the trade dress you’re is, while the knockoff may have a nent injunction; you can win dam- claiming is your product’s design similar trade dress, at the same ages in an amount sufficient to make itself, you can’t win just by saying the time, it might have a different you whole for whatever lost profits or other harms you can persuade the Trade dress can be anything that’s used in judge or jury you suffered as a result of the infringement (something that the “dressing up” of one’s product, to make often requires a lot of expert testi- it attractive or to help in making the sale. mony, with “dueling experts” from both sides disagreeing on the damages); you can win all of the profits design is novel or unique; that’s what name. Some judges and juries have that the accused infringer obtained a patent is for. Rather, you’ll need to found that having a different name due to the infringement; and in some prove, first, that the design is non- can reduce or even eliminate the cases, you can win your attorneys’ functional; and second, that the pub- risk of consumer confusion, fees and costs at the end. lic associates it with one source, so it’s depending on the facts of the case. That’s if the case doesn’t settle. operating like a trademark would Again, if there is no finding of a Statistically, as you may know, the operate. That mental association is likelihood of confusion, then there reality is that most such cases do secondary meaning. is no infringement. end in a settlement. Someone One thing to be aware of, though, if The first thing to do, in any situa- changes some agreed upon aspect your claimed trade dress is your prod- tion in which you believe your prod- of their product or its name or uct’s configuration or design, is that uct or campaign are being infringed, “trade dress,” someone writes a the U.S. Supreme Court has said that is to retain a good attorney who has check, parties agree to coexist on those things are almost never per- had trade dress litigation experience. certain conditions, etc. ceived by consumers as an identifier Note, that’s not the same thing as The upshot is, if you think you’ve of source, the way a trademark would experience with utility patent litiga- been infringed but you don’t have a be. The same judicial skepticism tion; the two are very different. The patent, or a very strong patent, don’t occurs when the claimed trade dress attorney should review the facts and give up hope. Consider your “soft IP” is a color or color scheme. Those cases advise you on your rights, chances of rights. Those rights, when wielded in are winnable, but not easy. To win, success, and, importantly, estimated the right way, could prove to be a life- you may need to invest in a profes- attorneys’ fees and costs of suit. saver for you and your campaign. sional survey, to test whether the pub- Trade dress cases are not for the faint lic reacts to your trade dress just as it of heart, nor for the light of wallet: Greg Sater is an attorney with Rutter would react to a trademark, seeing it they often are hotly contested; they Hobbs & Davidoff, a law firm based in as identifying one source. turn on factual findings (like Los Angeles. Contact Sater at The next element to prove is whether there is, or isn’t, a likelihood (310) 286-1700 or at “likelihood of confusion.” Just as of confusion) that can remain in [email protected].

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