Intellectual property litigation: A bit about trade dress

Think about your home. It’s common for homeowners to close and lock their doors to protect their families and property. Now, you may have some things in your yard that you can’t protect behind locked doors, but how much would you be willing to leave unattended out there? A television? A laptop? Would you leave your car unlocked with the keys on the driver’s seat?

Companies that protect their intellectual property are like homeowners who keep their property behind locked doors. But they may not remember to lock away all their property. They may register and defend their patents, trademarks, trade secrets and copyrights. But what about their trade dress?

Trade dress is often overlooked

When it’s common for as much as 80% of a company’s assets to be wrapped up in intellectual property, it’s important to take care of all that IP. That includes your trade dress—a form of intellectual property that is often overlooked.

Trade dress protections are similar to those granted for trademarks, but with several key distinctions. Like trademarks, trade dress:

• Can be protected even if it’s not registered
• Can be registered for greater protection
• Does not protect functional inventions or creative works
• Protects the distinctiveness of a product’s place in the market

However, whereas trademarks are typically symbols, logos or designs that represent a brand or item, trade dress applies to the packaging around the item. Previously, this meant just the packaging in which an item might appear. But the definition of trade dress has changed over the years, and courts now view trade dress as the combined effect of anything outside of a product that might distinguish that product’s place in the market.

According to this modern understanding, trade dress might include the overall effect of any combination of:

• Distinctive color combinations
• Container shapes
• Smells
• Sounds
• Sales techniques

Restaurants have successfully won trade dress litigation to maintain the distinctiveness of their dining areas. Companies have defended the distinctive shapes of their desk lamps. And more than one comedian has successfully defended a signature catch phrase.

Defending your trade dress

The simplest way to protect your trade dress is to register it. A clear, registered description of your trade dress makes it easier for courts to recognize infringement. However, you may be able to defend your trade dress even if it’s not registered.

To defend unregistered trade dress, you generally need to prove its distinctiveness. This may be an inherent distinctiveness, such as a unique effect that you were the first to use in the market, or it may be through acquired distinctiveness. “Acquired distinctiveness” refers to marks or designs that don’t change the product but that serve to identify its origin.

If you can support the distinctiveness of your trade dress, then the rest of your claim runs as with any intellectual property infringement:

• Show that you hold the intellectual property
• Show how the property was infringed
• Show the infringement happened without your permission
• Show how the infringement damaged your business

Intellectual property litigation often drags out, so one of your early goals may be to ask the court to issue an injunction. This is equivalent to stopping the flow of blood before you sew up the wound.

Don’t leave your intellectual property exposed

If you know your ideas are valuable, you want to protect them sooner rather than later. You may be able to fight the infringement of your trade dress even if it’s not registered, but that’s no reason to leave it unregistered. If you leave your car unlocked with the keys on the seat, there’s no guarantee someone will steal it, but why take the chance?