Trade dress refers to the aesthetic or visual elements of a product or its packaging. Trade dress has been defined as the overall appearance of an object including size, shape, color, textures, or graphics. In order to better market a product, manufacturers often design the product or its packaging to catch the eye, appeal to consumers, and appear distinct from other similar products. Consumers may come to associate certain colors, designs, and patterns with specific products. For example, Reese’s Peanut Butter Cups are packaged in easily recognizable orange, brown and tan wrappers. While the actual packaging preserves the candy, the color scheme on the packaging serves no function other than to attract the consumer and distinguish the product from others.
One primary requirement for trade dress protection is that the elements sought to be protected must be entirely non-functional. If the shape of a product or its packaging serves a function, such as to preserve its contents, allow easy pouring or emptying, or provide a more secure grip on the product, it will not be eligible for trade dress protection, even if the element acquires secondary meaning or becomes associated with the specific product. Protection for functional elements of a product is provided under patent law as a utility patent.
Certain factors have been identified to assist courts in determining whether a product design or packaging is functional or non-functional trade dress. These factors include whether the design or packaging is or has been covered by a patent, whether the functionality of the design or packaging was advertised, whether it is possible to design or package the product another way, and whether the design or package was selected because it was the cheapest method of manufacturing the product.
Like any trademark, trade dress must be distinctive to achieve trademark protection. A trademark is typically distinctive if it is memorable or notable, conceptually distinct from the function of the object, and serves to identify the source of the product. For example, the ‘M’ or “Golden Arches” outside of McDonald’s fast food restaurants are likely distinctive as they are memorable, have little to do with hamburgers, and identify the restaurant as a McDonald’s.
There are several degrees of distinctiveness in trademark law: generic, descriptive, suggestive, fanciful, and arbitrary. To satisfy the distinctiveness requirement of trademark protection, descriptive marks must have obtained secondary meaning. Meanwhile, generic marks are never distinctive and are not capable of trademark protection. Suggestive, fanciful, or arbitrary trademarks are considered to be inherently distinctive, and do not require secondary meaning.
The requirements for trade dress are fairly similar. In Two Pesos v. Taco Cabana (1992), the United States Supreme Court held that trade dress can be inherently distinctive. When trade dress is inherently distinctive, it does not require secondary meaning to be eligible for trademark protection. Trade dress that is not inherently distinctive must acquire secondary meaning through use in commerce that creates an association between the trade dress and the product. If such trade dress has acquired secondary meaning, it becomes eligible for trade dress protection.
Trade dress law further developed with the United States Supreme Court’s holding in Wal-Mart Stores v. Samara Brothers (2000). There the High Court noted that product packaging can be inherently distinctive, whereas product design is never inherently distinctive. Rather, product design must acquire secondary meaning to be protected. Product packaging, on the other hand, that is memorable, conceptually distinct from the product, and serves to identify the source of the product, need not develop secondary meaning to be eligible for trademark protection.