Trade dress is the is the commercial look and feel of a product or service that identifies and distinguishes the source of the product or service. As to products, it often includes the product’s elements such as the design, materials, colors, and placement of material used to package a product. As to services, restaurant chains, such as Hooters, that have a distinctive appearance are entitled to protection for trade dress.

Like trademark infringement, trade dress is governed and protected by the Lanham Act. In a trade dress infringement case, the elements considered are: (1) the trade dress is inherently distinctive or has acquired secondary meaning; (2) it is primarily non-functional; and (3) the defendant’s trade dress is confusingly similar.

Distinctiveness is defined as whether the appearance of the product is sufficient to allow consumers to identify the product from the trade dress. For example, the United States Supreme Court has found that a Mexican restaurant chain’s decor was inherently distinctive because it featured a mural, brightly colored pottery, distinctive outdoor umbrellas, neon border stripes, and a novel style of service. Distinctiveness is measured along an increasing scale: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The Eleventh Circuit applies the Seabrook test to determine distinctiveness, which examines (1) whether the design or shape is a common,

basic shape or design; (2) whether it was not unique or unusual in a particular field; (3) whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods which consumers would view as mere ornamentation. The Eleventh Circuit found an arctic sun and a polar bear on a blue ice cream wrapper to be inherently distinctive because they are suggestive of the coldness of the product and are not merely descriptive of the ice cream.

A trade dress may not be inherently distinctive but entitled to protection on proof of secondary meaning. A court should consider the following factors in assessing trade dress secondary meaning: (1) the length of time and manner of its use; (2) the nature and extent of its use; and (3) the efforts made in the direction of promoting a conscious connection, in the public’s mind, between the mark and a particular source of origin. Courts consider factors such as advertising expenditures, advertising and promotional materials, sales, and media coverage.

The next part of the analysis is whether the trade dress is primarily non-functional. A design is legally functional, and thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the trade dress protection. There are

forms of functionality. “The first, traditional functionality, deems a feature functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device. The second form of trade dress functionality relates to cases involving aesthetic features; the dress is functional if the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage.

If the trade dress is protectable, the next question is whether the junior user’s trade dress is confusingly similar. In the Eleventh Circuit, the Courts consider the same seven factors as they do for trademark infringement: (1) the strength of the trade dress; (2) the similarity of the trade dress; (3) the similarity between the products and services; (4) the similarity of the sales methods, i.e., retail outlets or customers; (5) the similarity of advertising methods; (6) the defendant’s intent; and (7) proof of actual confusion.

It is important to hire an experienced trade dress litigator such as Erica W. Stump to analyze your case and determine whether you have protectable trade dress and whether your trade dress has been infringed. Ms. Stump has extensive experience litigating trade dress infringement cases for big brands such as BANG ENERGY® and REDLINE® to smaller, startup brands.