Trade dress can be defined as the total image and overall look of a product and some of the elements may include size, shape, color, graphics and texture. To understand the basics of what trade dress is and how trademark laws apply to protect it, see our web page entitled What Is Trade Dress And How Can It Be Protected? This page will address some of the particular requirements of the United States Patent and Trademark Office (USPTO) when filing a trade dress application and will explore how trade dress protection is evolving to include the overall appearance of a website.
When an Examining Attorney receives a trademark file, it must determine if the proposed mark constitutes trade dress. The Examiner should be able to ascertain this from the application content, the drawing, the specimen, the identification of goods or services and from the description of the trademark. If this is not clear from the application and its contents the Examiner may call, email the trademark applicant, or issue an Office Action to confirm that the proposed trademark is trade dress.
Once a mark has been examined for functionality, it will be evaluated for distinctiveness. Trade dress that is not inherently distinctive nor has acquired such distinctiveness under Section 2(f) of the Trademark Law must be refused registration on the Principal Register. To ensure proper examination, the drawing and description of the proposed mark must accurately depict the mark the applicant intends to register. Drawings of trade dress marks, including three-dimensional product design and product packaging, may not contain elements that are not a part of the mark. If a trademark consists of only a portion of the product or the container, solid lines must be used in the drawing to show the elements of the product and broken lines should be used to indicate the portion of the product not claimed as part of the mark or the portion that is functional. The Examiner will not consider the elements in the broken lines. A photograph of the proposed trade dress is acceptable as a drawing if it doesn't contain extraneous informational material and it fairly depicts the mark.
Trade dress applications must contain a description that accurately describes the mark. The description should indicate if the mark is three-dimensional and whether it constitutes design or configuration of the goods or packaging or a container for the goods. Trade dress marks are generally not perceived as unitary marks because generally speaking each of the elements will create a separate commercial impression.
Over the last seven to eight years there has been a push to extend trade dress protection to websites. A few courts have held that the look and feel of a website can constitute protectable trade dress. See Ingrid & Isabel LLC v. Baby Be Mine, LLC, No. 13-cv-01806-JCS, 2014 WL 954656 (N.D. Cal. 2014). This decision opened the door to an expansion of trade dress protection. The Court denied the defendant's motion for summary judgment. The plaintiff in this case did something other plaintiffs had failed to do successfully, the plaintiff pleaded with particularity a trade dress claim. The plaintiff was able to properly describe the look and feel of its website. The plaintiff listed the following similarities between its website and the defendant's site: (1) color of the logo; (2) location of the logo; (3) the fonts utilized throughout the website; (4) the patterns and colors of the wallpaper; and the (5) look of the models featured on the website.
To prevail in a trade dress infringement action, a plaintiff must prove the following: (1) acquired secondary meaning or inherent distinctiveness; (2) non-functionality; and (3) that the defendant's product, packaging or website is likely to create consumer confusion. Plaintiffs in trade dress infringement actions carry a heavy burden of proof. If you have questions regarding a trade dress application or trade dress infringement, please feel free to contact one of our New York trademark attorneys for a courtesy consultation.