18. Trade Dress and Distinctiveness
Learning Objectives: Unit 18
Upon completion of this unit, you should be able to:
1) explain the concept of trade dress;
2) explain how to analyze the distinctiveness of trade dress and the consequences of that analysis;
3) analyze the distinctiveness of trade dress in a given factual scenario.
What company makes these products?
Attribution: “Arroser”; Source 1: Wikimedia Commons; license: CCA-Share Alike 3.0 Unported. Source 2: Mytheresa.com
(In the event that these images are not in color, the image on the left is of a harvester with a green body and yellow stripe, while the image on the right is a pair of black shoes with red soles.)
If you grew up in the Midwest, you likely identified the harvester as a John Deere & Co. product. If you know fashion, you likely identified the shoes as Christian Louboutin. If you didn’t identify either one, ask your friends if they can identify them. Some most likely will be able to.
How are people able to identify the source of these products even though they don’t contain any word marks or logos? The reason is that certain attributes of the products themselves can function as a source identifier. Louboutin is famous for its red soled-shoes. John Deere is famous for its green-and-yellow agricultural equipment. And as we learned in Qualitex, the color of a product can be a trademark.
Other attributes of a product can also function as source identifiers. Consider, for example, the silhouette of an iPhone, the design of a Coca-Cola bottle, or the shape of a Ferrari. Or the appearance of a McDonald’s as compared with an In-n-Out or a Culver’s. These attributes of a product or service can be, or comprise, trade dress.
As with word and symbol marks, trade dress raises the issue of distinctiveness. The three primary Supreme Court opinions that address distinctiveness in the context of trade dress are Two Pesos v. Taco Cabana (1992), Qualitex v. Jacobson (1995), and Wal-mart v. Samara (2000).
One important aspect of these cases is that the legal claim is typically based on 15 U.S.C. § 1125(a), rather than on the provision for infringement of a registered mark (15 U.S.C. § 1114). Although trade dress may be registered under current law (as with the John Deere trade dress shown above), for reasons that may become apparent from reading the cases it is frequently not. Consequently, plaintiffs usually rely on the more general unfair competition provision of § 1125(a) (also known as Lanham Act § 43(a)) for their legal claim. Before reading these cases, look at that statute to familiarize yourself with its contents. Do not, however, become too bogged down in its specifics yet: as the cases indicate, there is more to this statute than meets the eye.
15 U.S.C. §1125. False designations of origin, false descriptions, and dilution forbidden (2012)
(a) Civil action
1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act…
