Seizing Trade Dress Opportunities through Creative Claims and Proactive Measures
February 2009By: Tamara A. Miller
Client Times Online (Thomson Compumark)
The “trade dress” of a product or service is often overlooked as part of a company’s IP portfolio. However, trade dress can convey just as much goodwill as a traditional trademark. Moreover, trade dress protection can last forever.
Taking steps to identify and strengthen trade dress before it is infringed can significantly aid companies in later enforcement efforts. This article first identifies examples of creative trade dress applications, in order to spark ideas relative to counseling clients in the area of trade dress. Then, this article outlines some proactive measures companies can take to maximize trade dress rights.
I. Savvy companies have claimed trade dress rights in many contexts
Trade dress is usually thought of in relation to the appearance or shape of a product or its packaging. Additionally, many of us have long been aware of non-traditional marks that are usually characterized as trade dress, such as sounds, smells, and flavors. But trade dress has much more to offer. The examples below demonstrate that trade dress protection may be available for many aspects of a business that are not so obvious.
A. Marketing and sales techniques
Trade dress has been defined as including “the total image of a business,” which can even include “particular sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n.1 (1992) (citations omitted). In Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 831 (11th Cir. 1982), the court afforded trade dress protection to the “adoption procedures” used by plaintiff to sell its dolls, which included providing adoption papers and birth certificates with the dolls. Notably, the court did not focus on the actual appearance or content of the adoption papers and birth certificates, but rather focused on the idea of the adoption procedure as being designed to make plaintiff’s dolls distinctive in the marketplace. Id. The court rejected the defendant’s argument that sales techniques are not protectable through trade dress, noting that “[t]he courts, moreover, have recognized that an unfair competition claim can extend to marketing techniques.” Id. (citation omitted).
To read the full article, click on the pdf.
View as PDF
