Standing out in a sea of brands can be difficult. Coming up with clever slogans, and distinctive brand names are essential to leave lasting impressions on consumers. Brands can further set themselves apart by coming up with unique trademarks through product shapes, color and packaging. Earlier this year, cosmetic brand, Glossier, secured a trademark registration for their signature pink bubble wrap pouch. The brand has been using their signature pink pouch since 2014 in connection with cosmetics. This type of trademark protection is called trade dress. It is often forgotten as a potential avenue for trademark registration, so this article serves as a primer to understanding what trade dress is, and how products may be eligible for protection.

What is Trade Dress?

Trade dress protects the overall look and shape of a product or its packaging. It can include elements such as: color, shape, size, or graphics to name a few. It serves the same purpose as a traditional word or logo trademark in that it acts as a source identifier. Consumers rely on these visual impressions as brand recognition in the market.

 Can I apply for Trade Dress protection?

This depends. Like trademark registration, in order for the United States Patent and Trademark Office to issue a registration, the product must meet certain requirements. The trade dress must be: 1) distinctive and 2) non-functional.

Distinctiveness

A trade dress is distinctive where consumers readily recognize the trade dress as the source identifier. Distinctiveness can either be ‘inherent’, meaning that the trade dress is unusual or memorable; or, ‘acquired’ meaning that the trade dress has acquired ‘secondary meaning’. Secondary meaning is determined by a number of factors including: length of exclusive use; sales; advertising costs; unsolicited media coverage; consumer studies that connect the trade dress to the product; and evidence of copy-cats.

Functionality

Trade dress cannot be functional. If the shape, size, packaging, or any other feature of the product serves as a competitive or functional advantage, protection will not be granted. At first, one of the reasons why Glossier was denied protection was because the USPTO believed the pouch was a functional design given its air bubbles and packaging features. Glossier later amended their application to include the color pink as a part of the trade dress and they were then granted protection. This is because the color pink served no functional purpose for the pouch design.

What do I do if I think someone has infringed on my Trade Dress?

The same rules of trademark infringement apply to trade dress infringement. You must show that the defendant’s trade dress causes a likelihood of confusion among consumers. The determination of any likelihood of confusion is based on a number of factors, which will be specific to each scenario. These factors are known as the ‘Polaroid Factors’ and include the strength of the mark; similarity of the marks; similarity in products; and sophistication of buyers, to name a few.

The remedies for trade dress are also the same as trademark. They range from injunctions, damages and attorney’s fees.

For further information on protecting your brand, please contact a trademark law attorney.

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