We’ve written extensively about cannabis trademarks and their appurtenant issues, but this will be the first time we have touched on the concept of trade dress and the benefits it can bring to a brand. Trade dress is the “overall commercial image (look and feel) of a product that indicates or identifies the source of the product and distinguishes it from those of others.” It can include the design, shape and/or configuration of a product, a product’s labeling or packaging, and, in the case of services, the “total visual image” conveyed. It can include elements such as size, shape, color and texture, to the extent those elements are non-functional. More simply put, trade dress is akin to product design.
The following are examples of trade dress that most people would quickly associate with a particular product/brand, even if the name of the brand and the product were nowhere specifically mentioned:
1. Coca Cola.
2. Shell Oil.
3. Reese’s Peanut Butter Cups.
Like trademarks, trade dress can be registered with the United States Patent and Trademark Office (USPTO) and protected from exploitation by competitors in connection with their own goods or services. And unfortunately, like trademarks, obtaining protection for trade dress used on products or services that violate the Controlled Substances Act (CSA) is not currently possible. This means that the same tactics for obtaining trademark registrations apply to trade dress – registration of marks used on ancillary products and services is key.
Trade dress protection can be obtained through both common law and federal registration, as with trademark rights; trade dress protection, however, is more difficult to obtain. An application for trade dress registration to the USPTO must include the same basic information as a trademark application, including a “description of the trade dress, identification of the product or service to be covered and payment of the appropriate fee.
For your trade dress to be protectable, it must be distinctive, in that it must be recognizable to consumers as identifying the source of your product or service (“acquired distinctiveness”), and it must be nonfunctional, in that it “cannot be essential to the use or purpose of, and [cannot] affect the cost or quality of, the product or service.” Even distinctive trade dress is not registrable if it is functional.
As with trademarks, for you to be able to assert your rights against a purported infringer, you must establish a likelihood of confusion between the infringing trade dress and your own. The similarity of the trade dress designs is considered, and the likelihood of confusion factors from trademark law are generally the same.
Remember that trade dress registration requires a showing of acquired distinctiveness, meaning that the applicant must show that from extensive use, the design has become recognizable to consumers as associated with the applicant’s goods or services. This is typically shown either by proving that the trade dress has been in continuous use for at least five years, or by providing other evidence of acquired distinctiveness. Often, however, five years of continuous use of your trade dress will be insufficient, and the examining attorney will require supplemental proof of distinctiveness, which could include the following:
- Statements demonstrating the expense or effort the applicant has undertaken to promote the design
- Recognition of the design in third-party media (e.g., reviews and community guides)
- Consumer surveys
- Consumer testimony
- Some combination of the above or other types of evidence
Though obtaining federal protection for your trade dress is even more time consuming and difficult than obtaining federal trademark protection, it can be well worth the effort if you have a distinctive product design that meets the requirements of registrability.