What is trade dress infringement?
The core concepts of trademark protection are that consumers not be confused, misled, or deceived as to whose product they are buying, that sellers’ goodwill--or investment in their reputation for quality--be protected, and that competition thereby be enhanced.
Trade Dress InfringementSection 43(a) of the Lanham Act, 15 U.S.C. ? 1125(a) (2012), provides a federal cause of action for unprivileged imitation, including trade dress infringement. The core concepts of trademark protection are that consumers not be confused, misled, or deceived as to whose product they are buying, that sellers' goodwill--or investment in their reputation for quality--be protected, and that competition thereby be enhanced. The protection of trademarks and trade dress under 43(a) serves the same statutory purpose of preventing deception and unfair competition.
Trade dress features are those comprising a product's look or image. The trade dress of a product is its overall image and appearance, and may include features such as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. Protection for trade dress may extend to a single feature or a combination of features in a trade dress. Importantly, trade dress can include the total image of a business. See, Two Pesos v. Taco Cabana, 505 U.S. 763, 764 (1992)(upholding a jury instruction that defined "trade dress" as including the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers' uniforms, and other features reflecting on the total image of the restaurant.")
A plaintiff in a trade dress infringement case must make two showings in order to prevail. First, the plaintiff must show either (a) that its product's trade dress features (or feature) are inherently distinctive or (b) that the trade dress has become distinctive through acquisition of secondary meaning. Second, a plaintiff must show that potential customers are likely to be confused by the defendant's trade dress into thinking that the defendant is affiliated, connected or associated with the plaintiff or that the defendant's goods originated with, or are sponsored or approved by the plaintiff. See, ?15 U.S.C. 1125(a).
Inherently Distinctive/Secondary MeaningA trade dress is inherently distinctive if its "intrinsic nature serves to identify a particular source." Two Pesos, 505 U.S. at 768. Such trade dresses "almost automatically tell a customer that they refer to a brand and immediately signal a brand or a product source." Samara Bros., 529 U.S. at 212-213 (citation, quotations, and alteration omitted). Like trademarks, the inherent distinctiveness of a trade dress is categorized along the generic-descriptive-suggestive-arbitrary-fanciful spectrum. See, Two Pesos, 505 U.S.at 768.
In evaluating the inherent distinctiveness of trademarks, the Tenth Circuit has adopted the traditional categorical (or Abercrombie) approach where the trademark is determined to be either (1) generic, (2) descriptive, (3) suggestive, or (4) fanciful or arbitrary. See, Beer Nuts, Inc. v. Clover Foods Co., 711 F.2d 934, 939 n.5 (10th Cir. 1983) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2nd Cir. 1976)). This test is equally applicable to trade dress under section 43(a) of the Lanham Act, because "?43(a) provides no basis for distinguishing between trademark and trade dress." Stuart Hall Co. Inc. v. Ampad Corp., 51 F.3d 780, 785 (8th Cir. 1995) (quoting Two-Pesos, 505 U.S. a 773)). See also, Western Chemical Pumps, Inc. v. Superior Mfg., 989 F. Supp. 1112, 1119 (D. Kan. 1997); Winning Ways, Inc., 913 F. Supp. at 1463 (applying Abercrombie test to trade dress infringement cases).
Likelihood of ConfusionThe factors underlying a likelihood of confusion analysis in a trademark infringement claim apply equally to trade dress infringement claims. See, Brunswick Corp., 832 F.2d at 521. In the trade dress context, the relevant inquiry is "whether there is a likelihood of confusion resulting from the total image and impression created by the defendant's product or package on the eye and mind of an ordinary purchaser." McCarthy on Trademarks ? 8:15.
"In determining whether a party has shown likelihood of confusion, the Court must consider the following factors: (1) intent to copy; (2) similarity of products and manner of marketing; (3) degree of consumer care; (4) degree of similarity between the parties' trade dress; (5) strength of the plaintiff's trade dress; and (6) evidence of actual confusion." Sally Beauty, 304 F.3d at 979.
Competitors need not insure against all possible confusion or likelihood of confusion. "Rather, a plaintiff may prevail in a trade dress infringement action only if it shows that an appreciable number of ordinarily prudent consumers of the type of product in question are likely to be confused as to the source of the goods." Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 200 (3d Cir. 1995). The mere possibility that a customer may be misled is not enough. Surgical Supply Service, Inc. v. Adler, 321 F.2d 536, 539 (3rd Cir. 1963).