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Trademark/Trade Dress
What is it? What is it? Trade dress law is a special branch of trademark law which is, in turn, an outgrowth of unfair competition law that was developed to protect the public against deception and confusion regarding the origin of a product or services. Most trademarks consist of words (e.g., a brand name like Coca-Cola®) or symbols (e.g., a logo like the CBS "eye") adopted by the manufacturer to indicate the source or origin of a product. In certain cases, the "trade dress" of a product can be regarded as a trademark. Trade dress can protect the following characteristics of a product: its color or combination of colors, size, shape, texture, weight, and graphics. What does it protect? A trademark, whether it consists of a word, symbol, or trade dress, protects against latecomers using the same or a confusingly similar mark on the same or related goods in the same geographic area traded in by the first user. The same protection is provided for trademarks which are used to signify the source of services (e.g., SAIDMAN DesignLaw Group is a unique source of legal services), in which case the marks are more accurately called "service marks" since they are used to identify a source of services. How do you get it? In the U.S., trademark protection arises in one of two ways: (1) by actual use of the mark in connection with the product or service in commerce; or (2) by filing an "intent-to-use" or "use based" trademark application in the U.S. Patent & Trademark Office ("PTO"). Some trademarks are not as distinctive as others, and therefore require a period of actual use in commerce before the courts will recognize any exclusive right to use them. On the other hand, some trademarks are so distinctive (e.g., Kodak® for cameras) that trademark rights attach immediately upon their adoption and use. Trade dress of a product design is treated like a non-distinctive trademark. That is, protection comes into being only when the public has come to associate the features of the design with a particular source of the product. When this happens, it is said that the trademark/ trade dress has acquired "secondary meaning." Generally, this kind of distinctiveness requires long, widespread use of the design, such as the Haig & Haig scotch pinch bottle, the round Honeywell thermostat, and the McDonald's golden arches. Click to see examples of trade dress where secondary meaning was found. This kind of secondary meaning cannot happen overnight. It is possible, although not necessary, to register your mark in the PTO. Registration will provide additional benefits, the most significant of which are that when you register your mark, it is presumed to have been used throughout the entire U.S., and constitutes "constructive notice" to latecomers who might adopt a confusingly similar mark. If you can manage to register your trade dress in the PTO (e.g., as the owners of the Tizio lamp design were able to do), it means that a federal agency has officially recognized the secondary meaning status of your design. Click to see the trademark registration for the Tizio lamp in larger size. How long does it last? Trademark/trade dress protection lasts as long as the mark/design continues to be in actual use in commerce. Sometimes, as in the case of famous designs, such as the Ferrari Daytona Spider, it can last even beyond the time the design is being sold. If you have registered your trademark in the U.S. PTO, your registration, which is good for 10 years, may be renewed for successive 10 year periods again as long as the mark is still being used. Simply put, trademark protection can theoretically last forever. What are the advantages? Registration of a mark with (PTO) is not necessary to get relief in court; Section 43(a) of the Lanham Act is available for unregistered marks. Another advantage is that U.S. courts are very accustomed to litigation involving trademarks. Moreover, since trademark law is based upon avoiding consumer confusion, it is a very appealing type of case to try before a judge or jury. The test for infringement is quite broad: the owner of the trademark/trade dress need only prove that the infringing mark/design is likely to create confusion in the marketplace as to the source or origin of the product. What are the disadvantages? A major disadvantage of trade dress is that it is difficult to establish secondary meaning when a product has been in the marketplace for only a short time. Another major disadvantage is that in most courts the trade dress owner must prove that her design is not impermissibly "functional", which has been interpreted to mean that competitors must be permitted to freely copy the unprotected functional features of a product even if it means they must copy the design in the process. As with copyright law, there is no central court of appeals authority (other than the U.S. Supreme Court) to consolidate the law from the dozen or so circuit courts across the land, and there are frequent disputes between the circuits as to, for example, the tests for establishing "secondary meaning" and "functionality". Another disadvantage is that it is frustrating to try and "clear" a proposed new trademark, both because there are so many trademarks already in use, and because there is no single, central data base for searching trademarks. The cost of clearing a new mark can be considerable; however, it is highly advisable to clear a new trademark before adopting it, because changing the name of your star product two years after your first use can be very painful. How much does it cost? It costs a lot of money to promote a product to the point where it achieves secondary meaning. It also costs a lot to prove in court that a particular trade dress of a product has indeed achieved secondary meaning; generally, expensive consumer surveys are required. The median cost in the U.S. (as of 2002) of preparing an application to register a trademark was $600, plus a $335 Government filing fee. The median attorney fee for prosecution of a trademark application after it is filed was $997. In addition, the cost of prosecution can run up significantly if the Trademark examiner requires you to prove that your product has acquired the requisite secondary meaning, or that it is legally "non-functional." |
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