Most businesses are familiar with the concept of trademarking a word, logo, or slogan that serves as a unique identifier of their goods or services. After all, those are the markers that first come to mind when you think about a certain brand. But clients and practitioners often overlook another aspect of trademark protection relating to the total image or overall appearance of the brand. Trade dress is a subset of trademark law that refers to the visual appearance and characteristics of a product, its packaging, or even the aesthetic design of a building. This may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques. When businesses seek to protect their name and branding, they typically only think to trademark their business name or logo. However, in certain situations a business can protect less tangible aspects of its brand and goodwill, and this is where trade dress comes into play. The seminal case on this topic is Two Pesos, Inc. v. Taco Cabana, Inc., which the United States Supreme Court decided in 1992. Most Texans instantly recognize the festive and brightly colored patios that are distinctive of Taco Cabana restaurants. The Supreme Court in Two Pesos paved the way for businesses to protect the visual aspects of their brand, as it granted such protection for Taco Cabana on the distinguishing characteristics of its buildings.

Similar to conventional trademarks, trade dress is entitled to protection if it is distinctive. Distinctiveness can either be inherent or be acquired secondarily through long-term use or other external market factors. In addition to being distinctive, in order to be entitled to protection, the trade dress cannot be functional. Trade dress is considered functional if its features are essential to the use or purpose of the article that affects its cost or quality. A design feature of a particular article is considered essential only if the feature is dictated by the functionality concerns. For example, if the shape of a product serves the function of providing ease of grip, then that would amount to a non-protectable functional shape.

The remedies for trade dress infringement are the same as those for trademark infringement, which include injunctions, recovery of economic damages in the form of the defendant’s profits or the plaintiff’s actual damages, and/or attorney’s fees in “exceptional” cases. Although it is always advisable to seek a registration whenever possible, it is not the end of the road if you are dealing with an infringer and do not have a registration. In fact, trade dress protection is available under the Lanham Act even in the absence of an actual registration, similar to conventional trademarks. Despite some of the limitations in obtaining trade dress protection, a business should always seek to protect any unique characteristics of its products, services, or branding that give it a competitive edge.