Trade Dress: Like a Trademark, but Maybe Better

“Trade Dress” is an important but not widely understood aspect of trademark law. Can a product’s packaging, or the product’s configuration, really identify the source, without referring to any actual trademarks? Yes!

Trade dress can be understood as a form of trademark that does not use words (like “NIKE”) or symbols (like the Nike Swoosh) to identify the source of a product or service. For example:

1. If a boxy, brown truck pulls into your driveway, do you know what delivery service is bringing you a package?
2. If I hand you a caramel-colored beverage in a glass bottle that has a “waist-like” narrower diameter in the middle of the bottle, is it Pepsi or Coca-Cola?
3. If I drive a car with two kidney-shaped grills on the front of the car, do you know what kind of car it is?

Each of those products or services are identified by its trade dress, either by product configuration (UPS and BMW) or by product packaging (Coca-Cola).

Can your competitors make their packaging look like yours? Can they adopt the same color scheme on the product or the package? Can they make their product look a lot like yours?

Recently, Deere & Co., the outdoor power equipment manufacturer known as “John Deere,” filed a trademark lawsuit to protect its yellow and green color scheme on its agricultural equipment. In a case decided last week in Kentucky, the U.S. District Court permanently banned South Dakota-based FIMCO, Inc. from painting its agricultural equipment with the colors green and yellow.

How does one protect its trade dress? John Deere filed trade dress applications in the United States Patent and Trademark Office (USPTO), eventually filing three applications for a variety of their products.

The court decided that that FIMCO’s use of green and yellow was likely to cause confusion among purchasers; they would not be able to easily tell whether the equipment was manufactured by John Deere or FIMCO.

During the trial, John Deere showed that they had vigorously defended their trade dress, confronting about 40 companies to cease using the color combination.

How can you or your clients use trade dress protection?  Here are some guidelines:

1. Be aware of the opportunity. Most don’t realize a product’s configuration or packaging can be a valuable, protectable, business asset.
2. Keep the same configuration or packaging over time. The more customers associate the product configuration or packaging with your product, the stronger and more provable are your rights.
3. File trade dress applications with the USPTO. Hire an intellectual property attorney to prepare and file a trade dress application for you.

Emerson Thomson Bennett is an intellectual property law boutique law firm, limiting its practice to all aspects of intellectual property law, including patents, trademarks, copyrights, domain names, trade secret, Internet law and related litigation. Roger Emerson can be reached at [email protected] or 234-231-7070.