THE PARALLELS BETWEEN TRADE DRESS
AND DESIGN PATENT PROTECTION
By
Erin McKeown Joyce
Introduction
Until recently, the only way to protect nonfunctional designs was to obtain a design patent. It now appears that the
design characteristics that would result in issuance of a design patent may coincide with those for an inherently
distinctive trade dress. Further, the factors to determine functionality in trade dress appear to overlap with those used in
the test of ornamentality for design patent protection. As a result, design proprietors may benefit from a second avenue
of protection through trade dress. This protection is not limited to 14 years, as are design patents, and can continue in
perpetuity.
Inherent Distinctiveness and Novelty
The standard for design patent protection is enunciated in 35 U.S.C. § 171 which states that:
"[w]hoever invents a new, original and ornamental design for an article of manufacture may obtain a patent therefor."
A design patent secures protection for 14 years after the date of issuance.
Trade dress, which is a product’s image or overall appearance, including "size, shape, color or color combinations, texture, graphics, or even particular sales techniques," also protects designs. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). Trade dress typically protects designs if they have acquired secondary meaning. "Secondary meaning" means that the design has come through use to be uniquely associated with a single source. Trade dress may be protected if it has acquired secondary meaning or because it is so inherently distinctive that it is likely to be immediately recognized as emanating from a single source. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11.
The Supreme Court recently held that if a product or its packaging is found to be inherently distinctive, it may be protectable as trade dress so long as it continues to be used and policed under § 43(a) of the Lanham Act, without a showing of secondary meaning. Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992). In Two Pesos, the Supreme Court affirmed a judgment in favor of plaintiff, a Mexican restaurant chain, for trade dress infringement, where a jury found that the restaurant trade dress was inherently distinctive but lacking in secondary meaning. The Supreme Court reasoned that "proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act if the trade dress at issue is inherently distinctive."
The standards for inherent distinctiveness under the Lanham Act and novelty under the design patent law overlap, and in some cases may be congruent.
The degree of difference required to establish novelty [sufficient for issuance of the design patent] occurs when the average observer takes the new design for a different, and not a modified already-existing design. In re Johnson, 175 F.2d 791 and 792 (CCPA 1949).
Similarly, the standard for distinctiveness for trade dress is:
[1] whether [the trade dress] is a common basic shape or design; [2] whether it is unique or unusual in a particular field; and [3] whether it is merely a refinement of a commonly adopted or well-known form of ornamentation for the particular class of goods viewed by the public as a trade dress or ornamentation for the goods.
Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531 at 1536 (11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987).
The test for inherent distinctiveness was first articulated in Seabrook Foods, Inc. v. Bar Well Foods, Ltd., 568 F.2d 1342 at 1344 (CCPA 1977). Seabrook involved a challenge to the design portion of a mark described as a stylized leaf design which the opposer claimed was not an unmistakable certain and primary means of identifying the origin of the product. The Seabrook court found that the issue of whether a design is arbitrary or distinctive is resolved by consideration of the factors later adopted in Ambrit.
Several recent cases have adopted the Seabrook test for inherent distinctiveness. In Lisa Frank, Inc. v. Impact International, Inc., 799 F. Supp. 980 (D. Az. 1992), the court granted a preliminary injunction to prevent infringement of brightly colored novelty stationery items designed for young girls, holding that the trade dress was nonfunctional and inherently distinctive. In coming to its determination, the court considered the Seabrook factors and found that where the trade dress includes arbitrary features that neither assist in describing the product, nor assist in effective packaging, the trade dress is inherently distinctive.
In Storck, U.S.A. LP v. Farley Candy Co., 821 F. Supp. 524 (N.D. Ill. 1992), the court used the Seabrook factors to determine whether the village design and packaging for Werther’s Original butter toffees were inherently distinctive and subject to trade dress protection. However, in a series of motions regarding plaintiff’s request for preliminary injunction, the court refused to enjoin Farley’s from using the functional and non-distinctive elements of Werther’s trade dress.
The Third Circuit recently enunciated a heightened standard for inherent distinctiveness for "product configuration" trade dress in which the trade dress is alleged to be the product itself rather than the product’s packaging. In Duraco Products, Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431, (3d Cir. 1994), the Third Circuit concluded that:
To be inherently distinctive, a product feature or a combination or arrangement of features, i.e. a product configuration, for which Lanham Act protection is sought must be (i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to serve primarily as a designator of origin of the product.
Duraco involved a trade dress claim brought by a manufacturer of plastic Grecian urns who claimed that its most popular product was inherently distinctive and in-fringed upon by defendant’s almost identical plastic urn. Because the Third Circuit found that the elements of the urn’s design were not inherently distinctive since they were neither conceptually separable from the product, nor likely to serve as a source designator, it found that plaintiff was not entitled to a preliminary injunction.
Functionality and Ornamentality
The standard for functionality under trade dress law is, according to some courts, similarly analogous to that for an ornamental design under patent law. Under patent law, a design will be determined ornamental if there are other alternatives which could have been employed.
[T]here are many possible design solutions which will still create the desired results. Therefore, the court finds that . . . the design protected is ornamental.
Moore v. Stewart, 600 F. Supp. 655 (W.D. Ark. 1985).
Under trade dress law, if the functional aspect or purpose could be established in many other ways than involved in the subject design, that factor may be enough to destroy the claim that the design is primarily functional. Avia Group International, Inc. v. LA Gear California, 653 F.2d 1557 at 1563 and 1564, (Fed. Cir. 1988). Trade dress protection extends only where the design elements are non-functional. "A product feature or package design is functional if it is essential to the product’s use or if it affects the cost or quality of the article." Vision Supports, Inc. v. Melville Corp., 888 F.2d 609 at 614 (9th Cir. 1989) and First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 at 1381 (9th Cir. 1987).
Conclusion
The emerging standard for trade dress protection for inherently distinctive designs appears to be quite similar in many ways to that for design patent protection. The issuance of a design patent may well create a presumption of, or at least strong evidence of, inherent distinctiveness and non-functionality of a design, since the Patent and Trademark Office will have already made a determination under factors similar to those for trade dress protection. Where a design patent by its term expires in fourteen years, trade dress protection may continue in perpetuity so long as the inherently distinctive trade dress continues in use and is policed. Therefore, intellectual property owners may want to obtain design patent protection and trade dress protection for their inherently distinctive designs to secure the broadest possible protection.
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