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New Ideas, Methods and Products Series
Volume IX |
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Protection for Product Appearance Beyond
Patents and Copyrights
INTRODUCTION
A product's appearance can be its most valuable
selling feature. Rubik's Cube was instantly
recognizable by its black cubical body with
the six differently colored sides; but a
colored cube was too simple to be protected
by patent or copyright. Yet when a competitor
copied the original, Rubik sued for infringement
of trade dress and won. The competitor was
stopped from marketing a cube puzzle with
similar colors. The physical appearance or
trade dress of an article constitutes a property
right which is independently protectable
even when no patent or copyright can be obtained.
It can be devastating when
a product believed
to have a protectable,
unique and well-known
trade dress obtained through
expenditure
of millions of dollars
for designing, development,
advertising, and promotion
is discovered
to have no such protection.
The after-market for Digital
Equipment Corp.'s
computer peripherals is
a several-billion-dollar-a-year
industry. DEC spent more
than $1,000,000
to develop and advertise
a new terminal for
use with its computers.
The terminal's appearance
was aesthetically pleasing
and human engineered
for ease and comfort of
use with many unique
and arbitrary features.
The terminal even
won awards for originality
and high quality
of design as well as utility.
But when a
competitor copied the terminal
design, DEC
could not prevent the copying
because the
primary purpose of the
bulk of the design
features were "functional".
That
is, the copying of these
features was necessary
to enable the after-market
suppliers to compete
with DEC: the emulator
terminals needed to
be as similar in operation
and appearance
as possible in order to
maximize operational
compatibility with the
DEC terminal and effect
operator acceptance in
the shortest possible
time.
TRADE DRESS
What are the criteria?
Why was a simple cube
protectable while a computer
terminal was
not?
Trade dress protection
should be understood
by every company that issues
a new product
and every designer of new
products. A product's
trade dress is the overall
image of the product
used to present it to purchasers.
It may
include the product's size,
shape, color,
graphics, packaging, or
labels. There are
three basic elements that
must be present
to establish infringement
of a protectable
trade dress: (1) The trade
dress is inherently
distinctive or has acquired
distinctiveness
through use in commerce
over a period of
time; (2) the trade dress
is not functional;
(3) the trade dress of
the copier's product
is likely to cause confusion
of purchasers.
This primer explains these
three elements
of trade dress. Other primers
in the series
discuss what things are
protectable by patent,
trademark, copyright and
trade secret; how
to establish those property
rights; why and
how to obtain foreign protection;
licensing
of ideas and products;
various agreements
used to protect the ideas
and products such
as employment agreements,
confidential disclosure
agreements, consultant,
supplier and customer
agreements, and visitor
forms; infringement
and litigation; the formal
procedure for
obtaining protection from
conception of an
idea to interaction with
the Patent and Trademark
Office and the Copyright
Office; the protection
and licensing of biotechnology;
false advertising
-- what is and what isn't
permissible; comparative
advertising -- what can
you say about a competitor
and his products; software
protection and
licensing; rights-in-data,
patents, and copyrights
under SBIR and other government
contracts;
and from invention to patent:
the inventor's
role.
The first element, inherent
distinctiveness,
can be shown where the
trade dress is unique
and arbitrary: Could one
make a perfectly
serviceable competitive
product which looked
nothing like the original?
If so, there is
the required distinctiveness.
Acquired distinctiveness
is shown by substantial
sales and expenditure
for advertising which has
resulted in purchaser
awareness of the trade
dress as indicative
of a particular source.
In the case of Rubik's
cube, protection was
afforded because even though
the colors were
in common every day use,
they had, after
the sale of more than five
million cubes,
acquired a special meaning
to the purchasing
public and so were distinctive.
Furthermore,
those colors were not functional.
The competitor
could have used different
colors or different
markings entirely to distinguish
the six
sides of the cube.
However, in another situation,
an attempt
to prevent a competitor
from using a variety
of combinations of bold
colors on a camera
was unsuccessful. There
the colors were not
distinctive because they
were changed periodically
to keep up with the current
youth-fashion
fad of bright color combinations.
Furthermore,
the colors were used to
identify different
operable parts of the camera,
such as the
shutter button, film advance,
and flash on-off
switch.
Color was also crucial
in another case where
a supplier's system of
color-coded shims
was imitated by a copier.
A shim is a thin
sliver of material used
to bring a device
to the proper position
or level (like a matchbook
under a wobbly table leg).
The supplier sold
plain, unmarked shims which
were color-coded
to indicate their size.
The copier used exactly
the same colors for size
indication on its
unmarked and unlabeled
shims. The colored
shims were protectable
because the specific
colors used were quite
distinctive in view
of the absence of any other
labeling or packaging.
In addition, other competitors
who also used
color-coding schemes used
different colors.
Furthermore, the color-coded
size scheme
was not functional: while,
in a broad sense,
the use of different colors
to represent
different shim thicknesses
is functional,
the use of the specific
set of colors is
not at all relevant to
the shim size or its
ability to function as
a shim and so the
scheme was not functional
to the exclusion
of protection.
The second element of protectable
trade dress,
functionality, is shown
when a product's
design or appearance is
essential to the
purpose or use of the product,
or if it affects
the cost or quality of
the product. A feature
is functional if competitors
would find it
necessary to incorporate
that feature in
their products in order
to be able to compete
effectively. Basically,
if the trade dress
is an important ingredient
in the commercial
success of a product, then
it is functional
and not protectable.
When a clothing manufacturer
introduced a
distinctive rain jacket,
it was almost immediately
copied. The rain jacket
was made of three
overlapping flaps made
of a high-sheen waterproof
material, white drawstring
at the waist,
and white front and collar
zipper. The imitation
copied all of those features.
And while the
flaps, the high-sheen material,
and hood
portion were all certainly
functional, the
overall appearance of the
jacket was certainly
not. One could have made
a perfectly serviceable,
attractive jacket without
using those features
in this combination. This
overall appearance
was original with the first
manufacturer
and was entitled to protection.
Just how far the protection
extends to a
combination of otherwise
individually unprotectable
features can be seen from
a recent landmark
case in which Hallmark
was prevented from
copying the trade dress
of Blue Mountains'
greeting cards. There the
protectable trade
dress encompassed an ephemeral
impression
or effect far beyond even
the combination
of copied features. Blue
Mountain was the
reigning star in designing
the highly emotional,
non-occasion genre of cards.
The features
or trade dress copied were
the placement
of poetry on the surfaces
of the cards, the
coloring and edge structure
of the paper,
the texture and quality
of the paper, the
use of fluorescent ink,
and lengthy poetry
in free verse. Certainly
these features individually
were common elements and
necessary in the
makeup of a greeting card.
But the combination
was not. The combination
resulted in a distinctive
look and style that was
unique to Blue Mountain
and which had been appropriated
by Hallmark
over and above the mere
copying of features.
Protectable trade dress
does not apply only
to discrete products. The
atmosphere and
appearance of a retail
store can be protected
even though it consists
of otherwise individually
unprotectable features,
as can be seen from
the success of Fuddruckers
restaurant in
preventing a competitor
from imitating the
restaurant layout and ambience.
Fuddruckers
and its competitor both
operated restaurants
using white-colored, as
opposed to plain,
walls, provided an open
bakery showcase and
an exposed bakery in a
particular location,
provided an exposed butcher
shop with hanging
beef and a visible preparation
area, and
provided condiment aisles
which resembled
grocery store vegetable
departments. The
floors were checkerboard,
and there were
displays of groceries and
beverages in their
original packaging and
neon signage.
Such design features are
related to the utilitarian
function of the restaurant
service, which
is to provide fresh food
in a clean surrounding,
and they led to the commercial
success of
the Fuddruckers restaurant.
However, in the
combination of these items
there is constituted
an overall design or trade
dress which makes
Fuddruckers unique and
distinguishable from
other restaurants which
have, for example,
a bakery display or a meat
showcase. The
overall design of Fuddruckers
is arbitrary
and non-functional, and
has become established
in the mind of the public
uniquely with Fuddruckers.
The competitor was stopped
from copying Fuddruckers'
trade dress.
A similar result occurred in a case decided
by the U.S. Supreme Court. Taco Cabana operates
a chain of fast food restaurants in Texas
serving Mexican food. Its trade dress includes
a festive eating atmosphere having interior
dining and patio areas decorated with artifacts,
bright colors, paintings and murals. The
patio includes interior and exterior areas
with the interior patio capable of being
sealed off from the outside patio by overhead
garage doors. The exterior of the building
is a festive and vivid color scheme using
top border paint and neon stripes. Bright
awnings and umbrellas continue the theme.
A competing Mexican restaurant, Two Pesos,
adopted a motif very similar to Taco Cabana's.
At the trial the jury awarded Taco Cabana
$3,000,000 in damages, and the Supreme Court
affirmed.
Trade dress does not need
to be complex in
order to be protectable.
Mr.Kao opened the
Hunan Lion restaurant in
Vienna, Virginia.
Its front door was adorned
by two lions hand-carved
from white marble, over
six feet tall, weighing
several tons each and costing
$16,000. When
Mr. Kao opened a second
restaurant, Mr. K's,
in Washington, D.C., he
adorned its entranceway
with another pair of white
marble lions.
Then a competitor opened
for business diagonally
across the street and less
than 150 yards
away with identical lions
adorning its front
door. While Mr. K's marble
lions were quite
superior in quality to
those appearing at
other Chinese restaurants,
that alone was
not inherently distinctive
enough to make
these lions unique. But
these lions associated
with the restaurant had
acquired distinctiveness
as shown by the fact that
nearly half of
the $120,000 advertising
expenditures were
spent on materials depicting
the lions. Over
160,000 customers have
filed between the
lions on their way into
the restaurant and
untold thousands more have
driven or walked
past them. Further, the
lions have been photographed,
mentioned, and even commented
upon by the
critics who present the
restaurant to the
Washington dining public.
The simple decoration
of two stone lions was
protectable.
The third element of a
protectable trade
dress, likelihood of confusion,
occurs when
there are a number of similar
features and/or
the overall impact of the
products are substantially
the same. Likelihood of
confusion was the
issue between Schwinn's
Airdyne exercycle
and a look-alike made by
Ross. Examined in
evaluating the likelihood
of confusion were
similarity of design, similarity
of products,
and identity of retail
outlets, purchasers,
and advertising media used.
Although the
exercycles were strikingly
similar, there
were a number of differences,
too. Most notably,
the Rosscycle had Ross's
name on it in eleven
different places. It didn't
help much that,
although there were more
than 100 exercycles
on the market, no other
manufacturer except
Ross sold one that looked
and performed like
Schwinn's.
The issue in showing likelihood
of confusion
is not whether every detail
and facet of
the package was copied,
but rather whether
the combination as a whole
was so similar
as to cause confusion in
the mind of the
purchasing public. It is
enough if an ordinary
purchaser of the product
would not see the
differences unless they
were looking for
them, and if a purchaser
that did notice
the difference between
the items that were
different would still suppose
both products
came from the same manufacturer.
Once a protectable trade
dress has been found,
the courts will go a long
way to prevent
imitation and the likelihood
of confusion
in the future. A mattress
wholesaler offered
genuine Sealy mattresses
together with foundations
made by Pacifica which
had identical fabric
covering or ticking. The
foundations bore
no identifying labels,
and because of the
similarity in appearance
gave the impression
of being a matched Sealy
set. After Sealy
brought suit to stop the
confusion, the other
mattress manufacturer,
Pacifica, voluntarily
began attaching a label
to the side of the
foundation and to distribute
signs to retailers
for display with the Sealy/Pacifica
sets
which stated, "Sleep
on two great names
in bedding * * * mattresses
by Sealy/foundations
by Pacifica". That
wasn't enough. The
court went further and
granted an injunction
prohibiting the sale of
foundations covered
with ticking similar or
identical to that
found on the Sealy products
unless each foundation
was explicitly labeled
to disclaim any association
with Sealy, and disclosure
was made at the
retail point of sale that
the foundation
was not of Sealy brand
or manufacture.
Product appearance, the
overall look and
feel of a product, is entitled
to strong
protection even though
it is not eligible
for traditional patent
or copyright coverage.
Imitators who appropriate
the impression
a product creates can be
stopped or compelled
to take corrective measures
to prevent any
further likelihood of confusion
between the
original and the imitation.
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