Reporting and photography by Melissa Lauretti
The adage “do not judge a book by its cover” emphasizes the importance of not drawing conclusions based on superficial impressions. But industry leaders recognize that consumers often make purchasing decisions based on their initial impressions of a product or service. As a result, many organizations invest substantial resources in protecting the trade dress associated with their goods.
The CLE program “Dress Up Your Brand: Litigating and Managing Trade Dress Across Different Industry Sectors” provided attendees with practical tips on how to register and enforce trade dress. Douglas Rettew, Partner and Chair of Finnegan’s Trademark and Copyright Group, began the program with an overview of trade dress, which refers to the total image, or “look and feel,” of a product that is eligible for common law and federal trademark protection.
Douglas Rettew providing an overview of trade dress. Panelists (from left to right): Kate Asher, Alisa Hurlburt, and Sarah Lockner.
One of the panelists, Sarah Lockner, Senior Trademark and Division Counsel with 3M Company, discussed how trade dress protection differs among 3M’s various divisions, which include Health Care, Consumer, and Electronics & Energy. As an international company, 3M must enforce and protect its trade dress in a number of countries. To receive protection, trade dress must acquire secondary meaning and distinctiveness such that consumers associate the good with one producer or source by virtue of the good’s appearance. Outside of the United States, as it can take time for goods to acquire secondary meaning in the marketplace, companies may seek to invoke copyright protection of a good’s appearance if the product’s trade dress is not yet eligible for protection.
Another issue that multinational companies may face is obtaining protection for solo-color marks, like 3M’s well-known Post-it notes. Trade dress that is premised on one color is difficult to enforce and protect, and some countries do not even recognize single color marks, which may impact a company’s branding strategy. In addition, in terms of preparing trademark and trade dress registrations, it is often easier for a mark owner to obtain protection if colors are connected to the registration. Nevertheless, from a strategic perspective, mark owners may elect to file black and white registrations as this may broaden the scope of the mark application across the color spectrum, but this approach may not work in all countries.
While trade dress can be an effective form of protection for an owner’s intellectual property, Kate Asher, Senior Intellectual Property Counsel at Philips, which produces goods in the Healthcare, Consumer Lifestyle, and Lighting sectors, emphasized the importance of pursuing an IP strategy that directly reflects an organization’s business strategy. Specifically, Asher recommended that companies consider a number of factors, including the organization’s objective for obtaining intellectual property protection, costs, and use, in determining the appropriate methods of protection for certain goods. For example, if a company is continually revising a product’s style and design, seeking trade dress protection may not be effective because it is unlikely that the trade dress will acquire the requisite distinctiveness. Accordingly, some companies will register design patents to protect the appearance of their goods and obtain immediate exclusivity. If the product remains in the marketplace long enough to obtain secondary meaning, then the company has the option to register for trade dress protection, which may result in products receiving substantial protection under both patent and trademark regimes.
In the cosmetics, skin care, and fragrance industries trade dress is vital, and counterfeiting is a prevalent issue. Alisa Hurlburt, Assistant General Counsel at Elizabeth Arden, Inc. discussed ways in which Elizabeth Arden enforces and protects the trade dress of its products, including its distinctive fragrance bottles. By showing a number of side-by-side comparisons of Elizabeth Arden products and counterfeits attempting to mimic the overall look and feel of the products’ appearances, Hurlburt conveyed the importance of trade dress enforcement and the issues that counterfeiting poses for consumers. Cosmetics and fragrance producers invest money and resources in advertising to develop their brands, and counterfeiters capitalize on producers’ investments, which results in brand deterioration and revenue losses. Organizations may produce products that are their “impression” of well-known fragrances and luxury goods, but in doing so companies must be very cautious that they are not deceiving consumers.
Consumer opinion is particularly relevant in enforcing trade dress and litigating trade dress cases. Juries often want to personally relate to cases, which can be a problem in litigating trade dress cases, especially when jurors are shown side-by-side comparisons of the “real” and allegedly infringing products. This is because jurors will often say that they can tell the difference between the two products after seeing the images side-by-side and would be able to tell the difference if they saw the products in a commercial setting. However, the standard for trade dress infringement is based on the similarities between the “total look and feel” of the products, and not based on individual consumers’ opinions after seeing side-by-side comparisons in a courtroom setting.
Even before the trial stage, it may be advantageous for brands to conduct consumer surveys as these tools are vital to mark enforcement and protection. Consumer surveys must include many questions that connect the good to the source such that the survey results reflect that consumers associate the product with one source. Although protecting and enforcing trade dress is a time and labor-intensive process, the revenue benefits, brand development, and potential improvements in market share frequently justify the costs.
Melissa Lauretti, a third-year at the University of Connecticut School of Law in Hartford, Connecticut reported on this panel.