Trade dress protection has existed for more than a hundred years in the United States, but for a long time took a back seat to patents, trademarks and copyrights in the intellectual property pantheon. Then came the US Supreme Court decisions in Two Pesos, Wal-Mart and Traffix Devices, raising the profile of trade dress and altering the public’s perceptions. In the 15 years since then, the number of applications filed with the US Patent and Trademark Office seeking trade dress protection has increased dramatically, and so has litigation over trade dress claims. Because trade dress litigation is, in most cases, significantly cheaper than patent litigation, it may soon become a major competitor to patent litigation as a means of resolving disputes.
The impact of trade dress can already be felt in virtually every sector of the business world. Many are readily familiar with the trade dress litigation between Louboutin and YSL, relating to the use of the color red on soles of women’s shoes, but trade dress extends well beyond the fashion industry.* Now companies are filing for registration of the shapes and appearance of pills, medical devices, cell phones, foods and food containers, restaurant décor and more. If you’re not thinking about the ways your company can best be utilizing trade dress protection, you may soon fall behind the curve.
In this quarterly column we will highlight trade dress developments. For example, in this past year alone we have seen Blockbuster file an infringement claim against Toys R Us over use of a blue and yellow color scheme in DVD rental kiosks; Frito-Lay file an infringement action against Medallion Foods over a scoop-shaped chip (on which Frito-Lay holds a registration); Campbell Soup’s action against the publisher of Chicken Soup for the Soul for allegedly copying its “iconic script typeface and distinctive label lay-out”; and Cointreau’s complaint against a competitor for its use of a “squat, squared shaped bottle.”
Darius C. Gambino is the editor of the IPT News and author of the book Trade Dress: Evolution, Strategy and Practice (with William L. Bartow) from Oxford University Press (2012). Reach him at [email protected].
*For more about this case, see the Winter 2012 issue of our quarterly magazine on fashion and retail law, Law à la Mode.