"A man with priorities so far out of whack doesn’t deserve such a fine automobile." - Ferris Bueller’s Day Off
For cars, the coolest factor is rarity. As inflation and supply chain issues drive prices higher, and many consumers find themselves competing for drab, run-of-the-mill cars, demand is growing for cars that turn heads – vehicles distinctive for their uniqueness or the beauty or excitement of their design.
Standing out is a prime goal of not just the car’s owner, but its manufacturer. For this reason, car manufacturers should increasingly consider protecting the unique aspects of their vehicles through trade dress protection.
Trademarks, copyright and patents all serve as valuable tools for protecting elements of an automobile. A car’s name is often protected as a trademark. A patent protects the vehicle’s original mechanical inventions. The unique, non-functional aspects of the car, on the other hand, may be eligible for trade dress protection.
To be protectable as trade dress, however, these elements must satisfy certain requirements: they must be both inherently distinctive and non-functional.
There are two types of trade dress – product design and product packaging. Product design cannot be inherently distinctive. Product packaging trade dress can be inherently distinctive, but elements of cars themselves are generally considered product design trade dress.
In Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F2d. 1342, 1344 (C.C.P.A. 1977), the Court of Customs and Patent Appeals created an inherently distinctive test of non-verbal symbols such as trade dress. Ultimately, the main question is whether the design, shape or combination of elements of the vehicle or of the relevant part is so different that one can assume without proof that it will be perceived as a source identifier, not merely as an appealing decorative detail or feature.
A multifactor test is used to determine whether trade dress has acquired distinctiveness: (i) association of the trade dress with a particular source by actual purchasers (typically measured by consumer surveys); (ii) length, degree, and exclusivity of use; (iii) amount and manner of advertising; (iv) amount of sales and number of customers; (v) intentional copying; and (vi) unsolicited media coverage of the product embodying the mark. Converse, Inc. v. ITC, 909 F.3d 1110, 1120 (Fed. Cir. 2018).
Second, the design or feature cannot be primarily utilitarian. If the design or feature makes the vehicle or the relevant part more useful for its purpose or provides benefits in their production or use, it will be deemed functional and not protectable. Restatement Third, Unfair Competition, § 17.
Protected regardless of registration
Nonfunctional trade dress may be registered, but even if it is not, it can still be protected. [i] Section 43(a) of the Lanham Act, which protects both registered and unregistered marks, has been invoked to protect, for instance, the design of sports cars, body kits, and non-functional grilles.
While a federal registration is not necessary, it creates a presumption of non-functionality. Owners of unregistered trade dress may assert an infringement claim but have the burden of proving that the asserted trade dress is not functional.
The same burden applies for plaintiffs asserting a claim of dilution under Section 43(c)(4) of the Lanham Act, who must also prove that (i) the unregistered trade dress is well-known, when considered as a whole, and (ii) the trade dress, taken as a whole, is famous separate and apart from any fame of any registered trademarks that may be included in the trade dress. Unfair competition laws often apply to unregistered trade dress as well.
In addition, countries outside of the US often have rubrics for protecting distinctive trade dress elements of vehicles.
The diversity of design elements in cars results in seemingly endless protectable elements. Possible sources of protectable trade dress of cars include:
- Car shape: The overall shape and design of a car can be protectable. The USPTO has approved registrations of unique vehicle designs, including body styles that incorporate unusual proportions. Unique styles, angles of windshields and rear windows, bumpers and front ends are all elements that can combine to create unique overall car shapes which may be protected.
- Grille: A distinctive design, pattern, or layout of a grille, including its size, length, width, number and orientation of the bars, the placement of the owner’s logo, and/or the inclusion of additional elements such as “handles,” may create protectable elements of a grille.
- Lights: The first experience a consumer has with a car may be distinctive lights as the car is viewed head-on. Lights can incorporate unique shapes and/or geometry, distinctive number of adjacent lights, specific proportions between the adjacent lights, and/or unique patterns, shapes and/or angles for the LEDs.
- Hood ornaments: Protectable ornamentations may consist of two-dimensional or three-dimensional configurations of animals, symbols, or figurines. Some of these elements in and of themselves may become as iconic as the car’s brand itself.
- Roof lines: Distinctive visual features of roof lines can include unique shapes, angles, and designs (such as curved and/or streamlined).
- Mirrors: Registrable configurations of side or rear-view mirrors may incorporate distinctive shapes and sizes, specific proportions, and unique types of support.
- Dashboard layout: Dashboards can include distinctive layouts, shapes, and designs which can justify trade dress support.
- Sounds: Distinctive sounds that accompany the starting of infotainment setups, stereos.
A useful tool
All these examples show that trade dress is a useful tool available to car manufacturers to combat infringement of their vehicle designs, especially when their designs cannot be protected using traditional trademarks, copyright or patents.
For questions or further insight, please contact the authors or your DLA Piper relationship attorney.