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Every business owner is familiar with the trademark protection available for the words and logos that identify a company’s products and services. Less well known, however, is that it is also possible to protect the packaging and format of a company’s products and services, under the federal law of “trade dress.” The most famous example of trade dress is the Coke bottle. Apart from the trademark protection granted to the words, “Coca-Cola” or to the red and white design marks that accompany the product, is the fact that the shape of the bottle itself is protected by federal trademark law, under the doctrine of “trade dress.” Trade dress also extends to protect the packaging of many consumer products that are sold at retail. The concept of trade dress extends beyond mere packaging, however. Restaurants, for example, have been able to obtain protection for various features of their business. In California, Fuddruckers’ restaurant was able to stop an imitator on this basis. In a case that went to the U.S. Supreme Court, the Taco Cabana restaurant chain was able to stop a competing chain, named Two Pesos, from imitating the Taco Cabana format. The court held that trade dress law protected the combination of a festive and vivid color scheme using top border paint and neon stripes in combination with bright awnings, umbrellas and other features. In each of these cases, it was the non-functional, stylistic elements of the restaurants’ d�cor that was found by the court to serve to identify the restaurants and to distinguish them from competing restaurants. In other cases, even the exterior building design has been found protectible. In all such cases, however, there is no trade dress protection for any features that are “functional.” As has been noted, “free competition dictates free imitation” with regard to functionality, at least with respect to trade dress law. In May of 2004, for example, a federal court rebuffed the attempt of Dippin Dots Inc. to prevent another company from selling flash-frozen ice cream in the shape of small spheres; the court found that the size and shape were functional for such a product. (Novel functional features may, however, be patentable.) Thus, the heart of trade dress is that the features be non-functional, and distinctively identify the particular establishment so as to distinguish it from its competitors. Trade dress protection can be asserted either on the basis of “common law” rights or through a registration with the Patent & Trademark Office. There are various legal and practical advantages that flow from registration, which apply both to traditional word marks as well as to trade dress. For example, registration creates legal presumptions that, over time, can become “incontestable” in favor of the registrant. Registration also provides the registrant with a powerful arsenal of remedies in an action for infringement, including treble damages, infringer’s profits and attorney fees. Also, one can use the symbol of an “R” inside a circle only if one has registered the mark. The practical advantages of registration are sometimes even more helpful for trade dress claims, however, than they are for word marks or logos. When a business uses a unique word mark to identify products, other companies will readily recognize common law rights to exclusive use of that word, even in the absence of registration. In the case of trade dress, however, most business people assume that “free competition dictates free imitation,” and they do not carefully distinguish between the right to imitate functional features versus common law trade dress rights in non-functional features. Thus, on a practical level it makes a world of difference when the owner’s cease-and-desist letter carries the imprimatur of federal law by including as an attachment a copy of the owner’s certificate of registration for the trade dress at issue. Alan J. Haus is a partner in the Intellectual Property and Technology Practice Group of Lewis Brisbois Bisgaard & Smith LLP’s San Francisco office. He is the former chairman of the Trademark Committee of the California State Bar’s Intellectual Property Section.

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