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Current Decisions regarding the protection of your Trade dress as a Trademark

Trademark infringement cases are litigated with more frequency than ever, with "trade dress" the most contentious and highly litigated area in trademark law. Why? Because competitive forces push businesses to make their products "look" and mimic that of market rivals, forcing the market rivals often who are national brands to respond with trademark infringement suits because of trade dress. What is trade dress? The packing, shape, color and design of a product of which the consumer identifies with that product and a particular company.

Trade dress is of serious economic consequence to a company because in many instances trade dress equates to consumer brand loyalty, to distinguish a product from itís competitor. Because of this, your product packaging is protected under trademark law as tradedress. The Supreme Court in Two Pesos, Inc. v. Taco Cabana,Inc., 505 U.S. 763 (1992) stated that "trade dress" involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even a particular sales technique.

A company designs a particular product for the market. Is it necessary that before they place this product in the stream of commerce, they specifically intend that the product design, shape, color, have "secondary meaning" as their unique trade dress? In addition to the fact that the product packaging be identifiable with their company, is it necessary that they intend that the packaging have a "secondary meaning" protectable as a trademark?

Secondary meaning not necessary

In Two Peso, the Supreme Court held that "inherently distinctive" trade dress is protectable even without a showing that it has acquired secondary meaning because such trade dress itself is capable of identifying products or services as coming from a specific source. The Supreme Court held that there is no basis in the Lanham Act for distinguishing between trademarks and trade dress, and no reason to apply different analysis to them. The courts further stated that the requirement of secondary meaning for trade dress that is distinctive would undermine the purpose of the Lanham Act.

What if your product packaging design is somewhat plain, conservative, even generic? Does your product design qualify for trademark protection as trade dress?

Even a single color trade dress qualifies for trademark protection.

In Qualitex Co. v. Jacobsen, 115 S.Ct. 1300 (1995) the Supreme Court held that the Lanham Act even permits trademark protection for a "single color." In Qualitex, the court found that a single color on a dry cleaning pad can serve to identify its source. In Qualitex, the court quoted the definition section of the Lanham Act, which states that a trademark includes any word, name, symbol or device or combination, as support for why color alone can function as a trademark. Supreme Court Justice Stephen Breyer in a unanimous opinion stated that the Lanham Act is very broad and not restrictive, "almost anything is capable of identifying and distinquishing goods and functioning as a trademark."

Despite the current law regarding trade dress, it is still recommended that a business considering a new productís packaging, or the modification of existing packaging for their current products, make sure that: 1. their package design, color, graphics, logo, is distinctive from a competitorís; 2. there is secondary meaning (intent to use as a trademark). Although secondary meaning is not necessary under current law, it is wise to have this secondary meaning when designing a products packaging, color, graphics, or logo just in case.

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