Trade dress is a form of IP that specifically protects the look or form of a product if the public has come to recognize that look as coming from a particular source. Trade dress is the "look" of an article or its packaging. The blue Tiffany box and Coca-Cola's glass bottle are considered notable examples of trade dress. However, trade dress does not protect functional elements. A product element is considered functional when the product would not work properly without that element. A good indication that something is functional would be that the element is disclosed in a utility patent. Trade dress only protects nonfunctional elements, or those elements of a product design that are primarily aesthetic, but only when these elements indicate the source of a product or service.
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Acquiring trade dress protection usually requires several years of active sales, advertising, and promotion because the public must have come to associate a particular products' trade dress with the company that makes it. Unless the "look" of an article or the "look" of packaging has become associated with its source, it cannot be protected. Moreover, that "look" must be used consistently on a product line. Once trade dress is registered, products should be marked "Trademark design of XYZ Co."
Trade dress can, in principle, last forever, so long as it remains in active use. Trade dress imitators should be promptly put on notice because undue delay could prevent the company from enforcing its rights. Prompt notice will enable imitators to change the look of their products before they have made a sizable investment.
Trade dress is perhaps the most difficult form of IP protection to obtain. There is generally no "piece of paper", that is, no copyright certificate, trademark registration, or issued patent, to demonstrate to a competitor or a court that trade dress rights are held. Indeed, the U. S. Supreme Court looks at trade dress rights restrictively, preferring that IP owners protect their rights by the more traditional forms of protection. Moreover, to obtain protection a company must demonstrate to a court that consumers recognize its products as having been produced by it. This might be an easy standard for the trade dress of some very famous products (e.g., the shape of the original Coca-Cola bottle, or the red-and-white packaging for Marlboro cigarettes), but it is a very high standard for most products. Thus, trade dress protection should be used to protect a product only if the right holder is sure it can be proven and only if there is no other form of protection.
In some instances, trade dress can be registered with the PTO, but the rights holder must prove that consumers associate its trade dress with its company. Nevertheless, trade dress should be registered if at all possible. Where trade dress has been registered, proof that it is in use must be periodically field with the PTO.
Evaluation of trade dress rights and the initial cease and desist letter sent to infringers will cost approximately $2,500 to $5,00 in legal fees. The cost of registering trade dress with PTO can range from $5,000 to $10,000, substantially more than the cost of filing an "ordinary" trademark application because a significant amount of evidence must be submitted to convince the PTO that consumers associate the trade dress with the source of the product.
Source:
"Fashion Law. A Guide for Designers, Fashion Executives, and Attorneys"
