Let’s Play Dress Up!
Let's Play Dress Up!
Are You "Twinning" with a Brand Competitor?
Have you ever gotten dressed up to go out with a sibling or friend only to walk out of your room and that sibling or friend is wearing an outfit crazily similar to yours? At that point, you’re both looking at each other trying to decide who’s going to change so that you both can rock your own unique swag, right?
Well this happens in business as well… only it’s most likely not your sibling or friend, but a competitor in the same industry as yours. This, my friends, would be considered a trade dress issue.
Trade dress is a type of trademark that protects the look and feel of a thing (the overall visual impression of a brand). More specifically, it refers to the color, shape, design, texture, particular sales techniques, and other non-functional aspects that define a product or service.
When another brand shows up with a trade dress that is confusingly similar to yours, you may have an action for trade dress infringement and be able to force the other brand to “change its outfit.”
In order to prevail in a trade dress infringement action, you must successfully prove:
Inherent distinctiveness or secondary meaning
The best way to show inherent distinctiveness is by registering the trade dress on the Principal Register of the USPTO.
If the trade dress is not registered, you must prove that the trade dress is commonly regarded as being associated with the product or service.
Distinctiveness acquired through secondary meaning can be proven by showing that requests for your product or service have been misdirected to a competitor, or by showing length of time the trade dress has been in use, achieved sales and advertisement using the trade dress.
Likelihood of confusion as to its origin, sponsorship, or approval due to similarity between the trade dress of both brands
In proving likelihood of confusion, you will need to show that reasonable consumer is likely to be confused as to the origin of the product of service.
Non-functionality of the trade dress.
To determine non-functionality, you must assess whether a feature of the product, that adds distinction, is essential to the product so that it will require producers of competing brand to use the same feature. If the answer to this is yes, then the feature is not protectable.
As stated above, you can register your brand’s trade dress with the USPTO. Registration is not required; however, it will strengthen your claim in case of infringement.
Of course, if you choose not to register your trade dress, you run the risk losing customers to your competitors whose brands closely resemble your own. For instance, Jesseca Dupart of Kaleidoscope Hair Products recently expressed on an Instagram post that her customers were being misdirected to a competitor because the competitor copied elements of her products. When a supplier sold out of Ms. Dupart’s products, they pushed the competitor’s products as though they were associated with Ms. Dupart’s collection. Needless to say, Ms. Dupart was not pleased!
Consumer confusion is NOT what you want. That’s almost like having your check deposited into another person’s account!
For your best chance at avoiding such a misfortune, you just might want to speak with an attorney to assess whether or not trade dress protection is right for you.
In fact, while you’re thinking about it, you may as well give US call!
We’re always here for you!
Eloise Kaiser joined New Millennia Legal Resources mid-year 2019 as the Senior Client Liaison. She is a New Orleans native and graduate of Loyola University New Orleans College of Law. As a natural creative in her own right, she holds a special interest in business and intellectual property law.