Trade Dress
The total visual image and overall appearance of a product or its packaging that identifies the source of goods or services to consumers. Protectable under federal and Texas law where it is non-functional and either inherently distinctive or has acquired secondary meaning. Distinct from the underlying utility of the product; protects appearance, not function.
Trade dress is the total visual image and overall appearance of a product or its packaging that identifies the source of goods or services to consumers. Trade dress can include shape, color combinations, textures, graphics, and the overall design of packaging or product configuration. Protectable trade dress allows businesses to protect distinctive product appearances and brand presentations beyond what trademark protection of names and logos provides.
Two categories: packaging vs. product configuration
The Supreme Court's Wal-Mart decision distinguished two trade-dress categories: packaging trade dress (the dress of the package or container) and product-configuration trade dress (the design of the product itself). Packaging trade dress can be inherently distinctive, protectable without proof of secondary meaning. Product-configuration trade dress is never inherently distinctive and always requires proof of acquired secondary meaning before protection attaches.
Functionality bar
Functional features cannot be protected as trade dress. TrafFix (2001) held that a feature is functional if it is essential to the use or purpose of the product or affects its cost or quality, and that once a feature is functional under that test there is no need to ask whether exclusive use would put competitors at a significant non-reputation-related disadvantage. The Court tied that competitive-disadvantage inquiry to aesthetic functionality. The functionality bar prevents trade-dress law from being used to protect what should be protected (if at all) by patent law. Courts differ on aesthetic functionality. The Fifth Circuit, which includes Texas, has declined to recognize the doctrine (Board of Supervisors v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008)).
Secondary meaning
Secondary meaning exists where consumers have come to associate the trade dress with a single source. Evidence includes (1) length and exclusivity of use; (2) advertising expenditure; (3) sales volume; (4) consumer surveys; (5) intentional copying by competitors; and (6) media coverage.
Two Pesos and the Texas connection
Two Pesos v. Taco Cabana (1992) is a Texas-origin case holding that inherently distinctive trade dress, there the look of a restaurant, is protectable under § 43(a) of the Lanham Act without proof of secondary meaning. The Court assumed, without deciding, the lower courts' rulings that the dress was inherently distinctive and nonfunctional. The Supreme Court affirmed the Fifth Circuit, which had upheld a Southern District of Texas jury verdict finding that Taco Cabana's trade dress, described as a festive eating atmosphere with interior dining and patio areas decorated with artifacts, bright colors, paintings and murals, was inherently distinctive and infringed by Two Pesos's similar restaurants.
Trade-dress protection becomes valuable at scale, when imitators begin to copy a successful product or service presentation. For Texas businesses developing distinctive product designs, packaging, or service environments, federal registration on the Principal Register provides the strongest protection. For trade dress that is not registered on the Principal Register, the party claiming protection bears the burden of proving it is not functional (15 U.S.C. § 1125(a)(3)).
Practice guide: How to Trademark a Business Name