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“Trade dress” refers to the total image of a product, including features such as size, shape, color or color combinations, texture, graphics, or particular sales techniques.

Protection for trade dress is similar to protection for trademarks and service marks.

Trade Dress Infringement in Violation of Section 43(a) of the Lanham Act

The purpose of trade-dress protection is to enable a business to identify itself efficiently as the source of a given product through the adoption of a mark which may be in the form of a slogan, symbol, ornamental design or other visual insignia.

In order for a claimant to prevail on its Lanham Act claim, it must establish by a preponderance of the evidence the following:

1. That the trade dress of the claimant’s product or services is inherently distinctive or has acquired secondary meaning;

2. That the claimant’s trade dress is primarily non-functional; and

3. That alleged infringer’s trade dress is confusingly similar, causing a likelihood of confusion in the marketplace.

First Element – Inherent Distinctiveness or Secondary Meaning

A trade dress in inherently distinctive if it is fanciful, arbitrary, or suggestive.

A trade dress has acquired secondary meaning when a consumer associates the design feature with a particular producer. In order to determine whether secondary meaning exists, one may consider the following factors:

1. The amount and manner of advertising of the claimant’s products or services;

2. The volume of sales for the claimant’s products or services;

3. The length and manner of use of the products or services;

4. Direct consumer testimony;

5. Consumer surveys;

6. Evidence of intentional copying; and

7. Evidence of misdirected inquiries.

Second Element – Trade Dress is Primarily Nonfunctional

A nonfunctional design feature is a mere arbitrary embellishment or a form of dress for goods that is primarily adopted for purposes of identification and individuality and that is unrelated to basic consumer demands in connection with the product. A non-functional design feature can be a slogan, a symbol, a combination of words and symbols, an ornamental feature, a distinctive shape, or something else intended to remind a consumer of a brand.

Functional features are not those which serve a function, but are those that a competitor would find necessary to include in his product in order to effectively compete in the market. A feature is also functional when it is costly to do without or to design around, rather than one that is costly to have.

Third Element – Likelihood of Confusion

If the claimant has established by a preponderance of the evidence that the trade dress of its products or services have acquired secondary meaning or is inherently distinctive, and are also nonfunctional, then one must consider whether the alleged infringer’s use of the claimant’s trade dress is likely to cause confusion in the marketplace. This means that the alleged infringer’s use of the claimant’s trade dress is likely to confuse a reasonable purchaser about the source of the alleged infringer’s products or services or the claimant’s connection with them.

To determine whether a likelihood of confusion exists, you may consider the following factors:

1. The degree of similarity between the trade dress of the claimant’s products or services and the trade dress of the alleged infringer’s products or services;

2. The similarity between the products in question.

3. Whether the products or services are distributed through similar channels of trade and to similar ultimate customers;

4. The degree of care likely to be exercised by consumers (as evidenced by the amount spent to purchase the products or services and the atmosphere surrounding the products or services in their normal setting);

5. The strength of the secondary meaning of the claimant’s trade dress in the public mind;

6. Evidence of actual confusion; and

7. The alleged infringer’s intent to pass of their products or services as those of the claimant.

However, none of the foregoing factors in itself disposes of the likelihood of confusion question.

Actual Confusion

The most positive and substantial proof of likelihood of confusion is actual confusion, and very little proof of actual confusion is necessary to prove likelihood of confusion. However, it is not necessary for there to be actual confusion for you to find a likelihood of confusion.

Damages for Trade Dress Infringement

If a judge or jury finds that the alleged infringer has violated Section 43(a) of the Lanham Act, then the claimant is entitled to recover any damages sustained by the claimant as well as the infringer’s profits realized in connection with its infringing products or services, and the Court may award treble damages where such violation was willful.

Recovery for trademark infringement is not limited to cases in which the amount of actual damages is demonstrated. Rather, the claimant may recover profits reaped by the infringer from its infringing activity. In assessing profits, the claimant is only required to prove the infringer’s sales. The burden then shifts to infringer to prove costs or deductions.

Exceptional Case

Exceptional cases are those “in which the acts of infringement can be characterized as malicious, fraudulent, deliberate, or willful.” Treble damages and attorneys’ fees may be awarded by the court in exceptional cases.

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