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Under federal law, the term “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 particular sales techniques.  For example, “[t]he design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 432 U.S. 23, 121 S.Ct. 1255 (2001).  Like trademarks, trade dress is protected under Section 43(a) of the Lanham Act.  Peter Mavrick is a Miami business litigation lawyer, and represents clients in business litigation in Fort Lauderdale, Boca Raton, and Palm Beach.  The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment litigation, and other legal disputes in federal and state courts and in arbitration.

The United States Court of Appeals for the Eleventh Circuit explained in Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004), that a business seeking to prove trade dress infringement must demonstrate that “(1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning.”  Business litigation over trade dress uses the same spectrum of distinctiveness found in trademark law: trade dress can be generic, descriptive, suggestive, arbitrary, or fanciful.  Federal courts examine trade dress to determine whether it is inherently distinctive.  In the Eleventh Circuit (i.e., the federal appellate court governing federal trial courts in the State of Florida), the legal standard for the distinctiveness of trade dress depends on facts that include, “[w]hether it [is] a ‘common’ basic shape or design, whether it [is] unique or unusual in a particular field, [and] whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.”  Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986).  Courts do not assess trade dress elements piecemeal, but instead assess the full context.  As the United States District Court for the Southern District of Florida explained in Carillon Importers Ltd. v. Frank Pesce Group, Inc., 913 F.Supp. 1559 (S.D. Fla. 1996), “it is the combination of elements and the total impression that the dress gives to the observer that should be the focus of a court’s analysis of distinctiveness.”

For example, in one remarkable lawsuit litigated in federal court in Palm Beach, an operator of several restaurants sued a competitor for trade dress infringement.  The plaintiff business operated under the name “Miller’s Ale House,” and sued a competing restaurant operating under the name “Carolina Ale House.”  The competitor argued that Miller’s trade dress is generic and unprotectable.  Miller argued in response that its trade dress is distinct, especially when considering the overall impression conveyed by Miller’s restaurant interior, its red logo signage, and the use of “ale house” in various menu items.  The federal court disagreed with Miller and held that Miller’s restaurants lacked inherent distinctiveness.  The Judge concluded “there is nothing unique or unusual about the interior elements Miller claims as its trade dress.  Numerous restaurants have a centrally located bar, two hosts at the host station, an open kitchen, servers with dark Polo shirts and khaki lower garments, and wood on the walls.  There is also nothing particularly noteworthy about the design or placement of Miller’s menu, red restaurant signage, or promotional materials.  These interior characteristics, when viewed in combination, are simply too generic to be protectable.”  Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F.Supp.2d 1359 (S.D. Fla. 2010).

Miller also argued it can still pursue its trade dress infringement claim because the trade dress acquired secondary meaning.  Federal courts use the term “secondary meaning” to mean that trade dress which lacks inherent distinctiveness can sometimes still be protectable trade dress because it has acquired distinctiveness in the eyes of the public.  In denying Miller’s secondary meaning argument, the Judge noted that Millers presented no compelling evidence such as a “systematic survey of relevant consumers” and instead relied on “witness testimony and employee-created confusion logbooks” which the Judge found unpersuasive.

There are valid claims of trade dress infringement.  However, as one may expect, there also are invalid claims designed to create the appearance of unfair competition when none exists.  Peter Mavrick is a Miami-Dade business litigation attorney who also practices business litigation in Fort Lauderdale, Boca Raton, and Palm Beach.  This article does not serve as a substitute for legal advice tailored to a particular situation.

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