Trade Dress Legal Definition
Courts in California and elsewhere have consistently given a broad interpretation to terms such as "arising out of" in various kinds of insurance provisions. (See Acceptance Ins. Co. v. Syufy Enterprises (1999) 69 Cal. App. 4th 321, 328-329 81 Cal. Rptr. 2d 557, and cases cited.)
"It is settled that this 'arising out of' language does not import any particular standard of causation or theory of liability into an insurance policy. Rather, it broadly links a factual situation with the event creating liability, and connotes only a minimal causal connection or incidental relationship." (Id. at p. 328.)
Thus, if there is a minimal causal connection between appellants' injury and "trademark infringement," as used in the Canadian policy, appellants' claim is not within the coverage of the policy.
What is meant by the term "trade dress" is explained in the Restatement Third of Unfair Competition, as follows: "The term 'trade dress' is often used to describe the overall appearance or image of goods or services as offered for sale in the marketplace.
'Trade dress' traditionally includes the appearance of labels, wrappers, and containers used in packaging a product . . . . Although not originally classified as 'trademarks,' distinctive packaging . . . was afforded protection through the common law action for 'unfair competition.' . . . Nonfunctional packaging . . . is eligible for registration as a trademark under the Lanham Act, and unregistered features are protectable under 43(a) of the Act (15 U.S.C. 1125(a)). . . ." (Rest.3d Unfair Competition, 16, com. a, p. 157.)
The Lanham Act defines "trademark" as including "any word, name, symbol, or device, or any combination thereof . . . ." (15 U.S.C. 1127.) Package design may be registered as a trademark under the Lanham Act. (E.g., Application of World's Finest Chocolate, Inc. (C.C.P.A. 1973) 474 F.2d 1012 design and shape of candy packaging; Application of Swift & Co. (C.C.P.A. 1955) 223 F.2d 950 (Swift & Co.).)
The package at issue in Swift & Co. was a round can containing a household cleanser; the label consisted of two horizontal bands of polka dot design in red background and white dots separated by a white band with the words "Swift's Cleanser," repeated, and other printed matter.
The court held: "We think appellant's polka dot banding design is a trade-mark 'device' distinguishing its product from articles of like kind sold by others, and that it is so recognized by the public as a primary means of identification." ( Swift & Co., supra, 223 F.2d at p. 955.)
The Restatement discusses the relationship between trademarks and trade dress, as follows: "The law of trademarks deals primarily with designations consisting of words or other symbols used to indicate the source of goods or services.
However, the manner in which the goods or services are presented to prospective purchasers, or the physical features of the product itself, may also serve as an indication of source.
Source significance may attach, for example, to the overall appearance of a product or its packaging, or to some specific element or aspect of that appearance. the appearance i.e., the trade dress then functions as a trademark, distinguishing the goods or services of one seller from those of others." ( Rest.3d Unfair Competition, 16, com. a, p. 157.)
That trade dress is a species of trademark is persuasively articulated in Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc. (7th Cir. 1986) 781 F.2d 604 (Blau).
In that case the appellant insisted that it was claiming an infringement of trade dress, not trademark. the court responded: "There is probably no substantive legal difference between these terms, and certainly none that helps the appellant. It is of course true that section 43(a) of the Lanham Act (15 U.S.C. 1125(a)) is not limited to trademark infringement.
In fact it does not mention trademarks. It provides a remedy for trademark infringement only because that is a type of unfair competition, and it provides a remedy for other types as well.
'Trade dress,' a commonly used term in the law of unfair competition, denotes the form in which a producer presents his brand to the market; thus a label, a package, even the cover of a book might be trade dress. . . . If a seller adopts a trade dress confusingly similar to a competitor's, this is unfair competition actionable under section 43(a). . . . Because the statute is not limited to trademark infringement and in any event protects unregistered (common law) trademarks as well as federally registered trademarks, courts have generally not thought it important whether trade dress is a form of trademark; but it is, as the appellant implicitly acknowledges by its heavy reliance on Chevron Chemical Co. v. Voluntary Purchasing, Inc. 659 F.2d 695 (5th Cir.1981), certiorari denied (1982) 457 U.S. 1126 102 S. Ct. 2947, 73 L. Ed. 2d 1342 (Chevron).
The plaintiff's trade dress in that case consisted of its registered trademark (the brand name) plus the distinctive design that formed the background on which the name was printed on the package in which the plaintiff's product was sold to the consumer.
Hence the suit was essentially one to enforce a common law trademark in an ensemble consisting of the trade name and the background design. the court of appeals applied the principles of trademark law, see id. at 702, prompting one commentator to remark that the case 'brought trade dress cases into the mainstream of trademark law.' . . . and high time. . . ." (Blau, supra, 781 F.2d. at p. 608, citations omitted.)
In Two Pesos, Inc. v. Taco Cabana, Inc. (1992) 505 U.S. 763 112 S. Ct. 2753, 120 L. Ed. 2d 615 (Two Pesos), the Supreme Court agreed with the reasoning in Chevron and Blau. the court held that if the trade dress, for which protection is claimed under section 43(a) of the Lanham Act (15 U.S.C. 1125(a)), is inherently distinctive, it is capable of identifying products as coming from a specific source, and secondary meaning is not required for recovery.
"This is the rule generally applicable to trademarks, and the protection of trademarks and trade dress under 43(a) serves the same statutory purpose of preventing deception and unfair competition. There is no persuasive reason to apply different analysis to the two." (505 U.S. at p. 773 112 S. Ct. at p. 2760.)
This discussion has demonstrated that trade dress and trademarks may be registered under the Lanham Act, in which event they will be protected under section 32(1)(a) of the act (15 U.S.C. 1114(1)(a)), or they may be unregistered, in which case they may be protected under section 43(a) of the act (15 U.S.C. 1125(a)).
Appellants in this case obtained protection for their registered trademark under section 32(1)(a), and they obtained protection for their unregistered trademark and the trade dress associated with both marks under section 43(a). Two Pesos, Blau, and Chevron demonstrate that false designation of origin claims brought under section 43(a) of the act, whether technically involving infringement of trademark or trade dress, are treated identically insofar as the elements necessary to establish those claims.
Our discussion of the relationship between infringement of trademarks and trade dress has focused on the meaning the law attaches to those terms.
The issue remains whether the ordinary and popular sense of "infringement of trademark . . . by use thereof on or in connection with goods or products . . . sold oroffered for sale" would be understood to include, in the circumstances of this case, both trademark and trade dress.
A well-known general dictionary defines "trademark infringement" as "an appropriation or imitation that is likely to deceive ordinary or unwary buyers into accepting the goods of one trader as those of another--compare Unfair Competition." (Webster's 3d New Internat. Dict. (1993) p. 2422, col. 1.)
This definition is easily broad enough to take in both the overall appearance of a product's packaging (i.e., trade dress) and the trademark used on the packaging.