The adage “do not judge a book by its cover”
emphasizes the importance of not drawing conclusions based on superficial
impressions. But industry leaders recognize that consumers often make
purchasing decisions based on their initial impressions of a product or
service. As a result, many organizations invest substantial resources in
protecting the trade dress associated with their goods.
The Section of Intellectual Property CLE program
“Dress Up Your Brand: Litigating and Managing Trade Dress Across Different
Industry Sectors” provided attendees with practical tips on how to register and
enforce trade dress. Douglas Rettew, Partner and Chair of Finnegan’s Trademark and
Copyright Group, began the program with an overview of trade dress, which refers to the total image, or “look and
feel,” of a product that is eligible for common law and federal trademark
protection.
Douglas Rettew providing an overview of trade
dress. Panelists (from left to right): Kate Asher, Alisa Hurlburt, and
Sarah Lockner.
One of the panelists, Sarah Lockner, Senior Trademark
and Division Counsel with 3M Company, discussed how trade dress protection differs
among 3M’s various divisions, which include Health Care, Consumer, and
Electronics & Energy. As an international company, 3M must enforce and
protect its trade dress in a number of countries. To receive protection, trade
dress must acquire secondary meaning and distinctiveness such that consumers
associate the good with one producer or source by virtue of the good’s
appearance. Outside of the United States, as it can take time for goods to
acquire secondary meaning in the marketplace, companies may seek to invoke
copyright protection of a good’s appearance if the product’s trade dress is not
yet eligible for protection.
While trade dress can be an effective form of
protection for an owner’s intellectual property, Kate Asher, Senior
Intellectual Property Counsel at Philips, which produces goods in the Healthcare, Consumer
Lifestyle, and Lighting sectors, emphasized the importance of pursuing an IP
strategy that directly reflects an organization’s business strategy.
Specifically, Asher recommended that companies consider a number of factors,
including the organization’s objective for obtaining intellectual property
protection, costs, and use, in determining the appropriate methods of
protection for certain goods. For example, if a company is continually revising
a product’s style and design, seeking trade dress protection may not be effective
because it is unlikely that the trade dress will acquire the requisite
distinctiveness. Accordingly, some companies will register design patents to protect the appearance of their goods and
obtain immediate exclusivity. If the product remains in the marketplace long
enough to obtain secondary meaning, then the company has the option to register
for trade dress protection, which may result in products receiving substantial
protection under both patent and trademark regimes.
In the cosmetics, skin care, and fragrance industries
trade dress is vital, and counterfeiting is a prevalent issue. Alisa Hurlburt,
Assistant General Counsel at Elizabeth Arden, Inc. discussed ways in which Elizabeth Arden
enforces and protects the trade dress of its products, including its
distinctive fragrance bottles. By showing a number of side-by-side comparisons
of Elizabeth Arden products and counterfeits attempting to mimic the overall
look and feel of the products’ appearances, Hurlburt conveyed the importance of
trade dress enforcement and the issues that counterfeiting poses for
consumers. Cosmetics and fragrance producers invest money and resources
in advertising to develop their brands, and counterfeiters capitalize on
producers’ investments, which results in brand deterioration and revenue
losses. Organizations may produce products that are their “impression” of
well-known fragrances and luxury goods, but in doing so companies must be very
cautious that they are not deceiving consumers.
By: Melissa Lauretti, Lt. Governor of Programming
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