Trademarking a brand name, product name, logo, or design in the alcohol industry has become commonplace among alcohol producers as a seemingly automatic protective measure when launching a new brand or product. Registering a trademark on the principal register can put competitors on notice of your right to exclusive use of the mark in commerce as well as protect against subsequent infringers looking to usurp the reputation or goodwill of the brand. But what about the forgotten cousin of trademark, trade dress? Why do we rarely see producers running out to obtain trade dress protection for their products? Trade dress protects the “total image” or “overall appearance” of a product or establishment and may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques (John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983)). Trade Dress protection is afforded when features of a product or a product’s packaging are distinctive and not required for functionality, but rather are used to create an association between the producer and the product. Distinctiveness can be inherent, or it can be acquired through secondary meaning when an aspect of a product that is not necessarily distinctive on its own eventually becomes distinctive through consumer association with the mark or brand in connection with the product, successful marketing techniques, and widespread product awareness and popularity. Protection is not offered for functional aspects of a product which are essential for competitors to use and for which there are no comparable alternatives that would allow competitors to perform the same function.
Trade dress protection, as it relates to the alcohol beverage industry, is most commonly sought in the packaging of products with extremely unique designs– the Markers Mark bottle with red wax spilling over the top, Dan Aykroyd’s Crystal Head vodka’s skull shaped bottle, or the unique Crown Royal bottle dressed in a purple drawstring bag. However, unique packaging is not the only alcohol related area where protection is sought. On several occasions, the bounds of trade dress protection have been stretched to include overall restaurant or bar ambiance. In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) and Fuddruckers, Inc. v. Doc’s B. R. Others, Inc., 826 F. 2d 837, 843 (1987), the Court held that restaurant decor, menu, layout, style and overall establishment ambiance was a protectable trade dress.
Industry limitations coupled with strict burdens of proof to obtain trade dress protection are likely factors contributing to limited trade dress use. Many producers assume that they are not eligible for protection because certain product features, individually, may have been used previously by others or incorporate generic or descriptive elements. However, it is important to remember that trade dress is assessed as a whole and is afforded protection due to its unique combination of features even if, individually, the features would otherwise be considered generic or descriptive. Regarding product packaging, producers must abide by federal standards of fill which are somewhat limiting in the creation of packaging, at least in container size. Unique or elaborate packaging can be extremely costly and some producers prefer to focus their resources on the product itself as opposed to the packaging. There are also a limited amount of liquid packaging options to choose from and because of this, creating a package that is distinct from the standard packaging methods and that is non-functional is a challenge. Competitors must have access to standard container options so it is important that the overall trade dress features of the product do not limit competitors ability to achieve the same functionality. Packaging is often created by borrowing successful features from competitors, and potential trade dress applicants should take caution to ensure that there are not taking a functional feature off of the open market for others to use. If your product overcomes the non-functionality hurdle and it is not “inherently distinct”, it should be noted that proving secondary meaning is also time consuming, costly, and requires significant proof of product recognition in connection with the brand. Notwithstanding these hurdles, trade dress protection provides benefits such as brand awareness, advertising revenue, and of course, protection against infringement and your brand.