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Trade Dress Infringement for Unregistered Trademarks

Does your business have a distinctive “look and feel” that you would like to protect from your competitors? You may be in luck because the look and feel of a business’ product or service, may be subject to protection under the Federal trademark law, even if it is not a registered mark.

A business’ trade dress includes the total overall appearance of the business, and may even include features such as size, shape, color or even a sales technique.1 The term "trade dress" refers to the total image of a product: its design and features along with the elements that serve to identify the product to consumers.

In a restaurant, for example, trade dress may include an identifying sign, the floor plan, décor, the equipment to serve the food, and anything else that conveys the image of the restaurant. The trade dress of a business – that is, the total image and appearance of a business – may be the basis of a suit for trademark infringers. As with a registered trademark, a distinctive identifying mark or image of a business may be protected if:

(1) It is inherently distinctive (when a source of a product is distinguished from other products), or

(2) It has acquired distinctiveness through secondary meaning – that is, a unique association with a specific source (the purchasing public associates the product with a particular source or seller). A copier of the trade dress may be seen as falsely claiming that its products are originating from the business that has spent the effort, monetary resources, and time to develop its trade dress.

One of the class examples of a successful defense of a business’ trade dress is the Two Pesos case.2 Taco Cabana had pioneered the Mexican patio cafe concept with its first restaurant opening in San Antonio in 1978. In 1985, Two Pesos opened its first restaurant, which used a similar style and décor to Taco Cabana, and by 1987 had expanded into Austin, Houston, Dallas and El Paso. Taco Cabana then sued Two Pesos in federal court in Houston, alleging that Two Pesos had copied features such as overhead doors to open the secondary dining room to the patio dining area, double drive thru windows, open kitchens, similar menu boards, similar floor plans and brightly colored buildings (Taco Cabana's Pink vs. Two Peso's Turquoise).

Taco Cabana won its case in the trial court, proving that Two Pesos intentionally and deliberately infringed on its trade dress. The trial court win held up on appeal, all the way to the US Supreme Court. In January 1993, Taco Cabana (which had gone public) announced that it was purchasing cash strapped Two Pesos' restaurant assets in exchange for 940,000 shares of Taco Cabana stock, approximately valued at $22 million. As a result, Two Pesos – the infringer – is no more, and Taco Cabana remains as a successful restaurant chain.

If your business has a distinctive trade dress, it may be a major factor in its success. But only if you defend that trade dress from infringers so your trade dress is not diluted.

1John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).
2Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
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