Trade Dress – Another Weapon in Your Intellectual Property Arsenal

YETI®, a well-known manufacturer of high-quality coolers and insulated tumblers, recently settled several lawsuits against cooler competitor RTIC involving allegations of trade dress infringement, patent infringement and other claims stemming from RTIC’s manufacture and sale of look-alike coolers and insulated drinkware products. Among other rights asserted in the lawsuit, YETI relied on trade dress rights in the overall design and appearance of its Roadie® and Tundra® coolers, which YETI described as including features such as the lines on the front, back and side of the coolers, the “duck-bill” tapered front corners of the cooler, the style and placement of the slots, the appearance of the latches and cooler handles, as well as the color contrast and combinations and other design elements of its coolers. YETI alleged that RTIC advertised and sold at least three infringing products that copied virtually all features of YETI’s trade dress. After a year and half battle, the parties settled the dispute. While the details of the settlement are confidential, the agreement requires RTIC to pay YETI an undisclosed amount and to cease production and sale of the allegedly infringing products. It also requires that RTIC redesign the products at issue in the lawsuit.

Trade dress rights generally refers to proprietary rights in the overall look and feel of a product and can consist of product shape and packaging, as well as the design of a product. Trade dress has been defined by courts as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992). Trade dress protection can be difficult to demonstrate and involves presenting evidence of the distinctiveness of the trade dress (i.e., do consumers recognize the product shape, product design, or other claimed elements as referring to a single source). The claimed elements of the trade dress also cannot be functional, i.e., essential to the underlying purpose of article or it falls outside of trade dress protection under U.S. law. While demonstrating trade dress rights requires additional hurdles, there are significant benefits for trade dress protection, including perpetual rights, unlike the limited duration of rights afforded under patent law. Therefore, it’s important to consider whether you may have protectable trade dress and what you can do to protect those rights, such as filing a federal application with the U.S. Patent and Trademark Office.

Conversely, it’s also important to consider whether third-party trade dress rights may be implicated and whether your products or packaging could infringe a third-party’s trade dress rights. Proper legal clearance, involving trade dress, patent, and/or copyright clearance may be necessary before taking a product to market to avoid the chilling effect (pun intended) that litigation may bring – such as in RTIC’s case, which involved a settlement payment and product redesign.

Image Courtesy of: Michelle Grewe.