By: Thomas L. Sica
Trade dress is a tricky form of intellectual property. By law, it is functionally the same as a trademark, but more difficult to establish. Unlike trademarks which typically consist of words, phrases and/or logos, trade dress consists of elements that do not inherently identify source, such as the total image and overall appearance of a product or its packaging. For example, the shape of a soda bottle cannot inherently identify source, but still most consumers will recognize the particular shape of Coca-Cola’s bottles. The Coca-Cola Company owns the trade dress rights to that bottle shape and thus are the exclusive users. But, Coca-Cola’s bottle was not protectable immediately.
As trade dress cannot be inherently distinctive, owners must establish that the trade dress has acquired distinctiveness (also known as secondary meaning) in order to be protectable. In the Second Circuit, which encompasses the Federal Courts in New York, Vermont and Connecticut, acquired distinctiveness is often determined by evaluating six non-exclusive factors: (1) advertising expenditures, (2) consumer studies linking the trade dress to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the trade dress, and, (6) length and exclusivity of the trade dress’ use. Essentially, in order for a trade dress to be protectable, it must already be recognized by consumers as belonging to its source.
But, that isn’t all. In addition to the requirement of acquired distinctiveness, a trade dress must also be non-functional. If the design is “essential to the use or purpose of the article or if it affects the cost or quality of the article,” per the Supreme Court in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001), then it is considered functional and thus not protectable as trade dress. The reasoning for this is simple: (1) entities should not be able to prevent competitors from using an element of a particular product if it is essential for the use of that product, and (2) a functional article is more appropriate for a patent, which has a finite lifespan, than for trade dress, which can exist indefinitely.
So, in a lawsuit alleging trade dress infringement, the plaintiff must establish three elements, all of which must be pled in the complaint: (1) non-functionality of the asserted trade dress, (2) acquired distinctiveness of the asserted trade dress, and (3) a likelihood that the defendant’s product or service will be confused with the plaintiff. Where the trade dress is registered with the U.S. Patent and Trademark Office (“USPTO”), the first two elements are already established; the USPTO will only register trade dress after the applicant establishes non-functionality and acquired distinctiveness. Thus, the registration itself exists as evidence of non-functionality and acquired distinctiveness. But, if the trade dress is unregistered, pleading a proper trade dress infringement claim is more difficult as all three elements must be pled and eventually established.
Earlier this year, the Second Circuit issued two decisions that provide more clarity to plaintiffs asserting infringement of an unregistered trade dress: Wonderful Co. LLC v. Nut Cravings Inc., 2025 WL 212064 (2d Cir. Jan. 16, 2025) and Cardinal Motors, Inc. v. H&H Sports Prot. USA Inc., 128 F.4th 112 (2d Cir. 2025).
In the Wonderful Co. case, the plaintiff asserted an unregistered trade dress in the packaging of pistachios sold by the plaintiff. In its complaint, for non-functionality, the plaintiff primarily relied upon evidence of possible alternative designs for the packaging. Aside from alternative designs, the plaintiff relied on the description of its trade dress and assertions that the packaging is non-functional. The District Court for the Southern District of New York dismissed the complaint, partially on the basis that non-functionality was not adequately pled. In particular, the District Court found that the plaintiff’s assertions of non-functionality were conclusory and the Court discounted the evidence of alternative designs.
On appeal, the Second Circuit reversed. The Second Circuit found that “[a]side from the transparent windows in the packaging, which arguably serve the functional purpose of allowing a consumer to view the pistachios being sold, [plaintiff] identifies the remaining elements of its unregistered trade dress as colors, words, and typefaces that, in combination and on their face, are plausibly nonfunctional.” As such, the Second Circuit affirmed that plaintiffs asserting unregistered trade dress need only plead a trade dress that is plausibly non-functional in order to survive a motion to dismiss. Further, though the Second Circuit did not mention the alternative designs argument, by approving a complaint heavily reliant upon alternative designs, the Court implicitly approved this method of establishing non-functionality in certain cases. The Wonderful Co. decision as a whole will make it easier for trade dress plaintiffs to sustain their complaints at the initial stage so long as the dress is plausibly non-functional.
In the Cardinal Motors case, the plaintiff asserted an unregistered trade dress in the design of motorcycle helmets. The District Court for the Southern District of New York dismissed the complaint on the basis that the plaintiff failed to properly plead distinctiveness. In particular, the Court noted that “Plaintiff’s expression of the trade dress independently fails to allege how the features… are distinctive.” Like in Wonderful Co., the Second Circuit reversed this decision as well. The Second Circuit noted that the District Court erred by conflating the requirement that a plaintiff properly articulate its asserted trade dress with the distinctiveness element. “Distinctiveness is an element of a trade dress infringement claim to be pleaded in a complaint and shown at trial. The articulation requirement, by contrast, is a pleading requirement under which plaintiffs must articulate precisely the components that compose their claimed trade dress.” In other words, a plaintiff sufficiently articulates its asserted trade dress merely if it describes the components of the dress in detail; it need not articulate the distinctive aspects of the dress for this requirement. Plaintiffs still will need to plead distinctiveness, but separately from the description of the trade dress.
Both Wonderful Co. and Cardinal Motors show an effort by the Second Circuit to clarify the pleading standard for trade dress claims and create a more precise guideline for plaintiffs for a proper trade dress complaint. In other words, the Second Circuit has chosen to make trade dress a little less tricky.