‘Tools of the Trade’ Dress: How to Claim Rights in Store Design

Do you want to prevent others from imitating the look and feel of your business establishments? Some recent legal authority provides useful guidance for how to go about it -- and also what to avoid.

What Doesn’t Work

As an example of what won’t work, we can refer to the facts of the Michigan case involving Happy’s Pizza. Here, Happy’s Pizza was unable to obtain an injunction to stop the competing Pappy’s Pizza from using an allegedly similar design in its restaurants, which Happy’s claimed was protected by trade dress. As provided for in Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), trade dress is essentially the total image of a product or business establishment. The U.S. District Court in the Eastern District of Michigan decided that Happy’s restaurant layout and décor had not acquire the necessary secondary meaning to qualify as a trademark, and therefore Happy’s could not claim trade dress protection. Basically, the court found that the asserted trade dress was not shown to be sufficiently unique to Happy’s to be considered an exclusive symbol of its establishments.

As discussed in the court’s opinion, there are three basic requirements to achieve trade dress protection under Section 43(a) of the Lanham Act. To successfully claim that a trade dress qualifies as a protectible trademark, a plaintiff must show:

1. The trade dress at issue is “distinctive in the marketplace” and thus identifies its source
2. The trade dress is “primarily nonfunctional”; and finally, that
3. The rival product is “confusingly similar.”

Happy’s Pizza tried, but failed to convince the court that the following combined elements of its decor qualified for trade dress protection:

(1) Granite countertops and tabletops
(2) Ceramic tiled walls and faux-Venetian plaster finished walls
(3) Extensive neon lighting
(4) Ceramic floors
(5) Large back-lit menu with faux-Venetian plaster walls
(6) Large, black industrial-style rugs
(7) Back-lit pictures of menu items
(8) Stainless steel shelving units behind the service counter
(9) Stacks of pre-folded pizza boxes and large coin-operated candy and bubble gum dispensers

Considering these elements and the asserted design theme of the restaurants, the court found that Happy’s had not shown that the features sufficiently established a “look and feel” that customers would associate only with the design of a Happy’s Pizza location. Specifically, the court held that Happy’s failed to provide evidence that each Happy’s restaurant uses the alleged uniform theme, that other fast food restaurants do not use these elements, that customers exclusively associate these elements and menu items with Happy’s, and that other restaurants do not offer similar food combinations. The ruling thus demonstrates that a strong showing of originality and uniqueness will be required to prevail in a claim of trade dress protection.

What Does Work

Guidance for the level of uniqueness required can be found in Apple Inc.’s recent success in obtaining a trade dress registration for the appearance of its computer stores. n January of 2013, the U.S. Patent and Trademark Office (“USPTO”) granted Apple a trademark registration for the design of its stores. The registered trademark is described as including such minimalistic elements as:

• On the exterior: “a clear glass storefront surrounded by a paneled façade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront.”

• Inside the store: “rectangular recessed lighting units traverse the length of the store’s ceiling…[t]here are cantilevered shelves….multi-tiered shelving along the side walls, with a oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall."

The application was initially refused in a non-final Office Action by the USPTO on the grounds that the proposed mark was not distinctive. In response to the initial refusal, Apple submitted over 600 pages of evidence to establish the “secondary meaning” of its store designs. This evidence included the results of a double-blind consumer survey finding that 42% of the respondents were able to identify the store design as an Apple store. It also included evidence establishing the success, notoriety, and common appearance of its more than 120 stores throughout the country. Through this evidence, Apple was able to convince the Trademark Office that the design of its stores was sufficiently distinctive, and was recognized as such by the public, to qualify for trade dress protection.

Apple’s success demonstrates that trade dress protection is available for businesses that can demonstrate a distinct and recognizable appearance, which can be backed up by evidence of public recognition. If you believe that your business can pass this test, trade dress protection can provide a valuable competitive advantage which should be explored.