Nike recently received a trademark for their Air Jordan sneaker. According to ESPN’s Nick DePaula, who covers the footwear industry related to sports, the market has been flooded with copies of the timeless sneaker. It was only right Nike protects their iconic design; however, this move has fashion designers scratching their heads and wondering if they can use trademarks to protect their designs. The short answer is no. Trademarks do not protect designs. Rather they protect elements that help consumers determine the source of a good or service. While most people easily acknowledge names, slogans, and logos as brand identifiers, they fail to recognize trademarks also protect shapes.
Enter trade dress. Trade dress is a type of trademark that protects the different visual elements of a brand. For products, this can look like packaging, while for services, it could look like the decor or shape of your facility.
Trade dress protection is more difficult to register as the trademark owner must prove the elements they seek to protect are unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product.” (Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994).). If they cannot prove their trademark is inherently distinctive, the trademark owner must prove consumers have started to identify their trademark with their particular product over time. This is known as a secondary meaning.
Fun fact Netflix had to prove a secondary meaning to register their trademark as USPTO found Netflix was descriptive of the services they provide, but that’s a story for another day.
Secondary can be shown through:
• marketing efforts over a five year period
• sales over a five year period
• market survey evidence
• length of use
• media coverage
In addition to being inherently distinctive or having secondary meaning, the elements cannot be functional. Meaning the elements you seek to protect cannot be necessary for the protect or service to work.
Nike’s trade dress registration will prevent others from using the same or similar elements on their shoes. This didn’t sit well with business consultant Robert Lopez who filed cancellation proceedings against the shoe giant over the weekend. Lopez alleges fraud and claims the mark submitted by Nike has never been used in commerce. He further alleges the design is common and commonly used amongst third-party designers. If allowed to register, Lopez claims the registration would place a cloud over his and his client’s ability to use their own sneaker design in commerce.
Popular examples of trade dress include Coco cola’s glass bottle and the iPhone’s rectangular shape and rounded corners.
Bottom line, when building your brand’s identity, in addition to its name, logo, and tagline, consider what unusual and memorable visual elements you can create to enhance your brand’s position in the market.
When you’re ready to protect your brand, contact our office to schedule a consultation to assess your needs, identify your intellectual property, and develop a strategy to protect it. You can schedule your consultation here.