Trademarks are typically associated with names, symbols or phrases. Nike’s name, swoosh logo, and slogan “Just Do It” are familiar examples of these three categories. One less common, but equally important, category of trademark that may be registered, at least in the U.S., is the three dimensional trademark. Three dimensional trademarks often comprise nonfunctional shapes or three dimensional designs of products or product packaging. It is also sometimes referred to as a form of “trade dress.” If trade dress is inherently distinctive, or if recognition of the design by the consuming public as a source identifier has been established, trademark rights can be acquired. A good example of trade dress is the shape and style of McDonald’s Happy Meal boxes.
An interesting three dimensional trademark case involving a piece of furniture recently hit the news. Restoration Hardware has become the target of a trademark infringement suit for allegedly copying the design of Emeco’s Navy Chair, for which Emeco has several related trademark registrations. The original Navy Chair was designed in 1944 for use in submarines. Apparently the submarine look is in and Restoration Hardware has included a nearly identical chair in its Fall collection. Emeco’s chair sells for $455, while Restoration Hardware priced theirs at a mere $129, substantially undercutting Emeco and threatening the livelihood of Emeco’s business. So Emeco has sicced their trademark lawyers on Restoration Hardware (Click here to see related Huffington Post article.) (http://www.huffingtonpost.com/2012/10/11/retoration-hardware-lawsuit_n_1958912.html)
This situation is interesting because knockoffs are usually thought of as coming from small, less legitimate companies willing to copy a successful product to make a quick buck. Restoration Hardware, however, is a well-established furniture maker which recently did a $124 million IPO and, according to Bloomber, has been valued as high as $887 million. The protection afforded to a small company against a behemoth by a three dimensional trademark registration underscore the importance of having a good trademark lawyer. Without a solid trademark registration portfolio, a company like Emeco might invest a substantial amount in a unique design, work for years to establish a brand reputation around the design and then see it disappear virtually overnight because of a copycat.
Emeco’s primary recourse lies in trademark protection, which is substantially strengthened by including at least one three dimensional trademark registration in its intellectual property portfolio. As mentioned above, this type of trademark registration protects trade dress. One requirement for trade dress protection is that the design not be “functional”. That is, the configuration of shapes, designs, colors, or materials that make up the trade dress must not serve a utility or function outside of creating source recognition in the consumer’s mind. In the case of the Navy Chair, if the particular combination of shape and materials was necessary for the functionality of the chair, then Emeco would not be entitled to protection. This serves to prevent one company from essentially blocking all competitors from competing because the competitors can’t even make the object function as necessary.
If your business is based on the sale of goods or product packaging having a unique and distinguishing shape or design, you should consult a trademark lawyer about the possibility of filing trademark registration applications to protect your designs. If you are interested in whether your product qualifies for three dimensional trademark or trade dress protection or think someone may be copying your design, contact a qualified trademark lawyer who can help protect your rights.