Trade Dress Protection for Look and Feel

In How Can I Protect the Look and Feel of My Website?, I explained that the “look and feel” of a website – or a smartphone – can be protected as trade dress or by a design patent.

This post examines a recent case that discusses the elements of trade dress protection in detail. That case is Ingrid & Isabel, LLC v. Baby Be Mine, LLC, decided by the United States District Court for the Northern District of California.

Ingrid & Isabel v. Baby Be Mine

Ingrid & Isabel and Baby Be Mine compete in selling maternity products. The claims and counterclaims in their case alleged breach of contract, violation of trademark law, unfair competition, intentional interference with contractual relations, and intentional and negligent interference with prospective economic advantage.

The claim of interest in this post is violation of federal trademark law, specifically, the Lanham Act (15 USC Section 1125(a)). That Section, among other provisions, authorizes civil suits for marks that cause confusion concerning the source of goods or services.

Trade Dress Protected by the Lanham Act

At page 40 of its decision, the court described the three elements of a trade dress claim under the Lanham Act (emphasis added).

The Court finds that the “look and feel” of a web site can constitute a trade dress protected by the Lanham Act. Accordingly, to succeed in its claim Plaintiff must thus show “(1) that its trade dress is inherently distinctive or has acquired secondary meaning; (2) that its trade dress is
nonfunctional; and (3) that defendant’s product creates a likelihood of consumer confusion.”

The court discussed each of the three elements. Here are some of the points the court made in its analysis (emphasis added).

1. “A mark or dress is distinctive when it identifies the particular source of the product or distinguishes it from other products…. Correspondingly, a product’s trademark or trade dress acquires a secondary meaning when the purchasing public associates the mark or dress with a single producer or source rather than with the product itself.”
2. “Plaintiff asserts several elements of its website that are likely non-functional, including: the choice to use a ‘feminine script,’ the use of ‘pastel pink-orange hue,’ the use of ‘[p]ink and orange script,’ the ‘[c]olor and pattern of wallpaper,’ and the particular poses chosen for its models.”
3. “[Concerning consumer confusion,] Plaintiff has raised a triable issue of fact as to at least…strength of its mark, …proximity or relatedness of the goods; …similarity of sight, sound and meaning; …marketing channels; and…intent.”

In summary, if you want to protect your website’s trade dress, be sure you can show that it is distinctive or has acquired secondary meaning; it has non-functional elements; and the defendant’s site has caused consumer confusion.

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.