Konrad Gatien, Partner and co-chair of Stubbs Alderton & Markiles’ Brand Development & Content Protection Practice, discusses the importance of establishing a distinctive website to create trade dress, and therefore protect your unique brand. Konrad is involved in all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.
What is Trade Dress in the Electronic Age?
The digital age has seen the migration of store fronts from brick-and-mortar locations to the Internet. Currently, Amazon is the largest online retailer in the world, with over 48 billion in sales. Given the importance of e-commerce, it comes as no surprise that making an online “storefront” distinctive has become a key element in a company’s branding strategy. Not only must the website be eye-catching and interesting, it must stand out from among the over 600 million active websites online.
One means of achieving distinction is for a company to create a website that has a unique “look and feel” that sets it apart from the rest. In legal terms, this overall visual appearance is known as “trade dress.” Trade dress traditionally has consisted of the specific characteristics or visual appearance of a product or its packaging. The scope of trade dress protection has expanded from these traditional notions to include magazine covers, store interiors, and websites.
The elements of trade dress with respect to websites include such elements as the images, frames, colors, highlights, orientation, layout, graphics, animation, borders and sounds, as well as the selection and arrangement of all of these elements.
The purpose of trade dress protection is prevent marketplace confusion by ensuring that a consumer’s reliance upon the distinctive features associated with a single source are not copied and associated with another business and its products.
Trade dress is protectable once it has achieved secondary meaning, a status achieved when a substantial number of purchasers associate a particular appearance only with a single source. Once secondary meaning is established, the trade dress owner may prevent others from copying it under the Lanham Act, which prohibits unfair competition.
Articulation and Distinctiveness
To establish trade dress, a person or business seeking protection must be able to sufficiently articulate which elements of its website are distinctive. These elements cannot be “functional,” meaning they cannot be merely essential to the product’s use. For example, a shopping cart or check out feature in and of itself would be functional; however, a unique logo or graphic for this feature may be a protectable element of the site’s trade dress. The purpose of the requirement that trade dress consist of specific, articulable, non-functional elements is to give competitors sufficient notice of what the protected trade dress is, and to protect legitimate competition by prohibiting the monopolization of useful product features.
Preemption by Copyright
It is worth noting that where online trade dress is at issue, a trade dress owner’s claims may still be dismissed if the appearance of the website falls under the protections of the Copyright Act. Given the preemption rule, a brand owner cannot seek to protect the look of its website as both a copyrighted work and trade dress. Therefore, a website owner should be careful in selecting the elements of its trade dress in a manner that clearly distinguishes them from elements protected by copyright law. For example, common geometric shapes are not protectable through copyright law, so the owner should consider including those in its trade dress articulation. In addition, the format and layout of a website should be included in the trade dress articulation because they are not proper subjects of a copyright claim (though text and photographs would be proper subjects).
Your website’s appearance is the first impression consumers have of your business. A well-designed website that is distinctive and pleasing to the eye builds consumer confidence in your brand, and helps define your brand’s commercial integrity. To ensure that you maximize the impression of your brand, you should take care to populate your website with elements that are not only distinctive, but also that are legally protectable. From a trade dress standpoint, this will include the layout of the site, certain graphic elements, and its overall appearance, as opposed to its content. When articulating your trade dress, you should be careful to distinguish those elements from the text, original graphic elements and photographs protectable under copyright law to ensure that your trade dress claims are not preempted by the Copyright Act.
 Reader’s Digest Ass’n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987).
 Apple was issued a service mark registration for the design and layout of its Apple retail stores on January 22, 2013 (see Reg. No. 4,277,914).
 See, e.g., Sleep Science Partners v. Avery Lieberman, 2010 U.S. Dist. LEXIS 45385 (N.D. Cal. 2010).
 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
 Sleep Science Partners, 2010 U.S. Dist. LEXIS 45385, at *13.
 See Copyright Office Circular 66.
For more information about Trade Dress and other intellectual property related questions, please contact Konrad Gatien at (310)746-9810 or email@example.com.