Most Ohio businesses are familiar with trademarks and service marks that are used to indicate them as the source of their goods or services. However, what these Ohio businesses may not realize is that they may have extremely valuable rights in their trade dress. What may surprise these Ohio businesses even more is that they can protect their trade dress from infringement.
What is trade dress? As stated by one Ohio court, "it is the arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale". Trade dress can include color schemes, design features and especially the arrangement of these design features, the shape or configuration of the product, container or packaging, as well any combination of these items. While trade dress is most often associated with products (goods), it can also be used with services.
How can Ohio businesses establish trade dress rights in their products or services? By showing that members of the consuming public have come to associate the trade dress of their products or services with them as the source. This is commonly referred to as "secondary meaning" and can be demonstrated by: (1) the length and manner of use of the trade dress; (2) the nature and extent of advertising and promotion of the trade dress; (3) efforts toward promoting a conscious connection in the minds of the public between the trade dress and the particular source of the products or services. If the trade dress owner wants to protect their rights in court, customer surveys will often be required to demonstrate consumer identification of the source of the product (or service) with the trade dress.
When are trade dress rights infringed? By showing that competing trade dress causes a likelihood of confusion or misunderstanding as to the source, sponsorship, approval or certification of the goods or services. In Ohio courts, trade dress infringement is actionable at common law as unfair competition, and is also a violation of the Ohio Deceptive Trade Practices Act. If the trade dress infringement involves interstate commerce, the infringer can also be sued in federal district court for violation of Section 43(a) of the Lanham Act.
What are the possible remedies for the trade dress infringement? First and foremost, the infringer can be enjoined, both initially and permanently, from using trade dress that is confusingly similar. Second, the trade dress owner can also get money damages from the infringer. If the trade dress infringement is considered "willful", the trade dress owner can also recover their attorneys' fees.
A 1987 case involving the band "Revolver" is illustrative on what can constitute trade dress rights, as well as the extent to which Ohio courts will go to prevent infringement of those rights. In that case, an Ohio appellate court held that the band's ensemble of instruments, the stage setting, outfits, song list, delivery, character interpretation and choreography of the audience participation and band member patter was its trade dress and uniquely identified the band as its source, i.e., had acquired secondary meaning. The infringers, all former band members, were also held by the court to have "knowingly and willfully engaged in deceptive trade practices" under the Ohio Deceptive Trade Practices Act. Perhaps the most startling aspect of this case was that the court granted a nationwide injunction against these former band members.
While the case of the band "Revolver" may be somewhat unique, it does show how important trade dress rights can be to Ohio businesses. It also shows how far Ohio courts will go in order to protect those rights from infringement, including injunctions across the entire U.S. Accordingly, Ohio businesses would be well advised to consider what trade dress rights they might have in their products or services, and then take appropriate measures to protect those rights from infringement by others.