Safeguarding Trade Dress Requires More Than ‘Lawyering Up’

By Gregg S. Lipman

You look down the store aisle, and you smile. Your new product stands out on the shelf. You’ve spent an awful lot of time and money defining the proposition, creating a distinct look and feel and honing the message for it. Your brand is different; you might even say unique. Best of all, it’s attracting a strong consumer base and, clearly, it’s on its way to becoming the category leader.
But, given your success, how long before others start to copy you—your image, your tone, your reason-for-being?
The battle for intellectual property rights is in full force, and protecting trade dress in the ever-larcenous world of consumer goods is no small feat. You could, of course, armor plate your brand by letting a room full of trademark lawyers help design the packaging. But that’s likely to prove counterproductive. As one attorney once told me, “If I drive the process, the product will look horrible, and it’ll sell worse.”
Safeguarding trade dress requires more than just lawyering up (though sharp legal counsel is always advisable). It demands an upfront commitment to making a brand’s design unique, a respect for the sanctity of visual and verbal brand assets and a willingness to get in the face of any competitor that tries to muscle in. Brand defense requires a company to sweat the details early and then never, ever turn the other cheek to an aggressive competitor.
Defining the indefinable
Trade-dress protection can’t be legislated. A brand’s identity is best defended when the sum of its design elements combine to create a unique space. Those who understand it best know that it is a game of small, well-executed actions. Your design must be distinct enough that anyone attempting a knock-off will be forced to emulate more than one element, making the infringement obvious.
The hope is that, if it comes down to going to court, a judge will be forced to conclude that, yes, the defendant’s typeface looks a lot like the plaintiff’s, and so do its colors and graphics. And the verbiage is similar, too. In short, these separate elements will add up to a finding of infringement.
Unfortunately, it’s not always easy to create a unique design. It’s cheaper to use a stock approach when creating a new product’s structural packaging, for instance. But investing in original design makes the brand that much less imitable. Want proof? Walk down the liquor aisle and look at the Absolut vodka bottle. A knock-off brand will have a hard time telling a judge why its bottle looks just like it.
The same is true with graphics. Those that serve a functional purpose are not necessarily protectable, but arbitrary graphics are. So, the more a brand strives to make its graphics distinctive and compelling, the tougher it will be for a competitor to emulate them. Avoid stock images and clichés in favor of those that reinforce the product’s message in a fresh and memorable way.
Color, too, can lend protection. Chosen wisely it can represent a brand’s identity—there’s Tiffany blue, for example, or UPS brown. In sweeteners, there are the pink guys, the blue guys. And, more recently, yellow (Splenda). But colors can be cliché, too: Where is it written that an environmentally friendly product must be packaged in a green hue?
Be different, but be smart
Cleary, differentiation is the best way to protect trade dress. But how far should you go? My advice: Take a risk. Too often, even leading brands take the road most traveled, and that makes them more easily poachable. So throw your arms around risk as a good friend and protector—but be smart doing it.
Risks must be calculated. Packaging shouldn’t fly in the face of your message. It is critical to be faithful to your brand and what it represents. If your image is trustworthiness, you probably don’t want to be edgy just to be different.
Good legal advice can also mitigate risk. Earlier remarks about attorneys notwithstanding, a solid legal review should precede every product or package introduction. Are there elements that can be trademarked or patented? Find out. Then get it done. Even the most banal information can be packaged in a protectable way (there is an ironic TRUTH here—the more descriptive and easily understood, generally the less protectable).
Then, once you establish your trade dress, defend it from the get-go. By being proactive, you can avoid battles with competitors down the road. Too many brands are letting their competitors get away with infringement—and diluting their own assets—because they aren’t nearly quick enough to defend themselves against the encroachment.
That needn’t be the case. There are ways to fire warning shots against a copycat competitor, including putting the company on public notice that it will be pursued if the infringement continues. If it doesn’t stop, it’s important to take legal action.
In fact, companies are protecting their intellectual property more vigorously than ever. Private label is a big reason: More and more store brands are appropriating the assets of leading manufacturers and standing on their own—not simply as low-price competitors but as national brands themselves.
The reality is that trade dress protection is only going to get more difficult. In this competitive retail climate, it’s rare that one brand dominates a category. Even if one does, competitors are always in the wings looking for potential weaknesses.
Smart marketers need to work harder to give their brands visual recognition. They need to have the tenacity to protect their brand against competitors big and small. It may sound like a headache, but it can help prevent a much bigger one down the road.
Gregg S. Lipman is managing partner at New York-based CBX, a creative agency specializing in consumer brand, retail and corporate identity design. With more than 20 years of  consumer branding experience, Gregg has worked with clients such as PepsiCo, Frito-Lay, Reckitt-Benckiser, General Mills, Seagram’s and Johnson & Johnson. Reach him at