Is Your Store Design Unique? Trademark It

On Jan. 22, 2013, the U.S. Patent and Trademark Office (PTO) granted Apple's request for trademark protection for the minimalist design and layout of its retail stores comprised of "a clear glass storefront by a paneled facade" and the signature "oblong table with stools ... set below video screens flush mounted on the back wall." 

Apple applied for trademark protection in the U.S. for the interior design of its retail stores back in May 2010, long before the recent rash in the U.S. and elsewhere throughout the world of so-called copycat stores featuring the same color combinations, furniture layout, window features, and "genius bar" help desk featured in Apple Stores.  In China, a "fake" Apple store featuring the white Apple logo, among other design details, was so authentic that even salespeople who worked there believed that they worked for Apple.

Though Apple's receipt of a trademark registration for the interior design of its retail stores attracted significant media attention, the concept of securing protection for the interior design of a store or restaurant, known as "trade dress," is not a new phenomenon.  Companies have long spent significant sums implementing a special look for their retail stores and restaurants designed to stand out from the competition and communicate the message of their brands.

More than two decades ago, the U.S. Supreme Court upheld a jury verdict of trade dress infringement claim in favor of Taco Cabana, a Mexican restaurant chain, with trade dress described as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings, and murals." In its decision, the court expressly recognized that retail trade dress — defined as the total image and appearance of a business including the floor plan, decor, color combinations, and even particular sales techniques featured at a location — can qualify as a protectable trademark. 

The court made clear, however, that unlike more "traditional" types of trademarks that consumers are accustomed to recognizing as source identifiers and that, if sufficiently distinctive, can qualify for protection immediately upon adoption (i.e., product packaging and/or brand names), the threshold requirements for achieving protection for "non-traditional" trademarks such as retail trade dress are more stringent and therefore more complicated.

The explanation behind this complication is twofold.  Because trademark protection essentially allows for monopoly-style protection and therefore has anticompetitive implications, it is important to ensure both that the features that comprise the retail trade dress are not functional (i.e., required to effectively compete in the marketplace such that no single entity should have exclusive rights to Mexican-style colors or decor) and that they are capable, in combination, of serving a source identifying function.  The PTO and the courts also require that the trade dress be defined with sufficient particularity to be both identifiable and avoidable. 

From a functionality perspective, a retail or restaurant trade dress will not qualify for protection if the elements of that trade dress are "essential to the purpose" of the article or affect cost or quality.  In the context of retail and restaurant dÉcor, trade dress that is comprised of elements that are commonplace in the industry will not be protectable unless the retailer can demonstrate that the "particular combination and arrangement of design elements ... distinguish it from others using the same concept." 

For example, in Best Cellars, Inc. v. Wine Made Simple, Inc., the court held that the overall dÉcor and design of plaintiff's wine shop constituted protectable trade dress, despite the existence of a number of elements that were utilitarian or commonplace in the industry (i.e., the placement of informational cards in front of wine bottles and arranging wine bottles horizontally in racks). 

Because retail trade dress is three-dimensional and therefore more akin to product configuration than product packaging, a trademark applicant seeking to register its trade dress with the PTO is required not only to describe its trade dress with particularity, but also to demonstrate to the PTO's satisfaction that consumers have come to recognize its trade dress as a source identifier, in trademark parlance, that the trade dress has acquired "secondary meaning". 

Evidence supporting a claim of secondary meaning may include examples of advertisements pointing consumers to the trade dress features; evidence of applicant's advertising expenditures; examples of independent media coverage of the features claimed as trade dress; and information regarding the period of time during which the trade dress has been in existence and accessible to the purchasing public. 

While the law recognizes a presumption of acquired distinctiveness where the trade dress has been in the marketplace for five or more years, that presumption is often insufficient to carry the day for non-traditional marks such as retail trade dress.  Thus, many applicants for trade dress protection will need to go to the additional expense of producing a consumer survey demonstrating that their store configuration has actually acquired secondary meaning in the marketplace. 

During the two-year trademark examination process, the PTO repeatedly raised questions related to the functionality and distinctiveness of Apple's store trade dress. The PTO went back to Apple several times requiring an explanation as to why the claimed store design elements were neither functional nor so standard in the industry  as to be unprotectable, and to demonstrate that the trade dress had come to serve a source identifying function. 

Apple refined its trade dress description multiple times, and obtained and submitted a consumer survey to support its claim of acquired secondary meaning.  In response, the PTO sought an even narrower description of the features being claimed.  Apple responded to the PTO's inquiries with hundreds more pages of documentation of secondary meaning, including evidence of substantial business activity generated by its stores, promotional events tied to the stores, photographs of the stores on Apple's website, and numerous unsolicited media articles about the store design, among other things.  Ultimately, Apple was able to persuade the PTO to allow its mark to be published for third-party objection and, when the opposition period passed without objection, Apple's marks matured to registration.

While it may have received the most press coverage, Apple is only one of a series of companies that have successfully demonstrated to the PTO that their trade dress is non-functional and has acquired distinctiveness sufficient to qualify for registration.  For example, Chipotle owns a registration for its restaurant layout (shown below), described as "a restaurant evoking a neo-industrial feel through the use of unpainted galvanized or stainless steel" with "natural wood finishes as accents on the table and/chair edges, bench seating, wall finishes, and/or chairs," and the "use of industrial-look light fixtures."  The side-by-side comparison below demonstrates how such a description translates into the interior of a Chipotle restaurant:

In another example, both Texaco and its parent company Chevron own federal registrations for the trade dress featured at their respective gas stations.  Texaco's registration lists "the configuration of a building with a red and black fascia and a T-star in a circle thereon, the remainder of the building painted silver and gray," among other things, as the elements of its trade dress.  The effect of the combination of these features is shown in the side-by-side comparison.

Potbelly Sandwich Works owns a number of trademark registrations covering aspects of its restaurant layout and decor, including U.S. Registration No. 3494208 which describes Potbelly's trade dress as "the appearance and design of the interior of a restaurant produced by a combination of multiple counters of different heights forming a multi-level counter structure, a built-in glass front drink cooler, cubbyhole-style shelving, banner stanchions with chains/ropes and tile behind serving area."

Notably, Potbelly accepted the lesser protections available from registration on the Supplemental, rather than Principal, Register, apparently deciding against submitting the range of evidence required to establish acquired secondary meaning to the PTO. While this approach circumvents the additional time and expense associated with such a showing, it also secures for the registrant a more limited range of protection.  A registration on the supplemental register does not enjoy the fundamental presumptions of validity and exclusivity which accompany registration on the Principal Register.  Nor can a supplemental registration become incontestable and thereby immune from vulnerability on certain specified grounds. 

The PTO can, however, cite a supplemental registration against future applications on likelihood of confusion grounds, and provided the search coding is adequate, supplemental registrations are searchable and should be located in any competent PTO database search.  And owners of Supplemental Registrations are entitled to use the coveted ®.  For those companies without the resources or stomach to pursue the more lengthy and involved process required to achieve registration on the Principal Register, the benefits of even a Supplemental Registration to an informal enforcement program should not be underestimated. 

In other examples, the authors believe that makeup retailer Sephora could make a strong case that its predominantly black-and-white interior, lighting design and "makeup station" layout merit trademark protection.  Yogurt chain Pinkberry's spring green and pink dÉcor, distinctive lighting and modern seating combine to create a unique and recognizable store dÉcor.  And Five Guys Burgers & Fries establishments typified by their red-and-white checkerboard pattern, industrial red and white lighting, exposed red ventilation conduits, and exposed grill areas could also be an interesting candidate for protection. 

Ultimately, a company interested in protecting the look of its retail store or restaurant should keep several fundamental concepts in mind.  Perhaps most important, efforts should be directed towards protecting those specific elements that communicate the message of the brand, and not every single detail of an interior design.  Potbelly's trade dress registration is a good example of this approach.  The registration focuses on its unique counter heights and "cubbyhole shelving" that evoke the restaurant chain's beginnings as a Chicago sandwich shop located inside an antique store.

Next retailers and restaurateurs must ensure that their trade dress elements are uniform and consistent in all of their establishments, regardless of the particular size or shape of the space.  Failure to ensure such uniformity can jeopardize the ability to establish secondary meaning. 

In addition, once a retailer or restaurateur has defined the distinctive elements of its trade dress, it must be prepared to enforce those elements.  The more complicated the trade dress (i.e., a combination of a significant number of functional and non-functional elements), the more difficult to establish that confusion with a third party's look and feel is likely to cause confusion (the standard for infringement).  "Defendant-competitors who have some similar elements as well as noteworthy dissimilar elements in their trade dress may be able to show that the specific combination of elements that they use also constitutes protectable trade dress, and that consumers are unlikely to confuse the two."

What is the takeaway?  The true value of a trade dress registration is not in its ownership, but how it is leveraged in the enforcement process.  Compared with the significant costs associated with developing and implementing a consistent and unique trade dress across multiple locations, the costs associated with obtaining a registration may be a wise investment.  Now that Apple has secured trademark protection for its store features, retailers, restaurateurs, and the public alike will be watching Apple's enforcement efforts to see just how far its protection extends.

Julia Anne Matheson is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focusing on areas including trademark, unfair competition, and Internet-related issues such as strategic international portfolio management and domain name disputes. Whitney Devin Cooke is an attorney with the firm, focusing on trademark litigation.
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