An online law library prepared by Hall Dickler Kent Goldstein & Wood LLP for advertising and marketing professionals

1995 Intellectual Property Report

Trade Dress Protection for Advertising Campaigns

The Relationship Between Trademarks And Advertising/Part III

In this multi-part Intellectual Property Report series, we explore the relationship between trademarks and advertising. In Part I we discussed trends in the advertising business and use of trademarks in advertising. In Part II, we focused on trademarks and comparative advertising and false advertising. In this issue, we explore trade dress protection for advertising campaigns.

Advertising is all about creating images. Advertising creates themes whose images sell goods and services. The question posed is to what extent such advertising themes and images are protectible. Case law indicates that advertising themes and images may be protectible under trademark law when they function as "trade dress". Trade dress, which is protectible under Section 43(a) of the Lanham Act, constitutes the image of a product or business through words, symbols, collections of colors and designs, or advertising materials or techniques that the purchasing public has come to associate with a single source.

To prevail in a trade dress action, a plaintiff must show that a competitor has copied its distinctive trade dress and is therefore likely to cause consumer confusion. The plaintiff must also show that what was taken was not "functional." Trade dress which is "functional" serves a utilitarian purpose, such as a belt which holds up pants. In this circumstance, the law holds that no one can monopolize functional trade dress and have trademark protection, since others will inevitably wish to use the same trade dress for the same utilitarian purpose. The purpose of functionality in trademark law is to keep those aspects of trade dress which are essential to the successful marketing of products bearing the same or similar dress freely available to all who need them.

In a court action between Haagen-Dazs and Frusen Gladje, a manufacturer of ice cream attempted to keep a competitor from using features of its packaging which evoked a fresh, Scandinavian image of the product. Haagen-Dazs sought to keep Frusen Gladje from using a two-word "Swedish"-sounding name, a prominently displayed list of the product's natural ingredients, a list of artificial ingredients not found in the ice cream, directions for serving and eating the ice cream (essentially that it was best served soft), and a map of Scandinavia.

Despite the well-developed promotional techniques employed by Haagen-Dazs, the court refused to extend protection to its Scandinavian marketing theme. The court found that although both companies used a similar concept to promote their products, they were easily distinguishable. The court noted that the coloring, design and shape of the two ice cream containers were completely different, and the prices of the two products were significantly different, although both competed in the premium ice cream market. In the opinion of the court, the difference in the trade dress of the two products was apparent "to all but the most obtuse consumer."

Fuddruckers brought a case against a competing restaurant where both used glass enclosed bakeries and butcher areas exposed to the public to demonstrate a freshness concept. Both also used glass-enclosed display cases for the display of baked goods and meats, as well as dining areas with checkered white and dark floors, and bright neon wall displays to communicate the cleanliness of their restaurants, and the high quality and freshness of the food being served.

While finding that the restaurant theme and image used by Fuddruckers to communicate cleanliness, freshness, and quality served a utilitarian purpose, the court still found that consumers had come to associate Fuddruckers' theme and image with plaintiff's restaurants. Furthermore, the court found defendant's use of the same promotional elements to communicate the utilitarian concepts of freshness and quality to be too similar to be coincidental.

After finding that defendant had copied both the permissible functional and impermissible distinctive aspects of Fuddruckers' trade dress, the court analyzed whether secondary meaning attached to the distinctive aspects of plaintiff's trade dress. Finding that it did, the court held defendant liable for violating plaintiff's advertising theme and image.

Phillip Morris recently sued Star Tobacco in the most recent trade dress case involving protection of an advertising theme. In this decision, Phillip Morris sought to stop the use by Star Tobacco of a "Gunsmoke Man" and the concept of "Gunsmoke Country" which Star had used to advertise its Gunsmoke brand cigarettes. Phillip Morris claimed that Star infringed Phillip Morris' own "Marlboro Man" and "Marlboro Country" concepts. The court granted injunctive relief against Star. In doing so, it found that Phillip Morris had cultivated an identifiable and distinctive image for its product through the use of a Western theme delineated by the distinctive elements of a "Marlboro Man" riding, most often, on a horse in open country. The court summarily rejected Star's argument that it was attempting to distinguish its Gunsmoke brand from Marlboro's by using analogous, but markedly different symbols, to detail its own Western theme.