Don’t be Crushed by the Wave of Copycats, Protect Your Trade Dress

Apple and Hollister stores are so recognizable to customers from the entrance design that they don’t even need to look up at the sign to locate the store.  That’s branding at its best!

Do you have a distinctive and recognizable retail store layout? Is the customer experience central to your brand image? If your aesthetic design is your competitive advantage and you have more than one location, you should consider whether protecting that retail store design and its specific design elements should be part of your intellectual property strategy. In the era of Instagram and other social media focusing on pictures, protecting recognizable designs takes on greater importance than ever before.

How can a retailer protect a distinguishing and recognizable store design?  There are two popular options to consider: trademark and copyright. In Europe, registered design protection is also an option if the design is registered before it becomes public. The advantage of copyright for protecting trade dress is that consumer recognition or “secondary meaning” isn’t needed, easing the burden on the applicant to meet requirements for registration. Copyright also affords the ability for early protection. Trademark protection requires time for consumers to become familiar and recognize the store design as a source identifier. This typically takes years. Copycatters can open stores before trademark rights accrue. Retailers like Forever 21 that copy popular designs and have them in the market in weeks. 

There is a less popular third option. Design patent protection can also be used to protect retail store designs. Design patents can be used to protect the store layout and identifiable elements in a distinctive combination.  Design patents can also be used to protect individual design features themselves such as displays, furniture, light fixtures, flooring, and other design features. Design patents are affordable and offer vigorous protection. Like copyright, “secondary meaning” (consumer recognition) is not required so early protection is possible.  Design patents can be flexible by electing which elements to claim as part of the patented design (and always present) and which ones are not required features in every store.

It is essential for the store owner to secure the copyright or design patent rights from the artist creator with a patent or copyright assignment. Failure to have proper written transfer of ownership from the creator can be the death knell to a protection strategy and prevent the store owner from enforcing rights against competitors.

This copyright strategy has been successfully used by Shoebaloo, a European shoe company, defending its proprietary store design elements against copycat efforts by another European store, Invert. The display wall for Shoebaloo spans from the floor to the ceiling and features waves on which shoes are placed. Invert copied the design down to the same waves, thickness of panels, and the illumination of the waves. The Court ruled that Invert must remove the copied layout and pay damages to Shoebaloo.

In a landmark United States Supreme Court case in 1992, the Supreme Court ruled a Mexican themed restaurant named Two Pesos deliberately copied the design of a restaurant Taco Cabana.  Even though the trade dress was not registered with the US Trademark Office, the design was original and the copy was so deliberate, that Taco Cabana won in both the federal district court and the United States Court of Appeals in the Fifth Circuit on the way to the Supreme Court.

Even color combinations in and out of stores can hold value. John Deere’s famous yellow and green color combination used on agricultural equipment was copied by FIMCO, a company that manufactures and markets agricultural sprayers. The court found that by FIMCO using the John Deere color combination, it was likely to cause confusion among customers as to whether FIMCO’s products were either manufactured or endorsed by John Deere.

With so much consumer spending going online, retail store design has become an invaluable asset to a business deserving of protection. Contact our IP team to discuss options and strategies for your retail store’s brand protection. 

Author Bio:

Tracy Jong is a patent and trademark attorney at Tracy Jong Law Firm. Tracy focuses her practice on client counseling related to patent and trademark prosecution for a range of clients including small startup companies, restaurants and bars, craft beverage companies and product manufacturers. She may be contacted at TJong@TracyJongLawFirm.com. Connect with her at:   blog, Twitter, Facebook, Linkedin, Instagram. Visit her website at www.TracyJongLawFirm.com.

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