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Holly Hogan is an intellectual property attorney with K&L Gates LLP in San Francisco, California, representing technology and consumer goods companies in the full spectrum of intellectual property litigation. Her practice includes patent, trademark, and copyright litigation before federal courts, the ITC, and the Federal Circuit. The author wishes to thank Christine Redfield and Susan Jackson for their guidance. Please note that this article should not be construed as providing legal advice.
Restaurants have obtained trade dress registration for their interior designs. So too have clothing stores. And in an emerging trend, high tech companies are also seeking trade dress registrations for their brick and mortar retail stores. Several high tech companies, including Apple, Cricket Communications, and Equinix, have successfully obtained protection for their retail store trade dress.1
Obtaining registration for retail store trade dress presents three unique challenges. First, the company must precisely identify the store design trade dress; a store’s general theme or “look and feel” is not enough. Second, a company must show that the trade dress is either inherently distinctive or has acquired distinctiveness through consumer recognition, even though it consists of commonplace elements like walls and tables. And third, a company must demonstrate that its design, which may contain purposeful elements like chairs and shelving, is not functional. This article examines how several high tech companies overcame these challenges to obtain registrations on the principal or supplemental register for retail store trade dress.
Obtaining trade dress protection for a retail store design requires first defining—precisely—the trade dress. Trade dress is the visual characteristics that function as source identifiers; in other words, the visual characteristics that tell onlookers that it is a particular company’s store (or product).2 Trademark law recognizes two general categories of trade dress: (1) trade dress in a product’s design, and (2) trade dress in a product’s packaging.3 Retail store design falls into the latter category.4 For store design (or any other type of product packaging) to qualify as trade dress, it must be both nonfunctional and either inherently distinctive or distinctive through consumer recognition (also called secondary meaning).5
Defining a nonfunctional, distinctive store design requires a company to consider how to:
A threshold challenge in defining store design trade dress is condensing the entirety of a design (which may envelop the store as a whole) into a short paragraph, and doing so with specificity as to the source-identifying characteristics. Interior designs are often lauded for their overall “look and feel.” As one interior design guru put it, “You know what it feels like when you walk into a well designed room. You can sense how everything feels cohesive and put together.”6 To translate a great (or perhaps not-so-great) store design into trade dress, something more is required. “I know it when I see it” and generalized, thematic descriptions do not suffice. A company must identify what design elements are source identifying— in other words, what shouts out “I am a [insert company name here] store!”
Apple’s initial store design trade dress application was rejected by the United States Patent and Trademark Office (USPTO) because Apple had evinced only a general design theme, and not one that was source identifying as uniquely an Apple store. The USPTO reasoned that Apple merely showed that the company “adopted a spare, Scandinavian-inspired theme for its retail stores,” and not a theme that “functions as an indicator of source.”7 The USPTO pressed Apple to explain what about the design said, “Hello, I am an Apple store.”
In its initial application, Apple described the Apple store design trade dress as a “distinctive design and layout of a retail store.” Given the generality, it comes as no surprise that the USPTO rejected the description, noting that “[i]t is completely unclear by this description what the applied for mark consists of—is it the furniture configuration, the glass front which many stores have, the positioning of the fluorescent ceiling lights which seem ordinary and quite conventional[?]”8
After several amendments, a far more detailed description accompanied the registration:
The mark consists of the design and layout of a retail store. The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store’s ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a [sic] oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark.9
Apple obtained protection for its store design trade dress only after Apple characterized its precise features—“large, rectangular horizontal panels over the top of the glass front,” “cantilevered shelves below recessed display spaces along the side walls,” “rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store,” and the like.
Apple was likewise forced to define its New York City (NYC) store trade dress with more particularity. While the NYC store’s “all glass” motif is visually stunning, a stroll through many major cities would reveal a number of similar buildings. Apple’s initial description of its NYC store trade dress (i.e., “the distinctive design of a building”) did not convey how the design was associated with Apple.10 The USPTO rejected the description as “extremely vague,” and required Apple to “explicitly state which features are being claimed as part of the mark and which are not.”11 Apple subsequently narrowed its description with a more exacting recitation of the claimed design elements, including its signature logo:
The mark consists of the distinctive design and layout of a retail store comprised of a cube-shaped building constructed almost exclusively of transparent glass, with transparent glass walls and roof, transparent glass double doors and a transparent glass awning and featuring a pendant of an apple with a bite removed suspended from the ceiling.12
By including the hanging apple, Apple took a proverbial “blue pencil” to its trade dress, likely recognizing that claiming the glass building alone would be overreaching.
To depict its store design with specificity, Equinix took a different approach. It focused on one specific feature: a red and black cylinder-shaped wall. Equinix originally described the trade dress as follows:
The mark consists of the distinctive three dimensional trade dress design and appearance of an interior wall convexed in a curved shape suggestive of a silo, colored red, having a gridded pattern and glossy lacquered finish, and appearing as an element of the stylistic and distinctive interior of data and co-location centers. The color red is a feature of the mark. The matter shown in broken or dotted lines is not part of the mark and serves only to show the relative position or placement of the elements of the mark.13
After just a few months of examination, the USPTO indicated it would register the trade dress (though only on the supplemental register, as discussed below, because it was found to be noninherently distinctive) following an examiner’s amendment that clarified the mark description.14 After several more amendments, the final description reads:
The mark consists of the three dimensional design of an interior wall of a convexed, curved cylinder located within the data co-location centers where the services are rendered. The color red is applied to the convexed wall. The color black appears as the outer border of the series of stacked rectangles which comprise the curved wall. The matter shown in broken or dotted lines is not part of the mark and serves only to show the relative position or placement of the elements of the mark.15
The final description fine-tunes the depiction of the (1) shape of the trade dress (i.e., “an interior wall of a convexed, curved cylinder” instead of “an interior wall convexed in a curved shape suggestive of a silo”); (2) contrasting use of the color black (i.e., “[t]he color red is applied to the convexed wall” and “[t]he color black appears as the outer border of the series of stacked rectangles which comprise the curved wall,” instead of “a silo, colored red, having a gridded pattern and glossy lacquered finish”); and (3) setting in which the trade dress appears (i.e., “data co-location centers where the services are rendered” instead of only “data and co-location centers”).
Notably, the examiner also moved Equinix’s trade dress from the principal to the supplemental register. The supplemental register is reserved for noninherently distinctive marks or trade dress that is “capable of distinguishing the applicant’s goods or services” through long-term substantially exclusive use and advertising; in other words, the store design could acquire distinctiveness through consumer recognition, but has not yet done so.16 The supplemental register does not carry the same benefits as the principal register, including the presumptions of validity, ownership, and the exclusive right to nationwide use.17
The bottom line is that the Equinix and Apple examples show that obtaining trade dress protection requires articulating the trade dress with specificity. A detailed identification of store design trade dress is the cornerstone of obtaining registration. That said, providing a description that discloses too much detail limits the registrant to a much narrower scope of protection. As such, it is important to identify only those design elements that are truly unique to a particular interior design.
In connection with pointedly describing the trade dress, a company must take stock of variances in store design, as they can impede registration. Companies may deliberately vary design across stores; for example, a company may have a flagship store with its signature look (e.g., the Apple NYC store), and a different design for other outlets (e.g., the shopping mall Apple store). Other variances may not be by choice—differences in landlord requirements, the stores’ basic footprint, and local building codes may in turn dictate differences in design. Those variances, if significant, may present an obstacle to obtaining trade dress registration.
Differences among Apple’s “gray and glass” store base caused the USPTO to question whether Apple could tie consumer recognition to the particular design claimed as trade dress. The examiner observed that Apple’s “stores vary widely in appearance, ranging from the entirely-glass flagship store in Manhattan, entirely glass-fronted stand-alone stores, entirely silver-panel-fronted stand-alones, and enclosed shopping mall bays of varying widths.”18 Only some of the stores pictured in Apple’s application materials contained the applied-for trade dress (a storefront with only three horizontal panels); others had more panels, different panel-to-glass ratios, or differently shaped glass sections.19 In view of these differences, the examiner requested that Apple identify which stores embodied the “three horizontal panel” trade dress, and tie its consumer recognition evidence to those stores, rather than to its stores as a whole.20 Apple acknowledged the distinctions among its stores, but insisted they were minor.21 Moreover, Apple argued that these minor distinctions did not bar Apple from proving consumer recognition of its store base as a whole, drawing a parallel to USPTO allowance of minor amendments to trademarks and trade dress without new consumer recognition evidence for the amended redesign.22
Apple’s store variance ultimately did not wrench its application. Nevertheless, companies seeking store design registration must be cognizant of design variations, and the extent of those variations. It goes without saying that the more the variance, the more likely the variance will stymie registration.
Defining store design trade dress also necessitates precision in characterizing any use of color. A general color palate is insufficient. A company must instead describe where and how color is used.
Apple, for example, initially claimed “[t]he colors steel gray and light brown” as a “feature of” its store design trade dress, describing the trade dress as a “distinctive design and layout of a retail store.”23 The USPTO faulted this description for failing “to indicate where each color being claimed appears in the mark,” and required Apple to amend the description to “explicitly state . . . where each color appears in the mark.”24 In particular, the USPTO compelled Apple to distinguish between the colors black, white, and gray used in the trade dress, versus those colors used to represent background, outlining, shading, and transparent areas.25 Apple did so, more particularly describing its mark as follows:
The mark consists of the design and layout of a retail store. The store features a clear glass storefront surrounded by a paneled, steel gray facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store’s ceiling. There are light brown cantilevered shelves below recessed display spaces along the side walls, and light brown rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a light brown oblong table with black stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the colors and placement of the various items are considered to be part of the overall mark. Similarly, the white in the drawing represents background areas and is not part of the mark.26
The USPTO also pressed Cricket to be more definite in describing color use. Cricket’s application described its trade dress as “the color green as used in connection with the services.”27 The application was initially denied as “just green.”28 Cricket subsequently refined its description to pinpoint where and how the color was used—“the color green as used on walls, tables, and displays in a retail store”—eventually obtaining registration on the supplemental register.29
As both the Cricket and Apple trade dress examples illustrate, a registration on either register will not issue for a general color theme in a store design. The applicant must be clear-cut on “the where and how” of color use to pass muster.
In addition to being described with specificity in words, the design must be visually depicted with specificity in the drawing. For example, Cricket’s original (subsequently rejected) drawing was merely the color green. In rejecting the drawing, the USPTO highlighted that trade dress could not “consist of color in the abstract”; it should instead “consist of color used in a particular manner, and the context in which the color is used is critical to provide notice of the nature of the mark.”30 Cricket overhauled its drawing to the one that appears on its registration, reflecting exemplary uses of the color green on walls, tables, and other structures.
The drawing must also carve out unprotected functional elements (with dotted lines) that are not claimed as part of the trade dress. Apple’s initial drawing for its store design trade dress was refused because it contained functional elements, such as the recessed lighting. The USPTO concluded that the lighting was functional—it was shaped in a rectangular form to accommodate fluorescent light bulbs, and recessed to conceal ugly light bulbs.31 Apple acknowledged the nondescript nature of the lighting, and designated it as unclaimed in its final drawing.
In summary, as the Cricket, Apple, and Equinix examples reveal, obtaining store design protection requires precision in synthesizing the design down to the specific characteristics and color usage that are source identifying.
In defining the trade dress, a company must spell out the distinctiveness of the design—only the distinctive elements qualify as trade dress. Cataloging the distinctive elements of a store design is challenging given that many of those elements—walls, shelves, tables—are rather common. Trade dress is distinctive if it is either inherently distinctive in its own right or has acquired distinctiveness through secondary meaning.32 Trade dress acquires secondary meaning only where “a substantial segment of consumers and potential consumers” understand that the trade dress in question comes from a single source.33
The USPTO appears unpersuaded that commonplace design elements are inherently distinctive as a collective whole. For example, Apple’s store design trade dress was initially rejected as merely a collection of ubiquitous elements—e.g., tables and shelves that are a basic necessity and structured in commonplace manner, and a standard bar stool seating configuration (i.e., the “Genius Bar”) that is used in a number of settings.34 Apple argued that the elements—in combination—were distinctive, even if they were not necessarily so individually.35 Ultimately, however, it appears that Apple was unable to show inherent distinctiveness in combination, and instead proved distinctiveness acquired through secondary meaning.
If a store design is not inherently distinctive, a company must then prove that the design acquired distinctiveness through secondary meaning. “[P]roof of substantially exclusive and continuous use” for a period of five years may be accepted as prima facie evidence that the mark has acquired distinctiveness.36 Although it is possible to prove acquired distinctiveness in a much shorter period of time, the fact that the store itself (or the products sold there) are wildly popular does not, alone, prove acquired secondary meaning. Indeed, the following evidence of Apple stores’ explosive consumer popularity did not show that their store design acquired secondary meaning:
The phenomenal success of Apple’s stores, however, proved only the popularity of the stores and the products sold there. That success did not show that the design within those stores had acquired distinctiveness. Indeed, common sense dictates that a store could have great success because of the quality of its products, not the distinctiveness of the store’s interior design. As the examiner found:
[T]he question before the examining attorney is not whether the applicant’s retail stores are successful. Nor is the question one of whether the retail stores have a particular leitmotif which consumers tend to associate with the applicant. Rather, the examining attorney must determine whether the proposed mark, as shown in the application, has acquired distinctiveness.38
In other words, success and other evidence of consumer recognition must be directly linked to the design.
To draw that link, Apple commissioned a survey on consumer recognition of its store design. Forty-two percent of respondents in that double-blind survey identified the store, and of those respondents, half identified the store because of the design or layout features.39 Apple also gathered customer testimonials, while continuing to emphasize its sales success. This evidence ultimately proved the distinctiveness of the Apple store design trade dress.
To make its case for acquired distinctiveness, Apple spotlighted the NYC store’s large sales numbers and foot traffic, as well as documented recognition of its design:
By focusing on consumer recognition of the store’s design rather than just the store’s sales and foot traffic statistics, Apple persuaded the USPTO that its design acquired distinctiveness.
A company cannot simply trumpet its success to demonstrate acquired distinctiveness. Acquired distinctiveness is shown by the connection between the design and consumer recognition—not the popularity of the store, and not the popularity of the products.
A final challenge to obtaining trade dress protection for store design is meeting the “nonfunctional” requirement.41 The functionality doctrine is grounded in the principle that “there exists a fundamental right to compete through imitation of a competitor’s product, which right can only be temporarily denied by the patent or copyright laws.”42 This is to close the spigot on inventors of functional features gaining a monopoly over those improvements “in perpetuity.”43 Indeed, the functionality bar allows competitors to freely copy features necessary to compete in the marketplace.44
Aspects of a store design—e.g., the walls, lights, shelves, and chairs—may be purely functional. For this reason, the examiner initially rejected Apple’s store design trade dress. The examiner reasoned that, with the exception of the gray-and-glass storefront, the trade dress consisted of merely functional elements: (1) the rectangular floor plan dictated by the standard shopping mall design as well as considerations of easy construction, easy maintenance, and maximized space; (2) recessed rectangular overhead lights typical to commercial buildings, shaped in a rectangular form in order to accommodate fluorescent light bulbs, and recessed to conceal ugly light bulbs and soften the light; (3) tables and shelves that are a basic necessity for retail stores and structured in a commonplace manner; and (4) standard bar stool seating common to retail stores and other settings (hence the name “bar stool”).45 Apple disclaimed the lighting, but successfully argued that the remainder was nonfunctional given that other store design registrations included walls, shelving, tables, and chairs.46 In other words, Apple successfully demonstrated that plenty of alternative interior designs were available for competitors to use, if the existence of alternative designs in interior design layouts is probative of the nonfunctionality of a particular configuration.47 The lesson here is that a company must be primed to articulate how elements of its design (including the walls, lighting, shelving, chairs, tables, display counters, and the like) are not functional despite their purposeful uses.
Defining the trade dress, showing distinctiveness, and proving lack of functionality are relevant when seeking any type of trade dress protection. But when the trade dress is a store design, the very nature of a store design creates its own variants of these considerations. Nevertheless, at bottom, by carefully distinguishing the source-identifying, distinctive, nonfunctional elements from the overall “design feel” of its store, a company can translate a store design into protected trade dress.
1. Apple designs and creates consumer electronics, software, and personal computers (e.g., the Mac laptop, its OS X operating system, and iPads); Cricket Communications provides prepaid wireless services; and Equinix offers data centers.
2. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000).
3. Id. at 209.
4. Id. at 215.
5. Id. at 209–15.
6. Abe Abbas, Basic Interior Design Principles, About.com, http://furniture.about.com/od/furnishingdesignresources/a/basicdesign.htm (last visited Jan. 5, 2014).
7. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
8. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Sept. 6, 2010).
9. Registration Certificate for U.S. Trademark Application Serial No. 85,036,990 (Jan. 22, 2013).
10. U.S. Trademark Application Serial No. 85,097,331 (filed Jul. 30, 2010).
11. Office Action Outgoing for U.S. Trademark Application Serial No. 85,097,331 (Sept. 20, 2010).
12. Registration Certificate for U.S. Trademark Application Serial No. 85,097,331 (Sept. 6, 2011) (emphasis added); see Examiner’s Amendment for U.S. Trademark Application Serial No. 85,097,331 (May 10, 2011) (adding “transparent” language to description).
13. Preliminary Amendment for U.S. Trademark Application Serial No. 85,832,580 (Mar. 4, 2013).
14. Examiner’s Amendment for U.S. Trademark Application Serial No. 85,832,580 (Mar. 6, 2013).
15. Registration Certificate for U.S. Trademark Application Serial No. 85,832,580 (Jul. 16, 2013).
16. 15 U.S.C. § 1091 (emphasis added).
17. Id. § 1094.
18. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
21. Response to Office Action and Request for Amendment of U.S. Trademark Application Serial No. 85,036,990, at 24 (Feb. 27, 2012).
22. Id. at 66–71. For example, Apple pointed to the Trademark Trial and Appeal Board’s conclusion that different stylized versions of the AQUASTOP mark (one linear, one in a semicircle) created the same commercial impression, as well as the Federal Circuit’s opinion affirming the registrability of the 1-888-M-A-T-R-E-S-S mark based on the acquired distinctiveness of a prior registration of the (212) M-A-T-T-R-E-S mark.
23. U.S. Trademark Application Serial No. 85,036,986 (filed May 12, 2010).
24. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,986 (Sept. 6, 2010).
25. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,986 (Aug. 23, 2011).
26. Registration Certificate for U.S. Trademark Application Serial No. 85,036,986 (Jan. 22, 2013) (emphasis added); see Examiner’s Amendment for U.S. Trademark Application Serial No. 85,036,986 (Apr. 19, 2012) (adding last sentence to description).
27. U.S. Trademark Application Serial No. 77,932,967 (filed Feb. 10, 2010).
28. Office Action Outgoing for U.S. Trademark Application Serial No. 77,932,967 (Apr. 15, 2010).
29. Registration Certificate for U.S. Trademark Application Serial No. 77,932,967 (Aug. 2, 2011).
30. Office Action Outgoing for U.S. Trademark Application Serial No. 77,932,967 (Apr. 15, 2010).
31. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
32. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
33. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985) (emphasis added).
34. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
35. Amendment/Response for U.S. Trademark Application Serial No. 85,036,990, at 2–3 (Mar. 11, 2011).
36. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1212.05 (Oct. 2012).
37. Amendment/Response for U.S. Trademark Application Serial No. 85,036,990, at 5–6 (Mar. 11, 2011); Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
38. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
39. Response to Office Action and Request for Amendment of U.S. Trademark Application Serial No. 85,036,990, at 17–18 (Feb. 27, 2012).
40. Amendment/Response for U.S. Trademark Application Serial No. 85,097,331, at 3–8 (Mar. 24, 2011).
41. See 15 U.S.C. § 1125(a)(3).
42. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 785 (9th Cir. 2002) (emphasis omitted).
43. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
44. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7:63, at 7-175 to -176 (4th ed. 2009).
45. Office Action Outgoing for U.S. Trademark Application Serial No. 85,036,990 (Aug. 23, 2011).
46. Response to Office Action and Request for Amendment of U.S. Trademark Application Serial No. 85,036,990, at 2–14 (Feb. 27, 2012).
47. See In re Honeywell, Inc., 8 U.S.P.Q.2d 1600, 1603 (T.T.A.B. 1988).