Management and Protection of Brand Equity in Product Configurations
Theodore H. Davis, Jr.   |   1998 U. Ill. L. Rev.

After many years of analyzing trademark law, Professor Davis turns his attention to examining the contours of "trade dress" protection for product configurations. In particular, Professor Davis notes that the scope of trade dress protection generally has been expanding in recent years, culminating in the Supreme Court's decisions in Two Pesos, Inc. v. Taco Cabana, Inc., and Qualitex Co. v. Jacobson Products Co.

Trade dress protection for product designs is all the more interesting because it is a relatively recent development. Historically, competitors freely copied unpatented product configurations with no threat of reprisal. This freedom was reinforced by the Patent and Trademark Office, which refused to register configurations as trademarks. Professor Davis traces the development of trade dress law in this area and its distinctions from similar, but inapplicable, patent and copyright remedies. Trade dress protection can be differentiated from patent and copyright laws because it requires that the trade dress be used in commerce, distinctive, and nonfunctional.

Because both the Supreme Court's jurisprudence and the federal Lanham Act have left holes in trade dress law and the courts of appeals have varied in their analyses, Professor Davis examines the different approaches taken in each circuit, and what standards and types of evidence are appropriate to qualify a product design for trade dress protection. Specifically, on the distinctiveness prong, claimants seeking trade dress protection may seek to show the inherent distinctiveness of their designs, or they may seek recognition that their product configurations have achieved a secondary meaning entitling them to protection. From the standpoint of functionality, courts may look at the utility and competitive necessity of the configuration, as well as the existence of utility or design patents covering the configuration.

Finally, Professor Davis considers the two standards for evaluating liability in product configuration trade dress cases: likelihood of confusion and dilution. Likelihood of confusion has been the traditional standard for evaluating unfair competition cases, but the relatively newer dilution theory, focusing on impermissible dilutions of the plaintiff's product configuration, offers a different alternative for relief. But although dilution theory is promising, it is still in its infancy, and its scope in the product configuration context in particular has yet to be defined by the courts.

In sum, Professor Davis's analysis of trade dress protection for product configurations offers a practical understanding of the limits and possibilities of current trade dress law.

* Adjunct Professor, Emory University School of Law; Kilpatrick Stockton LLP, Atlanta, Georgia; Member, Georgia and District of Columbia Bars.