LEGAL EAGLE

TRADE DRESS IN PHOTOGRAPHY

How to go about protecting the less easily defined elements of your branding.

BY AARON M. ARCE STARK

We all know about trademarks—the “indicia” of our identity—that include symbols and words we use to show who we are as a business so that our customers can recognize us. Business names are trademarks, as are logos, slogans, catchphrases, jingles and almost anything else that a customer might recognize as unique to a brand. Most professional photographers will have at least a few trademarks, probably a name and logo, and have hopefully registered them with the U.S. Patent and Trademark Office.

The range of what is protectable as a trademark is surprisingly wide and includes something called “trade dress,” which is a kind of trademark, and refers to the overall “look and feel” of a product, product packaging or presentation of services. Some famous examples of trade dress include the classic CocaCola bottle with the pinched waist, the red bottom of a Louboutin shoe, or the distinctive decor of a Hard Rock Cafe or Cracker Barrel. Most fast-food restaurants also have trade dress protection over the color scheme and pattern of their stores.

This sort of protection may not seem to apply easily to photographers. Most photographers don’t present a manufactured product in the sense of a Coke bottle or Louboutin heel; they sell a service, which creates a unique product, and the product they deliver is highly personalized. But nevertheless, elements of how a photographer presents their services and finished product can absolutely be protected. Do you offer delivery of your photos in a distinctive album or other packaging? Do you have a website with distinctive imagery and style? Both of these may be able to hold trade dress protection.

The drawback is, trade dress protection can be difficult to acquire and difficult to prove in the event of infringement. The first hurdle to proving protectable trade dress, both in a lawsuit and to the USPTO during the registration process, is to prove that the elements you want to protect are nonfunctional. Hard Rock Cafe and Cracker Barrel can acquire trade dress protection over their decor because the guitars and old-timey photographs on the walls are not necessary to perform the essential function of those businesses, which is to serve food. Similarly, a Coke bottle doesn’t need a pinched waist to hold Coke, and a Louboutin shoe doesn’t need a red sole to keep a foot off the pavement. Thus, if the album in which you deliver your photos is in some way unique or distinctive— perhaps it’s lavender in color or made of alligator skin—then you may be able to acquire protection, but you can’t acquire protection over the fact that you use an album at all.

The album itself is functional; it holds the pictures. The nonfunctional aesthetic elements of the album, however, can be trade dress. In the same way, a website can acquire protection over the nonfunctional elements of its aesthetic—the color scheme, the fonts, the look and feel of the imagery—but it cannot acquire protection over functional elements, such as the website’s navigation or methods of input.

The second big hurdle to leap on the way to trade dress protection is distinctiveness. Protectable elements of trade dress must be recognized by customers as distinctive to the brand seeking their protection, and there are two forms of distinctiveness: inherent and acquired. Inherently distinctive elements are things like an unusual product packaging shape or a clearly unique color scheme or pattern in decor or packaging. In order to determine if an element is inherently distinctive, courts and the USPTO will look to whether those elements are common or unique within the field or market, and whether they are capable of creating a unique impression in customers aside from any accompanying words or symbols.

Acquired distinctiveness comes when an element is not necessarily capable of creating a unique impression among customers on its own, but customers have come to recognize it as unique. Courts and the USPTO will look at how long the element has been used in commerce, whether those elements have appeared on TV or film or otherwise covered by the media, how much the owner of the trade dress has spent on advertising, and customer testimony as to whether the elements are recognizable and unique. Some elements can only acquire distinctiveness and can never be inherently distinct. Color, for example, can be protectable on its own, but only if a company’s use of that color has become famous among customers. The archetypal example of acquired distinctiveness in trade dress is the pale blue Tiffany’s box, which is not inherently distinctive, but so many customers over such a long time have recognized the pale blue box as Tiffany’s that it has now acquired distinctiveness.

Trade dress protects the vaguer elements of branding, but acquiring such protection requires that you prove that those elements are both non-essential to the function of your product or service and recognizable by your customers as distinctively yours.

PHOTO © ETHAN YANG PHOTOGRAPHY

Aaron M. Arce Stark is a lawyer for artists and entrepreneurs. Learn more about his law firm, Arce Stark & Haskell LLP, at ashlawllp.com.