Introduction

To a layman, and a legalist in a hurry, trademarks are brand names. They are words like “Colgate,” “Crest,” and “CocaCola.” Trademarks, however, include things that are not words but nonetheless convey a brand. The subset of trademarks made up of shapes, colors, patterns, and the like are known as trade dress. An example of something protected as trade dress is the contrasting red color on the bottom of women’s high fashion shoes. To aficionados, these lacquered red soles indicate that the shoes are made by Christian Louboutin, a famous French fashion designer.

Trade dress protection is given to designs that function as brands. But despite covering designs, trade dress should not be confused with design patents. A design patent does not serve as a brand because it does not indicate a product’s source. Instead, design patent protection exists to encourage innovation in the space of “new, original and ornamental design for [ ] article[s] of manufacture.” The appearance of the Apple iPhone, for example, is protected by various design patents.

Trade dress and design patents thus involve distinct legal doctrines: trade dress is a form of trademark, while design patents are a kind of patent. What happens when the two doctrines interact? In particular, how should the existence of a design patent shape evidentiary burdens in litigation over trade dress protection for the same product features?

Answering this question matters because the answer a court or agency adopts may drive its ultimate decision in a case. Consider, for instance, In re American National Can Co and American Beverage Corp v Diageo North America, Inc. The petitioning parties in both of these cases claimed trade dress over specific features of beverage containers. American National Can sought trade dress protection for a metal can design with “flutes of equal width extending substantially the length of the sidewall of the can body,” while American Beverage claimed that it had trade dress protection over a flexible, liquid-holding pouch in an hourglass shape with three labeling partitions. Both beverage companies held design patents over the same features for which they sought protection as trade dress. But because the fact finders took different approaches with respect to the information that the design patents provided, they reached opposite conclusions about the validity of the trade dress.

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