Show me the Money! Protection of Trade Dress. By James Michael Faier, M.P.P., M.B.A., J.D.(U.S. Patent and Trademark Office Regn. No. 56,731)
Protection of Trade Dress is a crucial part of IP protection for the sellers of goods. Over my 30-years I have litigated trademark diversion where a junior user was seeking to more customers from senior user to junior user by selling goods in packaging that imitated the senior user.
I have also seen junior users by key word advertising that made use of client trademarks to divert customers. Senior users can respond by seeking trademark registrations for distinctive elements of packaging. I encourage senior users to seek registration of enough elements so that the mark is considered either inherently distinct or that the mark has acquired distinctiveness through long use.
The goal is to get registration on the Principle Register of the Office. The registration on the Principle Register is important since you can only go after a junior user for counterfeit if the registration is on the Principle Registration. Being able to mount the allegation of counterfeit is important as a litigant can only get an award of statutory damages and attorney fees on a trademark infringement for an act of counterfeiting.
Design Patent is another good way to protect dress.