Protecting the Trade Dress in Your Store Layout
by Valerie Brennan
Store design / layout protection is a hot topic in trademark and copyright circles at the moment. Trade dress protection can be added to your arsenal of tools for preventing copycats from profiting off your creativity. It’s far from easy and requires a clear strategy and well-documented approach, but can be worth the effort.
Create each element strategically. Decide what aspects of the “look and feel” of your store, restaurant, or retail outlet that you want to protect. Make a list. Accept that you cannot have protectable rights in elements that are not distinctive or that others in your space are already using. Although, if you are using the elements combined in a distinctive way, that combination might be protectable. Tweak non-distinctive elements to be distinctive.
Be as consistent as possible in using each element. Use is the key to developing trade dress rights. For the same reason that companies stick with a logo lock-up, the trade dress elements need to be used consistently. If layout is part of the trade dress, then that layout needs to be as consistent as possible.
Own it (or source from exclusive providers). Make sure that all designers assign rights to the company – clearly and in writing. If you grant licenses, include clear acknowledgements of your ownership and the proprietary nature of the store design. Until rights are developed through time and use, it can be challenging to prevent others from adopting elements of your design through mere trade dress protection. So get creative. Consider copyright and patent protection. And make sure that the source of your distinctive wallpaper (if the manufacturer, not you, owns the copyright) is under an exclusivity agreement.
Document, document, document. Keep records (photos, drawings, etc.) that show where each element has been used. Reinforce your rights by incorporating the listing of elements into any franchise or license agreements. Refer to the elements in advertising – “Look for the red polka dot awning”.
Register what you can. Once you’ve established a consistent look, apply to register it as a trademark at the U.S. Patent and Trademark Office. Only distinctive, non-functional elements can be claimed, either in the description of the mark or the drawing (in solid lines). Other elements need to be specifically disclaimed (and are shown in dotted lines in the drawing). A store design is not registrable on the Principal Register until there has been enough use that the overall look and feel has acquired distinctiveness in the minds of consumers (called a “2(f)” claim). Designs that have not been used sufficiently can be registered on the secondary, Supplemental Register. Having a federal registration on the Principal Register extends your rights nationwide and is evidence of your exclusive rights. A registration on the Principal or Supplemental Register blocks applications filed for similar layouts and eases enforcement actions.
Preparing and filing an application to protect a store design is more involved than protecting a word mark or logo. One has to have a special drawing prepared that correctly depicts the claimed and not-claimed elements plus a detailed description of the “mark.” The evidence of use must match the drawing (so a photo must be taken from the same angle/aspect as the drawing’s representation). If registration on the Principal Register is desired (evidence of your exclusive right to use the mark), then significant evidence of scope and extent of use will be needed. Certain design elements might also be protectable as copyrights, if they are original and sufficiently creative.
If you would like assistance in tweaking how you design, document, or protect the trade dress of your store, restaurant, or retail outlet, please let us know.