As with trademarks, the key to protecting your trade dress from usurpers is vigilance. Owners of trademarked names and symbols must watch out for publications and advertisements using their brand name as if it were a household word. For instance, anyone who publishes an article or story that uses the brand name Kleenex as if it were interchangeable with the generic term "facial tissue" can expect a letter from the Kimberly Clark Co. pointing out the error and requesting more precision in the future. When a brand-name product becomes a household word, the company loses the rights to protect its name from generic use by competitors.
You should also look out for competing products that are confusingly similar to yours--and take action immediately to stop their sale. That's what Columbia Sportswear Co. of Portland, Oregon, does, constantly and aggressively. In February, the company announced it had settled trade dress infringement actions against three companies. Two had supplied chain retailers with boots that were substantial copies of popular Columbia lines. The companies agreed not to purchase additional quantities nor ship them to retailers. Another company agreed to stop selling a pullover windbreaker that copies a Columbia parka.
"We'll continue to pursue companies that infringe upon our trade dress rights," says Timothy Boyle, Columbia's president and CEO. The company instructs its employees, distributors and sales representatives to identify knockoffs and report them promptly to headquarters, where lawyers get busy filing lawsuits. Over the past six years, Columbia has forced more than 50 companies to stop selling imitations of its outdoor clothing and footwear.
Contrast what happened when Hermes International, maker of upscale French handbags, sued four retail stores for selling handbags that duplicated its versions. Sales staff at the stores told shoppers that although the bags were copies, they couldn't be distinguished from thousand-dollar Hermes handbags. Under normal circumstances, a court might have declared a trade dress infringement. However, the U.S. District Court for the Southern District of New York noted two of the stores had been selling these knockoffs for 40 years, with no objection from Hermes. One had sold nearly $2.5 million worth of imitation Hermes merchandise. The court ruled that the delay in objecting was inexcusable and that it would be unfair to allow these stores to amass a fortune selling knockoffs before demanding a share of the take in damages.
So what should your policy be? If you want to protect your product's trade dress, identify what design elements make it distinctive--then police them zealously.