You don’t have to be a dum-dum to be confused about trade dress. Although trade dress is crucially important in the modern marketplace, many people underestimate its value.
Essentially, trade dress is the product’s packaging, overall appearance and image — its size, shape, color or combination of colors, texture and graphics. It is the protectable features that give a product its distinctive appearance and differentiates it from similar offerings. This can include physical features or even certain sales techniques.
Trade dress is considered a sub-category of trademark law and is protected, like trademarks, by the federal Lanham Act. Trade dress can be registered, or it may receive protection if it is distinctive and not essential to the purpose of, or affecting the cost or quality of, the product itself. It can be inherently distinctive or descriptive.
If left unprotected, your trade dress could easily be adopted by competitors. Indeed, that is what a federal judge recently found in a dispute between Tootsie Roll and Spangler Candy, the maker of Dum-Dums lollipops.
Tootsie Roll admits it copied Dum-Dums packaging
The dispute arose when Tootsie Roll rolled out its Charms-brand miniature lollipops. Spangler noticed that the Charms’ trade dress looked suspiciously like the Dum-Dums packaging it had developed in 2011. Tootsie Roll seemed to have copied every aspect of Dum-Dums’ packaging except the name.
Spangler sent a cease and desist order, but Tootsie Roll instead indicated it was planning wide distribution of the Charms lollipops in the confusing packaging.
This led to a federal lawsuit. Spangler sought to enjoin Tootsie Roll from using the trade dress, arguing that consumers were likely to confuse the two products.
Why would Tootsie Roll package Charms Mini Pops to look so similar to Dum-Dums? In a December court hearing, its marketing director admitted that this was an attempt to improve on the Dum-Dums packaging design and increase Tootsie Roll’s market share at the expense of Spangler Candy.
The federal judge found that Tootsie Roll had designed its Charms package to be nearly identical to that of Dum-Dums, with the same red background, white lettering, display window, and yellow number listing the number of lollipops in the package. It even used the same color pallet boxes for in-store displays.
The judge found that this was intentional. Tootsie Roll knew the two products would sit side by side in stores and that consumers would spend mere seconds choosing — often grabbing a familiar-looking package without really reading it.
Good packaging design requires time and effort. It deserves protection. Make sure your trade dress is protectable by discussing it with an experienced intellectual property attorney.