Believe it or not, under what is known in the intellectual property field as "trade dress", the look of a retail establishment, such as a restaurant, is protectable and, under certain circumstances, a court may preclude a competing retail establishment from having a confusingly similar look.

Trade dress typically encompasses the design and appearance of a product itself or the packaging for a product, together with all of the design elements that serve to identify the product or packaging as originating from a single source. Like a trademark, the purpose of trade dress is to protect consumers from deceptive representations of affiliation and origin. And while the "overall image and appearance" created by a product's design or packaging is legally protectable, the party asserting trade dress rights is required to precisely articulate the specific design elements that comprise its trade dress so that a court can properly evaluate any claim of infringement and thereby provide relief that is appropriately tailored to the distinctive combination of elements that are found to be legally protectable.

In the landmark Supreme Court decision of Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) the interior décor of a retail establishment such as a restaurant was found by the Supreme Court to be protectable under the law of trade dress. In this situation, the "overall image and appearance" of a retail location, which includes features such as size, shape, color, color combinations, texture, graphics, and even specific sales techniques, may be protectable under a trade dress theory so long as the image and appearance is sufficiently distinctive as to function as a source indicator. But this ruling is tempered by the underlying principle that trade dress does not protect general business ideas or concepts, such as a common or generalized type of appearance of a retail establishment.

To prevail on a trade dress infringement claim, the party asserting trade dress rights in the look or appearance of a business establishment must prove (1) that the trade dress is valid and legally entitled to protection and (2) that the accused infringer's use of a similar trade dress is so similar that it is likely to cause confusion in the marketplace concerning the origin of the goods sold or the services provided by the establishment. Moreover, the design elements that define the trade dress cannot be "functional', that is they cannot be considered "essential" in order for the accused infringing party to compete effectively in the marketplace.

Businesses which have successfully asserted trade dress claims include  restaurant chains, a retail wine establishment and a series of pool halls.

One final point. In order for there to be a viable trade dress claim with respect to the look and appearance of a business, it is necessary that the look and appearance of the business be consistent, both over time, and, if there are multiple locations (such as in a franchise situation), from one location to another. This makes perfect sense since the very purpose of trade dress is to protect the look and appearance of a business establishment only where that look and appearance is sufficiently distinctive and unique so as to function as a source indicator. Accordingly, if the look of a business establishment is not consistent, but varies in appearance over time or from place to place, then that look is certainly not distinctive and unique and not protectable.

For further information, contact Jeffrey M. Kaden.