Trade dress, which encompasses the visual appearance and overall image of a product or service that serves to identify and distinguish it from others in the marketplace, can be a very powerful form of protection.

Unlike design patents or copyrights, trade dress rights potentially may last forever.  Once achieved, they can be used both against competitors to maintain exclusivity and pirates who try to take unfair advantage of brand success. 

The recent case of Jason Scott Collection, Inc. v. Trendily Furniture, LLC (May 30, 2023), revolves around two high-end furniture manufacturers, Jason Scott Collection (JSC) and Trendily Furniture. In the district court Trendily was found to have intentionally copied three unique furniture designs created by JSC. Trendily appealed to the Ninth Circuit Court of Appeals.

We explore key components of the trade dress infringement claim discussed in this case, with a specific focus on establishing distinctiveness through secondary meaning (i.e., the mental recognition by buyers and potential buyers that products associated with a particular trade dress originate from a single source), as well as the potential damages to business relationships that can be the predicate for a substantial monetary award in cases of trade dress infringement.

Understanding the legal requirements for gaining these rights is the first step for brands protecting their designs through this body of law.

The Value of Trade Dress

From Tiffany & Co.’s distinctive robin’s egg blue jewelry boxes to the sleek Apple Store design, to UPS's recognizable brown uniforms and trucks, trade dress plays a key role in shaping brand identity and achieving success in the market.

Trade dress can evoke emotions, convey a certain image, or create a sense of familiarity and trust in consumers, and establishing trade dress can signal quality, reliability, and consistency. Consumers often develop a preference for products or services that they can easily recognize, and well-protected trade dress can create barriers to entry for competitors. If a brand's trade dress is distinctive and recognizable, it becomes more challenging for others to imitate in the marketplace.

Most importantly, trade dress is protectable under intellectual property law. Obtaining legal protection for trade dress can grant exclusive rights to its owner, preventing others from using similar visual elements that may cause confusion among consumers. This protection enhances the value of trade dress by ensuring its uniqueness and exclusivity.

Jason Scott Collection, Inc. v. Trendily Furniture, LLC

The dispute between JSC and Trendily originated when Trendily admittedly, intentionally, and precisely copied three unique furniture designs crafted by JSC. The look, color, size, and detail of the pieces were virtually identical. The resemblance was so striking, in fact, that numerous witnesses well-versed in the high-end furniture industry and possessing specific knowledge of JSC products testified that they were unable to discern the furniture pieces produced by JSC and those of their competitor. 

Following a bench trial, the district court held Trendily liable for trade dress infringement. Trendily appealed, contending that JSC had failed to establish either secondary meaning or likelihood of consumer confusion.

To establish a claim of product trade dress infringement, a plaintiff must prove: (1) that its claimed trade dress is nonfunctional; (2) that its trade dress serves a source-identifying role; and (3) that the defendant's product or service creates a likelihood of consumer confusion.

The crux of JSC’s trade dress claim hinged on the concept of secondary meaning. Sales, advertising, and promotion are the principal forms of proof that a design has achieved “acquired distinctiveness.”  So, it is crucial that the brand maintain good records of its sales of the product, the appearance of all design variations (e.g., catalogs), and all advertising and promotional efforts.  That would include, for example, schedules of media placements and spends, and examples of advertising used in various campaigns.

Other promotional efforts might include charity events and sponsorships; trade events; website and social media promotions; and product tie-ins. 

All of these can be valuable to create association of the product design with the brand.  And for all of these, records are crucial – how much was spent, how widely received was the promotion, and what were the brand’s visuals used – should be maintained as records that can be used to prove acquired distinctiveness.

During the bench trial, the district court concluded that the JSC furniture had in fact acquired secondary meaning. It reasoned that the act of deliberate copying strongly supported an inference of secondary meaning, implying that Trendily specifically sought to capitalize on JSC's goodwill. Furthermore, the court found additional indicators of secondary meaning, such as the JSC furniture's longstanding presence in the market, its recognition by both retailers and end-consumers, and its prominence in advertisements, trade shows, and various media platforms.

The court found that JSC's furniture had been continuously manufactured and sold since 2004 and received extensive advertising coverage, featuring prominently in trade shows, magazines, social media, and email campaigns. Moreover, Jason Scott, the designer, garnered accolades and recognition in the industry for his exceptional work. The district court reasoned that these factors established JSC's established place in the market and the distinctiveness of its furniture in the minds of purchasers.

The appellate court affirmed, stating that the district court correctly held that JSC established all three elements required to demonstrate trade dress infringement.

Broken Business Relationship Can Lead to Trade Dress Damages

Turning to damages, the effect on business relationships became a particularly interesting aspect of the case, highlighted through the loss of JSC's association with a key retailer, Coyote Candle.

The district court recognized that damaged business relationships are a reasonably foreseeable consequence of trademark infringement. Since the initiation of the litigation, JSC had lost all of its business with Coyote Candle. Despite Trendily's objections, the district court awarded reasonably foreseeable damages, including lost annual profits from Coyote Candle over a three-year period.

On appeal Trendily challenged the damages awarded, arguing that the amount awarded for lost business with Coyote Candle was speculative and disproportionately high compared to the award granted for the other claims against it, notably a claim for copyright infringement.

The appellate court, however, rejected this argument, explaining the distinct measures used for assessing damages in copyright and trade dress infringement cases. While copyright damages are based on retrospective gross profits from the infringement, i.e., $19,995 equaling the amount Trendily profited on the sales of the infringing products, trade dress damages also consider prospective lost profits. According to the court, had the litigation not progressed to damage the relationship between JSC and Coyote Candle, JSC would have maintained an ongoing partnership that would have led to reasonably foreseeable profits,

The appellate court affirmed the district court’s finding that damaged business relationships are a reasonably foreseeable consequence of trade dress infringement, that JSC's evidence was sufficient, and upheld the awarded damages, totaling $132,747 in damages from the lost business with Coyote Candle, $132,571.50 in reasonable attorney’s fees awarded due to the willful and brazen nature of the infringement, and $3,904.04 in other costs.

Conclusion

Trade dress can hold significant value for brand owners in shaping their identity and gaining a competitive advantage, and the case of Jason Scott Collection, Inc. v. Trendily Furniture, LLC provides important insights for brand owners.

Building secondary meaning through effective marketing and advertising efforts may be imperative to maintain trade dress protections. By emphasizing distinctive visual aspects, brand owners can create a strong association between their trade dress and their brand, reinforcing recognition and protecting against infringement.

Understanding the value of unique trade dress can allow brand owners to strategically leverage their visual identity to differentiate their brand, cultivate consumer loyalty, and safeguard their reputation and market position.