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How Trade Dress protects your trademark: the case of Apple

By: Jaime de la Mora

May 10, 2023

Companies invest large amounts of resources to create innovations that distinguish and keep them at the forefront. In recent years, the concept of Trade Dress has been widely discussed, which is why in ClarkeModet, through the case of the iconic Apple brand, we explain how to protect your mark and what elements to consider doing so.

According to a survey conducted by the European Union Intellectual Property Office (EUIPO), 97% of companies in the European Union consider that their Intellectual Property (IP) protection is important for their business success. Furthermore, the number of litigations in defense of their mark rights has increased by 67% in the last decade, according to a study conducted by a law firm.

Trade Dress is an essential tool for generating differentiation opportunities for a product from the competition and creating a unique image in the consumer’s mind. In the case of Apple, its distinctive product design has been protected through the registration of several patents and marks. For example, the rounded shape and glass screen of the iPhone, the rectangular shape of the iPad, and the minimalist design of the store are iconic elements of the company.

However, it had to go through several stages before its mark was approved and registered. In its application of January 2010, it was described as a ‘Distinctive Design and Layout’ of a retail store. As the application progressed, it provided greater detail. However, the application was refused registration in September of the same year since the mark was not “inherently distinctive”.

The United States Patent and Trademark Office (USPTO) considered it merely “decoration or ornamentation” in the context of retail services. Apple was therefore invited to submit evidence that would otherwise demonstrate that the trade dress had acquired distinctiveness under the Trademark Act.

Two years later, Apple submitted the following compelling evidence, which ultimately led to acceptance by the USPTO:

Evidence from the consumer survey:

  • A survey was conducted among 180 participants in 9 different shopping malls.
  • 42% were able to identify Apple by name when presented with a stimulus consisting of its trade dress.

Direct consumer testimony demonstrating Apple’s brand distinctiveness.

Reinforced their survey evidence with direct testimony from 15 consumers who associate Apple with the same trade dress represented in the service mark application.

Media coverage of Apple stores with the basic design of the mark.

Apple presented unrequested press evidence that included acknowledgment of the uniformity of its retail stores. Faced with this level, consumer surveys, and direct testimony, the USPTO determined that it had made out a prima facie case of acquired distinctiveness. Therefore, the trademark application for the black and white version was approved for publication on April 18, 2012, and registered on January 22, 2013.

Protecting the Trade Dress is crucial to maintain the mark’s identity, prevent other companies from copying it and, due to its distinctiveness, generate new business opportunities through it. In the case of Apple, protection has been successful in several litigations against competition who wanted to imitate its distinctive design. Moreover, it has been the key to maintaining consumer confidence in the mark and guaranteeing the quality and authenticity of its products.

Do you want to protect your marks and intangible assets?

Here are the reasons why you should choose us:

We specialize in consulting, protection, defense, and monetization of intangible assets with an innovative vision to maximize your Intellectual Property rights:

  • One-stop-shop IP Service in Latin America or Europe: We centralize our service with administrative efficiency and guaranteed quality, working on the execution in several countries and centralizing your processes, payments, and management.
  • Global Coverage: We have operational offices in 13 countries; Argentina, Brazil, Chile, Colombia, Ecuador, Spain, Mexico, Paraguay, Peru, Portugal, Venezuela, and Uruguay, covering the rest of the world with our wide network of correspondents. In addition, 4 commercial offices in Germany, the USA, China, and Korea.
  • Expert team: Our “In house” technicians have local knowledge and a global vision to provide expert service in each area of expertise: legal, chemistry, biotechnology, mechatronics, telecommunications, industrial design, nanotechnology, etc.
  • Competitive pricing: We have a highly competitive proposal worldwide due to our centralized and standardized rates.

We encourage you to make informed, planned, and properly budgeted decisions.

If you are aware of the value of your mark and would like to protect it internationally or locally, as well as maximize its monetization, please send an email to marketing@clarkemodet.com to receive advice from our experts.

Sources:  NY-trademark-lawyer.com. What is Trade Dress and How Can It Be Protected? (2023) [Internet] Recuperado el 23 de abril de 2023: What is Trade Dress and How Can It Be Protected? | New York Copyright Lawyer (ny-trademark-lawyer.com) Simon Tracey and Teresa Lee. Can retail store designs be protected as trade dress or 3D marks? (2013) [PDF- Internet] https://www.worldtrademarkreview.com

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