Registering Trade Dress

Now, I might be the last person who should be talking about makeup....but I do feel a little comfortable talking about trademarks. And that's the topic for today. Trademarks. Specifically, protecting trade dress through trademark protection from the US Patent and Trademark Office (USPTO for short).

Going through some old lists and articles, I came across this one that outlines the difficulties being experienced by a makeup supply creator named Raynell Steward. Ms. Steward created a school supply themed makeup brand called The Crayon Case. It's easy to imagine after taking one look at her products why they were so loved by her customers. They're super cute, super kitsch, and fun. Makeup brushes and other supplies that look like pencils, markers, erasers, etc. The problem wasn't how much her customers loved her products; the problem was that other brands took notice and loved them, too. Loved them a little too much.

A collection for Moschino done by Jeremy Scott looked very "similar" to the products from The Crayon Case. I'm being diplomatic by saying similar when anyone with eyes can see it's a copycat product. Makeup brush set modeled after pencils. Eyeliner modeled after a sharpie style marker. Sponges that look like erasers. A one for one reproduction of her line with only minor changes to the design, but retaining the overall design language from the original product by Steward. Now, based upon her response to the issue on social media, it doesn't appear she had applied for or received trade dress protection from the USPTO. Perhaps she did and wasn't discussing it so the lawyers could do their thing. Or perhaps she never did and never knew she should, or even that it was possible. But let's talk about trade dress anyway.

Trade dress is a unique design element that has to do a couple of things in order to potentially qualify for protection. First, the design element must be unique and inherently distinctive so that the public is more likely to view it as being from or associated with the brand. Second, the design element must be conceptional separate from the actual product. So, for example, you generally couldn't get trade dress protection for a pencil that looks like....a pencil. The design is not unique or separate from the actual product. But a pencil designed like a baseball bat, you might have something. Now, that's the criteria you must satisfy to receive trademark/trade dress protection. Defending it is a little different.

In order to win on a claim of trade dress infringement, it's not enough that you have the registration. You have to prove that in the minds of the public, the primary purpose of the trade dress being infringed on is to identify the product with the brand. I believe that in the case of The Crayon Case and Ms. Steward, had she applied for trade dress protection (and again, I don't know if she did or did not; if she received it or did not), it's very likely she would have been granted that protection. Then, had Moschino still created their line and put it out, I believe she would have had a pretty strong case for infringement - especially considering that every time the product from Moschino was plugged on social media, Steward's customers would flood the comments with references to her work and calling out Moschino for...liberally borrowing inspiration, as well as providing links to her website where customers could purchase the authentic item. But that's just my opinion from what I know.

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