IP in Retail: Brand Protection, Trade Dress

This guide offers a comprehensive overview of brand protection and trade dress in the retail industry, detailing legal frameworks, registration processes, and enforcement mechanisms to help retailers safeguard their intellectual property and brand identity.
IP in Retail: Brand Protection, Trade Dress
Photo by Susan Q Yin / Unsplash


Intellectual Property (IP) is a critical asset in the retail industry. It encompasses various forms of protection, including trademarks, patents, copyrights, and trade dress. This guide focuses on brand protection and trade dress, providing a comprehensive overview of the legal frameworks, enforcement mechanisms, and practical considerations for retailers.

Brand Protection


Definition and Importance

A trademark is a symbol, word, or phrase legally registered or established by use as representing a company or product. Trademarks are essential for distinguishing products and services in the marketplace, building brand identity, and preventing consumer confusion.

In the United States, trademark protection is governed by the Lanham Act (15 U.S.C. §§ 1051 et seq.). The United States Patent and Trademark Office (USPTO) is responsible for the registration of trademarks.

Registration Process

  1. Search: Conduct a trademark search to ensure the mark is not already in use.
  2. Application: File an application with the USPTO, including a description of the mark and the goods/services it will cover.
  3. Examination: The USPTO examines the application for compliance with legal requirements.
  4. Publication: If approved, the mark is published in the Official Gazette for opposition.
  5. Registration: If no opposition is filed, the mark is registered.


Trademark owners can enforce their rights through civil litigation. Remedies include injunctions, damages, and destruction of infringing goods. The U.S. Customs and Border Protection (CBP) also plays a role in preventing the importation of counterfeit goods.

Trade Dress

Definition and Scope

Trade dress refers to the visual appearance of a product or its packaging that signifies the source of the product to consumers. It includes features such as size, shape, color, texture, and design.

Trade dress protection is also governed by the Lanham Act. To qualify for protection, trade dress must be distinctive and non-functional.


Trade dress can be inherently distinctive or acquire distinctiveness through secondary meaning. Inherently distinctive trade dress is unique and immediately identifies the source of the product. Secondary meaning occurs when consumers associate the trade dress with a particular source over time.

Functionality Doctrine

Trade dress protection does not extend to functional features. A feature is functional if it is essential to the use or purpose of the product or affects the cost or quality of the product.

Registration and Enforcement

Trade dress can be registered with the USPTO, providing a presumption of validity and exclusive rights. Enforcement involves civil litigation, with remedies similar to those for trademark infringement.

Case Studies

American Apparel

The case of American Apparel highlights the importance of trade dress in the retail industry. The company successfully protected its distinctive store layout and design, which were integral to its brand identity.

Ezaki Glico Kabushiki

In Ezaki Glico Kabushiki v. Lotte International America Corp., the Supreme Court addressed the issue of trade dress functionality. The court ruled that the shape of Pocky sticks was functional and not eligible for trade dress protection.

International Considerations

Global Trademark Protection

Retailers operating internationally must consider trademark protection in multiple jurisdictions. The Madrid Protocol facilitates international trademark registration, allowing a single application to cover multiple countries.

Trade Dress in Different Jurisdictions

Trade dress protection varies by country. In the European Union, trade dress is protected under the Community Trade Mark (CTM) system. In China, trade dress protection is less developed, but recent reforms have improved enforcement mechanisms.

Practical Considerations

Developing a Brand Protection Strategy

  1. Audit: Conduct an IP audit to identify and assess existing assets.
  2. Registration: Register trademarks and trade dress in key markets.
  3. Monitoring: Monitor the marketplace for potential infringements.
  4. Enforcement: Develop a strategy for enforcing IP rights, including litigation and customs enforcement.

Engage experienced IP counsel to navigate the complexities of trademark and trade dress protection. Legal counsel can assist with registration, enforcement, and international considerations.


Brand protection and trade dress are vital components of IP strategy in the retail industry. By understanding the legal frameworks, registration processes, and enforcement mechanisms, retailers can safeguard their brand identity and maintain a competitive edge in the marketplace.


  1. Lanham Act
  2. USPTO Trademark Registration
  3. CBP Intellectual Property Rights
  4. American Apparel Case
  5. Ezaki Glico Kabushiki Case
  6. Madrid Protocol
  7. EU Trade Mark
  8. China IP Toolkit

This guide provides a detailed overview of brand protection and trade dress in the retail industry, emphasizing the importance of legal frameworks, registration processes, and enforcement mechanisms. By following these guidelines, retailers can effectively protect their intellectual property and maintain a strong brand presence in the marketplace.

About the author
Von Wooding, Esq.

Von Wooding, Esq.

Lawyer and Founder

Counsel Stack Learn

Free and helpful legal information

Find a Lawyer
Counsel Stack Learn

Great! You’ve successfully signed up.

Welcome back! You've successfully signed in.

You've successfully subscribed to Counsel Stack Learn.

Success! Check your email for magic link to sign-in.

Success! Your billing info has been updated.

Your billing was not updated.