More and more businesses seem to be warming to the idea of trademark rights in store designs. Yes, store fronts and interiors, you know the distressed facades showing exposed bricks, the marquee sign on top of the store with a funny looking arrow pointing in no direction whatsoever, the arrangement of merchandise display tables. Those designs. True, a store design is not necessarily a word or solitary logo like we think of when we think about ordinary trademarks (ordinary meaning plain old words, phrases, and logos). The fact remains that store designs make just as compelling an impact on consumer perceptions than a word or logo flashing across the television screen or calling out to you from a billboard.
But enough pontificating. Let’s take a case-in-point: the Apple Store.
Recognizing this reality, Apple sought protection of its store design as a type of trade dress. Not the kind of dress you wear, the kind that companies “outfit” their products in. Trade dress can serve as a trademark because the design of the packaging can serve to tell consumers where the product came from. The easiest example of this kind of protection attaching is through the Coca-Cola bottle design.
Obtaining trade dress protection is not usually that much of an issue, and the most that a product designer has to show is that the packaging is distinctive (it is not so simple that someone would fail to recognize the connection between the product and the trademark owner) and not functional (the particular design of the packaging cannot serve some kind of non-trademark purpose, like being easier to ship or being cheaper to make). But in the case of retail stores some difficulties can pop up. In order for a store design to qualify as trade dress protectable as a trademark, the store owner claiming that the store design is a trademark has to figure out a way to describe what part of the design serves as a trademark and connect this with a consumer’s connection between the design and the owner of the store.
Doing this seems, on the surface, to be pretty straightforward. Why, if you are a designer, describing what part of the store is a trademark is your life’s work. You know feng shui and can “feel the vibe” in your store. The colors pop. The store front has a clean, simple appearance with lots of glass arranged in a sequence of panels. Presto! You have a distinctively designed store front that can easily connect back to you as the store owner. Well, Apple found differently in its initial attempts at the U.S. Trademark Office. For example, Apple’s initial description of the store design in its trademark application was that the trade dress consisted of a “distinctive design and layout of a retail store”. As you might guess, this description was flatly rejected because it was just too plain vanilla. After all, wouldn’t any store owner claim that their store was distinctively designed? Apple’s description could ostensibly have given it rights to any number of other retail stores, including Microsoft’s.
Another hurdle that Apple had to overcome (and ultimately failed at) was proving that its design was in fact distinctive. Apple initially tried to argue that store design elements were inherently distinctive, which is to say that all the elements in the store design described by Apple signal to consumers that the store is connected with Apple. So Apple had to prove acquired distinctiveness. In general, a trademark owner proves acquired distinctiveness by showing continuous and exclusive use of a trademark in such a way that the mark is specifically tied to the owner. One might think that it would have been easy for Apple to prove that consumers make such a recognition of Apple’s stores, especially given the presence of these stores in major malls and shopping centers across America. Apple eventually prevailed not by showing that its stores had significant sales and that many people saw the store designs. Rather, Apple succeeded only when it was able to show that consumers recognized the design of the stores. On this showing of acquired distinctiveness (Apple had to present some pretty robust evidence including a specially-commissioned survey and litany of customer testimonials), Apple was able to get the registration for its store.
I think the lessons from Apple’s success are valuable for trademark owners looking to get trademarks on something that is not so easily captured in a simple phrase or symbol.
1. The description of the store design is everything. Because trademark law is concerned about giving one person an unfair advantage in the marketplace by claiming broad rights to every possible iteration of a particular symbol, you have to specifically outline what it is you think you have trademark rights in. For store designs, this can be difficult because so many elements in a store are common (walls, shelving, glass paneling in the front of the store).
2. Business goals are important. If you are a mom-and-pop with just a single location (Pizzeria Bianco in Phoenix comes to mind), protection of your store design may not be so important. Your name can do all the work for you in that case. Moreover, the storefront may not be such an important element to you as a business owner. You may be interested solely in offering your customers a great meal and great service.
3. If your business does care, commercial success is no guarantee that your store design is distinctive enough to be protected as a trademark. Having high sales figures and significant foot traffic won’t help you show distinctiveness of a design, but it is telling. Saying that a store is successful most likely means that it either has a long history in the marketplace, or it offers customers a unique experience (or product). A long history in the marketplace or a unique experience might mean that customers uniquely identify the store front with a particular owner.