In the previous post I talked a lot about how a store design could be protectable. I even discussed some of the hurdles that a company could face in its bid to obtain protection for store designs. The main hurdle is the difficulty of demonstrating that store design is inherently distinctive or that it has acquired secondary meaning. And the difficulty inherent in demonstrating inherent distinctive is that store designs aren't generally that unique or different from store-to-store. Most store layouts and designs incorporate many "essential" elements like shelving, lighting arrangements, tables, walls and glass. Where a store presents a design and layout that can be specifically defined and linked to a particular source because it has a different arrangement or distinctive, it can acquire distinctiveness over time. Distinctiveness is acquired through continuous use of the same design, active promotion of the design, widespread consumer recognition of the design as associated with a particular source.
But secondary meaning is hard to prove and usually requires providing some pretty compelling evidence (consumer surveys, extensive media attention, significant foot traffic). Another difficulty that even Apple faced: proving that variations in a store's design across different locales did not modify the character of the mark. Almost by necessity, Apple store designs vary by location. This is perfectly understandable, especially when you consider the multitude of factors influencing the design and layout of a store front. Consider the two images below (both images courtesy of apple.com)
Then there are other stores that appear to only incorporate one or two elements described in the application:
In response to these variations, the trademark examining attorney asked Apple to specifically identify which stores contained the horizontal panel trade dress and tie its consumer surveys recognizing the distinctiveness of the claimed design to these particular stores. Apple balked (properly, in my opinion) and argued that the differences between its stores were slight and that minor amendments to trade dress have been allowed in the past without new consumer recognition evidence for the amended redesign.
I think I understand where Apple is coming from on this. Their argument appears to be that, while there is a little variation in the designs of its stores, the stores, in essence, make the same impression on a consumer. The problem with this argument is that it blurs the line between specific definitions of the mark and claiming a right for a general “look and feel” scope of rights. While there are certainly similarities between the different Apple store designs, there are some striking differences. The question then becomes are the similarities the kind of items that are protectable as trade dress, or are they merely functional constraints?
Certainly, there are a finite number of ways to present computers and other electronics in a store. Begin with the fact that most consumers want to see a computer, touch it, and play around on it before committing to a purchase (especially when the price tag exceeds $1,000). That requires some sort of display. Because it is a public health hazard to have wires, computers, and people lying around on the floor, simply placing the computers on the ground for people to pick up and use is out. So there has to be some kind of elevated display. The most common type of elevated display (at least for computers) appears to be tables. Also, there has to be some kind of shelving along the walls, to maximize space in the store and manage traffic flow. When you look at the designs for two different stores (Microsoft and Samsung), you can easily pick out common elements.
But what about the other features that are described in Apple’s trademark registration with such a high degree of particularity? The glass façade, the arrangement of rectangular panels around the façade, and the vertical panels at either end of the façade? These definitely do not appear in all Apple store designs. Maybe that doesn’t matter as much, especially if all of the other elements in Apple’s registration appear in the store. After all, if you are 8/10 in terms of included features, have you satisfied a majority of the features? And what if those features leave the same kind of impression with a consumer such that a consumer is able to connect a particular design with Apple as the source? If the latter is true, then slight variations don’t much matter because the essence of the mark is still used in commerce.
Could all stores get away with this kind of variation? Maybe, maybe not. Apple has certainly built a cult following, and their stores are located in some of the higher-traffic shopping centers and locales across the U.S. This kind of “buzz” could be what accounts for the great public awareness regarding the appearance of the Apple store, even if the designs vary across different installments. A famous brand like Apple could therefore manage pretty easily to walk the fine line between trademark design variations and complete mutilation (fancy phrase meaning significant changes to a mark that allows it to lose its commercial significance) than, say, a mom-and-pop with just a few stores in different states.
So the take-away here? The appearance of a trademark in the marketplace (and whether the mark substantially matches the mark as described in a trademark registration) have a direct bearing on whether the trademark will be considered valid. If a mark varies too much from the way it is described in the registration, trademark rights could be forfeited because consumers have a hard time matching a specific design to a particular source.