You can protect your business name. You can protect your logo. But how far can your branding protection go? Can you protect the look and feel of your establishment? The answer is yes, and the concept is known as “trade dress” and protection for it is notoriously difficult to pull off. However, two popular Ohio-based taco spots, Barrio and Condado, are currently in dispute about just that.
The story starts in 2012 when Joe Kahn and Thomas Leneghan co-created Barrio in Cleveland. According to Kahn’s representatives, the idea for a Mexican restaurant started with Leneghan, but Kahn was the idea person behind all of the theme details, from the sugar skulls to the scantron-like ordering sheets. After a dispute in 2014, the pair split, and Kahn opened Condado Tacos in Columbus, which has very similar elements and motifs.
While the pair had a separation agreement where Kahn agreed to not use Barrio’s trademarks and not open a Mexican restaurant within two miles of a Barrior for at least two years, Kahn now wants to open a Condado in Cleveland. Because of the perceived similarity in the restaurants and the soon-to-be-close geographic location, Laneghan has filed suit against Khan claiming that Kahn has misappropriated many of the aspects that he claims are unique to Barrio. Leneghan wants to prevent Kahn from opening a Condado in Cleveland in direct competition with Barrio, so he is arguing that Kahn is committing trade dress infringement.
Trade Dress is a concept under the umbrella of trademark which incorporates the overall appearance of a certain product. It can cover virtually any aspect of a product which distinguishes it from competitors. Abercrombie & Fitch famously sued American Eagle for trade dress infringement in the early 2000s claiming that American Eagle appropriated the look and feel of its stores.
However, because the concept of trade dress is so broad, it can be difficult to protect. In order for a product to be eligible for trade dress protection, it must meet the following criteria:
- The trade dress must serve as a source identifier. The concepts must be readily identifiable based on certain elements of its design.
- The trade dress must be distinctive. It cannot be too closely related to another product as to cause a likelihood of confusion.
- The product must be used in commerce. Trade dress has to acquire “secondary meaning,” which means that it has an identification and association with the product being sold. The only way that secondary meaning can be accomplished is through advertising and exposure to consumers in the marketplace.
- The design elements of the trade dress must be nonfunctional. If the aspects of trade dress that you are trying to protect serve purely functional purposes on your product, it will not be eligible for trade dress protection under trademark law.
If the trade dress of your product meets these four standards it can be registered with the U.S. Patent and Trademark Office and is afforded protection for as long as you continue to use the product in commerce.
Along with trade dress protection comes the ability to sue for infringement. Trade dress infringement occurs when one company begins using a trade dress that is similar enough to another to cause a likelihood of confusion by the consumer. If the average buyer is likely to associate your product with that of another company, trade dress infringement may be found.
Establishing trade dress protection for your product helps prevent duplication and confusion, ensuring that your customers are always familiar with your product and the aspects that make it unique. At the same time, it’s important to do diligent research to make sure that your product is not infringing on another product’s trade dress as well. For more on the Barrio and Condado suit, Cleveland.com published an in-depth article that includes all of the legal documents.
If you have any questions about trademarks, contact Scott Brown.