Trade Dress Infringement: A New Year's Holiday Observation

posted Jan 4, 2011, 12:19 PM by Calan McConkey
Many of you have heard of the common legal issue of trademark infringement (previous posts on the topic here and here). Less frequently dealt with, however, is the issue of trade dress infringement. I have mentioned it before, but have never really addressed what exactly "trade dress" is and what is required for it to be infringed.

According to Wikipedia, "trade dress" is:

"[A] legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers."

There really isn't much else to say about trade dress. It essentially encompasses and protects the way a product looks and allows a consumer to distinguish the product in the marketplace. As you can see, it is very similar to a simple trademark.

A somewhat recent lawsuit dealing with trade dress issues is that of Simply Orange vs. Trop50. Many of you already know what Simply Orange looks like (in fact, they have a design patent on their bottle shape). Personally, I've never heard of Trop50. Based on this information alone, it can be easily seen that Trop50 is attempting to imitate Simply Orange, which Coca-Cola doesn't like (producer of Simply Orange). Look below to see a picture of both orange juice bottles. Maybe not close enough to confuse someone, but definitely a resemblance.

To read more about the Simply Orange infringement story, check out Duets Blog (also source of picture).



Okay, now on to the real reason I am writing this post. This past weekend, I traveled to the Land of Lincoln -- specifically, Chicago -- to celebrate New Year's. During the time that I was up there, I was surprised to come across a bottle of vodka that, honestly, confused me into thinking that it was actually Smirnoff vodka. Apparently it is a brand of popular vodka that has gained a reputation as being very good for how cheap it is. The alcohol in question is Sobieski vodka. Below you can see stock photos for both Sobieski and Smirnoff, along with my own photo comparing the two (even though the bottles are different sizes).


In my opinion, the trade dress of both bottles are strikingly similar. When I first looked at Sobieski, I thought it was Smirnoff. Then, after I read the text, I figured it was just an illegal knock-off, but apparently it is not. At this point, I'm sure you all are wondering which one can sue the other. Well, here you go:

Lanham Act Section 43(a) explains that trademark/trade dress infringement exists when:

(1) Any person who, on or in connection with any goods...or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

The next logical question then is what constitutes a "likelihood of confusion?" The test used varies by jurisdiction, but a common one -- the Polaroid test -- requires examination based on the following factors:

(1) The strength of the Plaintiff's mark (i.e., how popular/recognizable it is)
    • I would argue that Smirnoff has a much stronger mark than Sobieski
    • The strength of the mark is usually the most important factor
(2) The degree of similarity between the two marks
  • They looks pretty similar to me. There are slight differences, but looking at the overall picture leads me to believe this factor would cut in favor of Smirnoff

(3) The proximity of the two products
  • Can't get any closer than this -- both types of vodka

(4) The likelihood that the previous owner will "bridge the gap"
  • No 'bridging" necessary here; see factor above

(5) Actual confusion
  • Questionable at best. I doubt someone would buy Sobieski actually thinking that it is Smirnoff. Now could argue that they thought it was a type of Smirnoff. Possibly.

(6) The Defendant's good faith in adopting the mark
  • Not much evidence to argue either way here.

(7) The quality of Defendant's product
  • Could go either way. Sobieski is a "cheap" vodka but multiple people have informed me that it is actually pretty good, maybe even better than Smirnoff.

(8) The sophistication of the buyers
  • Kinda depends here. Buyers of low to mid-range vodkas probably fall into the moderately sophisticated group. If dealing with Grey Goose, etc., might consider them more sophisticated.

At the end of the factor analysis, what are we left with? To me, it seems like there is enough evidence to establish a "likelihood of confusion" between Smirnoff and Sobieski, assuming Smirnoff is the one suing.

But, wait, there is a slight catch...

According to my research, both Smirnoff and Sobieski have registered their trade dress/trademark designs with the Patent and Trademark Office. Registration on the primary register essentially gives nationwide trademark rights as of that date. So, for the most part, whoever registers first, wins. Here is the big payoff:


Smirnoff filing date = February 7, 2003

Sobieski filing date = July 17, 1998



That's right. Based on this, Smirnoff is the one that should be watching its back, not Sobieski. Sobieski registered the design of their mark and bottle label more than four years before Smirnoff. So why doesn't Sobieski sue Smirnoff? My theory is that because no one actually confuses the two or, more specifically, no one looks at Smirnoff and thinks it is produced by Sobieski, the senior trademark holder. What actually is happening is called "reverse confusion infringement." To save time, click HERE for more info on the topic.

It really comes down to Sobieski not having a strong enough trademark. Now one thing is true, if an alcohol manufacturer comes along now and tries to make a bottle with a similar design to either Sobieski or Smirnoff, they should consider themselves in legal hot water.

Nothing like a law-related story with a twist ending.

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