Marketing Themes as Trade Dress

Sales techniques or marketing themes are a newer category of trademark law’s trade dress laws. These have been recognized as protectable for a few decades and are an effective tool for businesses who have developed consumer recognition with certain elements or style themes of an overall marketing program.

Let’s look at a few successful uses of trade dress to protect marketing themes.

The trade dress of Phillip Morris includes a picture of a cowboy on a cigarette pack, figures of cowboys as the Marlboro Man and western landscape known as Marlboro Country. Phillip Morris has successfully defended its use of a western motif to advertise cigarettes, opposing another mark by competitor Paul Revere Extra having the brand’s text (literal element) superimposed over a cowboy on a horse. Phillip Morris was also successful in preventing star Tobacco’s used of GUNSMOKE brand cigarettes.

Dreyfus Funds also successfully defended its use of a lion in connection with financial services, in particular, the use of a money jungle setting and a family of lions to symbolize a family of funds.

Harlequin Romance’s book cover design includes certain elements such as size and color, illustration, font size, location of title and author’s name. A copycat book publisher tried to sell its own novels with confusingly similar book cover designs that Harlequin successful stopped in its tracks to avoid consumer confusion and protect its hard earned market share and trade mark rights.

However, there have been unsuccessful attempts as well. Haagen-Dazs used a Scandinavian flair in its product packaging. This Scandinavian theme was not protectable trade dress according to the courts. Another radio station promotional campaign advertised a “paycheck from the radio station” concept for prize earnings. The theme was too broad to be monopolized by one business. A radio station’s use of an employment theme for a contest was not protectable because the theme was too broad. Protection would be afforded to particular expression of an idea, but not the theme idea itself as a concept.

So let’s review: broad themes such as “employment” and “Scandinavian influence” were not protected. Narrower themes such as “western motif” or a “jungle theme” were protected. The goal of your marketing campaign should be to develop a particular theme that is unique enough to be distinctive and recognizable.