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CAN YOU PROTECT YOUR TRADE DRESS?

It's 95 degrees and you'd trade your bathing suit for a Coca-Cola. So you pop into a store and search among the rows of beverages until you find that familiar red can with white script. But what looks like a Coke is in fact a different brand. Another company has "borrowed" Coke's trade dress and put its own name on the can, hoping to cash in on the beverage giant's visual image.As the growing number

It's 95 degrees and you'd trade your bathing suit for a Coca-Cola. So you pop into a store and search among the rows of beverages until you find that familiar red can with white script. But what looks like a Coke is in fact a different brand. Another company has "borrowed" Coke's trade dress and put its own name on the can, hoping to cash in on the beverage giant's visual image.

As the growing number of "copycats" know, there is gold to be found in trade dress: the combination and allocation of elements (shape, color, graphics and design features) that create an overall look or impression of a product or its packaging. Effective trade dress, such as that of the Kodak and Marlboro brands, triggers instant recognition in the minds of consumers from Oslo to Osaka. It can translate into millions of dollars in sales.

Imitation of trade dress can result in significant loss of credibility and revenue for the targeted company. That is why it is essential to ensure your trade dress is legally protectable and can stand up, if necessary, in court.

Two years ago, one of our clients, Veryfine, successfully sued Colon Bros. of Ponce, Puerto Rico, in U.S. district court for infringement of its trademark and trade dress. To demonstrate the concept of trade dress to the court, we submitted an exhibit of the Coca-Cola trade name replaced by "Coloso Cola" in Coca-Cola's type style and trade dress. Ultimately, Judge Jaime Pieras Jr. ruled Coloso's labels were intentionally copied from Veryfine's trade dress, which, like Coca-Cola, is "inherently distinctive" and had long and extended use in the marketplace. The court awarded Veryfine more than $500,000 in financial damages and ordered Colon Bros. to remove its product from store shelves.

Veryfine was able to defend its right to trade dress ownership legally because we had deliberately constructed protectable elements into its package design, including unique fruit symbols that were also trademarked. The fact that the company had used its trade dress and mark consistently in all brand communications -- advertising, marketing literature, promotions -- bolstered its case.

For years, most courts required proof that customers associated a design with the design owner as a condition for protection. But in 1993, in the case of Two Pesos Inc. vs. Taco Cabano Inc., the U.S. Supreme Court ruled that an inherently distinctive design or trade dress is immediately protected under trademark law. This decision may benefit your company by providing added protection for your trade dress. But beware, it may also increase the risk of your company infringing on the trade dress of others.

Trade dress registration under federal and state trademark laws can help you prove property rights. These applications can be filed before use, so you may want to obtain legal advice on your protection options as soon as your design has been completed.

For complaints that are competing in the global marketplace, trade dress management is particularly important because of the power of visual imagery to cross language and cultural barriers. If you are marketing your products abroad, you should register the trade dress and name of each brand in every country in which you are doing business.

It is no longer sufficient for companies to have a visually powerful package design. Rather, they also need to ensure its protectability. It's the only way they will be able to keep the copycats at bay.

Elinor Selame is the president of Package Design Council International and president of BrandEquity International, a visual communications and brand identity consulting firm based in Newton, Mass.