Defense Attorney for Trade Dress Claims

The letter says your product infringes their trade dress. It does not say exactly what their trade dress is; it says your packaging creates the same "overall commercial impression," attaches side-by-side photographs chosen for effect, demands that you halt sales, destroy inventory, disclose your suppliers and revenue, and respond within ten days. Behind it is a larger competitor with a design your team may never have seen, in a category where the features they are complaining about are standard.

Trade dress claims are asserted far more often than they are proven. The doctrine has firm limits that exist precisely because protecting a "look" in the abstract would let one company fence off a design vocabulary its competitors need. This page explains those limits and how they are used, for manufacturers, importers, consumer product companies, restaurants and hospitality groups, retailers, and online sellers facing claims in New York. The enforcement side is addressed on our page for trade dress rights enforcement.

The First Two Weeks

1. Do not stop selling reflexively, and do not admit anything. A demand letter is a demand, not an injunction. Voluntarily pulling a product can be treated as a concession on the merits and on irreparable harm, and it hands the claimant the outcome they wanted without a filing fee. It is also sometimes the right business call. That is a decision to make with counsel after a fast merits assessment, not in the first hour.
2. Tender the claim to your insurer immediately. This is the most commonly missed step and the most valuable. Standard commercial general liability policies cover "personal and advertising injury," and the enumerated offenses in Coverage B expressly include infringement of another's trade dress in your advertisement. A trade dress claim is frequently a covered claim carrying a duty to defend that is broader than the duty to indemnify. Tender to every potentially responsive policy, including prior years on an occurrence basis, and do it in writing before you spend your own money.
3. Issue a litigation hold. Design files, supplier and factory communications, sourcing instructions, product development history, competitive research, marketing files, and the emails discussing the claimant's product. Preserve them. Do not clean up the file, spoliation converts a defensible case into a liability.
4. Find out what your team actually did. Privately and through counsel, before responding. Whether someone sent the claimant's product to your factory as a reference is a fact that will emerge in discovery, and the defense is built very differently depending on the answer. Learn it now rather than at a deposition.
5. Preserve the marketplace as it exists today. Screenshot every third-party product using similar features, across retailers, marketplaces, and catalogs. This evidence is the backbone of the functionality, distinctiveness, and confusion defenses, and listings disappear. Capture it now, with dates.
6. Consider whether to file first. A declaratory judgment action lets you choose the forum and the posture, and under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the standard is whether there is a substantial controversy of sufficient immediacy and reality, a specific infringement demand generally suffices. Filing first is not always right, but the option expires quickly once the claimant sues.
7. Calendar the response deadline in any filed action. Missing an answer date in federal court, or a preliminary injunction opposition schedule, is a self-inflicted wound in a case that is otherwise defensible.

Make Them Say What the Trade Dress Is

This is the first and often the last defense, and it is stronger in the Second Circuit than almost anywhere else.

A trade dress plaintiff must articulate the specific elements comprising the claimed dress with precision. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997), requires a precise expression of the character and scope of the claimed dress. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001), holds that a plaintiff may not claim protection for a general style, theme, or design concept. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995), is to the same effect.

Claimants routinely describe their dress in exactly the terms these cases forbid, an aesthetic, a vibe, an overall impression, a "clean modern look." A complaint pleaded that way is vulnerable on a motion to dismiss, and the deficiency is not curable by amendment in the way most pleading defects are, because the plaintiff faces a vise: a description broad enough to capture your product is an unprotectable concept, and a description narrow enough to be protectable will usually exclude your product's actual differences.

The defense move is to force the election early and hold the claimant to it. A contention interrogatory demanding an enumerated list of every element said to comprise the dress, and the combination asserted to be distinctive, produces one of two useful outcomes: an overbroad answer that fails Landscape Forms, or a narrow answer that you then compare feature by feature against your product and against the third-party marketplace evidence. Either way the case gets smaller.

Functionality

Functional features are not protectable as trade dress, and the doctrine is a complete defense, not a factor to be balanced. Under TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), a feature is functional if it is essential to the use or purpose of the article or affects its cost or quality. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), frames functionality as the outer boundary of the doctrine.

Where to find the evidence:

• The claimant's own utility patents. Under TrafFix, a utility patent (including an expired one) covering the claimed features is strong evidence of functionality, and the claimant then carries a heavy burden to show the features are merely ornamental. Search their portfolio, including abandoned applications and foreign counterparts. This single search resolves trade dress claims outright with some regularity.
• The claimant's own marketing. Advertising, catalogs, packaging copy, spec sheets, and website content touting the utilitarian advantages of the very features now said to be source-identifying. Companies advertise function relentlessly and then claim aesthetics in litigation. Pull the archived versions of their site.
• Manufacturing and cost evidence. Features driven by tooling, materials, shipping efficiency, stacking, shelf fit, regulatory compliance, or safety standards are functional. Industry and regulatory standards that dictate a shape or configuration are particularly effective.
• Aesthetic functionality. The Second Circuit recognizes it: protection is unavailable where exclusive use would put competitors at a significant non-reputation-related disadvantage. Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206 (2d Cir. 2012), is the leading treatment, and it is well suited to categories where a color, silhouette, or convention is what the market expects rather than what one company owns.

Note the burden. For unregistered trade dress, 15 U.S.C. § 1125(a)(3) places the burden of proving non-functionality on the plaintiff. Most trade dress asserted in demand letters is unregistered. Say so early and often; the claimant, not you, has to carry that issue.

Distinctiveness, and the Wal-Mart Rule

If what the claimant is asserting is the design of the product itself rather than its packaging, they face a mandatory burden that defeats a great many claims. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), holds that product configuration trade dress is never inherently distinctive and is protectable only on proof of acquired secondary meaning. The Court further instructed that in close cases courts should classify the dress as design rather than packaging, an instruction that favors defendants and is worth briefing directly. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), which claimants cite for inherent distinctiveness, involved restaurant décor and does not extend to product design after Wal-Mart.

Where secondary meaning must be proven, test it against the Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208 (2d Cir. 1985), factors and demand the proof in discovery:

• Advertising that features the dress itself. Large advertising budgets promoting a word mark do not establish that consumers recognize a shape or a color scheme. Ask for "look for" advertising specifically. It frequently does not exist.
• Consumer surveys. Often absent, and when present, vulnerable, leading questions, wrong universe, wrong format, failure to control for the word mark appearing in the stimulus.
• Exclusivity of use. The most productive line of attack. Third-party use of similar dress defeats the claim that consumers associate it with one source. This is what the marketplace screenshots are for, and a well-documented showing of ten competing products using the same features is worth more than any legal argument.
• Length of use and sales. Recent launches, modest volumes, and dress that changed over time all undercut acquired meaning. Claimants who have redesigned their packaging twice cannot easily claim consumers recognize the current version.

No Likelihood of Confusion

Applying the Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), factors, the defense themes that carry weight in trade dress cases:

• Your house mark is on the product. Prominent, consistent display of your own brand name and logo weighs heavily against confusion, and the Second Circuit has recognized the significance of distinct house marks in trade dress cases, Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992), addresses the interaction.
• The dress is weak. Strength is a Polaroid factor, and the same third-party use evidence that undercuts secondary meaning narrows the scope of protection to near-identical copying.
• Different channels, price points, and purchasers. Sophisticated or professional buyers, considered purchases, and different retail environments all reduce confusion.
• Dissect the comparison honestly. Claimants photograph the products cropped, rotated, and stripped of branding. Insist on the products as consumers actually encounter them, full packaging, in their display context, at actual scale.
• No actual confusion. Extended concurrent sales with no documented instances of confusion is meaningful evidence. Demand every instance in discovery; vague assertions that "customers have asked" rarely survive a request for the underlying records.
• Good faith. Independent development, a documented design process, clearance work, and instructions to differentiate all rebut bad faith, which matters both to Polaroid and to the willfulness questions that drive monetary exposure.

Counterclaims and Affirmative Defenses

• Cancellation of the registration. If the claimant has a registration, 15 U.S.C. § 1119 allows the court to cancel it, and § 1064 sets out the grounds. Functionality and lack of distinctiveness are grounds, and functionality is available even against an incontestable registration. A cancellation counterclaim changes the settlement calculus because it puts the claimant's asset at risk rather than only your sales.
• Fraud on the Trademark Office, where the application concealed material third-party use or misstated the basis for acquired distinctiveness. It is a demanding standard and should be pleaded only on concrete evidence.
• Laches and acquiescence. The Lanham Act has no limitations period; courts in this circuit reference the analogous state period (six years in New York) as a laches benchmark. A claimant who watched your product sell for years has both a laches problem and an irreparable harm problem.
• Unclean hands.
• Claims arising from the claimant's own conduct. If they sent false statements about your product to your customers or filed baseless marketplace takedown notices, that can support a Lanham Act false statement claim, tortious interference with your contracts or prospective relationships, and injunctive relief of your own. Bad-faith takedowns on Amazon and similar platforms are a recurring and actionable problem.
• Attorney's fees. Section 1117(a) permits fees to a prevailing party in exceptional cases, and the Second Circuit applies the Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), standard, which is available to defendants. A weak, overbroad trade dress claim litigated unreasonably is a candidate. Raising this early, in writing, changes how a claimant's counsel evaluates the case.

Limiting the Money

Even where liability is contested seriously, exposure should be attacked in parallel:

• Profits are not automatic. Under § 1117(a) an award of profits is subject to principles of equity. Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), held that willfulness is not an absolute precondition to disgorgement, but the Court was explicit that a defendant's mental state remains a highly important consideration. Good-faith independent development is directly relevant to whether any profits award is equitable.
• Apportionment and costs. Once the plaintiff proves your sales, you may prove your costs and the elements of profit attributable to factors other than the claimed dress, your own brand, your distribution, your pricing, your advertising, product features not in dispute. This is an accounting exercise, and defendants who prepare it properly reduce disgorgement substantially.
• Actual damages require proof of loss. Lost sales must be tied to the claimed infringement, not to ordinary competition. Claimants whose sales rose during the alleged infringement have a difficult damages case.
• Corrective advertising and enhancement are discretionary and require an evidentiary basis, not a percentage pulled from a demand letter.

If a Preliminary Injunction Is Filed

This is the moment the case is usually decided, and the schedule is brutal, often two to three weeks to build an evidentiary record.

Understand the change in the law: the Trademark Modernization Act of 2020 amended 15 U.S.C. § 1116(a) to provide a rebuttable presumption of irreparable harm on a showing of likelihood of success. Claimants overread it. The presumption is rebuttable and it attaches only after likelihood of success is established; so the defense priority is to defeat likelihood of success on articulation, functionality, or distinctiveness, where the presumption never arises. Where it does arise, it is rebutted with evidence of the claimant's delay, its willingness to license the dress to others, the availability of money damages, and the absence of any actual confusion or lost sales during concurrent selling.

The balance of hardships is worth close attention and is frequently underused. An injunction that halts a seasonal launch, strands committed inventory, breaches retailer commitments, or shuts down a small company's only product line is a hardship the court must weigh, and it supports both denial and a substantial injunction bond under Rule 65(c) if relief is granted.

How Quickly a Trade Dress Claim Can Collapse

Worked example. A demand letter arrives in April 2026 asserting unregistered trade dress in a product's shape and color scheme. Three facts, developed in the first two weeks, reframe the matter: the claimant holds an expired utility patent covering the shape, giving strong TrafFix evidence of functionality; the dress is product configuration, so Wal-Mart requires secondary meaning the claimant has never had to prove; and because the dress is unregistered, § 1125(a)(3) makes non-functionality the claimant's burden. Add eleven competing products using the same color convention, and the response letter is a short one, with a cancellation counterclaim and an Octane Fitness fee reservation attached.

How We Defend These Claims

We begin with a fast merits assessment focused on the three issues that dispose of trade dress claims (articulation, functionality, and the packaging-versus-design classification) because the answer determines whether this is a letter-writing matter or a litigation matter. We get your insurance tendered in the first week, since Coverage B often funds the entire defense. We capture the third-party marketplace evidence before the listings change. We force the claimant to enumerate the dress and hold them to it. And we develop the counterclaims (cancellation, false statements to your customers, bad-faith takedowns, and fees under Octane Fitness) that give you something to trade with, because trade dress claimants settle on very different terms once their registration and their own conduct are in issue. Our intellectual property infringement, unfair competition, and business litigation pages address the adjacent issues.

You can contact the Law Offices of Albert Goodwin by phone at 212-233-1233 or by email at [email protected].