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Trade Dress: Is Your Franchise System In Vogue?

By Newsletter

As a growing Franchisor, you constantly endeavor to make your company distinguishable from its competition. From the very beginning when you had the idea to launch your business, you no doubt struggled to find just the right name. Then after the name, you went through the legal process to register and protect that name and associated logo. In conjunction with finding the right name, you worked hard and spent many long hours to develop those secret recipes or methodology of operations and processes which formed the core of your trade secrets that set you apart from your competition. Unfortunately, many Franchisors fail to spend the same amount of time and effort in developing or protecting their company’s trade dress

Your trade dress is the overall appearance of the business. The items that make the business or product distinguishable and recognizable to the customer. When you drive down the street and see the golden arches at a fast food restaurant, is there any doubt about the name of the Franchisor? The golden arches symbolize the entire franchise system. Ask any kid.  They know what the arches mean when they are hungry. The golden arches constitute a major part of the Franchisor’s trade dress and are a very valuable asset. A company’s trade dress builds reputation and goodwill which in turn, becomes synonymous with the Franchisor’s name. But as you become successful in building greater market share through your trade dress, your competitors will seek to copy you and capitalize on that good will and reputation.

Fortunately, there is good news for Franchisors seeking to protect their trade dress. By employing Section 43(a) of the Lanham Act, a Franchisor carries a “big stick” to beat back its competitors. Under the Lanham Act, not only can a Franchisor obtain damages against the infringer, but the Franchisor can also obtain an injunction and destruction of the “copy-cat” materials. Additionally, the Act also enables a Franchisor to obtain attorney fees against the offender. And a Franchisor has the option of initiating the case in either federal or state court.

The most notable trade dress case decided under the Lanham Act was Taco Cabana v. Two Pesos. In this case, the U.S. Supreme Court upheld the Circuit Court’s finding that the defendant had appropriated the Plaintiff’s general appearance by copying the exterior of the restaurant, the identifying signage, interior kitchen floor plan, décor, servers’ uniforms and several other features of the restaurant. The court found that the above items created a “total image”. The total image constituted the Plaintiff’s trade dress and distinguished its products and services from competitors. 


Once your trade dress is developed, make sure it is used consistently by all franchisees. When used on a consistent basis, trade dress becomes a major asset of your franchise company and merits no less protection than that of your trademark and trade secrets.

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Trademark Law for Non-Lawyers

By Newsletter

Trademarks are the banner for a franchise concept, enabling franchisors to operate under one distinct name which is, or becomes, well known to consumers or third parties.

In other words, trademarks lend a particular image to the franchise company. Like brand recognition, your trademark provides you with an identity associated with the franchised goods or services.

Many franchisors commonly use the term  “trademark” to encompass both service marks and trademarks, either of which can be afforded federal and state protection under the federal Trademark Act of 1946 (“Lanham Act”) or various state statutes. Although the terms service mark and trademark are often used interchangeably, they actually are quite distinct. A trademark is technically a name or symbol associated with a good or product that distinguishes itself from another manufacturer, while the term service mark refers only to services.  Both, trademark and service mark, allow the consumer to recognize and identify the product or service from one franchisor to another.

To be registered with the U.S. Patent and Trademark Office, the mark must identify a single source, distinguishing it from that of another party. To be distinguishable, the mark cannot be a generic term or confusingly similar to another mark or trade name.  It cannot be the name, portrait or signature of a living individual or deceased person without express permission of the deceased representative, nor can it compromise our flag.  It also cannot be a coat of arms or insignia of another country or state or contain scandalous, deceptive or immoral matter.

Trademarks and service marks provide protection from others attempting to establish recognition through your company’s identity, recognition being the “key” to any successful franchise system. Once your trademark or service mark is registered on the Principal Register of the U.S. Patent and Trademark Office, you acquire national recognition, conferring superior rights.

Even after registration, you must file affidavits of continued use with the U.S. Patent and Trademark Office to maintain your registration. If you fail to file the continued use affidavits, you may lose your rights to the registered mark. Therefore, make sure you track all registered marks for your franchise and make sure they are timely renewed.

If you would like to find out more information on federal and state registrations, please call or e-mail us.

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