The law relating to trade dress stems from the common law doctrine prohibiting unfair competition. It can be invoked, when certain conditions are met, to preclude competitors from copying the shape or appearance of a company's products or packaging; hence, the name trade dress. To qualify for protection, the dress must be non-functional (to avoid conflict with the patent laws) and, like a trademark, must serve the purpose of denoting the source of the product.

Examples of trade dress include the shape of the Coca-Cola bottle, the front grill on the Rolls-Royce automobile, the shape of a classic Ferrari sports car, the round wall-thermostat by Honeywell, and the shape and appearance of the Big Bertha golf club head by Callaway.

F&W successfully concluded a trade dress lawsuit brought on behalf of its client, Prime Retail, Inc., owner of the Castle Rock Factory Shops, located in Castle Rock, Colorado. The case is instructive regarding the legitimate exploitation of a company's intellectual property rights. Prime was interested in purchasing land adjacent to its factory outlet center for an expansion project but was unable to reach agreement to acquire the property with the landowner. Thereafter, the landowner struck an agreement with a competing factory outlet center developer which, no doubt, relished the idea of developing a center next door to Castle Rock Factory Shops which, at the time, was the most profitable outlet center in the nation.

A review of the architectural drawings of the competing center disclosed that the competitor's building plans were practically identical to Castle Rock Factory Shops, the motif for which is an old western train depot. The motif, as applied to a factory outlet center, is purely aesthetic and non-functional and, as such, denoted a particular source of factory outlet shops in the mind of the public, thus qualifying the building exterior as protectable trade dress.

Within weeks of discovering the competitor's plans and just prior to the ground breaking on the project, F&W filed suit in the United States District Court to enjoin the alleged trade dress infringement. We argued that the competitor had copied the appearance of the Castle Rock Factory Shops in an effort to "pass off" its shops as a new phase of the Castle Rock Factory Shops and, thereby, capitalize on its huge success.

The case never went to trial. It appears that the competitor's lenders and prospective tenants balked at the prospect of protracted litigation and backed out of the project. Within a short time thereafter, Prime successfully negotiated an agreement with the landowner and its expansion went forward successfully.