Restaurant Trade Dress Series, Part 4: How courts do NOT protect functional features

Part 1 of this series introduced trade dress in restaurants and Part 2 took a closer look at restaurant décor as trade dress. Part 3 explored how courts across the country apply different tests when evaluating whether there has been an infringement and how the law is interpreted and applied here in New York and the Second Circuit. This article will take a look at functional features of décor and explain how they are not protected by trade dress law.

The goal of trade dress law is to  ensure the  consumer  receives  the product  it  asked  for  and  expected  and to  protect the  investment  of the restaurant  owner  who has spent  time,  money,  and  energy  bringing  a new brand of dining experience  to the  public. While it is possible to protect restaurant décor, the law balances the equities of all involved so as not to cause a prohibition  of  a  function design element – a feature  that  is  “essential  to  the  use  or purpose  of  the  article.”  Granting such a monopoly would severely and unjustly disadvantage other restaurateurs. Key to this analysis is the utilitarian nature of the design feature sought to be protected and the availability to competitors of functionally equivalent designs. For example, details such as seating on benches or serving food on sizzling pans are likely to be functional. Details like building a restaurant in an old airplane might be source-identifying.

What about staff costumes or uniforms? Let’s consider the popular Hooters brand which has the wait staff of “Hooters Girls.” What if another restaurant opened and had young, sexy wait staff such as cheerleaders or country western beauties? Would they infringe on the Hooters concept? The Hooters Girl is not entitled to trade dress protection because the Hooters Girl is primarily functional. The Hooters Girl is not a marketing tool and the Hooters Girl’s predominant function (according to Hooters executives) is to provide vicarious sexual recreation, to titillate, entice, and arouse male customers’ fantasies. She is the very essence of Hooters’ business. This essential functionality disqualifies the Hooters Girl from trade dress protection.

Similarly, Twin Peaks sued Northern Exposure for infringement of its lodge-like restaurant trade dress which includes Adirondack furniture, mounted taxidermy, and vintage pin-up posters, as well as its uniforms, which consist of red and black buffalo plaid blouses tied at the bust and shorts. The uniforms were a particular point of contention for Twin Peaks. This attempt to stop Northern Exposure has not yet been successful (litigation appears to be ongoing as of the time of this writing) as the competitor chain keeps expanding and adding locations.

So, what is functional? It is a design feature that is essential to the use or purpose of the article or [that] affects the cost or quality of the article.  A design feature is ‘essential’ only if the feature is dictated by the function to be performed; a feature that merely accommodates a useful function is not enough. It is the absence of alternative constructions performing the same function that renders a feature functional.

In Part 5, the last in this series, we will use the Fuddruckers as an example of how trade dress can be asserted in an infringement case.