Accompany’s website is often the first impression that greets prospective customers or clients when they want to learn more about the products and services a business has to offer. Many companies spend a significant amount of their marketing budget on the initial framework and web design while debating the value of additional enhancements like search engine optimization (SEO), video streams or e-commerce. The importance of being distinctive in your website’s appearance, layout and design or the “look and feel” cannot be understated in today’s competitive market.
This past October, a California federal court ruled that business owners can use trademark law to protect one of their company’s most valuable assets from imitators.
In Ingrid & Isabel Inc. v. Baby Be Mine LLC, the U.S. District Court for the Northern District of California ruled that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under the Lanham Act. Trade dress, a derivative of trademark law, protects the total image of a business or product, including the arrangement of identifying features such as graphics, packaging, designs, shapes, colors, textures and décor.
Here, the plaintiff, Ingrid & Isabel Inc. (I&I), and the defendant, Baby Be Mine LLC (BBM), operated competing retail websites specializing in maternity clothing. I&I alleged that BBM had intentionally copied, in an attempt to imitate I&I, many specific characteristics of I&I’s website, including:
The use of a logo in a “feminine script in pastel pink-orange hue.”
Photographs of models posed in similar positions, “featured from head to mid-thigh, wearing white tanks with jeans, with long, naturally wavy hair.”
The colors, patterns, fonts and wallpaper used throughout I&I’s website.
One of the reasons the claim was successful was that I&I identified specific elements of its website that, combined as a whole, could be classified as protectable trade dress. Rather than giving a general description of the alleged infringement, I&I’s allegations of similarity went beyond those raised previously by plaintiffs whose “look and feel” claims were rejected.
Once the court determined I&I met the threshold for a trade dress infringement claim, it then applied a three-part test to prove that infringement did indeed occur. The court had to examine whether I&I’s trade dress was inherently distinctive or had acquired secondary meaning; that its website elements were non-functional; and that the defendant BBM’s website created a likelihood of consumer confusion.
With the Ingrid & Isabel ruling, the law seems to have caught up with the times, giving the trade dress of online stores the same protection that physical stores have enjoyed for decades. For example, in 1992, the U.S. Supreme court ruled in Two Pesos Inc. v. Taco Cabana Inc. that a Mexican restaurant’s distinctive décor was entitled to trade dress protection. More recently, the U.S. Patent and Trademark Office (USPTO) allowed Apple Inc. to register a trademark for the design and layout of its unique retail stores. Now, thanks to Ingrid & Isabel, the court has finally recognized that the look and feel of a website – a virtual store – can be a protectable form of intellectual property. This is particularly important for online retailers, as U.S. online stores are expected to top $300 billion by the end of the year.
Although it’s still too early to predict whether other courts will adopt this standard, online-only companies wishing to seek protection should:
Register their websites as trademarks with the U.S. Patent and Trademark Office.
Create and consistently use a distinctive look and feel for their websites.
Promote the company’s distinctive brand identity at every opportunity to distinguish from competitors.
The world’s first website was created 23 years ago. It took the courts that long to recognize that a website’s design can serve an important brand-identifying purpose worthy of trademark protection. Don’t wait that long to protect your company’s assets from the competition.
