How to Trademark Product Packaging and Trade Dress

Trademarking Packaging and Trade Dress to Protect Brand Identity in New York

When a customer picks your product off the shelf in a crowded store, what made them choose it? Often, it's the look. The shape of the box, the color scheme, even the texture of the label. These packaging details are part of your trade dress, and protecting them means protecting your brand. In New York, where small businesses thrive and storefronts compete for attention from Manhattan to Buffalo, trade dress protection gives your product a competitive edge.

At Horn Wright, LLP, we help business owners across New York State secure and defend their product packaging rights. Whether you're launching a new design or addressing copycats, our attorneys are here to help you understand your options and take action. We know how much work you've put into your brand. We'll help you protect that work.

Understand the Role of Trade Dress in New York’s Marketplace

Trade dress refers to the visual appearance of a product or its packaging that signals its source to the customer. It's about looking familiar. In retail spaces from Albany strip malls to Brooklyn boutiques, visual identity matters. Consumers learn to trust the packaging they recognize. If someone copies that look, they can confuse buyers and damage your reputation.

New York courts follow federal standards when it comes to trade dress. To qualify for protection, packaging must:

• Identify the source of the product
• Be distinctive
• Not serve a functional purpose

If your product packaging plays a key role in how customers identify your brand, it's time to consider formal protection. Whether you're selling at farmer's markets in Rochester or through online stores shipping across the state, packaging influences every first impression.

Differentiate Trade Dress from Trademarks and Copyrights

A trademark usually protects a name, logo, or slogan. Copyright covers creative works like artwork or written content. Trade dress sits in a separate lane, focused on how the product or its packaging looks as a whole.

Think of the curved shape of a glass soda bottle. The bottle itself may not carry a logo, but buyers still know what brand it belongs to. That shape is trade dress. In New York, courts have enforced protection for visual designs that help buyers link packaging to a business, especially when those designs have been consistently used over time.

Trade dress must show a direct connection to your brand. Decorative designs used purely for style may not qualify. The packaging must actively identify where the product comes from.

Check if Your Packaging Qualifies for Trade Dress Protection

Before filing anything, make sure your packaging meets the requirements for trade dress protection. That means meeting three key standards:

1. Distinctiveness: Your packaging must stand out. It either needs to be inherently distinctive (so unique that buyers instantly associate it with your brand) or have acquired that status over time through consistent use.
2. Non-functionality: If your packaging shape or design serves a purpose beyond branding, like making the product easier to store or cheaper to ship, it may be considered functional and ineligible for protection.
3. Secondary Meaning: This develops when New York consumers start recognizing your packaging as linked to your brand. This often comes with time, marketing, and consumer familiarity.

If your packaging meets all three, you're on strong ground to seek protection. If not, you may still have options, especially if you're actively building recognition across New York State.

Gather Proof of Distinctiveness in New York Markets

You’ll need evidence to back up your claim that your packaging is recognizable. This step matters, especially if your trade dress is not immediately unique.

Start gathering:

• Customer surveys or testimonials from New York-based buyers
• Sales figures showing strong performance in places like Syracuse or Yonkers
• Advertising materials highlighting packaging features
• Photos of product displays in regional stores or pop-ups

Showing how long and consistently you’ve used your packaging builds your case. Local evidence goes a long way with the USPTO and in legal disputes. It shows that your trade dress is known and trusted in New York's marketplace.

Search for Conflicting Trade Dress Registrations in the USPTO and New York Business Records

Before applying, it’s critical to check if someone else already owns similar rights. Overlapping designs can delay or block your application.

Start by searching the USPTO’s Trademark Electronic Search System (TESS). This database covers federal trade dress and trademark filings.

Then check:

• The New York State Department of State’s Corporation & Business Entity Database
• Visual branding of competitors operating in your market or region

Finding a potential conflict doesn’t always mean the end of the road, but it’s a signal to proceed carefully. A New York trademark attorney can help you compare designs, assess risk, and decide whether to move forward or modify your design.

Prepare and Submit a Trade Dress Trademark Application

Once you're ready, you'll submit your trade dress application through the United States Patent and Trademark Office. This isn’t a quick form. It requires careful documentation.

You'll need to include:

• A detailed description of the packaging appearance
• Clear images showing how the product appears on shelves or in marketing
• The legal basis for the application (use in commerce or intent to use)
• Dates of first use and regions of use, especially any New York-based sales or events

Trade dress applications often face extra scrutiny. Unlike word marks, packaging designs must be explained in depth. The more evidence and clarity you provide, the better your chances.

Respond to USPTO Office Actions and Legal Challenges

Even strong applications often receive an office action, a request for more information or a legal objection. Don’t panic. This is normal.

You’ll need to respond with:

• Clarified descriptions or amended drawings
• Additional evidence of distinctiveness
• Legal arguments defending non-functionality or secondary meaning

If someone files an opposition to your application, that becomes a formal dispute. New York-based businesses often face opposition from competitors in overlapping markets. At this point, having legal support is critical. Your packaging and design may be unique, but proving it takes more than visuals.

Monitor and Enforce Your Trade Dress Rights in New York

Registration is only the beginning. To keep your packaging protected, you’ll need to stay vigilant. Trade dress enforcement is an active process.

Watch for imitators. If another company in the Bronx or a storefront in Kingston starts using a similar design, they may be infringing on your rights. Document everything.

Take action by:

• Sending cease-and-desist letters with legal support
• Requesting takedowns from online marketplaces
• Filing infringement lawsuits in federal or New York State court when necessary

Small businesses often think enforcement is only for big brands. That’s not true. If someone copies your packaging, you have the right to push back. Trade dress protections are real tools that support growing businesses.

Maintain and Renew Your Trade Dress Registration

Keeping your registration active means meeting ongoing deadlines and requirements. If you miss them, you could lose protection.

You must file a declaration of continued use between the fifth and sixth year after registration. You’ll file again every 10 years. That process includes:

• Proof that you still use the packaging
• Updated images showing its current design
• Continued presence in New York markets or online stores shipping to the state

Even minor changes to the packaging could require a new registration. It’s smart to review your use every couple of years, especially before big design updates.

Work with a New York Trademark Attorney to Protect Your Brand Long-Term

Trade dress law combines visual branding with technical legal standards. Even small errors can delay protection or leave your design exposed. A trademark attorney familiar with New York’s retail landscape can help you:

• Assess whether your packaging qualifies
• Build a strong, well-supported application
• Respond quickly to legal objections or challenges

From Hudson Valley vineyards to Westchester tech startups, strong trade dress makes your brand memorable. But enforcement requires a plan. Legal guidance gives your brand a better shot at long-term protection.

Protect Your Brand Identity with Smart Legal Strategy

Your product’s packaging carries more than goods, it carries your reputation. In New York’s fast-moving market, trade dress protection helps you stand out and stay safe. At Horn Wright, LLP, we help business owners secure their designs and build lasting value into their brands. 

Whether you’re just getting started or need to take action against imitators, our attorneys are ready to support your next step.