Consumer Expropriation of Aesthetically Functional Trade Dress: Results from a Randomized Experiment

54 Pages Posted: 10 Mar 2021 Last revised: 11 Mar 2021

See all articles by Xiyin Tang

Xiyin Tang

UCLA School of Law; Yale Law School

Ian Ayres

Yale University - Yale Law School; Yale University - Yale School of Management

Date Written: February 1, 2021

Abstract

Trade dress, as a subset of trademark law, can offer potentially perpetual protection to a product’s design or packaging features if they aid consumers in identifying a product’s source. Yet these protected design features might be valued by consumers not only because of their source identifying function, but also because consumers find the design or package features beautiful, independent of the goodwill generated by the producer. Thus, under the doctrine of aesthetic functionality, manufacturers who produce red-soled shoes or whiskey with a melted wax seal might gain what courts have called a “non-reputation-related” competitive advantage, ultimately warranting the expropriation of the protected product feature into the public domain.

This Article argues that courts, in assessing questions of aesthetic functionality, should give particular weight to surveys asking consumers whether they would be better off if competitors were allowed to use a protected trade dress feature in their own products. Just as, under the doctrine of genericide, consumers are able to expropriate word marks if consumers find it more beneficial to associate the language feature of the trademark with competitors’ products, consumers should also be able to expropriate trade dress rights of a particular manufacturer if they find it more beneficial to have these design and packaging features available to the manufacturer’s competitors. Creating a genericide analog for cancelation of trade dress can further trademark’s central goal of protecting consumer welfare.

This Article reports “proof of concept” results of our proposed consumer surveys with regard to seven different forms of existing trade dress—including not only Louboutin’s red-soled shoes and Maker’s Mark’s red-drip wax seal, but also Gucci’s famous “diamond motif” and Emeco’s Navy chair. We implement our surveys as a between-subject randomized experiment that allows us to causally estimate the intensity of consumer preferences as well as the impact of “guiding” subjects on the likely consequences of forgoing trade dress protection. Our results, while at best suggestive, found that judicial assessments of functionality were often not predictive of consumer protection preferences. For example, a statistically significant majority indicated they would be better off if other manufacturers were allowed to produce Emeco’s Navy chair design, notwithstanding a contrary judicial holding. We also found that large consumer majorities chose to protect two iconic Veblen goods: the Louboutin shoe and the Gucci Diamond Motif, even when informed that such protection would likely lead to higher prices—indicating a desire to preserve trade dress’ power to sustain social distinction.

Keywords: intellectual property, trademarks, trade dress, product packaging, product design, design law

Suggested Citation

Tang, Xiyin and Ayres, Ian, Consumer Expropriation of Aesthetically Functional Trade Dress: Results from a Randomized Experiment (February 1, 2021). 93 S. Cal. L. Rev. 1189 (2020), UCLA School of Law, Public Law Research Paper No. 21-12, Available at SSRN: https://ssrn.com/abstract=3791781

Xiyin Tang (Contact Author)

UCLA School of Law ( email )

385 Charles E. Young Dr. East
Los Angeles, CA 90095

Yale Law School ( email )

127 Wall Street
New Haven, CT 06511
United States

Ian Ayres

Yale University - Yale Law School ( email )

P.O. Box 208215
New Haven, CT 06520-8215
United States
203-432-7101 (Phone)
203-432-2592 (Fax)

Yale University - Yale School of Management

135 Prospect Street
P.O. Box 208200
New Haven, CT 06520-8200
United States

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Downloads
30
Abstract Views
112
PlumX Metrics