The best legal advice concerning business décor is be innovative to avoid copycat situations altogether. The court in the case of Rib Buddies, LLC v. Fat Buddies, LLC, said it best: “there are any number of ways to make the trade dress of a . . . [restaurant] appealing to the public without spending all the profits in litigation that is likely to last for years.” Restaurants are somewhat like fashion. A style comes in and is the trend for a short period before the next new thing hits the market and becomes all the rage. Wholesale copying is stale and unimaginative. It does not give consumers a new choice and the newcomer unfairly benefits from the good will and reputation of the original. Even closely “inspired” décor is problematic where customers come to recognize a restaurant’s image and might be confused into thinking that there is a relationship between the two restaurants. A restaurant that has developed a particular style or theme for the décor and garnered a loyal following does not want a competitor to copy its interior and/or exterior design. After all, if the competitor’s quality is poor, it could tarnish the original restaurant’s reputation in the marketplace.

A restaurant that has established an identifiable look and feel that is unique can protect that public image through trade dress law. Trade dress is a term reflecting the overall general impact, usually visual, but sometimes also tactile, of many features taken together – the look and feel of the restaurant décor as a total brand image. Courts have considered what décor features of a restaurant comprise its image and trade dress. They have found that a restaurant’s protectable image includes unique and recognizable features, such as the visibility of food preparation areas in a restaurant, stacked cartons of beer, produce and other items in the patron areas of the restaurant, and the general appearance of the exterior of [a] restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniforms and other features reflecting on the total image of the restaurant. Even “particular sales techniques ” have been considered trade dress.

Here in New York, we are in the Second Circuit and our federal district courts (the lowest level federal trial court) are bound to follow the jurisprudence of the Second Circuit appellate court. As you might expect, most of these trade dress cases are brought in Manhattan’s U.S. District Court for the Southern District of New York. This court is highly regarded for intellectual property decisions, as it hears cases brought by and against so many companies headquartered in New York City. In a trade dress case involving restaurant décor, New York courts would likely apply the so-called Abercrombie test: suggestive, arbitrary or fanciful trade dress are deemed protectable as inherently distinctive if the plaintiff establishes that its trade dress mark has acquired secondary meaning, giving it an identifiable distinctiveness to the consumer.

In a 2003 case called Best Cellars, Inc. v. Wine Made Simple, Inc., the New York district court found that Best Cellars had a “protectable [inherently distinctive] interior décor trade dress [because] . . . the elements, as combined, make up a distinct and arbitrary total visual image to consumers.” The court found that the retail environment was unique and “include[d] an open store design so that customers can see product categories from the moment they enter the store, a unique combination of fixtures, displays, locations, and a menu heretofore not utilized by any other retail company.” Best Cellars had described its trade dress as “ [T]he total effect of the interior design of its store … (1) eight words differentiating taste categories; (2) eight colors differentiating taste categories; (3) eight computer manipulated images differentiating taste categories; (4) taste categories set above display fixtures by order of weight; (5) single display bottles set on stainless-steel wire pedestals; (6) square 4”x4” cards with verbal descriptions of each wine (“shelf talkers”) with text arranged by template; (7) shelf talkers positioned at eye level, below each display bottle; (8) bottles vertically aligned in rows of nine; (9) storage cabinets located beneath vertically aligned bottles; (10) materials palette consisting of light wood and stainless steel; (11) mixture of vertical racks and open shelving display fixtures; (12) no fixed aisles;(13) bottles down and back-lit; and (14) limited selection (approximately 100) of relatively inexpensive wine.”

Restaurants with distinctive features that give it a recognizable public image can prevent copycatting and rip offs by competitors. The key is to be purposeful in your image and actively promote it as part of your branding program. Be sure the public associates these features with your restaurant. They should appear in your promotions in some form whenever possible.

In Part 3 of this series on restaurant trade dress, we will explore 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. In Part 4, we will explore how courts will not protect functional features, no matter how arguably unique or distinctive. Part 5 explores trade dress infringement cases by using the Fuddruckers chain as a case study.