A strong brand is an important asset to a business, and can be critical in attracting consumers and establishing a unique identity.  A catchy name, logo, or slogan can help you stand out from your competitors, and positive connotations established by branding efforts can often mean the difference between failure and success. These types of brand identifiers are protectable via trademarks, but most business owners don’t know that trade dress – the “look and feel” of a product or store – can be protected by a trademark as well.  Trademark protection for trade dress extends to the design, appearance, or even packaging of a product or service.

Trade dress protection can be pretty broad, and covers features such as size, shape, color, texture, graphics, or even certain business techniques.  Examples of trade dress protected by trademark include the Tiffany blue box, the shape of the Coca Cola bottle, and the 7-11 store color scheme.  In order to qualify for protection, though, trade dress must be both “non-functional” and “distinctive.”  The courts use various tests to ascertain whether trade dress satisfies these requirements.  In order for a court to find a product element to be non-functional, it cannot be essential to a product’s purpose or use, affect a product’s cost or quality, or put competitors at a significant non-reputational disadvantage.  For example, a glass bottle by itself is functional, but when you add design features such as a particular shape or texture, such features are likely to be considered non-functional by a court since they contribute little to the bottle’s functionality.  Colors also tend to be ripe areas for trade dress protection, as they are usually not integral to the function of a product.

Even though trade dress may satisfy the non-functionality requirement, it must also be recognizable to consumers in some way, or have acquired a secondary meaning in order to qualify for trademark protection. The standards for distinctiveness differ depending on whether the trade dress in question is for package or product design.  Although packaging can be inherently distinctive, courts commonly agree that product design trade dress is almost never inherently distinctive.  It is up to a business to establish that consumers have come to associate the trade dress with the particular product or service in question.  Typically, if a business has used the trade dress continuously in commerce for at least five years, that is sufficient to establish a prima facie showing of acquired distinctiveness.  There are other ways to establish that trade dress has become distinctive, though, including consumer surveys and testimony, media recognition, and evidence of the expense and effort undertaken by the business to promote the trade dress.  Although establishing distinctiveness can be a heavy burden for a business seeking a trademark, courts are generally willing to recognize trade dress that is commercially recognized and associated with a product or service.

If a business has established unique trade dress associated with its branding efforts, it is important to protect the trade dress along with its other forms of intellectual property. Developing a brand can take a considerable amount of effort and resources, and may take a prolonged period of time.  For many businesses, the brand will be the most important asset owned, and should be protected accordingly.

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Jen Kim is a Senior Counsel at Parsus LLP. Jenspecializes in cross-border M&A, investment and financing transactions.Shebrings a wealth of cross-border legal experience and cultural knowledge to facilitate multinational clients doing business in Asia and the U.S. Jen is an English-Korean bilingual corporate attorney who spent the first 8 years of her career at big law firms, initially in the Chicago office of Drinker Biddle &Reath then at Kim & Chang in South Korea. At Drinker Biddle &Reath, her practice focused on transactional work including M&A, private equity and partnership investments.At Kim & Chang, in addition to transactions, she worked on a broad range of matters for multinational clients in the life sciences, healthcare and chemical industries, serving as the outside general counsel for their operations in South Korea and the broader Asia Pacific region. Most recently, Jen was in-house at Reckitt Benckiser, a global consumer health company with well-known consumer brands in the US such as Lysol, Mucinex, Air Wick and Enfamil.  At Reckitt Benckiser, she was a member of the senior management team in Seoul looking after all legal and compliance matters for its Korea and Japan businesses before transitioning to her role in Chicago where she managed the integration of the company’s newly acquired infant formula business and led the North America health business in data privacy matters.

Jen graduated from EwhaWomans University majoring in business administration and received her J.D. degree from Northwestern University Pritzker School of Law.

David Kim| PARTNER

David Kim is a Partner at Parsus LLP. He specializes in corporate and technology transactions, with an emphasis on intellectual property. David has represented a variety of clients from start-ups to Fortune 500 companies in mergers and acquisitions, cross-border investment, financing, and licensing. His clients do business in a range of industries including entertainment, financial services, consumer products, gaming, software, and technology services.

Prior to returning to Parsus LLP, David served as an in-house intellectual property counsel for NBCUniversal, advising on technology and mergers and acquisitions for the various business units of the company. He assisted the company’s corporate development teams in assessing acquisition targets and negotiated NDAs, vendor service agreements, software and hardware licenses, and trial agreements for experimental and prototype technology. David was also one of the company’s primary resources on open source software-related matters.

Before joining NBCUniversal, David co-founded and served as a Partner of Parsus LLP, worked as in-house counsel for start-ups, and was an associate at Winston & Strawn, where he represented clients in intellectual property matters including patent assessment and analysis, IP licenses, and various phases of patent and copyright infringement litigation. At Winston, David also represented clients in general business and securities litigation concerning commercial disputes and business torts.

David received his A.B. degree from Harvard University and his J.D. degree from UCLA School of Law. 

Kristen Lee

Kristen Lee is an associate attorney at Parsus  LLP.  Her practice is focused on commercial transactions and the various day-to-day legal needs of businesses of all sizes, including business formation, corporate governance, commercial contracts, and mergers and acquisitions. Prior to joining Parsus, Kristen represented corporate clients in high-stakes litigation involving breach of contract, fraud, unfair competition, and other business torts.  

Kristen is a member of the Korean American Bar Association of Southern California.

Kristen received her B.A. degree from the University of Texas at Austin and her J.D. degree from Pepperdine School of Law.  Kristen is fluent in Korean. 


Evelyn Aguilar Shimazaki is Of Counsel at Parsus LLP. Her practice is focused on the representation of technology companies in intellectual property licensing and commercial transactions, including joint development, manufacturing, procurement, strategic alliances, outsourcing and other services arrangements. Prior to joining Parsus LLP, Evelyn was a Senior Counsel at Apple in Cupertino, California for fourteen years. After Apple, she joined Tesla in Palo Alto, California as Chief Counsel and more recently, Oculus VR, a division of Facebook in Menlo Park, California as a Consultant.  

Evelyn is a Founding Board Member of UCLA Law Women LEAD, an Advisory Board Member of the Lowell Milkin Institute of Business Law and Policy at UCLA School of Law, and a past President and Advisory Board Member of the Philippine American Bar Association of Los Angeles.

Evelyn received her B.A. degree from the University of California, Berkeley and her J.D. degree from UCLA School of Law. A native of the Philippines, Evelyn speaks Tagalog, Spanish and some Japanese.

Ju Park

Ju is a corporate lawyer by training and an entrepreneur at heart.  After attending the United States Military Academy at West Point for a year where she gained essential life skills including throwing grenades and applying a tourniquet, she graduated from McCombs Business School at the University of Texas majoring in finance.  Ju then graduated from UCLA School of Law where she focused her studies on International Business Law.  After law school, she practiced corporate law and litigation in the Los Angeles and Hong Kong offices of an international renowned law firm, Latham & Watkins, where she advised domestic and foreign clients, including Fortune 500 companies, on various corporate matters including general commercial contracts, corporate finance, IPOs and mergers and acquisitions.

Ju co-founded Parsus in 2009 with a vision to transform the legal services industry to make quality legal advice more available to and affordable for businesses of all sizes while improving the lifestyle and overall happiness of lawyers.  Over the years, and particularly since recently becoming a mother, Ju’s vision for Parsus has expanded to transform our extended community by committing a part of the firm’s profits and resources for charitable purposes.

In her role at Parsus LLP, Ju serves as outside transactional and general counsel to clients of all sizes and across a broad range of industries.  Her clients include domestic and foreign companies to whom she provides practical and cost-effective solutions to their general day-to-day business legal matters as well as major transactions such as mergers and acquisitions, corporate finance and cross-border transactions.  Ju combines her legal expertise with her business acumen to provide practical solutions to her clients’ legal issues without “over-lawyering” their contracts or deals.  Ju’s recent clients have included foreign and US companies acquiring and/or investing in US companies or assets, US companies receiving foreign and domestic investments, US subsidiaries of foreign companies going public, and foreign companies with ongoing US operations.  Ju also enjoys working with like-minded entrepreneurs and start-up executives.