Westchester Women's Bar Association

What is Trade Dress and How Can It Be Protected?

Trade Dress has always referred to either the shape of a product or the packaging of the goods. The concept of trade dress has evolved over the years into a seemingly endless notion. Some examples of trade dress are the packaging or labeling of goods, product configuration (the design of a product), the flavor of the product, the color of a product, the layout of a restaurant, or the design of a retail store. In order for trade dress to be registered at the United States Patent & Trademark Office (USPTO) and to be protected under trademark laws it must be distinctive and nonfunctional. The requirements for trade dress were addressed in the case TrafFix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 28-29, 121 S. Ct. 1255, 58 U.S.P.Q.2d 1001 (2001).

Section 1202.02(a) provides the meaning of “functionality”. Trade dress is functional and cannot be protected as a trademark if a feature of the trade dress is essential to the purpose or the use of the subject matter or if it affects the quality or the cost of the subject matter. The public policy behind prohibiting registration of functional product features is meant to encourage market place competition by not allowing one producer or manufacturer to control or monopolize a useful product feature. If a producer or manufacturer wishes to protect a utilitarian product feature, it should apply for a utility patent.

Product design is never inherently distinctive, although product packaging may be inherently distinctive. Therefore, if an application is refused on the basis that the product design is functional, then it also must be refused on the ground that it is not distinctive. Claims of acquired distinctiveness or secondary meaning are irrelevant if the trade dress mark is determined to be functional. Whether an Examining Attorney is evaluating use for the Principal or Supplemental Register, the same considerations are reviewed when determining if a feature of an applicant’s trade dress is functional. This determination is a question of fact and the Examiners must look to the totality of the evidence presented in each case. The well known case of In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 U.S.P.Q. 9 (C.C.P.A. 1982), set forth the considerations to be reviewed when making a functionality determination:

  1. The existence of a utility patent that reveals the utilitarian advantages of the subject design;
  2. Applicant’s advertising that touts the utilitarian advantages of the subject design;
  3. Evidence presented pertaining to the availability of alternate designs; and
  4. Evidence presented that demonstrates whether the design results from a comparatively simple or inexpensive method of manufacture.

The second requirement is distinctiveness. An applicant can satisfy this prerequisite by proving that the trademark is either inherently distinctive or that it has acquired secondary meaning with regard to the total appearance of the product and not just individual features. When evaluating product packaging trade dress (not applicable for product design trade dress) an Examining Attorney will determine if the proposed mark is:

  1. A common shape or design;
  2. Unique in the field in which it is used;
  3. A mere refinement of a well known form of ornamentation; and
  4. Capable of creating a commercial impression apart from the words or text.

To establish secondary meaning, a producer must prove that in the minds of the public, the primary meaning of a product feature is to identify the source of the product rather than the product itself. In other words, it must be shown that consumers associate the trade dress with the source. The following factors will be considered for secondary meaning: (1) length of use; (2) sales success; (3) amount spent on advertising; (4) survey evidence; and (5) unsolicited media coverage. Applicants face a substantial burden in demonstrating distinctiveness. Apple Inc. was able to satisfy this heavy burden when its application for trade dress protection was approved by the USPTO last year. Trademark protection was granted for the lay out and design of its retail stores.

Legally speaking, there is no true difference between a trademark and trade dress. Trade dress is a type of a trademark. Therefore, it follows that if trade dress is not registered, it is still protectable under the Lanham Act, as long as the trade dress owner can show distinctiveness and that it is nonfunctional. If you are interested in seeking trade dress protection, but you are not sure if the trade dress is distinctive or if it is nonfunctional, kindly contact one of our New York trademark attorneys for a courtesy consultation.

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