As stated in section 1202.02 Registration of Trade Dress of the Trademark Manual of Examination Procedure:

Trade dress constitutes a "symbol" or "device" within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209-210 (2000). Trade dress originally included only the packaging or "dressing" of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the "total image and overall appearance" of a product, or the totality of the elements, and "may include features such as size, shape, color or color combinations, texture, graphics." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992).

Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which the product is sold (i.e., the "dressing" of a product), the color of the product or of the packaging in which the product is sold, and the flavor of the product. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Two Pesos, 505 U.S. 763; Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006). However, this is not an exhaustive list, because "almost anything at all that is capable of carrying meaning" may be used as a "symbol" or "device" and constitute trade dress that identifies the source or origin of a product. Qualitex, 514 U.S. at 162. When it is difficult to determine whether the proposed mark is product packaging or product design, such "ambiguous" trade dress is treated as product design. Wal-Mart Stores, 529 U.S. 205. Trade dress marks may be used in connection with goods and services.

In some cases, the nature of a potential trade dress mark may not be readily apparent. A determination whether the mark constitutes trade dress must be informed by the application content, including the drawing, the description of the mark, the identification of goods or services, and the specimen, if any. If it remains unclear whether the proposed mark constitutes trade dress, the examining attorney may call or e-mail the applicant to clarify the nature of the mark, or issue an Office action requiring information regarding the nature of the mark, as well as any other necessary clarifications, such as a clear drawing and an accurate description of the mark. 37 C.F.R. §61(b). The applicant's response would then confirm whether the proposed mark is trade dress.

When an applicant applies to register a product design, product packaging, color, or other trade dress for goods or services, the examining attorney must separately consider two substantive issues: (1) functionality; and (2) distinctiveness. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775, 23 USPQ2d 1081, 1086 (1992) (only nonfunctional distinctive trade dress is protected). See TMEP §§1202.02(a) et seq. regarding functionality and TMEP §§1202.02(b) and 1212 et seq. regarding distinctiveness. In many cases, a refusal of registration may be necessary on both grounds. In any application where a product design is refused because it is functional, registration must also be refused on the ground that the proposed mark is nondistinctive since product design is never inherently distinctive. However, since product packaging may be inherently distinctive, in an application where product packaging is refused as functional, registration should also be refused on the ground that the proposed mark is nondistinctive. Even if it is ultimately determined that the product packaging is not functional, the alternative basis for refusal may stand.

If the proposed trade dress mark is ultimately determined to be functional, claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant and registration will be refused. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001).

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • Definition: Trade Dress.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • The leading case by our primary reviewing court in this area is Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977). There, the court looked to whether the trade dress:
        "was a "common" basic shape or design, whether it was unique or unusual in a particular field, [or] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods[.]"
  • Trade dress can be registered as a trademark.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • As the Supreme Court has noted, "It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects, protection for trade dress exists to protect competition." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1004 (2001).
  • Trade dress, including product designs, are registerable as trademarks.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Trade dress features, including product designs, may be registered as trademarks subject to certain conditions.
  • "Trade dress," "product design," and other similar terms can refer to product features for which trademark rights are claimed.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • FOOTNOTE 6 "The courts and the public have used the terms "trade dress," "product design," and similar terms, often loosely and interchangeably, to refer to product features as to which trademark rights are claimed."
  • Product design almost always serves a purpose other than source identification and therefore care must be taken not to misuse or over-extend trademark right on trade dress.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • However, the Court states further, "And in Wal- Mart, supra, we were careful to caution against misuse or over-extension of trade dress. We noted that product design almost invariably serves purposes other than source identification." Id., citing, Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).
  • A product design which is functional cannot be registered.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Primary among the "other requisites" to qualify for trademark protection is the "functionality" test.7 This requirement guards against "misuse" or "over-extension" of trade dress protection. FOOTNOTE 7 "Secondly, applicant must show that the product design has acquired distinctiveness. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995)."
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • That is, a product design which is functional cannot be registered. Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002).
  • Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • As the TrafFix Court observed: "Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847 (1989). Allowing competitors to copy will have salutary effects in many instances. "Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology." Id." TrafFix, 58 USPQ2d at 1005.
  • A container for a liquid can be either a product or product packaging.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • FOOTNOTE 8 "The possibility that a container for a liquid can be either a product or product packaging is acknowledged in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069-70 (2000) ("a classic glass Coca-Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former.")"
  • Inherent distinctiveness can be considered where applicant seeks to register trade dress in the nature of product packaging; but not if it seeks to register trade dress in the nature of a product configuration.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Where, as here, applicant seeks to register trade dress in the nature of product packaging, the question of inherent distinctiveness can be considered. In contrast, this question does not arise where an applicant seeks to register trade dress in the nature of a product configuration. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) [Trade dress in the nature of a product configuration cannot be inherently distinctive].
  • Case Finding: The alleged mark is trade dress in the nature of product packaging, not trade dress in the nature of a product configuration because the identified product applicant seeks to register the alleged mark for is beverage and not the container.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • In addition, we deem the alleged mark to be trade dress in the nature of product packaging, not trade dress in the nature of a product configuration. This is because the identified product applicant seeks to register the alleged mark for is "beer," not a "beer glass and stand with wording and scrollwork."8
In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010) American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999) Grand Total
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002) 1
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) 1
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 2
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) 1
Bonito Boats Inc. v. Thunder Craft Boats Inc., 489 U.S. 141, 9 USPQ2d 1847 (1989) 1
Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977) 1
Grand Total 1 5 1 7

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.