The law of trade dress is attracting increased attention. Companies are becoming more protective of the design features and packaging of their products, yet they often underestimate or overlook obtaining federal registration of trade dress.
Failing to register trade dress with the United States Patent and Trademark Office (USPTO) makes it more difficult to enforce. Registration provides certain advantages, if the owner is called upon to enforce its rights in court. After briefly reviewing the leading trade dress cases, we provide a few trade dress application pointers.
Trade Dress at the Supreme Court
Functionality: In Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), the first modern-day treatment of trade dress, the Supreme Court stated, "in general terms a product feature is [utilitarian] functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article" (Inwood, 456 U.S. at 850 n. 10). Another limitation on trade dress protection is if it is aesthetically functional. "[I]f a design's 'aesthetic value' lies in its ability to 'confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs' then the design is 'functional'" because it "would significantly hinder competition" (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 170 (1995)).
There are additional functionality restrictions upon trade dress protection. "Where [an] … expired utility patent claim[s] the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional..." (TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 30 (2001)). This is not surprising. However, while "[i]t is proper to inquire into a 'significant non-reputation-related disadvantage' in cases of [a]esthetic functionality…[w]here the design is [utilitarian] functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature" (TrafFix, 532 U.S. at 33). This is a stark limitation on the ability to prove a trade dress claim.
Moreover, by recent statutory amendment, a plaintiff claiming trade dress infringement without the benefit of a federal registration has the burden of proving that its trade dress is not functional (15 U.S.C. § 1125(a)(3)). The owner of registered trade dress has no such burden.
Distinctiveness: For distinctiveness purposes, courts may not treat trademarks and trade dress differently. As with trademarks, if a party's claimed trade dress is either inherently distinctive or has acquired distinctiveness through marketplace use, presuming it is not functional, it is capable of trademark protection (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 & 773 (1992)). For a time, trade dress claimants were emboldened by this broad holding.
However, the circumstances under which one may claim that his trade dress is "inherently distinctive," and thus capable of protection without a showing of secondary meaning, have been narrowed. One category of trade dress - color - requires a showing of acquired distinctiveness before qualifying for protection (Qualitex, 514 U.S. at 164; Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205, 211 (2000)). Further, while product packaging may be claimed as inherently distinctive, product design or configuration requires a showing of acquired distinctiveness before it will be deemed protectable (Wal-Mart, 529 U.S. at 216).
Thematic Pattern, and the Benefits of Registration
Except for Qualitex, the cases cited above all involved claims for un-registered trade dress infringement. Why not diminish the knotty questions of functionality and distinctiveness by coming to court with a registration? A trade dress registrant may initiate litigation possessing the valuable presumption of the trade dress's validity, placing the owner in a more favorable position than if it had to rely solely upon common law rights (15 U.S.C. § 1057(b)). Failing to register trade dress places the owner in the difficult position of having to prove its trade dress rights without those presumptions.
The Trade Dress Application Process
Supreme Court precedent has had a direct and substantial impact on the USPTO's examination of trade dress. It is thus helpful to understand how these cases translate into the application requirements for, and bases for refusals to register, trade dress at the USPTO. Trademark Examining Attorneys review trade dress and trademark applications in a similar manner. However, there are some differences.
Prosecution Tips
After reviewing the application, the Examiner will commonly raise a variety of procedural matters and issue two types of substantive refusals to register the trade dress: (1) functionality and (2) lack of distinctiveness. The Examining Attorney will couple the refusal with a request for information in order to determine whether the claimed trade dress is registrable. Here are some tips on what to expect from the USPTO and how to respond:
The Drawing: The Examining Attorney's first point of review is the drawing showing the trade dress. The USPTO must be able to decipher from the drawing the elements being claimed for protection, so the public will know what not to infringe. Examiners often issue procedural refusals for deficient drawings.
Applicants applying to register a configuration of the goods or their packaging, or specific design features thereof, must present a single three-dimensional view of the product or its packaging. The drawing should show those features that the Applicant claims as its "mark" in solid lines. The remainder of the drawing should be shown in broken or dotted lines - used only to show the position of the claimed portion of the "mark" on the goods or their packaging. The drawing should further include a clear and concise description of the trade dress being claimed.
If an Applicant wishes to claim color as all or part of the mark, the drawing nonetheless should be depicted in black-and-white - and contain a clear and concise description of the mark or feature special lining patterns to indicate color. Following these guidelines will greatly reduce an Applicant's risk of receiving a potential refusal based on a deficient drawing.
Substantive Examination: After reviewing the drawing (and other procedural aspects), the Examiner looks at the remainder of the Application. The Examiner has only the Application from which to review the claimed trade dress. Simply to obtain more information, the Examiner may initially refuse registration and send the Applicant an Office Action.
Functionality Inquiries: The Examiner may inquire whether: (i) the claimed trade dress is the subject of any active or expired utility or design patents, (ii) alternative designs are available for the claimed features, (iii) there are competitive design features that are equally efficient or more costly to produce, or (iv) there are alternative designs used by competitors. The Examiner also may request copies of any promotional materials for the Applicant's goods.
An Applicant should be careful in its advertising not to tout the utilitarian features of its product or the lack of superior designs available to competitors. Incriminating marketing materials can be and are used against an Applicant and often brings an abrupt end to the Application process.
Distinctiveness/Descriptiveness Inquiries: Even if not functional, the claimed trade dress still may be refused registration on the Principal Register if it is deemed merely descriptive and no showing of acquired distinctiveness is submitted. Unlike product packaging, product design or configuration is not inherently distinctive, and therefore must have become distinctive through secondary meaning. If in doubt whether it is product configuration or packaging, the Examiner will err on the side of caution and require evidence of acquired distinctiveness.
If the claimed trade dress is deemed not inherently distinctive, the Examiner will require proof of acquired distinctiveness in the form of advertising materials featuring the trade dress as a mark, statements of customer recognition, advertising expenditures, sales figures, the Applicant's ownership of one or more prior Principal Register registrations of the same or a similar trade dress, or proof of substantially exclusive and continuous use in commerce for the five years before the date on which the claim of distinctiveness is made.
A Last Gasp, the Supplemental Register: If the Applicant cannot produce sufficient evidence of acquired distinctiveness, and the mark is not deemed functional or generic, the Applicant may amend its Application to seek registration on the Supplemental Register. After being registered on the Supplemental Register for five years, the owner may wish to submit a new application for registration on the Principal Register.
If possible, it is advisable to obtain a federal registration of trade dress before litigation ensues. A federal registration on the Principal Register is prima facie evidence of validity of the claimed trade dress. Submission of the registration in litigation shifts the burden to the defendant to prove that the mark is functional and/or is not distinctive. These are a few reasons why an ongoing trade dress registration program should not be overlooked.
Reprinted from Client Times, Vol. 11, No. 1 (Thomson & Thomson Newsletter).
* Jonathan Hudis is a partner with the Trademark and Copyright Practice Group of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., located in Alexandria, Virginia. David Yontef and Kevin Dinallo are Associates with the firm, and formerly were Examining Attorneys with the U. S. Patent and Trademark Office.
© 2003, Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
The opinions expressed in this article are those of the authors and are not necessarily the views of Thomson & Thomson.