Registration of Trade Dress

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

Bros.

, 529 U.S. 205, 209-10, 54 USPQ2d 1065, 1065-66 (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, 23 USPQ2d 1081, 1082 n.1 (1992).

Thus, trade dress includes the design of a product

(i.e., the product shape or configuration), the packaging in which a product is sold

(i.e., the "dressing" of a product), the color of a product or of the packaging in

which a product is sold, and the flavor of a product.

Wal-Mart

,

529 U.S. at 205, 54 USPQ2d at 1065 (design of children’s outfits constituted product

design);

Two Pesos,

505 U.S. at 763, 23 USPQ2d at 1081 (interior

of a restaurant was akin to product packaging);

Qualitex Co. v. Jacobson

Prods. Co.

, 514 U.S. 159, 34 USPQ2d 1161 (1995) (color alone would be

protectible);

In re N.V.

Organon

, 79 USPQ2d 1639

(TTAB 2006) (flavor was analogous to product design and may be protectible unless

it is functional). 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, 34 USPQ2d at 1162. 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

, 529 U.S. at 215, 54 USPQ2d at 1066. 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

x

, 514 U.S. at 162, 34 USPQ2d at 1162. 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

, 529 U.S. at 215, 54 USPQ2d at 1066. 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 of 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 email 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.

§2.61(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. Mktg.Displays, Inc

., 532 U.S. 23, 28-29,

58 USPQ2d 1001, 1004-05 (2001);

Two Pesos

, 505 U.S. at 775, 23

USPQ2d at 1086;

In re Morton-Norwich Prods.,

Inc.

, 671 F.2d 1332, 1343, 213 USPQ 9,

17 (C.C.P.A. 1982)

. See

TMEP

§§1202.02(a)–(a)(viii)

regarding functionality and

§§1202.02(b)–(b)(ii)

and

§§1212–1212.10

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 because product design is never inherently distinctive

)(viii)

regarding functionality and

§§1202.02(b)–(b)(ii)

and

§§1212–1212.10

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 because 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 a 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

, 532 U.S. at 33, 58 USPQ2d at 1007.

With respect to the functionality and distinctiveness

issues in the specific context of color as a mark,

see

TMEP

§1202.05(a)

and

(b)

.