Distinctiveness of Trade Dress

Regardless of whether a proposed trade dress mark

is refused as functional under §2(e)(5), the examining attorney must also

examine the mark for distinctiveness. Trade dress that is not inherently

distinctive and that has not acquired distinctiveness under §2(f) must be

refused registration. The statutory basis for the refusal of registration on the

Principal Register on the ground that the trade dress is nondistinctive is §§1,

2, and 45 of the Trademark Act,

15 U.S.C.

§§1051

,

1052

, and

1127

, for trademark applications, or §§1, 2, 3, and 45

of the Trademark Act,

15 U.S.C.

§§1051

,

1052

,

1053

, and

1127

, for service mark applications.

In

Wal-Mart Stores, Inc. v Samara

Bros.

, 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme

Court distinguished between two types of trade dress – product design and

product packaging. If the trade dress falls within the category of product

"design," it can never be inherently distinctive.

Id.

at 212,

54 USPQ at 1068 ("It seems to us that design, like color, is not inherently

distinctive."). Moreover, the Court held that in close cases in which it is

difficult to determine whether the trade dress at issue is product packaging or

product design, "courts should err on the side of caution and classify ambiguous

trade dress as product design, thereby requiring secondary meaning."

Id.

at 215, 54 USPQ2d at 1070;

see

In re Slokevage

, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir.

2006). (

Note:

If the trade dress is functional, it cannot be

registered despite acquired distinctiveness.

TrafFix Devices, Inc. v.

Mktg. Displays, Inc.

, 532 U.S. 23, 33, 58 USPQ2d 1001, 1007

on the side of caution and classify ambiguous

trade dress as product design, thereby requiring secondary meaning."

Id.

at 215, 54 USPQ2d at 1070;

see

In re Slokevage

, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir.

2006). (

Note:

If the trade dress is functional, it cannot be

registered despite acquired distinctiveness.

TrafFix Devices, Inc. v.

Mktg. Displays, Inc.

, 532 U.S. 23, 33, 58 USPQ2d 1001, 1007

(2001)).

A claim of acquired distinctiveness under §2(f)

will not overcome a functionality refusal, but may overcome a nondistinctiveness

refusal. For example, if the examining attorney issues a refusal on the basis

that a product packaging mark is functional and, in the alternative, is

nondistinctive, and the applicant asserts acquired distinctiveness in response,

the examining attorney must maintain the previously issued functionality

refusal, if appropriate, and determine whether the applicant’s evidence would be

sufficient to overcome the nondistinctiveness refusal, if the functionality

refusal is ultimately reversed.

If the examining attorney fails to separately

address the sufficiency of the applicant’s evidence of acquired distinctiveness,

this may be treated as a concession that the evidence would be sufficient to

establish distinctiveness, if the mark is ultimately found not to be functional.

See In re

Dietrich

, 91 USPQ2d 1622,

1625 (TTAB 2009)

(holding that an examining attorney had "effectively conceded

that, assuming the mark is not functional, applicant’s evidence is sufficient to

establish that the mark has acquired distinctiveness," where the examining

attorney rejected the applicant’s §2(f) claim on the ground that applicant’s

bicycle wheel configuration was functional and thus unregistrable even under

§2(f), but did not specifically address the sufficiency of the §2(f) evidence or

the question of whether the mark would be registrable under §2(f), if it were

ultimately found to be nonfunctional)

as acquired distinctiveness," where the examining

attorney rejected the applicant’s §2(f) claim on the ground that applicant’s

bicycle wheel configuration was functional and thus unregistrable even under

§2(f), but did not specifically address the sufficiency of the §2(f) evidence or

the question of whether the mark would be registrable under §2(f), if it were

ultimately found to be nonfunctional). See

TMEP §§1209.02(a)(ii)

and

1212.02(i)

regarding assertion of acquired

distinctiveness in response to an Office action and claiming acquired

distinctiveness with respect to incapable matter.