Distinctiveness and Product Design Trade Dress

A mark that consists of product design trade

dress is never inherently distinctive and is not registrable on the

Principal Register unless the applicant establishes that the mark has

acquired distinctiveness under Trademark Act §2(f).

Wal-Mart

Stores, Inc. v. Samara Bros.

, 529 U.S. 205, 213-16 (2000).

Therefore, as a matter of law, product design cannot be considered

inherently distinctive and cannot be registered without a showing of

secondary meaning.

Id

. at 213–14. The United States

Supreme Court noted that product design almost invariably serves purposes

other than source identification, and that "[c]onsumers are aware . . .

that, almost invariably, even the most unusual of product designs -- such as

a cocktail shaker shaped like a penguin -- is intended not to identify the

source, but to render the product itself more useful or appealing."

Id.

In applications seeking registration of marks

comprising product design, the examining attorney must refuse registration

on the ground that the proposed mark is not inherently distinctive unless

the applicant claims that the mark has acquired distinctiveness under §2(f)

and provides sufficient evidence to show that the mark has acquired

distinctiveness. The ground for the refusal is that the proposed mark

consists of nondistinctive product design, and, thus, does not function as a

mark under §§1, 2, and 45,

15

U.S.C. §§1051

,

1052

,

1127

. Because product design cannot be inherently

distinctive as a matter of law, per

Wal-Mart

, if the

applicant has not claimed acquired distinctiveness, supporting evidence for

the refusal is unnecessary. 529 U.S. at 213-16. If the product design is not

functional, the mark may be registered on the Supplemental Register, or, if

the applicant shows that the product design has acquired distinctiveness, on

the Principal Register under §2(f)

ently

distinctive as a matter of law, per

Wal-Mart

, if the

applicant has not claimed acquired distinctiveness, supporting evidence for

the refusal is unnecessary. 529 U.S. at 213-16. If the product design is not

functional, the mark may be registered on the Supplemental Register, or, if

the applicant shows that the product design has acquired distinctiveness, on

the Principal Register under §2(f). See

TMEP

§§815–816.05

regarding the Supplemental Register,

§§1202.02(a)–(a)(viii)

regarding functionality,

§§1202.02(b)–(b)(ii)

regarding distinctiveness,

and

§§1212–1212.10

regarding acquired

distinctiveness. A refusal on the ground that the entire proposed mark is

not inherently distinctive generally is not appropriate if the mark includes

additional distinctive matter beyond just the product design, such as words

and/or images. In such situations, the applicant may be required to disclaim

or claim acquired distinctiveness in part as to any non-inherently

distinctive elements.

For applications based on §1(b),

15 U.S.C. §1051(b)

, the examining

attorney must issue the nondistinctiveness refusal for a product design mark

even if the applicant has not filed an allegation of use. See

TMEP §1202.02(d)

regarding trade

dress in intent-to-use applications. For applications based on §44 or

§66(a), even though the applicant does not need to show use in commerce, the

same standards regarding product design apply and the examining attorney

must issue the nondistinctiveness refusal, assuming acquired distinctiveness

has not been established. See

TMEP §1010

regarding §44 applications and

TMEP

§1212.08

regarding distinctiveness in §44 or

§66(a) applications.

In distinguishing between product packaging

and product design trade dress,

Wal-Mart

instructs that,

in "close cases," courts should classify the trade dress as product design

and, thus, require proof of secondary meaning. 529 U.S. at 215. In addition,

product design can consist of design features that are incorporated in the

product and need not implicate the entire product

r

§66(a) applications.

In distinguishing between product packaging

and product design trade dress,

Wal-Mart

instructs that,

in "close cases," courts should classify the trade dress as product design

and, thus, require proof of secondary meaning. 529 U.S. at 215. In addition,

product design can consist of design features that are incorporated in the

product and need not implicate the entire product.

See

id.

at 207, 213 (holding a "cocktail shaker shaped like a

penguin" is product design, as is "a line of spring/summer one-piece

seersucker outfits decorated with appliqués of hearts, flowers, fruits, and

the like");

In re Slokevage

, 441 F.3d 957, 961 (Fed. Cir.

2006) (holding the mark to be product design trade dress where the mark was

for clothing and consisted of a label with the words "FLASH DARE!" in a

V-shaped background and cut-out areas located on each side of the label with

the cut-out areas consisting of a hole in a garment and a flap attached to

the garment with a closure device).

Applicants face a heavy burden in establishing

distinctiveness in an application to register trade dress.

See

In re Jasmin Larian, LLC

, 2022 USPQ2d 290, at *38 (TTAB

2022);

In re MK Diamond Prods., Inc.

, 2020 USPQ2d 10882,

at *19 (TTAB 2020);

Kohler Co. v. Honda Giken Kogyo K.K.

,

125 USPQ2d 1468, 1504 (TTAB 2017);

In re Udor U.S.A.

Inc.

, 89 USPQ2d 1978, 1986 (TTAB 2009);

In re Ennco

Display Sys. Inc.

, 56 USPQ2d 1279, 1283-84 (TTAB 2000);

In re OEP Enters., Inc.

, 2019 USPQ2d 309323, at *16

(TTAB 2019);

see also

Duraco Prods., Inc. v. Joy Plastic Enters., Ltd.

, 40 F.3d

1431, 1453 (3d Cir. 1994) ("secondary meaning in a product configuration

case will generally not be easy to establish").

A mere statement of five years’ use is

generally not sufficient.

See

,

e.g.

,

In re Ennco Display Sys. Inc

, 56 USPQ2d 1279, 1283-84 (TTAB 2000);

In re OEP Enters., Inc.

, 2019 USPQ2d 309323, at *16

(TTAB 2019);

see also

Duraco Prods., Inc. v. Joy Plastic Enters., Ltd.

, 40 F.3d

1431, 1453 (3d Cir. 1994) ("secondary meaning in a product configuration

case will generally not be easy to establish").

A mere statement of five years’ use is

generally not sufficient.

See

,

e.g.

,

In re Ennco Display Sys. Inc.

, 56 USPQ2d at 1284,

1286 (noting the statutory language regarding acquired distinctiveness "is

permissive, and the weight to be accorded [evidence of five years of

substantially exclusive use] depends on the facts and circumstances of the

particular case," and finding evidence of seven to seventeen years of use

insufficient to support a claim of acquired distinctiveness). Generalized

sales and advertising figures by themselves will usually be insufficient

proof of secondary meaning where the promotional material does not use the

design alone but instead with other marks.

See

In re Soccer Sport Supply Co.

, 507 F.2d 1400, 1403

(C.C.P.A. 1975) (advertising displaying the design at issue along with word

marks lacked the "nexus" that would tie together use of the design and the

public’s perception of the design as an indicator of source);

In re

Mogen David Wine Corp.

, 372 F.2d 539, 542 (C.C.P.A. 1967)

(where a container design appeared with a word mark, any alleged association

of the design with the company "was predicated upon the impression imparted

by the [word] mark . . . rather than by any distinctive characteristic of

the container per se.");

In re Audemars Piguet Holding

SA

, Ser. No. 90045780, 2025 TTAB LEXIS 1, at *48-49 (2025) (where

a watch design appeared with a word mark on the watch faces in applicant’s

ads, "which [word marks] consumers are predisposed to view as source

indicators," the word mark "detract[ed] from the potential for [a]pplicant’s

advertising to educate consumers to look to the design elements alone to

identify source" (citing

Wal-Mart

, 529 U.S. at 212-13;

In re McIlhenny Co

EXIS 1, at *48-49 (2025) (where

a watch design appeared with a word mark on the watch faces in applicant’s

ads, "which [word marks] consumers are predisposed to view as source

indicators," the word mark "detract[ed] from the potential for [a]pplicant’s

advertising to educate consumers to look to the design elements alone to

identify source" (citing

Wal-Mart

, 529 U.S. at 212-13;

In re McIlhenny Co.

, 278 F.2d 953, at 956-57

(C.C.P.A. 1960)));

Grote Indus. Inc. v. Truck-Lite Co.

,

126 USPQ2d 1197, 1213 (TTAB 2018) (where advertising prominently used word

mark, consumers were more likely to associate the word mark rather than the

design with the source of the goods),

judgment rev’d and vacated by

consent decree

, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022).

"[I]n the context of product design marks, it is imperative that the

evidence of acquired distinctiveness 'relate to the promotion and

recognition of the specific configuration embodied in the applied-for mark

and not to the goods in general.'"

In re Jasmin Larian,

LLC

, 2022 USPQ2d 290, at *39 (quoting

In re Change

Wind Corp.

, 123 USPQ2d 1453, 1467 (TTAB 2017));

see

In re Audemars Piguet Holding SA

, 2025 TTAB LEXIS 1, at

*46-47;

In re SnoWizard, Inc.

, 129 USPQ2d 1001, 1004-5

(TTAB 2018) (citing

Wal-Mart

, 529 U.S. at 211-13).

A product design may become generic and thus

incapable of functioning as an indicator of source because it is basic or

common in an industry or is a mere refinement of a product design commonly

used for the relevant goods.

In re Jasmin Larian, LLC

,

2022 USPQ2d 290, at *5-6 (noting that a design may be deemed incapable of

registration where "it is so common in the industry that it cannot be said

to identify a particular source" (citing

Stuart Spector Designs,

Ltd. v. Fender Musical Instruments Corp.

, 94 USPQ2d 1549, 1555

(TTAB 2009))). These common or basic shapes are not registrable on the

Principal Register under §2(f),

15

U.S.C. §1052(f)

, or on the Supplemental Register

under §23(c),

15

U.S.C. §1091(c)

ble of

registration where "it is so common in the industry that it cannot be said

to identify a particular source" (citing

Stuart Spector Designs,

Ltd. v. Fender Musical Instruments Corp.

, 94 USPQ2d 1549, 1555

(TTAB 2009))). These common or basic shapes are not registrable on the

Principal Register under §2(f),

15

U.S.C. §1052(f)

, or on the Supplemental Register

under §23(c),

15

U.S.C. §1091(c)

.

For these incapable product designs,

registration on the Principal Register must be refused on the ground that

the proposed mark fails to function as a mark, citing §§1, 2, and 45 for

trademarks, and §§1, 2, 3, and 45 for service marks.

See

15 U.S.C. §§1051

,

1052

,

1053

,

1127

. The ground for refusal on the Supplemental

Register is that the mark is incapable of functioning as a mark under

§§23(c) and 45.

See

15 U.S.C. §§1091(c)

,

1127

. A two-step generic inquiry

should be applied to product design trade dress under these refusals to

determine: (1) "the genus of the goods or services at issue," and (2)

"whether the consuming public primarily regards the matter sought to be

registered as a category or type of trade dress for the genus of goods or

services."

In re Jasmin Larian, LLC

, 2022 USPQ2d 290, at

*6 (citing

In re Odd Sox LLC

, 2019 USPQ2d 370879, at *6

(TTAB 2019)). See

TMEP

§1209.01(c)(i)

for more information regarding the

two-step test for determining whether a proposed mark is generic and the

evidence needed to support such refusal.

See

TMEP §1212.02(i)

regarding acquired distinctiveness with respect to incapable matter and

§1212.06(d)

regarding acquired

distinctiveness with respect to survey evidence.