# TMEP § 1202.02(b)(ii): Distinctiveness and Product Packaging Trade Dress

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1202.02(b)(ii)

## Section

- **Citation:** TMEP § 1202.02(b)(ii)
- **Heading:** Distinctiveness and Product Packaging Trade Dress
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1200 - Substantive Examination of Applications / TMEP § 1202.02(b)(ii)

## Text

Product packaging trade dress may be
inherently distinctive.
Wal-Mart Stores, Inc. v. Samara
Bros.
, 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068 (2000) ("The
attribution of inherent distinctiveness to certain . . . product packaging
derives from the fact that the very purpose of . . . encasing [a product] in
a distinctive packaging, is most often to identify the source of the
product").
Therefore, in applications seeking
registration of marks comprising product packaging, the examining attorney
must assess inherent distinctiveness. If it is lacking, registration must be
refused on the Principal Register on the ground that the proposed mark is
nondistinctive trade dress under Trademark Act §§1, 2, and 45,
15 U.S.C. §§1051
,
1052
,
1127
, for trademark applications, or under §§1, 2,
3, and 45,
15
U.S.C. §§1051
,
1052
,
1053
,
1127
, for service mark applications.
In
Wal-Mart Stores, Inc. v. Samara
Bros.
, the U.S. Supreme Court discussed the distinction
between the trade dress at issue in
Two Pesos, Inc. v. Taco Cabana,
Inc.
, 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product
design trade dress (designs for children’s clothing) considered in
Wal-Mart:
Two Pesos
unquestionably establishes the legal
principle that trade dress can be inherently distinctive, but it does
not establish that
product-design
trade dress can be.
Two Pesos
is inapposite to our holding here
because the trade dress at issue, the decor of a restaurant, seems to us
not to constitute product design. It was either product packaging –
which, as we have discussed, normally
is
taken by the
consumer to indicate origin – or else some
tertium
quid that is akin to product packaging . . . .
529 U.S. at 215, 54 USPQ2d at 1069 (citation
omitted).
The examining attorney should be mindful of
the U.S. Supreme Court’s admonishment that where there are close cases,
trade dress should be classified as product design for which secondary
meaning is always required.
Id
. at 215, 54 USPQ2d at
1070
e
consumer to indicate origin – or else some
tertium
quid that is akin to product packaging . . . .
529 U.S. at 215, 54 USPQ2d at 1069 (citation
omitted).
The examining attorney should be mindful of
the U.S. Supreme Court’s admonishment that where there are close cases,
trade dress should be classified as product design for which secondary
meaning is always required.
Id
. at 215, 54 USPQ2d at
1070.
"[A] mark is inherently distinctive if ‘[its]
intrinsic nature serves to identify a particular source.’"
Id.
at 210, 54 USPQ2d at 1068 (citing
Two
Pesos, Inc.
, 505 U.S. at 768, 23 USPQ2d at 1083). The test for
determining inherent distinctiveness set forth in
Seabrook Foods,
Inc. v. Bar-Well Foods, Ltd.
, 568 F.2d 1342, 1344, 196 USPQ
289, 291 (C.C.P.A. 1977), although not applicable to product design trade
dress, is still viable in the examination of product packaging trade dress.
The examining attorney should consider the following
Seabrook
factors – whether the proposed mark is:
(1) a "common" basic shape or design;
(2) unique or unusual in a particular
field;
(3) 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; or
(4) capable of creating a commercial
impression distinct from the accompanying words.
Id.
;
see
,
e.g.
,
In re Chippendales USA,
Inc.
, 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)
(stating that an abbreviated tuxedo costume consisting of wrist cuffs and a
bowtie collar without a shirt "constitute[d] ‘trade dress’ because it was
part of the ‘packaging’" for exotic dancing services);
Tone Bros.,
Inc. v. Sysco Corp.
, 28 F.3d 1192, 1205-07, 31 USPQ2d 1321,
1330-32 (Fed. Cir
;
see
,
e.g.
,
In re Chippendales USA,
Inc.
, 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)
(stating that an abbreviated tuxedo costume consisting of wrist cuffs and a
bowtie collar without a shirt "constitute[d] ‘trade dress’ because it was
part of the ‘packaging’" for exotic dancing services);
Tone Bros.,
Inc. v. Sysco Corp.
, 28 F.3d 1192, 1205-07, 31 USPQ2d 1321,
1330-32 (Fed. Cir. 1994) (citing
Seabrook
, 568 F.2d at
1344, 196 USPQ at 291) (reversing lower court’s summary judgment decision
that the shape and appearance of the spice container at issue was not
inherently distinctive);
In re Odd Sox LLC
, 2019 USPQ2d
370879, at *9 (TTAB 2019) (finding rectangular sock packaging that displayed
socks side-by-side to be a common shape in the socks industry that was not
unique or unusual in the field of socks, and "a mere refinement of the
attributes of the existing packaging in the record" that did not create a
separate impression from wording on the packaging) (quoting
In re
Chevron Intell. Prop. Grp. LLC
, 96 USPQ2d 2026, 2029 (TTAB 2010));
In re Frankish Enters.
Ltd
., 113 USPQ2d 1964,
1973 (TTAB 2015)
(finding three-dimensional monster truck design, used in
connection with monster truck exhibition services, to be analogous to
product packaging for the services and unique in the monster truck field);
In re Mars,
Inc
., 105 USPQ2d 1859,
1869-71 (TTAB 2013)
(finding packaging configuration for pet food, resembling
many cans used in the pet food field, to be a common basic shape, even
though it was inverted, and a mere refinement of existing trade dress within
the field);
In re Chevron Intell. Prop. Grp
to be analogous to
product packaging for the services and unique in the monster truck field);
In re Mars,
Inc
., 105 USPQ2d 1859,
1869-71 (TTAB 2013)
(finding packaging configuration for pet food, resembling
many cans used in the pet food field, to be a common basic shape, even
though it was inverted, and a mere refinement of existing trade dress within
the field);
In re Chevron Intell. Prop. Grp. LLC,
96
USPQ2d at 2029 (holding "‘three-dimensional, six-sided beveled shape’ [pole
spanner design used to promote services] was a mere refinement of a commonly
used form of a gasoline pump ornamentation rather than an inherently
distinctive service mark for automobile service station services.");
In re Brouwerij
Bosteels
, 96 USPQ2d 1414,
1421-22 (TTAB 2010)
(holding that product packaging trade dress in the nature of
a beer glass and stand with wording and scrollwork would be perceived as a
mere refinement of a commonly known glass and stand rather than an
inherently distinctive indicator of source for the goods);
In re
File
, 48 USPQ2d 1363,
1367 (TTAB 1998)
(stating that novel tubular lights used in connection with
bowling alley services would be perceived by customers as "simply a
refinement of the commonplace decorative or ornamental lighting . . . and
would not be inherently regarded as a source indicator.");
In re J. Kinderman &
Sons Inc.
, 46 USPQ2d 1253,
1255 (TTAB 1998)
("while the designs [of packaging for electric lights for
Christmas trees that] applicant seeks to register may be unique in the sense
that we have no evidence that anyone else is using designs which are
identical to them, they are nonetheless not inherently distinctive.");
In re Hudson News
Co.,
39 USPQ2d 1915,
1923 (TTAB 1996)
, aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("[f]or the
‘blue motif’ of a retail store to be registrable on the Principal Register
without resort to Section 2(f), the trade dress would have to be immediately
recognizable as a distinctive way of identifying the source of the store
services.");
Yankee Candle Co
inherently distinctive.");
In re Hudson News
Co.,
39 USPQ2d 1915,
1923 (TTAB 1996)
, aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("[f]or the
‘blue motif’ of a retail store to be registrable on the Principal Register
without resort to Section 2(f), the trade dress would have to be immediately
recognizable as a distinctive way of identifying the source of the store
services.");
Yankee Candle Co. v. Bridgewater Candle Co.
,
259 F.3d 25, 42-45, 59 USPQ2d 1720, 1730-32 (1st Cir. 2001) (finding trade
dress for common elements of candle labels to be nondistinctive product
packaging for which insufficient evidence of acquired distinctiveness had
been shown).
Any one of the
Seabrook
factors, by itself, may be determinative as to whether the mark is
inherently distinctive.
See Chippendales
, 622 F.3d at
1355, 96 USPQ2d at 1687;
Chevron
, 96 USPQ2d at 2028.
Where the proposed product packaging trade
dress is not inherently distinctive, based on the analysis of the
Seabrook
factors and supporting evidence, and
acquired distinctiveness has not been established, registration must be
refused.
Chippendales
, 622 F.3d at 1351-52, 96 USPQ2d at
1684. The examining attorney must establish a prima facie case that the
product packaging is not inherently distinctive.
Id
. at
1350, 96 USPQ2d at 1684. To meet this burden, the examining attorney must,
at a minimum, set forth a "‘reasonable predicate’ for [the] position of no
inherent distinctiveness," for example, by introducing evidence regarding
the first
Seabrook
factor that competitors use similar
basic shapes and designs.
In re Pacer Tech.
, 338 F.3d
1348, 1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (finding evidence of
design patents showing other adhesive container cap designs sufficient to
establish prima facie case that applicant’s adhesive container cap was not
inherently distinctive). The USPTO is an agency of limited resources, and as
such, it cannot be expected to shoulder the burden of conducting market
research.
Id.
For applications based on §1(b),
15 U.S.C
29, 1632 (Fed. Cir. 2003) (finding evidence of
design patents showing other adhesive container cap designs sufficient to
establish prima facie case that applicant’s adhesive container cap was not
inherently distinctive). The USPTO is an agency of limited resources, and as
such, it cannot be expected to shoulder the burden of conducting market
research.
Id.
For applications based on §1(b),
15 U.S.C. §1051(b)
,  unless the
drawing, the description of the mark, and the examining attorney’s search
results are dispositive of the lack of distinctiveness without the need to
consider a specimen, applications for product packaging trade dress
generally will not be refused registration on the ground of
nondistinctiveness until the applicant has filed an allegation of use.
See
TMEP
§1202.02(d)
. For §44 and §66(a) applications, for
which no allegation of use is required, a nondistinctiveness refusal may be
issued, if appropriate, based on a review of the drawing, the description of
the mark, and any evidence obtained from the examining attorney’s search
results.
See
TMEP
§1202.02(e)
.
Regardless of the basis for filing, if a
proposed product packaging mark is inherently distinctive, it may be
registered on the Principal Register.
See
In re Procter & Gamble
Co
., 105 USPQ2d 1119, 1123,
1126 (TTAB 2012)
(holding the overall shape of a container with a cap, and the
shape of the cap by itself, inherently distinctive for mouthwash);
In re Creative Beauty
Innovations, Inc
., 56 USPQ2d 1203,
1208 (TTAB 2000)
(holding bottle configuration inherently distinctive);
In re Fre-Mar Indus., Inc.
, 158 USPQ 364, 367 (TTAB
1968) ("[A]lthough the particular shape is a commonplace one for
flashlights, it is nevertheless so unique and arbitrary as a container in
the tire repair field that it may be inherently distinctive and, therefore,
by reason of its shape alone, serve to identify applicant’s goods and
distinguish them from like goods of others.");
In re Int'l Playtex
Corp
-Mar Indus., Inc.
, 158 USPQ 364, 367 (TTAB
1968) ("[A]lthough the particular shape is a commonplace one for
flashlights, it is nevertheless so unique and arbitrary as a container in
the tire repair field that it may be inherently distinctive and, therefore,
by reason of its shape alone, serve to identify applicant’s goods and
distinguish them from like goods of others.");
In re Int'l Playtex
Corp.
, 153 USPQ 377, 378
(TTAB 1967) (holding container configuration having the appearance of an
ice cream cone inherently distinctive packaging for baby pants).
If a proposed product packaging mark is
not
inherently distinctive, the mark may be
registered on either the Principal Register under §2(f), upon proof that the
mark has acquired distinctiveness or secondary meaning, or on the
Supplemental Register. Distinctiveness or secondary meaning is acquired when
the public views the primary significance of the product packaging as
identifying the source of the product rather than the product itself.
Wal-Mart
, 529 U.S. at 211, 54 USPQ2d at 1068. Whether
five years’ use is sufficient depends on the degree to which the mark’s
elements are unique or common in the field. This is determined by comparing
the specific features comprising the mark with the evidence of competitors’
use of similar features for the identified goods or services. The more
unique or unusual the features, the more likely that five years’ use may
suffice, but the more common or basic the features, the less likely that
five years’ use would suffice. See
TMEP
§1212
regarding claiming acquired distinctiveness
and
§1212.05
regarding claiming five years of use as
proof of distinctiveness.
In certain cases, the applicant’s evidence was
found sufficient to support a claim of acquired distinctiveness.
See
In re World’s Finest Chocolate, Inc.
, 474 F.2d 1012,
1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design held to identify
applicant’s candy bars and distinguish them from those of others);
Ex parte Haig & Haig Ltd.
, 118 USPQ 229, 230
(Comm’r Pats
se as
proof of distinctiveness.
In certain cases, the applicant’s evidence was
found sufficient to support a claim of acquired distinctiveness.
See
In re World’s Finest Chocolate, Inc.
, 474 F.2d 1012,
1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design held to identify
applicant’s candy bars and distinguish them from those of others);
Ex parte Haig & Haig Ltd.
, 118 USPQ 229, 230
(Comm’r Pats. 1958) ("[The decree] recited that because of the original,
distinctive and peculiar appearance of the ‘Pinched Decanter’ the brand of
whiskey in such bottles had come to be known and recognized by the public,
by dealers and by consumers; and that the whiskey contained in such bottles
had come to be identified with the ‘Pinched Decanter’ in the minds of the
public generally.").
See
TMEP §§1212-1212.10
regarding acquired distinctiveness and
§§815
-
816.05
regarding the Supplemental Register.
"[T]he lesser the degree of distinctiveness,
the heavier the burden to prove trade dress in the nature of product
packaging has acquired distinctiveness."
In re Brouwerij
Bosteels
, 96 USPQ2d 1414, 1424 (TTAB 2010) (citing
Yamaha Int’l Corp. v. Hoshino Gakki Co.
, 840 F.2d
1572, 1580, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). Where such trade dress
had a lesser degree of distinctiveness, the applicant’s evidence was found,
in certain cases, to be insufficient to support a claim of acquired
distinctiveness.
See
e.g.
,
In re Palacio Del Rio, Inc
veness."
In re Brouwerij
Bosteels
, 96 USPQ2d 1414, 1424 (TTAB 2010) (citing
Yamaha Int’l Corp. v. Hoshino Gakki Co.
, 840 F.2d
1572, 1580, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). Where such trade dress
had a lesser degree of distinctiveness, the applicant’s evidence was found,
in certain cases, to be insufficient to support a claim of acquired
distinctiveness.
See
e.g.
,
In re Palacio Del Rio, Inc.
,
2023 USPQ2d 630, at *10-13 (TTAB 2023) (holding evidence of acquired
distinctiveness insufficient for common modular building designs of a hotel
where the evidence comprised four identical "cookie cutter" customer
declarations, a declaration of applicant’s vice-president regarding use in
commerce since 1968 when the hotel opened in San Antonio,
advertising/promotion figures seeming insubstantial when viewed in
connection with the length of use, sales figures provided without industry
context, 17 local newspaper or industry trade journal articles and a website
discussing the building of the hotel for the HemisFair 1968 Word’s Fair in
San Antonio and no "look for" advertising or promotional materials or
mention of the hotel’s proposed trade dress as indicators of source of the
applied-for hotel services);
In re Brouwerij Bosteels
, 96
USPQ2d at 1424 (holding evidence of acquired distinctiveness insufficient
for a common "Half-Yard" type of beer glass and stand where the evidence
comprised use for at least 25 years, ownership of a prior registration for a
similar but not legally-equivalent mark, two third-party websites indicating
the beer glass is "eye-catching" or "unique," and no advertising or sales
figures or "look for" advertising or promotional materials);
In re
Usher, S.A
tiveness insufficient
for a common "Half-Yard" type of beer glass and stand where the evidence
comprised use for at least 25 years, ownership of a prior registration for a
similar but not legally-equivalent mark, two third-party websites indicating
the beer glass is "eye-catching" or "unique," and no advertising or sales
figures or "look for" advertising or promotional materials);
In re
Usher, S.A.
, 219 USPQ 920, 921 (TTAB 1983) (holding evidence
of acquired distinctiveness insufficient for a simple flat- rectangular
product packaging for two side-by-side round mint candies where the evidence
comprised a single declaration from applicant’s CEO specifying a few years
use in commerce, limited sales figures, unclear advertising figures, and no
"look for" advertising or promotional materials).
In certain cases, product packaging may be
incapable of functioning as an indicator of source. "[T]rade dress that
cannot serve as an indicator of source is generic and unprotectable."
Sunrise Jewelry Mfg. Corp. v. Fred S.A.
, 175 F.3d
1322, 1326, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999). For example, packaging
that is common or basic in an industry or that is a mere refinement of
packaging commonly used on the relevant goods will not be perceived as
indicating source and is not registrable on the Principal Register under
§2(f) or on the Supplemental Register.
See
In re Odd Sox LLC
, 2019 USPQ2d 370879, at *6 (holding
that the same standard used to determine whether product design trade dress
was generic "applies equally to product packaging" trade dress);
Stuart Spector Designs, Ltd. v. Fender Musical Instruments
Corp.
, 94 USPQ2d 1549, 1555 (TTAB 2009) (noting that a product
design may be deemed incapable where it is, "at a minimum, so common in the
industry that it cannot be said to identify a particular source.");
see also
Nora Beverages Inc. v. Perrier Grp. of Am. Inc.
, 269 F.3d
114, 120, 60 USPQ2d 1038, 1041 (2d Cir
t packaging" trade dress);
Stuart Spector Designs, Ltd. v. Fender Musical Instruments
Corp.
, 94 USPQ2d 1549, 1555 (TTAB 2009) (noting that a product
design may be deemed incapable where it is, "at a minimum, so common in the
industry that it cannot be said to identify a particular source.");
see also
Nora Beverages Inc. v. Perrier Grp. of Am. Inc.
, 269 F.3d
114, 120, 60 USPQ2d 1038, 1041 (2d Cir. 2001) (affirming the district
court’s holding that the water bottle manufactured and sold by Nora was
generic because "it was used, with minor variations, throughout the entire
market of similar products");
Paddington Corp. v. Attiki Imps.
& Distribs., Inc.
, 996 F.2d 577, 583-84, 27 USP2d 1189,
1193 (2d Cir. 1993) ("[W]here it is the custom of an industry to package
products in a particular manner, a trade dress in that style would be
generic and therefore not inherently distinctive.").
The ground for refusal on the Principal
Register is that the proposed mark fails to function as a mark under §§1, 2,
and 45 for trademarks, and under §§1, 2, 3, and 45 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,
15
U.S.C. §§1091(c)
,
1127
. A two-step generic inquiry should be applied
to product packaging trade dress under these refusals to determine: (1) "the
genus of 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 Odd Sox
LLC
, 2019 USPQ2d 370879, at *6 (citing
Sunrise
Jewelry Mfg. Corp.
, 175 F.3d at 1326-27, 50 USPQ2d at 1536;
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs,
Inc.
, 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)).
See
TMEP §1209.01(c)(i)
for more
information regarding the two-step test for determining whether a mark is
generic and the evidence needed to support such refusal
In re Odd Sox
LLC
, 2019 USPQ2d 370879, at *6 (citing
Sunrise
Jewelry Mfg. Corp.
, 175 F.3d at 1326-27, 50 USPQ2d at 1536;
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs,
Inc.
, 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)).
See
TMEP §1209.01(c)(i)
for more
information regarding the two-step test for determining whether a mark is
generic and the evidence needed to support such refusal.
See
TMEP
§815.04
regarding refusal of incapable matter and
TMEP §1212.02(i)
regarding
acquired distinctiveness with respect to incapable matter. See also
TMEP §1301.02(c)
regarding
three-dimensional trade dress for service marks.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1202.02(b)(ii). Check the current official text before relying on it. Not legal advice.