# TMEP § 1202.02(b): Distinctiveness of Trade Dress

> Federal · Agency guidance · In force

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

## Section

- **Citation:** TMEP § 1202.02(b)
- **Heading:** Distinctiveness of 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)

## Text

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.

## Nearby sections

- [TMEP § 1201 Ownership of Mark](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.md)
- [TMEP § 1201.01 Claim of Ownership May Be Based on Use By Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.01.md)
- [TMEP § 1201.02(a) Identifying the Applicant Properly](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(a).md)
- [TMEP § 1201.02(c) Correcting Errors in How the Applicant Is Identified](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(c).md)
- [TMEP § 1201.02(d) Operating Divisions](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(d).md)
- [TMEP § 1201.02(e) Changes in Ownership After Application Is Filed](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(e).md)
- [TMEP § 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(a).md)
- [TMEP § 1201.03(b) Wholly Owned Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(b).md)
- [TMEP § 1201.03(c) Common Stockholders, Directors, or Officers](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(c).md)
- [TMEP § 1201.03(e) License and Franchise Situations](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(e).md)
- [TMEP § 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.04.md)
- [TMEP § 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.05.md)
- [TMEP § 1201.06(a) Applicant Is Merely Distributor or Importer](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(a).md)
- [TMEP § 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(b).md)

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