We have discussed the basics of trade dress on several pages of our website. For the fundamentals of what trade dress is and what information should be included in the application, see our web pages entitled, What Is Trade Dress And How Can It Be Protected, and Requirements For A Trade Dress Application And Expanding Protection To Websites. There are several reasons why trade dress may not be able to register at the United States Patent & Trademark Office (USPTO) on the Principal Register. One example is the functionality doctrine. If a feature of a good is essential to the use or purpose of the good or if it affects the cost or quality of the article it will be considered functional and will not be protected as a trademark. We address this topic on our web page entitled, The Functionality Doctrine Of Trade Dress.
Another reason why trade dress may be refused registration on the Principal Register is that it may be nondistinctive under the Trademark Act (Sections 1, 2 & 45). An applicant can satisfy the distinctiveness prerequisite by demonstrating inherent distinctiveness or secondary meaning of the total appearance of the product. Evidence of five years of continuous use and exclusive use of trade dress possibly may be accepted to establish a prima facie case of acquired distinctiveness, but generally this is not sufficient for registration if a product design is at issue. In connection with product design, typically an applicant must present evidence of advertising expenditures (in particular the USPTO focuses on advertising of the claimed design), sales success, length of use, consumer surveys, unsolicited media coverage and intentional copying.
Often, trade dress applications will contain disclaimers. The reason is that trade dress marks typically are not considered unitary marks because the various elements usually create independent commercial impressions. For more on unitary marks, see our page entitled, What Is A Unitary Trademark. If a mark contains a combination of trade dress and word and/or design elements, the elements should be evaluated independently for distinctiveness. If only one aspect of the trademark is inherently distinctive this will not transform the whole mark into an inherently distinctive unitary mark. Unregistrable elements of a mark must either be depicted in broken or dotted lines on the drawing or be disclaimed. The way to determine how to treat unregistrable elements is to ask if the elements are functional or incapable of acquiring trademark significance, and if this is the case, then represent those elements in dotted lines on the drawing. However, if the elements are capable of trademark significance, but haven't yet acquired distinctiveness, then a disclaimer can be cited in the trademark application.
If an application contains a three-dimensional mark, special rules apply. The drawing must depict the mark in a single rendition. Yet the mark description must state the trademark is three-dimensional in nature. If the applicant believes that it cannot show the mark in a single rendition, it can petition the Director to waive the requirement and instead accept a drawing that demonstrates multiple views of the mark. It should be noted that the three-dimensional packaging of a product constitutes trade dress.
Product packaging can take any shape or form. For example, a drawing could depict a three-dimensional mirror, the description of the mark could state that the trade dress is product packaging and the identified goods could be cosmetics. In that case, the cosmetics could be sold in packaging shaped like a mirror. Often, the three-dimensional product packaging depicted on the drawing will hold the product being sold. Trade dress applications are certainly one of the most difficult types of trademark applications to prosecute. If you have questions concerning trade dress, please contact our office for a courtesy telephone consultation.