Trade Dress

Trade dress is a “symbol” or “device” as those terms are used in the Trademark Act, and can include the packaging or “dressing” as well as the design of a product. Trade dress has been defined by the federal courts as the total image and overall appearance of a product, or the totality of the elements asserted as being trade dress and may include features such as color and color combinations, graphics, shape, size, and texture. Thus, the most common types of trade dress are trade dress product design and trade dress product packaging, although various types of non-traditional trade dress are also registrable, including colors, flavors, and sounds.

A trade dress can be protected by applying for registration of the trade dress with the United States Patent and Trademark Office (USPTO), which examines trade dress applications similarly to federal trademark applications and issues federal registrations for trade dress in the United States. To be eligible for federal registration with the USPTO, a trade dress must be in use in interstate commerce and must be both distinctive and non-functional. A federal registration is a grant of statutory rights under federal law in a trade dress to its user.

Laws pertaining to trade dress share many similarities and overlap considerably with federal trademark law. However, certain differences do exist including the general requirement of special descriptions, drawings, and identification of goods for trade dress that differ from those typically used for trademark applications.

Trade dress is functional, and therefore, not registrable with the USPTO, when it is essential to the use or purpose of the article or if it affects the cost or quality of the article to which it is applied.

To determine whether a trade dress is functional, one or more of the following factors are considered:

• the existence of a utility patent that discloses the utilitarian advantages of the trade dress design sought to be registered with the USPTO is strong evidence of functionality (however, the fact that the proposed trade dress is not the subject of a utility patent does not mean necessarily that the trade dress is nonfunctional);
• advertising by the trade dress applicant that touts the utilitarian advantages of the trade dress design is strong evidence of functionality;
• the availability of alternative designs that work equally well may be evidence that the trade dress is nonfunctional; and
• the existence of a method of manufacture of the trade dress design that is comparatively simple or inexpensive weighs in favor of a finding of functionality of the trade dress.

Note that the existence of a design patent that discloses the trade dress design sought to be registered with the USPTO suggests that the trade dress is nonfunctional since design patents are used to protect ornamental features that are nonfunctional. However, the fact that the proposed trade dress is the subject of a design patent does not mean necessarily that the trade dress is nonfunctional.

In the United States, a federal trade dress application for a trade dress may be filed on the basis of actual present use of the trade dress in commerce or on the basis of a bona fide intent to use the trade dress in commerce in the future. However, the trade dress will be rejected as being non-distinctive until an allegation of use or statement of use is filed to provide evidence of acquired distinctiveness.

Note that registration of product design trade dress is always refused by the USPTO for not being inherently distinctive until the trade dress applicant claims and provides sufficient evidence to demonstrate that the proposed trade dress has acquired distinctiveness. Five years of continuous use of the product design trade dress is, by itself, insufficient evidence of acquired distinctiveness. Like trademarks, product design trade dress can only acquire distinctiveness once it is in use in commerce.

Unlike product design trade dress, product packaging trade dress can be inherently distinctive for goods or services without a showing of acquired distinctiveness. For this reason, product packaging trade dress is often easier to register with the USPTO than is product design trade dress. If a showing of acquired distinctiveness for product packaging trade dress is required by the USPTO, like trademarks as well as product design trade dress, product packaging trade dress can only acquire distinctiveness once it is in use in commerce.

With respect to product design trade dress and product packaging trade dress, the trade dress is deemed to be in use in commerce when (i) it is placed in any manner on the goods or their containers, and (ii) the goods are sold or transported in commerce, i.e., the goods are sold or transported in or between more than one state in the United States or from a foreign country to at least one state in the United States.

Before the trade dress can become registered, the date of first use of the trade dress anywhere, the date of first use of the trade dress in interstate commerce, and at least one specimen evidencing use of the trade dress in commerce must be submitted to the USPTO.

After a federal trade dress application has been filed, the application will be assigned to an examining attorney at the USPTO who will review the application, conduct searches for prior registrations and prior pending applications for identical and similar trade dress, and issue rejections based on any registrations or applications located through those searches as well as on any informalities noted in the application.

Rejections are raised by the examining attorney in USPTO-issued correspondence known as office actions. The trade dress applicant is provided with an opportunity to respond to an attempt to overcome the rejections through argument, amendment of certain parts of the application (but not the trade dress itself), or a combination of both. Several office actions may be received in connection with a trade dress application before a federal registration for a trade dress is issued. Once the examining attorney is satisfied that all issues raised in the rejections have been addressed and overcome, the application may be allowed after which it may ultimately issue as a federal registration.

If the rejections in a USPTO office action cannot be overcome, other options may be available for continuing the pursuit of federal protection for the trade dress. Where a response to an office action is not filed within the allotted time for responding, the application will become abandoned.

With continuous usage and the payment of periodic renewal fees, trade dress registrations are perpetual and do not expire.

Ownership rights in trade dress, including an associated trade dress registration, can be transferred entirely or in part to another person or to a business entity by a trade dress assignment.

Without transferring ownership rights in a trade dress registration (and the trade dress identified therein), limited rights to use the trade dress may be granted by the trade dress owner to a licensee that is another person or a business entity by means of a trade dress license agreement.

The USPTO determines whether a registration should be issued for a trade dress, however, the USPTO does not enforce trade dress rights. Enforcement of trade dress rights is the responsibility of the trade dress owner. Monetary damages and injunctive relief may be sought against an infringer of a trade dress through trade dress infringement litigation.

Trade dress markings serve to notify the public that federal statutory rights are claimed in trade dress registered with the USPTO.

The circle R marking (®) should be placed in a conspicuous location on a product design trade dress or product packaging trade dress that has been registered with the USPTO. Where such marking is impractical, a written notice setting forth the trade dress that is protected as well as its registration number may be used. The ® marking should not be used with a trade dress before the trade dress is registered with the USPTO including during any time period while a federal application for a trade dress is only pending.

Failure to use appropriate markings with your trade dress can limit the remedies available to a trade dress owner against an infringer in the event that a lawsuit for trade dress infringement is filed by the trade dress owner to enforce rights in and to the trade dress.

The general trade dress marking rules above are applicable only in the United States and its territories. Different rules may apply in certain foreign countries. Improper use of trade dress markings in some foreign countries may subject the trade dress owner or licensee to civil lawsuits, criminal prosecution, fines, and/or imprisonment. Please consult one of our attorneys prior to using trade dress markings in foreign countries.

Trade dress registration and protection are available in certain foreign countries. Our attorneys and staff can assist clients in filing and prosecuting trade dress applications seeking protection for their trade dress in foreign jurisdictions where trade dress protection and registration are available.

Please contact one of our attorneys if you are interested in conducting a trade dress search or if we may assist you in the preparation and filing of a trade dress application in the United States or in any foreign jurisdictions or with the drafting or negotiation of a trade dress license agreement.