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Approval for trade dress registration by the United States Patent and Trademark Office (PTO) requires the hurdling of several obstacles. Unlike a trademark that typically protects a word or phrase, trade dress registrations protect product configuration or design, product packaging and/or color. But in both cases, the object is the same: protecting a name or design, etc. that identifies you to the consumer as the source of the goods or services you offer.
The first issue examined by the PTO is whether the trade dress to be protected is de jure functional, meaning whether as a matter of law it is incapable of serving as a source indicator. If the trade dress is indeed de jure functional, this will bar registration. The current test used by the PTO to determine trade dress functionality states that a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. In doing so, the PTO will also look at whether the design is superior to other designs and whether feasible alternatives are available. If the design is superior to other designs the registrant may have a functionality problem on their hands because the PTO will not stand in the way of design improvements that benefit consumers insofar as trade dress applications go. [On the other hand, the applicant might have a viable patent claim.]
Once it is determined that the product is not de jure functional, the next step is to determine whether the product is “distinctive” enough to warrant protection. If it can be shown that the product is inherently distinctive, registration may well be granted.
Inherent distinctiveness for trade dress is divided into one of the four traditional trademark categories, the fourth category being the most favorable for registration: 1) generic, 2) descriptive, 3) suggestive, and 4) arbitrary or fanciful. A nonfunctional design like a seashell to package and sell goods unrelated to shells or the sea would most likely fall under the arbitrary or fanciful category. In addition, the PTO examines 1) whether the trade dress to be registered presents a common basic shape or design, 2) whether it is unique or unusual in a particular field, 3) whether it is 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, and, 5) whether it is capable of creating a commercial impression distinct from the accompanying words. Returning to our seashell example, it would appear that it could meet all additional criteria and thus be deemed an inherently distinctive trade dress.
If the subject trade dress is not likely to be deemed inherently distinctive, the successful registrant will need to show secondary meaning in the product, i.e. what the PTO calls “acquired distinctiveness.” To do so, the applicant must show that the primary significance of the product configuration in the minds of consumers is not the related to the product in and of itself, but rather points to and brings to mind the source of the product. Secondary meaning is typically proved by direct evidence, which includes testimony, declarations or surveys of consumers as to their state of mind, and circumstantial evidence, which includes use of a purported mark for a number of years, extensive sales and advertising, and any like evidence showing a wide exposure of the mark to consumers. A common pitfall of such advertising, however, occurs where the applicant has touted to functional benefits of its product design/packaging—words that may come back to haunt them when registration for trade dress is sought.
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