Trade Dress

John Laurence
Jul 22, 2024
4 min read

Updated: Jan 22

Trade dress comprises the visual appearance features of a good or service that indicate the source of the good or service to the consumer. Examples of trade dress include packaging or labeling of goods, product configuration (the design of a product), the flavor of the product, the color of a product, the layout of a restaurant, or the design of a retail store. Trade dress may function to identify the source of goods and services and help differentiate them from similar ones.

Establishing Trade Dress Rights

Trade dress rights may be established based on common law and/or registration with the USPTO. To be registered, trade dress must be nonfunctional and distinctive.

Section 1202(a) of the TMEP defines "functionality." Trade dress is functional and cannot be protected as a trademark if a feature of the trade dress is essential to the purpose or use of the subject matter or if it affects the quality or cost of the subject matter. If protection for a product's functionality is desired, a utility patent application should be filed.

The determination of functionality is a question of fact. When making a functionality determination, the following factors are considered:

The existence of a utility patent that reveals the utilitarian advantages of the subject design;
Applicant's advertising that touts the utilitarian advantages of the subject design;
Evidence presented pertaining to the availability of alternate designs; and
Evidence demonstrating whether the design results from a comparatively simple or inexpensive method of manufacture.

The distinctive requirement can be satisfied by proving that the trademark is either inherently distinctive or has acquired secondary meaning regarding the total appearance of the product and not just individual features. Product packaging may be inherently distinctive. However, product designs can never be inherently distinctive and always require a demonstration of secondary meaning.

When determining whether product packaging is inherently distinctive, an examining attorney may consider if the proposed mark is:

A common shape or design;
Unique in the field in which it is used;
A mere refinement of a well-known form of ornamentation; and
Capable of creating a commercial impression apart from the words or text.

If secondary meaning needs to be established, as for a product design, it must be shown that the primary meaning of a product feature is to identify the product's source rather than the product itself. When evaluating secondary meaning, the following factors may be considered:

Length of use;
Sales success;
Amount spent on advertising;
Survey evidence; and
Unsolicited media coverage.

Proving Trade Dress Infringement

Generally, trade dress infringement will require a showing of the following elements:

Nonfunctional
Distinctiveness, and
Confusing similarity

The burden of showing these elements will shift according to the registration status of the infringed trade dress mark. Generally, the burden of production will shift according to the following table.

Nonfunctional

As shown in the above table, for unregistered trade dress infringement, the trademark owner has the burden of proving that the trade dress sought to be protected is not functional. The burden of proving functionality shifts to the infringer for registered trade dress infringement.

Functionality requires a showing that the design or features of the trade dress are essential to use or the purpose or affect cost or quality of the article embodying the trade dress or if protecting the trade dress would result in a significant non-reputation related disadvantage (also known as Aesthetic Functionality).

The CAFC's Morton-Norwich opinion sets forth the following factors to be considered in determining whether a design is de jure functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Distinctiveness

As shown in the above table, the trademark owner has the burden of proving that the trade dress sought to be protected is distinctive for unregistered trade dress infringement. The burden of proving distinctiveness shifts to the infringer for registered trade dress infringement.

The following table summarizes the showing of distinctiveness for different forms of trade dress.

The above table shows that a registered trade dress mark based on product packaging is inherently distinctive. An unregistered trade dress mark based on product packaging may be inherently distinctive if the packaging includes a sufficient number of specific elements in combination to form the trade dress. Alternatively, if the trade dress cannot be shown to be inherently distinctive, then a showing of secondary meaning is required.

In contrast, product designs, color marks, and ambiguous marks can never be inherently distinctive and will always require a showing of secondary meaning to establish the mark's distinctiveness. A registration provides prima facie evidence that the requisite second meaning has been demonstrated.

Failure To Operate as a Mark

A protectable mark must be a source identifier for provided goods and services. Mere ornamentation, which may include words, slogans, or other trade dress, does not identify and distinguish the goods and services and thus fails to operate as a trademark.