IP Basics
In my prior posts, I discussed trademark registration and the likelihood of confusion test. Today, I’ll define trade dress and how trade dress is evaluated by the USPTO.
Trade dress is the overall look and feel of a product’s packaging, including size, shape, color, graphics, and texture, that identify the source of a good. It also includes the layout of a restaurant and the color scheme of a retail store, as those can also be identifiers of goods. As with trademarks, trade dress applications can be submitted to the USPTO for examination and approval. Trade dress is a type of trademark, and is protected under trademark laws requiring it to be 1) non-functional and 2) inherently distinctive.
A trade dress application must show that the trade dress is non-functional and distinctive to get legal protection. The Supreme Court, ever fond of creating tests, described in a 2001 case the utilitarian functionality test, and the aesthetic functionality test.
Under the utilitarian functionality test, a trade dress is functional if the design is essential to the purpose of the product or affects the quality or cost of the product. Under the aesthetic functionality test, trade dress is functional if it is competitively necessary to use the feature of the design in the relevant market. A product feature only has to meet one of the thresholds to be deemed functional and ineligible for protection.
The objective of the functionality test is to encourage competition by not permitting a business to monopolize a useful feature through trademark protection. The logic is that if the product feature has some utility, it’s best to seek protection as a utility patent application instead. If an application is refused because the trade dress is functional, it also means the trade dress is not distinctive.
A USPTO examiner will next see if the trade dress is inherently distinctive or has acquired secondary meaning. The following factors are considered in determining whether the trade dress is inherently distinctive:
To show secondary meaning, a trademark applicant must show that consumers associate the trade dress with the source of goods. The USPTO consider these factors in making that determination:
If you have product packaging you’d like to protect under trademark law, it’s best to consult a trademark attorney for advice on whether the trade dress is non-functional and inherently distinctive, as evaluating these factors require research and understanding relevant industries and the expectations of the USPTO.
