1202.02 Registration of Trade Dress
Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209-210, 54 USPQ2d 1065, 1065-66 (2000). Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992).
Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product. Wal-Mart., 529 U.S. at 205, 54 USPQ2d at 1065 (design of children’s outfits constitutes product design); Two Pesos, 505 U.S. at 763, 23 USPQ2d at 1081 (interior of a restaurant is akin to product packaging); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (color alone may be protectible); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (flavor is analogous to product design and may be protectible unless it is functional). However, this is not an exhaustive list, because “almost anything at all that is capable of carrying meaning” may be used as a “symbol” or “device” and constitute trade dress that identifies the source or origin of a product. Qualitex, 514 U.S. at 162, 34 USPQ2d at 1162. When it is difficult to determine whether the proposed mark is product packaging or product design, such “ambiguous” trade dress is treated as product design. Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1066. Trade dress marks may be used in connection with goods and services.
In some cases, the nature of a potential trade dress mark may not be readily apparent. A determination of whether the mark constitutes trade dress must be informed by the application content, including the drawing, the description of the mark, the identification of goods or services, and the specimen, if any. If it remains unclear whether the proposed mark constitutes trade dress, the examining attorney may call or e-mail the applicant to clarify the nature of the mark, or issue an Office action requiring information regarding the nature of the mark, as well as any other necessary clarifications, such as a clear drawing and an accurate description of the mark. 37 C.F.R. §2.61(b). The applicant’s response would then confirm whether the proposed mark is trade dress.
When an applicant applies to register a product design, product packaging, color, or other trade dress for goods or services, the examining attorney must separately consider two substantive issues: (1) functionality; and (2) distinctiveness. See TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001); Two Pesos, 505 U.S. at 775, 23 USPQ2d at 1086; In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1343, 213 USPQ 9, 17 (C.C.P.A. 1982). See TMEP §§1202.02(a)–1202.02(a)(viii) regarding functionality and 1202.02(b)–1202.02(b)(ii) and 1212–1212.10 regarding distinctiveness. In many cases, a refusal of registration may be necessary on both grounds. In any application where a product design is refused because it is functional, registration must also be refused on the ground that the proposed mark is nondistinctive because product design is never inherently distinctive. However, since product packaging may be inherently distinctive, in an application where product packaging is refused as functional, registration should also be refused on the ground that the proposed mark is nondistinctive. Even if it is ultimately determined that the product packaging is not functional, the alternative basis for refusal may stand.
If a proposed trade dress mark is ultimately determined to be functional, claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant and registration will be refused. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1007.
With respect to the functionality and distinctiveness issues in the specific context of color as a mark, see TMEP §1202.05(a) and (b).