1202.02(b)(i) Distinctiveness and Product Design Trade Dress
A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216, 54 USPQ2d 1065, 1069-70 (2000). Therefore, as a matter of law, product design cannot be considered inherently distinctive and cannot be registered without a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069. The Supreme Court noted that product design almost invariably serves purposes other than source identification, and that "[c]onsumers are aware... that, almost invariably, even the most unusual of product designs -- such as a cocktail shaker shaped like a penguin -- is intended not to identify the source, but to render the product itself more useful or appealing." Id.
In applications seeking registration of marks comprising product design, the examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive unless the applicant claims that the mark has acquired distinctiveness under §2(f) and provides sufficient evidence to show that the mark has acquired distinctiveness. The ground for the refusal is that the proposed mark consists of nondistinctive product design, and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. Because product design cannot be inherently distinctive as a matter of law, per Wal-Mart, if the applicant has not claimed acquired distinctiveness, supporting evidence for the refusal is unnecessary. 529 U.S. at 213-216, 54 USPQ2d at 1069-70. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). See TMEP §§815.816.05regarding the Supplemental Register, 1202.02(a)–1202.02(a)(viii) regarding functionality, 1202.02(b)–1202.02(b)(ii) regarding distinctiveness, and 1212–1212.10 regarding acquired distinctiveness. A refusal on the ground that the entire proposed mark is not inherently distinctive generally is not appropriate if the mark includes additional distinctive matter beyond just the product design, such as words and/or images. In such situations, the applicant may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements.
In distinguishing between product packaging and product design trade dress, Wal-Mart instructs that, in “close cases,” courts should classify the trade dress as product design and, thus, require proof of secondary meaning. 529 U.S. at 215, 54 USPQ2d at 1070. In addition, product design can consist of design features that are incorporated in the product and need not implicate the entire product. See id. at 207, 213, 54 USPQ2d at 1066, 1069 (a “cocktail shaker shaped like a penguin” is product design, as is “a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like”); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006) (holding the mark to be product design trade dress where the mark was for clothing and consisted of a label with the words “FLASH DARE!” in a V-shaped background and cut-out areas located on each side of the label with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device).
Applicants face a heavy burden in establishing distinctiveness in an application to register trade dress. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) (“secondary meaning in a product configuration case will generally not be easy to establish”). A mere statement of five years’ use is generally not sufficient. See, e.g., In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284, 1286 (TTAB 2000) (noting the statutory language regarding acquired distinctiveness “is permissive, and the weight to be accorded [evidence of five years of substantially exclusive use] depends on the facts and circumstances of the particular case,” and finding evidence of seven to seventeen years of use insufficient to support a claim of acquired distinctiveness). Generalized sales and advertising figures by themselves will usually be insufficient proof of secondary meaning where the promotional material does not use the design alone but instead with other marks. See In re Soccer Sport Supply Co., 507 F.2d 1400, 184 USPQ 345, 348 (CCPA 1975) (advertising displaying the design at issue along with word marks lacked the “nexus” that would tie together use of the design and the public’s perception of the design as an indicator of source); In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593, 595 (CCPA 1967) (where a container design appeared with a word mark, any alleged association of the design with the company “was predicated upon the impression imparted by the [word] mark … rather than by any distinctive characteristic of the container per se.”). Further, a product design may become generic and, thus, cannot be registered regardless of an applicant’s claim of acquired distinctiveness. See Stuart Spector Designs, 94 USPQ2d at 1555 (noting that a design may be deemed incapable where it is, "at a minimum, so common in the industry that it cannot be said to identify a particular source."). Therefore, these common or basic shapes are not registrable on the Principal Register under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register under §23(c), 15 U.S.C. §1091(c). See TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.
For applications based on §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the examining attorney must issue the nondistinctiveness refusal even if the applicant has not filed an allegation of use. See TMEP §1202.02(d) regarding trade dress in intent-to-use applications. For applications based on §44 or §66(a), even though the applicant does not need to show use in commerce, the same standards regarding product design apply and the examining attorney must still issue the nondistinctiveness refusal, assuming acquired distinctiveness has not been established. See TMEP §1010 regarding §44 applications and TMEP §1212.08 regarding distinctiveness in §44 or §66(a) applications.