1202.02(c)(i) Drawings of Trade Dress Marks
Drawings of three-dimensional product design and product packaging trade dress marks may not contain elements that are not part of the mark (i.e., matter that is functional or incapable of trademark significance). If the mark comprises only a portion of product design or product packaging, solid lines must be used on the drawing to show the elements of the product design or product packaging that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portions that are not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); see In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (affirming the functionality of a circular-shaped container for the goods and the requirement for an amended drawing to either delete the representation of the container from the drawing or show it in dotted lines); TMEP §807.08.
Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are generally excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion) analysis. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006).
In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible - or if dotted lines would result in an unclear depiction of the mark, the applicant may use solid lines. However, the applicant must insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods, as appropriate.
Usually, a drawing of a trade dress mark is depicted in a three-dimensional manner that gives the appearance of height, width, and depth to the mark. Generally, the drawing shows an illustrated rendering of the product design or product packaging, but a photograph of the product design or product packaging is also acceptable. Drawings consisting of either illustrated renderings or photographs of the proposed trade dress will both be subject to the same drawing requirements and must fairly represent the mark (e.g., the drawing shows matter not claimed as part of the mark in broken or dotted lines and it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses).
If the nature of the mark remains unclear from the record, an examining attorney may clarify whether the mark is three-dimensional trade dress by calling or e-mailing the applicant, or issuing an Office action containing requirements about the nature of the mark under 37 C.F.R. §2.61(b), for a clear drawing, or for a revised description. Where appropriate, any relevant trade-dress-related refusals (e.g., mark is functional, mark is not inherently distinctive) may also be included in the Office action.
In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature and the record is unclear, the examining attorney may suggest that the applicant clarify that the mark is two-dimensional in the mark description. See TMEP §808.02. If the mark is two-dimensional in nature, the mark should not be characterized as three-dimensional (e.g., that the mark “appears three-dimensional”).
If the applicant is required to submit an amended drawing, the mark description must also be amended accordingly. See TMEP §1202.02(c)(ii) regarding description requirements for trade dress marks.