1202.02(d) Trade Dress in §1(b) Applications
Distinctiveness and Product Design
A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212, 54 USPQ2d 1065, 1068 (2000); In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); TMEP §1202.02(b)(i). See TMEP §§1202.02(b) and 1202.02(b)(i) regarding distinctiveness of product design trade dress. Therefore, if the mark is comprised of a product design, the examining attorney will refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act. 15 U.S.C. §§1051, 1052, and 1127. The examining attorney must make this refusal even in an intent-to-use application under 15 U.S.C. §1051(b) for which no allegation of use has been filed.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-75, 23 USPQ2d 1081, 1085-86 (1992). See TMEP §§1202.02(b) and 1202.02(b)(ii) regarding distinctiveness of product packaging trade dress. This usually requires consideration of the context in which the mark is used and the impression it would make on purchasers. Generally, no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application under 15 U.S.C. §1051(b) until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d). However, if appropriate, the examining attorney has discretion to issue this refusal before a specimen is submitted. See In re Mars, Inc., 105 USPQ2d 1859 (TTAB 2013).
To determine whether a proposed product design or product packaging trade dress mark is functional, the examining attorney must consider how the asserted mark is used. Generally, in a §1(b) application, the examining attorney will not issue a refusal on the ground that the mark is functional until the applicant has filed an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d).
In a §1(b) application for which no specimen has been submitted, if the examining attorney’s research indicates that a refusal based on functionality or nondistinctive trade dress will be made, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the functional nature of the mark is clearly apparent from the drawing, description of the mark, and research conducted by the examining attorney, without the need to await consideration of the specimen, a refusal based on functionality or nondistinctive trade dress may issue prior to the filing of the allegation of use. See In re Mars, Inc., 105 USPQ2d 1859.