What Is Trade Dress?
A trade dress can be protected by applying for registration of the trade dress with the United States Patent and Trademark Office (USPTO), which examines trade dress applications similarly to federal trademark applications and issues federal registrations for trade dress in the United States. To be eligible for federal registration with the USPTO, a trade dress must be in use in interstate commerce and must be both distinctive and non-functional. A federal registration is a grant of statutory rights under federal law in a trade dress to its user.
Laws pertaining to trade dress share many similarities and overlap considerably with federal trademark law. However, certain differences do exist including the general requirement of special descriptions, drawings, and identification of goods for trade dress that differ from those typically used for trademark applications.
What Makes a Trade Dress Functional So As to Be Non-Registrable With the USPTO?
To determine whether a trade dress is functional, one or more of the following factors are considered:
- the existence of a utility patent that discloses the utilitarian advantages of the trade dress design sought to be registered with the USPTO is strong evidence of functionality (however, the fact that the proposed trade dress is not the subject of a utility patent does not mean necessarily that the trade dress is nonfunctional);
- advertising by the trade dress applicant that touts the utilitarian advantages of the trade dress design is strong evidence of functionality;
- the availability of alternative designs that work equally well may be evidence that the trade dress is nonfunctional; and
- the existence of a method of manufacture of the trade dress design that is comparatively simple or inexpensive weighs in favor of a finding of functionality of the trade dress.
Note that the existence of a design patent that discloses the trade dress design sought to be registered with the USPTO suggests that the trade dress is nonfunctional since design patents are used to protect ornamental features that are nonfunctional. However, the fact that the proposed trade dress is the subject of a design patent does not mean necessarily that the trade dress is nonfunctional.
Must a Trade Dress Be in Use Before an Application Is Filed?
Note that registration of product design trade dress is always refused by the USPTO for not being inherently distinctive until the trade dress applicant claims and provides sufficient evidence to demonstrate that the proposed trade dress has acquired distinctiveness. Five years of continuous use of the product design trade dress is, by itself, insufficient evidence of acquired distinctiveness. Like trademarks, product design trade dress can only acquire distinctiveness once it is in use in commerce.
Unlike product design trade dress, product packaging trade dress can be inherently distinctive for goods or services without a showing of acquired distinctiveness. For this reason, product packaging trade dress is often easier to register with the USPTO than is product design trade dress. If a showing of acquired distinctiveness for product packaging trade dress is required by the USPTO, like trademarks as well as product design trade dress, product packaging trade dress can only acquire distinctiveness once it is in use in commerce.
What Types of Use Satisfy the Use in Commerce Requirement for Registration of a Trade Dress?
Before the trade dress can become registered, the date of first use of the trade dress anywhere, the date of first use of the trade dress in interstate commerce, and at least one specimen evidencing use of the trade dress in commerce must be submitted to the USPTO.
What Happens After a Trade Dress Application Is Filed?
Rejections are raised by the examining attorney in USPTO-issued correspondence known as office actions. The trade dress applicant is provided with an opportunity to respond to an attempt to overcome the rejections through argument, amendment of certain parts of the application (but not the trade dress itself), or a combination of both. Several office actions may be received in connection with a trade dress application before a federal registration for a trade dress is issued. Once the examining attorney is satisfied that all issues raised in the rejections have been addressed and overcome, the application may be allowed after which it may ultimately issue as a federal registration.
If the rejections in a USPTO office action cannot be overcome, other options may be available for continuing the pursuit of federal protection for the trade dress. Where a response to an office action is not filed within the allotted time for responding, the application will become abandoned.
How Long Is the Life of a Trade Dress Registration?
Can Rights to a Trade Dress Be Granted to Another Person or Business Entity?
Without transferring ownership rights in a trade dress registration (and the trade dress identified therein), limited rights to use the trade dress may be granted by the trade dress owner to a licensee that is another person or a business entity by means of a trade dress license agreement.
Does the USPTO Enforce a Trade Dress Owner’s Trade Dress Rights Against Infringers?
What Are the Rules for Proper Use of Trade Dress Markings?
The circle R marking (®) should be placed in a conspicuous location on a product design trade dress or product packaging trade dress that has been registered with the USPTO. Where such marking is impractical, a written notice setting forth the trade dress that is protected as well as its registration number may be used. The ® marking should not be used with a trade dress before the trade dress is registered with the USPTO including during any time period while a federal application for a trade dress is only pending.
Failure to use appropriate markings with your trade dress can limit the remedies available to a trade dress owner against an infringer in the event that a lawsuit for trade dress infringement is filed by the trade dress owner to enforce rights in and to the trade dress.
The general trade dress marking rules above are applicable only in the United States and its territories. Different rules may apply in certain foreign countries. Improper use of trade dress markings in some foreign countries may subject the trade dress owner or licensee to civil lawsuits, criminal prosecution, fines, and/or imprisonment. Please consult one of our attorneys prior to using trade dress markings in foreign countries.
Can Trade Dress Be Protected in Foreign Countries?
Please contact one of our attorneys if you are interested in conducting a trade dress search or if we may assist you in the preparation and filing of a trade dress application in the United States or in any foreign jurisdictions or with the drafting or negotiation of a trade dress license agreement.