Trade Dress Series, Part 2: Strategies to obtain trade dress protection

In Part 1 of this series, I introduced the different methods for seeking protection on product designs, namely, trade dress, copyright, and design patent. In this article, we will take a closer look at trade dress and how to obtain this type of intellectual property protection.

Trade dress is a “3D” form of trademark that includes product package, product shape, configuration, colors and décor. The key to trade dress protection is that the claimed proprietary feature is distinctive and non-functional. This means that the feature(s) you want to identify as trade dress must be unique and not have a particular use. Functional and non-distinctive features cannot be protected as trade dress. The other factor of trade dress is that it must have secondary meaning, or consumer recognition. These features are known as “source identifiers.” Consumers must be able to see the features and associate them with your brand and company. (Product packaging can be inherently distinctive and can require a low showing of distinctiveness, but product design cannot.)

It may take time to acquire sufficient consumer recognition (secondary meaning) of the trade dress as a source identifier, so an applicant may opt to first register the trade dress with the USPTO on the Supplemental Register. After five years, the applicant can usually apply to register the mark on the Principal Register – sooner if it has proof that secondary meaning has attached to the feature. In other words, as soon as you can provide direct evidence that the consumer can instantly associate the feature with the source (company or brand), you can register the trade dress on the Principal Register. You must show that the feature is understood by the buying public to be its “signature” feature and part of its overall branding program. Design and color are never inherently distinctive in the eyes of the Trademark Office. Those features must always prove to have acquired secondary meaning to the consumer before they can be protected under federal law.

If an applicant receives an ornamentation rejection (the Examiner finds that the claimed product design feature does not serve to identify and distinguish the product from others like it), the applicant can overcome this rejection with a submission of evidence that the trade dress is unique and not common in the field. Product size and placement can arguably be distinguishing features, as well.

Sufficient proof of secondary meaning generally includes:

(1) a declaration from a corporate officer about sales figures in terms of dollars and unit numbers over a five-year period;

(2) a declaration from a marketing executive regarding advertising details and expenditures over the same five-year period;

(3) declarations from distributors, dealers, or customers that the buying public associates that feature with a particular source;

(4) survey evidence;

(5) length and exclusivity of use;

(6) media coverage;

(7) part of a well-known product line; and

(8) marketing campaign material that emphasizes the feature (e.g. “look for” the bright orange package).

Part 3 of this series further explains the consumer recognition requirement. Part 4 provides examples of popular brands that have successful trade dress claims, and Part 5 reveals some unsuccessful attempts at trade dress protection.