CHAPTER 2 - § 2.02

• Jurisdiction: United States

§ 2.02 PRODUCT CONFIGURATION

Product configuration trade dress may be defined as the shape or overall appearance of a product. For example, products such as the Apple iPod Touch, the Bose Sound Dock, Porsche automobiles, and the Weber charcoal grill are all protected by trade dress registrations on the Principal Register. The images from those registrations are shown below.

Although product configuration trade dress does not need to be registered to be enforced, registration avoids the need to prove secondary meaning at trial, which can reduce the costs of litigation. Moreover, in reality, many litigants apply a "belt and suspenders" approach, and still adduce of secondary meaning during discovery.

Although the above-referenced examples of product configuration trade dress are relatively well-known or famous products to average consumers, a product configuration need not be famous or well-known to garner trade dress protection. In fact, much like the concept of "niche fame" in dilution, product configuration trade dress can develop secondary meaning within a well-defined subset of consumers, or within a particular industry.

Consider the guitars shown below, which are all protected by various registrations directed to, in one example, the "fanciful configuration of a guitar body" (U.S. Reg. Nos. 1,782,606, 2,051,790 and 2,885,394). These products are all produced and sold by Gibson Guitar Corporation and are well known to consumers within the music industry. If you play the guitar, you will likely be able to tell the difference between Gibson's "SG," "Les Paul," and "Flying V" designs (Hint: The first one is the "Les Paul," and the "Flying V" looks like a "V").

As discussed in more detail in Chapter 9, to the extent product configuration trade dress has not yet gained the required secondary meaning, it may be placed on the Supplemental Register, provided it is not functional. For example, the shape of Cinnabon's cinnamon buns are registered on the Supplemental Register under U.S. Reg. No. 2,098,432 for "bakery goods."

Drawing the line between product configuration and product packaging can often be difficult. In Leviton Mfg. Co. v. Universal Security Instruments, Inc., the plaintiff claimed trade dress protection in the color and configuration of an electrical outlet.¹² In particular, the plaintiff used the colors almond, ivory, brown, and gray with its outlets, and such outlets had a unique front face-plate configuration.¹³ The plaintiff identified the...