CHAPTER 9 - § 9.01

• Jurisdiction: United States

§ 9.01 REGISTERING TRADE DRESS WITH THE UNITED STATES PATENT AND TRADEMARK OFFICE

As covered in previous chapters, trade dress is a product's overall appearance and may include product design, packaging, flavor, size, shape, color, texture, and graphics.¹ In fact, trade dress includes almost anything that both carries meaning and identifies a source of goods or services.² Because trade dress protection can be very broad, identifying and protecting trade dress is of great value.

Fortunately, trade dress is registrable with the United States Patent and Trademark Office (USPTO).³ Trade dress is registrable because it is considered a "symbol" or "device" within the meaning and interpretation of sections 2 and 43(a) of the Lanham Act (15 U.S.C. §§ 1052, 1125).⁴ However, even absent a registration, trade dress is protected through section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).

[1]—Advantages of Registration

The main advantages of registering trade dress are

• Presumptive evidence of ownership of the mark and the exclusive right to use the mark nationwide with the goods/services listed claimed⁵

• Presumptive evidence of non-functionality at trial (shifts the burden to an accused infringer to affirmatively show functionality)⁶

• Federal jurisdiction⁷

• Constructive notice of ownership⁸

• Constructive use as of the filing date of the application⁹

• Indefinite protection

• Gaining "incontestable" status where the exclusive right to use a mark with the claimed goods or services may be attacked only by certain statutory defenses¹⁰

• Preventing importation of infringing goods through a filing with the United States Customs Service¹¹

• Using the registration as a basis for registering the trade dress in foreign countries

As shown above, USPTO registrations help with enforcing trade dress. In litigation, a registration shifts the burden of proof to the defendant. In particular, the plaintiff is presumed to own rights in the trade dress, and it is also presumed that the trade dress has secondary meaning. Often, if a registration exists, these points are not disputed. A registrant likewise does not have the burden of proving non-functionality, which is a major battleground in trade dress litigation. Streamlining this task also helps lower litigation costs for experts and attorneys.

Registration also provides constructive notice of ownership. This is important because sophisticated competitors will likely perform some due diligence before choosing new trade dress. If similar trade dress is registered, competitors would be more likely to choose different trade dress.

Importantly, unlike patent or copyright grants, registered trade dress may remain registered and in force indefinitely. Moreover, after five years of registration, the trade dress may become incontestable. An incontestable registration may be challenged in only limited circumstances, such as priority (i.e., the challenger alleges they were actually the first to use or register the trade dress in commerce). An incontestable registration may also be challenged for (1) genericness, (2) fraud on the USPTO, (3) abandonment, (4) misrepresenting the goods/services, or (5) being scandalous in nature.

Registration also helps to protect trade dress from foreign infringers. A registration may be used as evidence of registrability in foreign countries. Consequently, expanding to and acquiring registrations in other countries is easier if a registration is first obtained in the United States. Moreover, a registration allows an owner to prevent infringing goods from being imported from other countries. This benefit continues to gain value as more and more counterfeit goods are manufactured abroad.

Finally, registration may entitle the owner to statutory damages in instances of counterfeiting. Although one most typically associates the concept of counterfeiting with registered trademarks (e.g., the Louis Vuitton "LV" mark), counterfeiting can occur for trade dress as well. Section 35 of the Lanham Act provides for statutory damages "in a case involving the use of a counterfeit mark" that is registered on the Principal Register.¹² Statutory damages can range from $1,000 to $200,000 per mark per class of goods, or up to $2,000,000 per mark per class of goods, if the infringement is willful.¹³ Thus, in cases where there is clear evidence of willfulness, a litigant may choose elect statutory damages and thereby avoid the associated costs of discovery and employing a damages expert. In one recent case, a court awarded $600,000 in statutory damages to Victorinox, makers of Swiss Army knives and tools, for infringement of its registered trademarks and trade dress.¹⁴ However, it is worth noting that in some jurisdictions, an election of statutory damages may prevent the recovery of attorneys' fees.¹⁵

[2]—Requirements for a Trade Dress Application

A trade dress application filed with the USPTO must include the following:

• The applicant's name

• The contact information for correspondence to/from the USPTO

• A clear image or drawing of the mark

• A description of claimed goods or services

• The USPTO filing fee¹⁶

The above requirements must be met in order to obtain a filing date with the USPTO.¹⁷ The applicant's name is the name of the person or entity that purports to own the mark. The contact information for corresponding with the USPTO is usually outside counsel's information. However, some companies may prefer that the correspondence first comes to their in-house counsel.

A clear image or drawing of the trade dress is also needed to obtain a filing date.¹⁸ The drawing is used to plainly show what the applicant intends to register.¹⁹ This both serves as a basis for examination and provides notice to others for the visual portion for the applicant's claimed trade dress.²⁰ An example of a filed drawing for registered trade dress for IKEA's stores is shown below.

Practice Tip: If the applied-for trade dress is not visual (i.e., if it is a sound, smell, or other type of dress), applicants should still create a JPG file of a document that states "Nonvisual Mark" and file it as the drawing to show that nonvisual trade dress is claimed.²¹

Importantly, aside from submitting a clear drawing of the trade dress, an applicant must also file a specimen of the trade dress for registration.²² A specimen is a depiction of the trade dress as used in commerce.²³ Specimens show the USPTO examiner (and the world) how an applicant's trade dress is presented to the public.²⁴ The specimen is also evidence of actual use of the trade dress in commerce, which is needed by statute for registration.²⁵ An example of a filed specimen for registered trade dress for IKEA's stores is shown below.

Practice Tip: If your trade dress does not include color, your specimen should be in black and white. If color is included in the specimen, the USPTO will require that the colors be claimed in the application. Another application would then have to be filed to claim colorless trade dress.²⁶

A description of goods or services is also required to define the scope of the claimed trade dress.²⁷ It is used by the USPTO examiner to determine whether a mark is registrable.²⁸ It is also used to give notice to third parties of the claimed trade dress scope.²⁹ The description of goods and services is particularly important because a carefully crafted goods or services description may be the difference between registration and rejection. For example, the goods or services claimed ideally should not include the mark itself, as this may prompt genericness or descriptiveness rejection. Likewise, goods or services descriptions that may cause trade dress to be confused with existing trade dress should be avoided. Consequently, an applicant should perform some level of research into existing trade dress before crafting a goods or services description.

Practice Tip: The USPTO will neither accept nor grant a filing date for the following vague descriptions of goods or services: "(1) the mark itself; (2) a class number; (3) wording such as 'company name,' 'corporate name,' or 'company logo'; (4) 'Internet services' or 'e-commerce services'; (5) 'business' or 'business services'; (6) 'miscellaneous' or 'miscellaneous services'; or (7) 'personal services.'"³⁰ Practitioners should use The Acceptable Identification of Goods and Services Manual (the ID Manual),³¹ at least as a guide, when describing goods and services in an application.

The last requirement for receiving a filing date is payment of the USPTO fee for at least one class of goods or services.³² The current trademark application fees vary between $275 and $375, depending on how an applications is filed (the cost decreases with electronic filing).³³ The filing fee amount is subject to change and should be checked before an application is filed.

If the above requirements are met, an applicant will receive a filing date. Properly obtaining a filing date is important because, as shown above, the filing date of registered trade dress constitutes constructive use of the trade dress. The applicant can likely prevent use of any confusingly similar mark for which use begins after the filing date. Once a trademark application is properly filed, the USPTO begins an examination process to determine whether the trade dress is registrable.

[3]—Uspto Examination Process

When the USPTO receives an application, it performs an initial examination.³⁴ The initial examination must be a complete examination.³⁵ A complete examination includes analyzing all of the requirements for registration.³⁶ Consequently, an examiner cannot merely find one discrepancy and end the inquiry.³⁷

After the initial examination is complete, the USPTO issues an Office Action either allowing registration or explaining the grounds for refusal.³⁸ If the application is refused, the Office Action must advise the application of all grounds for refusal.³⁹ USPTO procedures guard against piecemeal...