Trademark Spaces and Trademark Law's Secret Step Zero.

• Author: Lemley, Mark A.

Abstract. When is a design just a design, and when is it a trademark? Over the last several decades, courts have developed a clear framework for evaluating the distinctiveness of certain unconventional marks, especially those typically conceived of as "trade dress." The Supreme Court has drawn a line between product packaging, on the one hand, and product design, on the other. Packaging features are treated just like any other potential trademark in the sense that we protect them automatically if they are inherently distinctive, and we require evidence of secondary meaning if they aren't. Product design is different. Like color, it is incapable of being inherently distinctive and can be protected only when it has acquired secondary meaning.

There's just one problem with this fundamental rule: It isn't true. Or at least, it isn't the whole truth. As we show in this Article, sometimes courts and the Trademark Office don't recognize features like logos as being part of a product's design, and as a result, they ignore the categorization system and evaluate the claimed features for inherent distinctiveness. Something similar happens with certain product packaging features, except in reverse.

In other words, courts are engaged in a previously unrecognized "step zero" before they classify trade dress features and apply the normal rules of distinctiveness for product packaging and product configuration. In that largely implicit step, courts and trademark examiners make their own judgments about the role of that feature, and particularly whether they believe consumers are likely to regard those features as trademarks.

While courts and the Trademark Office have been slow to articulate rules for step zero--or even to acknowledge that it exists--we show in this article that in practice they are recognizing what we call "trademark spaces": locations that consumers are likely to assume are serving as trademarks. When they apply this implicit step zero, courts and the Trademark Office frequently treat the location of a claimed feature on the product or package as an important determinant of trademark status. As we describe in detail, some locations are special. Use in those spaces goes a long way to convincing a court or trademark examiner that the design is a trademark.

The recognition of trademark spaces offers a way to rationalize the step zero analysis and to begin thinking more systematically about the relationship between distinctiveness and use as a mark. Courts can and should evaluate use in a trademark space as part of the broader step zero inquiry. But they should do so explicitly and based on evidence, not instinct. Bringing step zero out into the open will help us better understand when and why consumers react to certain designs as trademarks. And it will pave the way for us to reject claims to own things that either do not or should not function as trademarks.

Table of Contents Introduction I. The (Written) Law of Trade Dress A. Inherent vs. Acquired Distinctiveness B. Trade Dress II. The Secret Step Zero A. Trademark Spaces on Products B. Step Zero for Packaging C. How Does Step Zero Work in Practice? III. Implications A. What Is to Be Done? B. Proving Trademark Spaces C. Limiting Trademark Spaces D. Consumer Sovereignty and Law in Action Conclusion Introduction

Trademark law was created with words and logos in mind, but it has more recently expanded to include other kinds of designs--particularly those courts generally refer to as "trade dress." (1) That expansion has raised difficult conceptual and doctrinal questions because design features, even more than words, can serve many different purposes. When is a design just a design, and when is it a trademark?

Over the last several decades, courts have developed a clear framework for evaluating the distinctiveness of trade dress. The rules that comprise this framework are, as an initial matter, categorical: The Supreme Court has drawn a line between product packaging, on the one hand, and product design, on the other. (2) Packaging features are treated just like any other potential trademark. They are immediately protectable if they are inherently distinctive; if they're not inherently distinctive, then they're only protectable if they have secondary meaning. (3) Product design is different. Like color, it is incapable of being inherently distinctive and can be protected only when it has acquired secondary meaning. (4)

To be sure, it's not always easy to distinguish packaging and design--categories the Supreme Court has never defined. Still, even if the task is sometimes difficult, the basic doctrinal structure is clear and now fundamental to the way we teach trademark law: To determine eligibility for protection, we first have to classify the claimed subject matter as either packaging or product design, because we apply different rules to each. (5)

There's just one problem with this fundamental rule: It isn't true. Or at least, it isn't the whole truth. As we show in this Article, sometimes courts and the Trademark Office (6) don't recognize features like logos as being part of a product's design, and as a result, they ignore the categorization system and evaluate the claimed features for inherent distinctiveness. (7) Something similar happens with certain product packaging features, except in reverse: Even though they are capable of being inherently distinctive, (8) they are sometimes refused protection without consideration of distinctiveness at all. (9)

Most courts and the Trademark Office evaluate inherent distinctiveness of product packaging and other non-word marks by asking whether the claimed feature is:

A 'common' basic shape or design, whether it [is] unique or unusual in a particular field, whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it [is] capable of creating a commercial impression distinct from the accompanying words. (10) But sometimes courts or the Trademark Office conclude that packaging features are merely decorative or ornamental. When they do, they don't just find that the features aren't inherently distinctive; they often bypass distinctiveness altogether and find the features unprotectable because they don't function as trademarks. (11)

In other words, the framework for determining the eligibility of trade dress features has a previously unrecognized "step zero"--a step that comes before classification of trade dress features as product packaging or product configuration. (12) In that largely implicit step, courts and trademark examiners make their own judgments about the role of the claimed features, particularly whether they believe consumers are likely to regard those features as trademarks. Depending on the role they believe those features are playing, courts and examining attorneys will depart from the doctrinal structure created by the Supreme Court, sometimes treating product design features as potentially inherently distinctive, and sometimes refusing automatic protection (and perhaps protection at all) to unique or unusual features of product packaging.

Because the prevailing structure focuses overwhelmingly on distinctiveness, there is very little doctrine associated with deciding whether a design functions as a mark. As a result, this unacknowledged step zero is generally ad hoc. It also has a strong "know it when you see it" character. The lack of conceptual or doctrinal clarity about the relationship between distinctiveness and use as a mark is not unique to the trade dress context, or even to designs. (13) But the problems are more pervasive and difficult in the design context, because there the distinctiveness questions are more complicated and the meaning of use as a mark is less clear.

While courts and the Trademark Office have been slow to articulate rules for step zero--or even to acknowledge that it exists--we show in this Article that in practice they are recognizing what we call "trademark spaces." Specifically, they frequently treat the location of a claimed feature on the product or package as an important determinant of trademark status. As we describe in detail below, some locations are special: Use in those spaces goes a long way to convincing a court or trademark examiner that the design is a trademark. (14) The reverse is true as well: A design that is not located in a traditional trademark space may not be considered a trademark even if it's a recognizable logo that would clearly be treated as a trademark if it were located elsewhere. (15) The implicit emphasis on trademark spaces aims to reflect consumer understanding of branding at a sort of Goldilocks level: less categorical than the distinction between product packaging and product design, but more general than mark-specific secondary meaning rules.

Trademark spaces often serve a preliminary framing function, determining whether courts recognize the features as trade dress that therefore must be categorized as product design or as packaging. They also play a substantive role in determining trademark status. Courts and the Trademark Office assume that images in trademark spaces will be understood by consumers as trademarks, while images outside a traditional trademark space won't be. For example, courts and the Trademark Office may treat a new image as a trademark if it is placed over the left breast of a shirt or on the tongue of a sneaker, but not if the same image is put in a different location. (16) That assumption affects the distinctiveness analysis, making courts more likely to treat the design as having secondary meaning when it is located in a trademark space. It also often influences their judgments as to whether the design functions as a mark rather than being merely informational or ornamental.

The recognition of trademark spaces offers a way to rationalize the step zero...