1202.02(b)(i) Distinctiveness and Product Design Trade Dress
A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f) of the Trademark Act. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-16, 54 USPQ2d 1065, 1069-70 (2000). Therefore, as a matter of law, product design cannot be considered inherently distinctive and cannot be registered without a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069. The United States Supreme Court noted that product design almost invariably serves purposes other than source identification, and that "[c]onsumers are aware . . . that, almost invariably, even the most unusual of product designs -- such as a cocktail shaker shaped like a penguin -- is intended not to identify the source, but to render the product itself more useful or appealing." Id.
In applications seeking registration of marks comprising product design, the examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive unless the applicant claims that the mark has acquired distinctiveness under §2(f) and provides sufficient evidence to show that the mark has acquired distinctiveness. The ground for the refusal is that the proposed mark consists of nondistinctive product design, and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127. Because product design cannot be inherently distinctive as a matter of law, per Wal-Mart, if the applicant has not claimed acquired distinctiveness, supporting evidence for the refusal is unnecessary. 529 U.S. at 213-16, 54 USPQ2d at 1069-70. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). See TMEP §§815–816.05 regarding the Supplemental Register, §§1202.02(a)–(a)(viii) regarding functionality, §§1202.02(b)–(b)(ii) regarding distinctiveness, and §§1212–1212.10 regarding acquired distinctiveness. A refusal on the ground that the entire proposed mark is not inherently distinctive generally is not appropriate if the mark includes additional distinctive matter beyond just the product design, such as words and/or images. In such situations, the applicant may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements.
For applications based on §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the examining attorney must issue the nondistinctiveness refusal for a product design mark even if the applicant has not filed an allegation of use. See TMEP §1202.02(d) regarding trade dress in intent-to-use applications. For applications based on §44 or §66(a), even though the applicant does not need to show use in commerce, the same standards regarding product design apply and the examining attorney must issue the nondistinctiveness refusal, assuming acquired distinctiveness has not been established. See TMEP §1010 regarding §44 applications and TMEP §1212.08 regarding distinctiveness in §44 or §66(a) applications.
In distinguishing between product packaging and product design trade dress, Wal-Mart instructs that, in "close cases," courts should classify the trade dress as product design and, thus, require proof of secondary meaning. 529 U.S. at 215, 54 USPQ2d at 1070. In addition, product design can consist of design features that are incorporated in the product and need not implicate the entire product. See id. at 207, 213, 54 USPQ2d at 1066, 1069 (holding a "cocktail shaker shaped like a penguin" is product design, as is "a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like"); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006) (holding the mark to be product design trade dress where the mark was for clothing and consisted of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas located on each side of the label with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device).
Applicants face a heavy burden in establishing distinctiveness in an application to register trade dress. See In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *38 (TTAB 2022); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *19 (TTAB 2020); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1504 (TTAB 2017); In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1986 (TTAB 2009); In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283-84 (TTAB 2000); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *16 (TTAB 2019); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) ("secondary meaning in a product configuration case will generally not be easy to establish"). A mere statement of five years’ use is generally not sufficient. See, e.g., In re Ennco Display Sys. Inc., 56 USPQ2d at 1284, 1286 (noting the statutory language regarding acquired distinctiveness "is permissive, and the weight to be accorded [evidence of five years of substantially exclusive use] depends on the facts and circumstances of the particular case," and finding evidence of seven to seventeen years of use insufficient to support a claim of acquired distinctiveness). Generalized sales and advertising figures by themselves will usually be insufficient proof of secondary meaning where the promotional material does not use the design alone but instead with other marks. See In re Soccer Sport Supply Co., 507 F.2d 1400, 1403, 184 USPQ 345, 348 (C.C.P.A. 1975) (advertising displaying the design at issue along with word marks lacked the "nexus" that would tie together use of the design and the public’s perception of the design as an indicator of source); In re Mogen David Wine Corp., 372 F.2d 539, 542, 152 USPQ 593, 595 (C.C.P.A. 1967) (where a container design appeared with a word mark, any alleged association of the design with the company "was predicated upon the impression imparted by the [word] mark . . . rather than by any distinctive characteristic of the container per se."); Grote Indus. Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1213 (TTAB 2018) (where advertising prominently used word mark, consumers were more likely to associate the word mark rather than the design with the source of the goods), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022). "[I]n the context of product design marks, it is imperative that the evidence of acquired distinctiveness 'relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.'" In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *39 (quoting In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017)); see In re SnoWizard, Inc., 129 USPQ2d 1001, 1004-5 (TTAB 2018) (citing Wal-Mart Stores Inc. v. Samara Bros., 529 U.S. at 211-13, 54 USPQ2d at 1068-69).
A product design may become generic and thus incapable of functioning as an indicator of source because it is basic or common in an industry or is a mere refinement of a product design commonly used for the relevant goods. In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *5-6 (noting that a design may be deemed incapable of registration where "it is so common in the industry that it cannot be said to identify a particular source" (citing Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009))). These common or basic shapes are not registrable on the Principal Register under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register under §23(c), 15 U.S.C. §1091(c).
For these incapable product designs, registration on the Principal Register must be refused on the ground that the proposed mark fails to function as a mark, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The ground for refusal on the Supplemental Register is that the mark is incapable of functioning as a mark under §§23(c) and 45. See 15 U.S.C. §§1091(c), 1127. A two-step generic inquiry should be applied to product design trade dress under these refusals to determine: (1) "the genus of the goods or services at issue," and (2) "whether the consuming public primarily regards the matter sought to be registered as a category or type of trade dress for the genus of goods or services." In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *6 (citing In re Odd Sox LLC, 2019 USPQ2d 370879, at *6 (TTAB 2019)). See TMEP §1209.01(c)(i) for more information regarding the two-step test for determining whether a proposed mark is generic and the evidence needed to support such refusal.
See TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.