1202.02(c)(i) Drawings in Trade Dress Applications
Drawings of trade dress marks, including three-dimensional product design and product packaging, may not contain elements that are not part of the mark. If the mark comprises the design of only a portion of the product or container, solid lines must be used on the drawing to show the elements of the product or container that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portion of the product or container that is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); see In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (affirming the functionality of a circular-shaped container for the goods and the requirement for an amended drawing to either delete the representation of the container from the drawing or show it in dotted lines); TMEP §807.08.
Additionally, broken or dotted lines must be used to indicate elements that are functional or that are included on the drawing merely to show the position of the claimed portion of the mark. The removal or deletion of functional matter that is claimed as part of the mark is permitted and generally does not constitute a material alteration of the mark, regardless of the filing basis, if the functional matter is separable from the other elements in the mark. Since functional features are never capable of acquiring trademark significance and are unregistrable, much like informational matter, they are not part of the mark and usually may be removed or deleted from the drawing by showing them in broken or dotted lines. Doing so constitutes an amendment of the drawing rather than an amendment of the mark.
In the limited circumstance where a proposed trade dress mark is not functional overall, but contains insignificant elements that are functional, the examining attorney must issue a requirement for an amended drawing and allow the applicant to remove or delete the functional elements or depict them in broken or dotted lines to reflect that they are not claimed as features of the mark. See TMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations. The Office action must also indicate that, pending receipt of a proper amended drawing and mark description, registration is refused because the applied-for mark includes elements that are functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5).
In such a case, disclaimer of the functional elements is not appropriate because they do not form a part of the mark and are not capable of functioning as a trademark. See In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. This means that the applicant maintains rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, matter that is functional or intended to show placement only is not part of the mark and should not be disclaimed. Representations of certain non-distinctive but capable features of a mark may be disclaimed in the limited circumstance discussed below.
Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion) analysis. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006).
In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible - or if dotted lines would result in an unclear depiction of the mark, the applicant may use solid lines. However, the applicant must insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods, as appropriate.
Elements of a mark, such as features of non-functional product packaging or product design or configuration, that have acquired distinctiveness may appear in solid lines on the drawing as part of the mark. Such elements may be removed from the mark only if the removal thereof does not result in material alteration.
A photograph of the applied-for trade dress is acceptable as a drawing if it otherwise meets the drawing requirements (e.g., it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses) and it fairly represents the mark. Note that, although the mark in a §66(a) application cannot be amended, the applicant must comply with the United States requirements regarding drawings of the mark, and an amendment of the drawing for the purpose of compliance with United States law will be accepted. See TMEP §1904.02(j)–(k). Therefore, in §66(a) applications, amendments to delete extraneous matter from photographs, or amendments of drawings from photographs to illustrated renderings showing elements of the mark in dotted or broken lines, will be accepted and will not be considered a material alteration.