1202.02(c) Drawings, Descriptions, and Disclaimers in Trade Dress Applications
Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) nondistinctive and capable; (4) nondistinctive and incapable; (5) inherently distinctive; or (6) a combination of these factors. To ensure proper examination, the drawing and description of such a mark must accurately depict the mark the applicant intends to register. For example, both the drawing and the description of the mark must clearly indicate those portions that are claimed as part of the mark and those that are not.
If the drawing does not meet the requirements of 37 C.F.R. §2.52, the examining attorney must require the applicant to submit a substitute drawing and a substitute description of the mark. The examining attorney may require the applicant to provide additional information, such as pictures of the goods, samples, or other relevant materials pursuant to 37 C.F.R. §2.61(b), to assist in assessing the accuracy and completeness of the drawing and in crafting a comprehensive description of the mark.
1202.02(c)(i) Drawings of Trade Dress Marks
Drawings of three-dimensional product design and product packaging trade dress marks may not contain elements that are not part of the mark (i.e., matter that is functional or incapable of trademark significance). If the mark comprises only a portion of product design or product packaging, solid lines must be used on the drawing to show the elements of the product design or product packaging that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portions that are 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.
Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are generally 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.
Usually, a drawing of a trade dress mark is depicted in a three-dimensional manner that gives the appearance of height, width, and depth to the mark. Generally, the drawing shows an illustrated rendering of the product design or product packaging, but a photograph of the product design or product packaging is also acceptable. Drawings consisting of either illustrated renderings or photographs of the proposed trade dress will both be subject to the same drawing requirements and must fairly represent the mark (e.g., the drawing shows matter not claimed as part of the mark in broken or dotted lines and it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses).
If the nature of the mark remains unclear from the record, an examining attorney may clarify whether the mark is three-dimensional trade dress by calling or e-mailing the applicant, or issuing an Office action containing requirements about the nature of the mark under 37 C.F.R. §2.61(b), for a clear drawing, or for a revised description. Where appropriate, any relevant trade-dress-related refusals (e.g., mark is functional, mark is not inherently distinctive) may also be included in the Office action.
In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature and the record is unclear, the examining attorney may suggest that the applicant clarify that the mark is two-dimensional in the mark description. See TMEP §808.02. If the mark is two-dimensional in nature, the mark should not be characterized as three-dimensional (e.g., that the mark "appears three-dimensional").
If the applicant is required to submit an amended drawing, the mark description must also be amended accordingly. See TMEP §1202.02(c)(ii) regarding description requirements for trade dress marks.
1202.02(c)(i)(A) Functional Matter
Functional elements of a trade dress mark are never capable of acquiring trademark significance and are unregistrable, much like informational matter. 15 U.S.C. §1052(e)(5); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). Therefore, to show that they are not part of the mark, functional elements must be depicted in broken or dotted lines on the drawing to show the position or placement of the claimed portion of the mark. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) . A requirement to amend the drawing to depict functional matter in broken or dotted lines is permitted and generally does not constitute material alteration of the mark, regardless of the filing basis. See TMEP §807.14(a). Such an amendment is permissible even in an application under §66(a) because it is not considered an amendment to the mark itself, but rather a change in the manner in which the mark is depicted on the drawing, in order to comply with United States drawing requirements, where functional elements are not considered part of the mark. See TMEP §807.14 regarding material alteration and TMEP §§1904.02(j)-(k) regarding drawings in §66(a) applications.
A functionality refusal must issue in cases where the trade dress mark is overall functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5). When a trade dress mark is not overall functional, but contains minor or insignificant elements that are functional, the examining attorney must require an amended drawing showing the functional elements in broken or dotted lines rather than in solid lines. See 37 C.F.R. §2.52(b)(4); Water Gremlin, 635 F.2d at 844, 208 USPQ at 91; Famous Foods, 217 USPQ at 177. The Office action must explain that, because the mark includes functional elements, an amended drawing is required showing the functional elements in broken or dotted lines, and a corresponding amended mark description is required indicating the functional elements depicted in broken or dotted lines are not claimed as part of the mark. The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. See TMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations and TMEP §1202.02(c)(ii) regarding descriptions of trade dress marks.
Functional matter cannot be disclaimed. See Water Gremlin, 635 F.2d at 844, 208 USPQ at 91 ("The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order."); Famous Foods, 217 USPQ at 177 (stating that functional "[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines"). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole and allows the applicant to maintain rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, elements that are functional, or intended to show position or placement only, must be shown in broken or dotted lines on the drawing. See TMEP §1202.02(c)(iii) regarding disclaiming unregistrable portions of trade dress marks.
1202.02(c)(i)(B) Nondistinctive Matter
Nonfunctional elements of a product design or product packaging trade dress mark that are inherently distinctive, that have acquired distinctiveness, or that are capable but for which acquired distinctiveness has not yet been established, may appear in solid lines on the drawing as part of the mark. Nonfunctional, nondistinctive elements that are capable of trademark significance but for which acquired distinctiveness has not been established must be disclaimed. A disclaimer is appropriate because, while these elements are not source indicators, they may still remain part of the mark. See 15 U.S.C. §§1051 -1052, 1056(a), 1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable.
Occasionally, a trade dress mark may include elements that are nonfunctional, yet incapable of trademark significance, such as a common or basic shape of a product itself or the packaging in which a product is sold. These elements must be depicted in broken or dotted lines on the drawing because such elements cannot be considered part of the mark. Cf.Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines). Usually, amendments of drawings to depict incapable elements in broken or dotted lines do not materially alter the mark because the incapable elements are, by definition, not source indicating. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) . Therefore, the examining attorney must issue a requirement for an amended drawing that depicts the incapable elements in broken or dotted lines, and a corresponding amended mark description to reflect that the incapable elements shown in broken or dotted lines are not claimed as part of the mark. See 37 C.F.R. §2.52(b)(4). The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable.
See TMEP §807.14 regarding material alteration, TMEP §1202.02(c)(ii) regarding descriptions of trade dress marks, TMEP §1011.03 regarding amendment of marks in §44 applications, and TMEP §§1904.02(j)-(k) regarding amendment of marks in §66(a) applications.
1202.02(c)(i)(C) Drawings in §44 and §66(a) Applications
For trade dress marks in §44 and §66(a) applications, an amendment of the drawing to depict functional or incapable matter in broken or dotted lines is permitted and generally not a material alteration of the mark. See TMEP §§807.08 and 1904.02(k). Although the mark in a §44 or §66(a) application cannot be amended, a change in the manner in which the mark is depicted may be permitted, in order to comply with the United States drawing requirements. See TMEP §1011.03 regarding amendment of marks in §44 applications and §1904.02(j)-(k) regarding amendment of marks in §66(a) applications. For instance, since functional matter is not considered source indicating and is never part of the mark, displaying it in broken or dotted lines shows placement of the functional matter in relation to the registrable portions of the mark.
Similarly, in §44 or §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 of the mark.
1202.02(c)(ii) Descriptions of Trade Dress Marks Required
An application for a trade dress mark must include an accurate description of the mark. See 37 C.F.R. §2.37. If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description must adequately describe the mark, with unnecessary matter kept to a minimum. The description must clearly indicate that the mark is "three-dimensional" and constitutes "product design" or "configuration" of the goods themselves or product "packaging" or a "container" in which the goods are sold, or that the trade dress is for services offered (e.g., interior of a restaurant, exterior of a retail establishment, or point-of-sale-display such as a costume used in connection with the services).
If applicable, the description must specify which elements on the drawing constitute the mark and are claimed as part of the mark and which are not. The description of the mark must make clear what any broken or dotted lines represent and include a statement that the matter shown in broken or dotted lines is not claimed as part of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §§808-808.03(f). This information must be included in the description. Statements only in a response to an Office action or elsewhere in the record are insufficient. The description must also avoid use of disclaimer-type language, such as "no claim is made to the …," because of the different legal significance of using broken lines versus submitting a disclaimer. See TMEP §1202.02(c)(iii) regarding disclaimers of unregistrable elements of trade dress marks.
In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature, an applicant may clarify that the mark is two-dimensional in the mark description. See TMEP §808.02. If the mark is two-dimensional in nature, the applicant should not characterize the mark as three-dimensional (e.g., that the mark " appears three-dimensional").
During the prosecution of a trade dress application, if the applicant is required to submit an amended drawing (e.g., showing broken or dotted lines to depict functional matter, to indicate nondistinctive and incapable matter, or to depict matter otherwise not claimed as part of the mark), the examining attorney must also require a corresponding amended description.
Examples of acceptable language for this purpose are: "The broken lines depicting [describe elements] indicate placement of the mark on the goods and are not part of the mark" or "The dotted lines outlining [the goods] are intended to show the position of the mark on the goods and are not part of the mark."
For example, for the mark below,
an appropriate description (and color claim) of the mark could read:
The colors white, blue, light blue, and silver are claimed as a feature of the mark. The mark consists of the color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border, a light blue curving band, and three light blue droplets. The dotted lines outlining the container and its cap indicate placement of the mark on the goods and are not part of the mark.
For the mark below,
an appropriate description (and color claim) of the mark would read:
The color red is claimed as a feature of the mark. The mark consists of a single transverse red stripe applied adjacent to one end of the three-dimensional elongated packaging for the goods. The dotted outline of the packaging is intended to show the position of the mark and is not part of the mark.
And for the mark below,
an appropriate description of the mark would read:
The mark consists of a three-dimensional configuration of a stringed musical instrument body. The neck, peghead, and other instrument parts shown in broken lines serve to show positioning of the mark and form no part of the mark.
The examining attorney must ensure that the description statement has been entered into the Trademark database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817.
See TMEP §§1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.
1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. TMEP §1213. The applicant maintains rights in the disclaimed matter only as part of its mark. Thus, except in the rare case when a trade dress mark is unitary, unregistrable elements must be either depicted in broken or dotted lines on the drawing or disclaimed, as appropriate. Specifically, elements that are functional or otherwise incapable of trademark significance must be depicted in broken or dotted lines on the drawing. Elements that are nonfunctional but capable of acquiring trademark significance, but for which acquired distinctiveness has not been established, must be disclaimed. See TMEP §§1202.02(c)(iii)(A)–(B) regarding functional and nondistinctive matter that cannot be disclaimed.
Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), "trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression." Although each element is combined with others to form one composite mark, each element retains its separate commercial impression such that the mark as a whole is typically not unitary. Therefore, when a mark contains a combination of trade dress and word/design elements, each element should be examined separately for distinctiveness, except in the rare instance where it is shown that the mark as a whole is unitary. If only one element is inherently distinctive, this is not enough to transform the entire mark into an inherently distinctive, unitary mark. See TMEP §§1213.05-1213.05(h) regarding unitary marks.
1202.02(c)(iii)(A) Functional Matter
Since functional elements of a trade dress mark are unregistrable as a matter of law and cannot form part of the mark, a disclaimer is not an appropriate means of addressing functional matter in a trade dress mark. See In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) ("The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order."); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (stating that functional "[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines"). Instead, if the mark is not overall functional, an amendment of the drawing must be required to depict any minor or insignificant functional elements in broken or dotted lines. Id.; see TMEP §1202.02(c)(i). However, if the mark is overall functional, registration must be refused under §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5).
1202.02(c)(iii)(B) Nondistinctive Matter
Sometimes, a trade dress mark, as a whole, is registrable but contains elements that are nondistinctive but capable. See TMEP §1202.02(c)(i)(B). In this situation, if acquired distinctiveness has not been established, the capable elements must be disclaimed because, while they are not source indicators, they are still part of the mark. See 15 U.S.C. §§1051-1052, 1056(a), 1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable. However, where the nondistinctive elements are incapable of acquiring distinctiveness, for example, common or basic shapes of product design or product packaging, such elements are not part of the mark and, therefore, must be depicted in broken or dotted lines rather than disclaimed. See 37 C.F.R. §2.52(b)(4); cf.Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines).
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f), TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter, and TMEP §§1213.03–1213.03(d) regarding disclaimers of unregistrable components of marks. See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.").
1202.02(c)(iv) Three-Dimensional Marks
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(b)(2). See TMEP §807.10. To accurately reflect the exact nature of the mark, the mark description must state that the mark is three-dimensional in nature. This three-dimensional feature of the mark must be shown in the supporting specimens of use, in order for the drawing to comprise a substantially exact representation of the mark as actually used. Conversely, a specimen depicting a three-dimensional representation of a mark would not be acceptable to show use for a mark that is described or depicted as a two-dimensional mark. If the applicant believes it cannot adequately display its mark in a single rendition, it may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark. 37 C.F.R. §2.146(a)(5).