TRADE DRESS BASICS
Trademarks, as we know, fundamentally serve the purpose of alerting the consumer to the producer of the Good/Service; when you see an Apple symbol on a Computer, you understand that the computer was built by the Apple Corporation.
Trademark law also accounts for a parallel idea, known as, “Trade Dress.”
Trade Dress contemplates the general appearance of a product including not only the design of the product but also its packaging. Color, texture, shape, scent, or even flavor can all be components of trade dress.
Each aspect of the applied-for Trade Dress must be examined by the USPTO Examining Attorney, who first and foremost asks,‘Is this Trade Dress Functional’? If the examining attorney determines that it is in fact functional, the application stands a much greater chance of being denied.
WHAT DOES TRADE DRESS FUNCTIONALITY MEAN?
One simple way to better understand this idea is to again remember that the purpose of a trademark is only to serve as a source identifier – it is a branding tool. The moment the trademark or Trade Dress is Functional, it is doing something more than simply being a source identifier – it has a utility.
There are two interwoven components of the functionality doctrine of Trade Dress to consider: functionality and competition. The examining attorney will not only ask, ‘Does this Trade Dress serve a Purpose?’ but also ‘Will the admission of this Trade Dress prevent others from competing in the same industry?’ Thus, the product’s Trade Dress registration cannot prevent fair market competition.
TRADE DRESS INTERPRETATION UNDER THE SIXTH CIRCUIT
Remember, not every Court will always have the same exact interpretation/ruling on a given legal issue. In the Sixth Circuit, for example, the court will consider whether or not the functionality is Aesthetic or Utilitarian. If it holds that the applied-for Trade Dress is aesthetic, it will use what’s known as the “competitive-necessity test”, whereas if it determines if it is utilitarian, it will use what’s known as the “effect-on cost test.”
TRADE DRESS AND THE SNOWPLOW
Perhaps one of the most well-known examples of the Trade Dress doctrine in practice is the matter of the proprietary, orange snowplow. The blade of the snowplow is critical to the removal of snow, but the color of the blade does not affect the plow’s function. In this instance, a distinctive color associated with the snow removal’s brand could be included as part of the trade dress application because its mere inclusion does not remove the snowplow from the marketplace and inhibit competition. However, if the snowplow itself had a patented utility feature, the USPTO examining attorney could be persuaded to reject a trade dress application because the features are functional.
LANHAM ACT AND THE TRADE DRESS FUNCTIONALITY TEST
Before an amendment to the Lanham Act, the USPTO once made distinctions between de facto and de jure functional features; de facto features did not automatically disqualify a trade dress application – but de jure functionality would.
Using the snowplow example, the shape of the blade quite literally affects the plow’s ability to remove snow, so it is ineligible for Trade Dress registration. De facto and de jure functionality are now frankly anachronistic from a trademark jurisprudence perspective but these terms were once quite relevant and ubiquitous indeed.
USPTO AND THE BURDEN OF PROOF OF FUNCTIONALITY
The USPTO’s examining attorney must meet the burden of proof required under Section 2(e)(5) of the Trademark Act when rejecting a trade dress application because of functionality. Continuing with the snowplow example, a patent for the shape of the snowplow’s blade would be a compelling piece of “proof” for the USPTO’s examining attorney to establish a prima facie case that the blade’s function renders it ineligible for trade dress protection. A functionality determination can also be influenced by promotional materials; the way the product is advertised, or anything related to the product’s features etc.
If the functions of the product are heavily promoted, this could lead the USPTO’s examining attorney to conclude that the product is ineligible for trade dress protection because of the functionality doctrine. However, if the applicant can prove the product has multiple design alternatives, and there is no competitive advantage to the product’s chosen design, the USPTO’s examining attorney may decide that the product is eligible for trade dress protection status.
Fundamentally, the question the examining attorney is asking is, ‘Is this Trade Dress the sort of thing that establishes a brand or was it constitutionally designed to perform an operative function?’
Does this mean that if a product is functional, it is ineligible for trade dress protection? Not necessarily. A product can in certain circumstances be functional and still qualify for trade dress protection. In a well known 2001 case, the Supreme court held that the mere existence of an expired utility patent does not prevent Trade Dress but it is strong evidence that the design of the applied for Trade Dress is functional. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30 (2001). These distinctions can be difficult to identify and understand. Ultimately, Trade dress applications are best prepared with the assistance of an attorney with experience in trademark applications.