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Test to Qualify For a Trade Dress Registration

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INTRODUCTION TO TRADEMARKS
What is Trade Dress?
Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. The legal term for an art that describes the appearance, distinctive design, color, and pattern of a product or its packaging is termed as a trade dress. Trade dress of a product or packaging should be distinctive from other product. Like patents, trademarks, copyrights and geographical indications, trade dress too are a form of intellectual property. Trade dress are protected under § 43(a) of the Lanham Act.

The two part test:

To be qualified for a registration under trade dress, a product should pass the two part test. The two part test is as follows:

a. Trade Dress must showcase that it is non functional in nature.
To have a hassle free registration for a trade dress, the owner of the trade dress must demonstrate that the trade dress for his product is non-functional in nature. A trade dress can be in the form of a symbol, stylized slogan with a combination of design and symbol in a product, an ornamental figure, unique shape and size. A particular type of trade dress should remind a consumer of the brand name associated with that trade dress For example, if a consumer notices the sensual shape of a Versace perfume bottle, the consumer shall only relate it to the brand name Versace. Design features in a trade dress cannot be ruled by functional aspect of a product. If the trade dress is found to be “functional” by a court, it is entitled only for patent protection. The Supreme Court has observed in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164–65 (1995), that “[I]f a product’s functional features could be used as trademarks . . . a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity)”

It is difficult to determine whether a claimed trade dress is necessary for effective competition and therefore not entitled for protection. In such scenario, courts look at various aspects. The factor of perhaps maximum importance is the existence of a utility patent bearing on the design. The Supreme Court has held in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29–30 (2001) held that “the disclosure of a related utility patent is “strong evidence” of the functionality of the underlying device” “A design feature of a particular article is ‘essential’ only if the feature is dictated by the function to be performed; a feature that merely accommodates a useful function is not enough…” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982)
b. Trade dress must show case inherent distinctiveness or acquired secondary meaning.
The second test that an owner of a trade dress should satisfy is inherent distinctiveness and or acquired secondary meaning. A trade dress can be inherently distinctive if it demonstrates to be unlikely, suggestive or illogical. Also, a trade dress can acquire secondary meaning if a consumer associates a trade dress with a particular product. The following factors are very important while analyzing a secondary meaning:
• The extent to which the owner of a product has promoted and marketed his product.
• The maximum amount of sales the owner has achieved for the promoted product.
• Testimonials from consumers and product survey.
Famous example of products gaining secondary meaning are Apple Inc’s., iPod music gadget which has attained a federal trademark registration for its distinctive product design.
Therefore, trade dress protection may be available for products that are worthy of design or protectable, if the forms of intellectual property like a design patent, trademark, and copyright have expired or were never obtained and also trade dress can be obtained for a design of a product simultaneously with a design patent. If a trade dress owners product qualifies the above two important test, the trade dress is eligible for a trade dress protection and registration.
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