- Wednesday, June 19, 2019
A product’s distinctive appearance may be subject to trade dress protection under U.S. trademark law provided it has acquired secondary meaning (or acquired distinctiveness) and the specific design elements being claimed are not functional. Put differently, the term “trade dress” refers to the aesthetic and non-utilitarian design elements of a product, separate from its packaging, that have acquired source-identifying significance in the market. Trade dress is a subset of trademark protection that requires a fairly high bar to establish protection.
The U.S. Supreme Court set this bar in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000), holding that “a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.” Under Section 2(f) of the Lanham Act, “secondary meaning” refers to evidence that the product’s design features (the mark to be protected) have “become distinctive as applied to the applicant’s goods or services in commerce.” 15 U.S.C. § 1052(f). This evidence must demonstrate that the primary significance of the trade dress, as viewed by consumers, is not the product itself but the source of the product.
Trade dress sought to be protected must also not be functional. Section 2(e)(5) of the Lanham Act prohibits registration of “matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). As set forth in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n. 10 (1982), “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”
A feature is also functional if its “exclusive use … would put competitors at a significant non-reputation-related disadvantage.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995). In TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 34 (2001), the U.S. Supreme Court observed that where protection is sought for ornamental aspects of a product’s features, which are also reflected in patent claims, this protection could still apply despite the patent filing if “the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.”
It is not uncommon for producers to seek utility patent protection for novel, non-obvious, inventive elements of new products. By their nature, utility patents require that the claimed subject matter be “useful,” which connotes functional attributes. In some cases, design patent protection may also be sought for new and original ornamental designs of an article of manufacture. See 35 U.S.C. § 171.
There is, therefore, a risk in applying for utility patent protection and trade dress protection for the same product because of the inherent tension between the utilitarian usefulness required for patent protection, and the non-functionality of the same product’s design features required for trade dress protection. Manufacturers may seek both types of protection to thwart knock-off products that may look like the original while avoiding certain patented claims by designing around them.
TTAB No Fan of Dyson’s Application
In re Dyson Limited, 2015 WL 1518041 (TTAB Mar. 11, 2015; non-precedential), illustrates this tension between patent and trade dress law. Dyson, the iconic fan and vacuum company, filed a trademark application with the U.S. Patent and Trademark Office to register the design of its electric fans, which it described as a “three-dimensional configuration of circular ring on top of a column-shaped base with inlets and buttons.”