Key Takeaways

  • Trade dress registration protects a product’s overall image, including design, shape, packaging, and even store layouts.
  • It ensures exclusive rights to distinctive, nonfunctional design elements under the Lanham Act.
  • Functional features cannot qualify for trade dress protection—only elements that serve a source-identifying role.
  • Registration enhances enforceability, allowing owners to pursue federal infringement claims and secure nationwide protection.
  • The application must demonstrate distinctiveness or secondary meaning, proving that consumers associate the design with a single source.
  • Maintaining consistent use and monitoring for infringement are critical to preserving trade dress rights.

What Is Trade Dress Registration?

A trade dress registration protects the design, symbol, or trademark associated with a brand. The Trademark Act 15 U.S.C. §1052 regulates trade dress, which originally referred to the product's dressing and later expanded to include product design and packaging. A trade dress application must include designs and drawings, the associated services or goods, and a description.

A product qualifies for this registration based on the distinctiveness and functionality of its trade dress. Before accepting a trade dress application, the U.S. Patent and Trademark Office (USPTO) must see a clear "acquired distinctiveness" to protect the trademark.

A trade dress is a combination of several functional and nonfunctional elements that are unique to the trademark owner and cannot be confused with other brands' designs. A nonfunctional element can be any identifying element, such as a distinctive shape or ornamental design. For example, in 2013 Apple gained protection for the design of its stores based on its distinctive features. Companies that invest in designing stores and packaging products should also invest in protecting their trade dress.

A registered trade dress can prevent companies from creating and using similar designs. Trade dress registration is based on the applicant's claim that the "total image" of its goods or services is distinctive to that company. The main difference between trade dress and trademark is that trademark includes the logo and name, while trade dress covers the image and design.

When registering for a trade dress, the applicant must:

  • Indicate whether their design is similar to a competitor's trade dress;
  • File under the product or business owner's name; and
  • Include in the trade dress design both nonfunctional and ornamental design elements.

There are two types of applications: actual use and intent-to-use. When filing an actual use claim, the applicant must attach to the application of a trade dress specimen representing the design's use. Federal trade dress registrations last for 10 years and can be renewed for another 10 years upon expiring. Companies can also register their trade dress on a state level. The average cost of a trade dress registration is $673.

Elements of a Protectable Trade Dress

To qualify for trade dress registration, the design or packaging must meet three main criteria: distinctiveness, non-functionality, and likelihood of confusion prevention.

  1. Distinctiveness – The trade dress must be inherently distinctive (like unique shapes or designs) or must have acquired distinctiveness through extensive use and consumer recognition. Courts analyze distinctiveness using tests such as the Seabrook factors, which assess originality and how readily consumers identify the design as a source indicator.
  2. Non-functionality – A feature that affects a product’s cost, quality, or usability cannot be protected. For instance, ergonomic grips or structural designs that serve a mechanical purpose are functional and thus ineligible for protection.
  3. Likelihood of Confusion – The design must be unique enough to prevent consumer confusion with competing brands. Trade dress infringement occurs when another product’s overall look creates marketplace confusion as to source or sponsorship.

Why Is Trade Dress Registration Important?

When companies spend a lot of money to create a unique design for their products or stores, they should protect it just like they would their trademarks or logos. A trade dress can take a long time to develop, however, and can lose its distinctiveness if another company uses a similar design in the meantime.

According to the Trademark Office, companies should begin the trade dress registration process as soon as possible, to protect their assets and prevent infringement.

The primary legal protection for trade dress is Section 32(1) of The Lanham Act (15 U.S.C. Section 1114(1)).

Legal Framework and Enforcement of Trade Dress Rights

Trade dress protection falls under Section 43(a) of the Lanham Act, which covers both registered and unregistered designs that identify product origin. Registration strengthens these rights by:

  • Providing nationwide constructive notice, preventing others from claiming ignorance of ownership.
  • Enabling federal court jurisdiction for infringement cases.
  • Allowing owners to seek damages, injunctions, and recovery of profits for willful violations.

Unregistered trade dress can still be protected under common law, but plaintiffs must demonstrate the same elements—distinctiveness, non-functionality, and confusion. Registration shifts much of this burden by creating a presumption of validity.

Reasons to Consider Not Using Trade Dress Registration

One reason some companies do not use trade dress registration is to avoid trade dress infringement claims. If there is a "likeliness of confusion" between one company's product design and another, it is better to redesign the features and submit an application once the product is clearly distinct.

Protecting a color is not a valid claim for trade dress protection, and it is likely to be declined by the Trademark Office.

An important question before filing a registration claim is whether the feature the company wants to protect is functional. For example, a Coca Cola bottle is trademarked, but its design and shape are not functional. The bottle itself is distinctive based on the design, but it is both functional and non-functional.

Reasons to Consider Using Trade Dress Registration

A company might want to apply for trade dress if:

  • Trade dress registration is needed for both product design and product packaging to increase the uniqueness of the company's offerings in the marketplace.
  • The trade dress has a secondary meaning and is associated with the trademark owner. It must be protected so other, similar firms cannot copy it.
  • The design is inherently distinctive in shape, size, or color schemes. Common shapes, however, do not qualify for trade dress.
  • The trade dress provides the company with long-term benefits, such as advertising revenue, brand awareness, or reputation. Then it becomes an asset that must be protected from infringement.

The trade dress registered must be unique and distinctive, not a variation of a previous design.

Benefits of Federal vs. Common Law Protection

While common law protection arises from use in commerce, federal registration through the USPTO offers broader and more secure benefits:

  • Nationwide scope of protection rather than limited regional rights.
  • Deterrence—registration deters competitors from copying a protected design.
  • Easier enforcement since registration provides clear proof of ownership.
  • Eligibility for statutory remedies, including attorneys’ fees and enhanced damages.
  • Facilitated customs protection, helping to block counterfeit imports.

Deadline

Upon applying for a trade dress, the examining attorney will give the registration claim a serial number and send out an acknowledgment letter within two months. In a few weeks, the trade dress file will be published or the trademark attorney will ask for additional documents.

Within 30 days of the Certificate of Registration's issue date, the U.S. Government will issue a Notice of Allowance. If there is a legal problem, an Office Action will be filed, slowing down the registration process. The current average pending period for trade dress registration is 15.1 months.

Example: What Could Happen With Trade Dress Registration?

With a registered trade dress, a product or company owner can file a valid infringement claim. If the conditions of a valid and enforceable trade dress are met, the company is entitled to compensation.

Example: What Could Happen Without Trade Dress Registration?

If there is no trade dress registration, a company cannot protect its design, and it can be copied. Further, using a design that is likely to cause confusion can result in trade dress infringement claims being made against the company. This makes it easy to prove trade dress infringement, and the damages awarded to the claimant can be based on the total profits from infringement, such as in the Apple v. Samsung case.

Trade Dress Infringement and Litigation Examples

Numerous high-profile cases demonstrate the importance of trade dress registration:

  • Apple v. Samsung (2012): Apple successfully claimed that Samsung’s smartphone designs infringed on its trade dress, resulting in a multimillion-dollar verdict.
  • Two Pesos v. Taco Cabana (1992): The U.S. Supreme Court upheld that inherently distinctive restaurant décor qualified for trade dress protection, even without proof of secondary meaning.
  • Walmart v. Samara Brothers (2000): The Court clarified that product designs require secondary meaning to be protectable, distinguishing them from inherently distinctive packaging.

These cases highlight that trade dress registration strengthens enforceability, reduces litigation burdens, and prevents competitors from copying the “look and feel” that defines a brand.

Steps to file

1. Visit the USPTO website, and start a new trade dress registration.

2. Provide a description, design images, drawings, functionality, and distinctiveness of the trade dress.

3. Provide proof of functional and non-functional elements.

4. Demonstrate distinctiveness.

5. Wait for the Trademark Examiner's decision in eight weeks.

6. If there are no legal objections, the Certificate of Registration is issued in eight weeks.

Maintaining and Enforcing a Registered Trade Dress

After securing a trade dress registration, owners must actively maintain and enforce it to prevent dilution or loss of rights.

  • Maintain consistent use of the design to preserve distinctiveness.
  • Monitor competitors and the marketplace for similar trade dress use.
  • Renew the registration every 10 years and file maintenance documents between the fifth and sixth year after registration.
  • Enforce rights through cease-and-desist letters or litigation when necessary.
  • Document marketing and consumer recognition to demonstrate ongoing distinctiveness.

Failure to police the trade dress may result in genericization or cancellation of the registration.

Frequently Asked Questions

  1. What is the difference between trade dress and a trademark?
    A trademark identifies words or symbols, while trade dress protects the overall look and feel of a product or service, such as packaging or store design.
  2. How long does trade dress protection last?
    Federal trade dress registration lasts for 10 years and can be renewed indefinitely, as long as the owner continues to use it in commerce.
  3. Can functional product features be registered as trade dress?
    No. Functional features—those that affect cost, quality, or performance—cannot be registered, as doing so would hinder fair competition.
  4. Is trade dress registration mandatory to obtain protection?
    No, but registration provides significant legal advantages, including nationwide protection and easier enforcement compared to common law rights.
  5. How can I enforce my trade dress rights?
    Owners can monitor the market, send cease-and-desist letters, or file infringement lawsuits. UpCounsel attorneys can assist with both registration and enforcement strategies.

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