What Is Trade Dress Registration?

A trade dress registration protects the designm 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 their distinctive features. Companies that invest into designing stores and packaging products should also invest into 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 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 trade dress registration is $673.

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)).

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 nonfunctional.

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.

Deadline

Upon applying for 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.

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 nonfunctional 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.

Frequently Asked Questions

  • What are the benefits of trade dress registration?

You can protect your image and design from being copied and prevent infringement or risk of confusion.

  • Which companies can benefit from trade dress registration?

Food companies, restaurants, designer shops, computer products, and any industry players with unique, nonfunctional designs.

  • How long does it take to complete a trade dress application?

It usually takes eight months, if no legal issues arise. Consulting with a professional trademark attorney can reduce the risk of delay and refusal.

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