Protect Your Product Designs With A Federal Trademark Registration

Trade dress is a type of trademark that originally only included the packaging or "dressing" of a product. In recent years, trade dress has been expanded to include the design of a product (i.e., the product shape or configuration).

Product packaging can be registered as a trademark if it is distinctive and not functional. The U.S. Patent and Trademark Office (USPTO) considers the same issues when determining the registrability of product designs.

FUNCTIONALITY

The USPTO considers one or more of the following factors to determine the functionality of a product design:

The existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; Advertising by the applicant that touts the utilitarian advantages of the design; Availability of alternative designs; and Ease or economy of manufacture. The first factor - a utility patent claiming the design features at issue - is strong evidence that those features are functional (and can be dispositive in some cases). Bose Corporation learned this the hard way when it was refused registration of this design for its Bose 901 Series III loudspeaker:

The Federal Circuit agreed with the USPTO that Bose's design was functional because "a five-sided speaker enclosure (the configuration of which is identical to that sought to be registered) was the subject of a Bose patent (Patent No. 4,146,745) as part of a speaker system the matrix...