Brand Positioning

                             3D Trademarks and Trade Dress

Three dimensional (3D) trademarks are often referred to as trade dress and are often used to protect packaging for products or how products look. How do I search for 3D marks or trade dress? The record lists on the Trademark Electronic Search System (TESS) often do not have specific descriptions in their registrations that identify them as being 3D or trade dress, there is no specific category for trade dress. This Freeform TESS search (http://tess2.uspto.gov)*:

(("trade dress")[DE] or (3D)[DE] or (three-dimensional)[DE]) and (live)[LD] and  `RN > "0"

yields approximately  5000 live trademarks that are active registrations. Note that many of these registrations are really 2D marks that have 3D appearances and descriptions and other 3D marks that are not described as being 3D may be missed by this search. Considering there are 2,550,758 active trademark registrations, this is a very small category of trademarks.

* [DE] is the field for description of the mark; [LD] is the LIVE/DEAD indicator where LIVE yields active registrations and `RN > "0" yields marks that were given Registrations Numbers or marks that registered.

Both the wine bottle and the pyramid tea infuser, whose drawings and specimens of use are shown to the left, are registered trademarks. Trade dress is a small subcategory of trademarks where ornamental 3D designs can be registered. Other examples of registered trade dress are restaurant interiors, restaurant uniforms, 3D signs or retail store designs.

This 3D mark: Registration Number:  0815187 Registration Date:  September 13, 1966; Owner: UNIVERSITY CAR WASH, INC. CORPORATION WISCONSIN 2202 UNIVERSITY AVE. MADISON WISCONSIN is still an active trademark. Trade dress marks are typically more difficult to register than word marks for several reasons. Submitting a drawing for a word mark is whatever the words are for which protection is sought. A drawing for a 3D mark must actually be a drawing of a 3D object and must be reproducible. Many applications are delayed or ultimately refused because acceptable drawings are not submitted. Trade dress also cannot be functional. The refusal below explains.

The furniture polish bottle to the left may be one of the oldest registered 3D marks but it is no longer an active mark. Registration Number:  0594354; Registration Date:  August 24, 1954; Owner  (REGISTRANT): S. C. JOHNSON & SON, INC. CORPORATION WISCONSIN 1525 HOWE ST. RACINE WISCONSIN.

The Right To Compete Effectively

When evidence supports the conclusion that the competitive need to copy the functional features applies to a trademark application, that application will be denied registration. The “public policy underlying the rule that de jure functional designs cannot be protected as trademarks is “not the right to slavishly copy articles which are not protected by patent or copyright, but the need to copy those articles, which is more properly termed the right to compete effectively.”

This trademark, the cap, for closures for medical collection tubes was refused registration by the trademark examiner, the refusal was affirmed on appeal to the TTAB and the refusal was affirmed by the Federal District Court of Appeals in IN RE BECTON, DICKINSON AND COMPANY,  675 F. 3d 1368, (Fed. Cir. 2012). Competitors in the closure cap industry also used similar ribs for gripping and similar functional openings on their products.

Example of Actual USPTO Refusal

Functional Configuration

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii).  A feature is functional if it is “essential to the use or purpose of the [product]” or “it affects the cost or quality of the [product].”  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); TMEP §1202.02(a)(iii)(A).

A mark that consists of a three-dimensional configuration of a product or its packaging is functional, and thus unregistrable, when the evidence shows that the design provides identifiable utilitarian advantages to the user; i.e., the product or container “has a particular shape because it works better in [that] shape.”  Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (internal punctuation and citation omitted); see TMEP §1202.02(a)(iii)(A).

The evidence need not establish that the configuration at issue is the very best design for the particular product or product packaging.  A configuration can be held functional when the evidence shows that it provides a specific utilitarian advantage that makes it one of a few superior designs available.  See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (holding shape of a loudspeaker system enclosure functional because it conforms to the shape of the sound matrix and is thereby an efficient and superior design); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (holding particular spoke arrangement of a bicycle wheel functional because it is more stable and provides better performance than wheels with other spoke arrangements featuring the same or greater number of spokes); In re Am. Nat’l Can Co., 41 USPQ2d 1841 (TTAB 1997) (holding metal beverage containers with vertical fluting functional because vertical fluting is one of a limited number of ways to strengthen can sidewalls and it allows for an easier way to grip and hold the can); TMEP §1202.02(a)(v), (a)(v)(C).

On the other hand, where the evidence shows that the specific product or container configuration at issue provides no real utilitarian advantages to the user, but is one of many equally feasible, efficient and competitive designs, then it may be registrable.  See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982).  However, a product configuration cannot be registered on the Principal Register without a showing of acquired distinctiveness.  See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000); TMEP §1202.02(b)-(b)(i).

Applicant must provide the following information and documentation regarding the applied-for three-dimensional configuration mark:

(1)        A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications.  Applicant must also provide copies of the patent and/or patent application documentation.;

(2)        Advertising, promotional and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.;

(3)        A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive.  Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.;

(4)        A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container.  Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.; and

(5)        Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

See 37 C.F.R. §2.61(b); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §§1202.02(a)(v) et seq.

With regard to this requirement for information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations regarding functionality is usually more readily available to an applicant, and thus the applicant will normally be the source of much of the evidence in these cases.  In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); see In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding registration was properly refused where applicant failed to comply with trademark examining attorney’s request for copies of patent applications and other patent information); TMEP §1202.02(a)(v).

The Office must establish a prima facie case that the three-dimensional configuration mark sought to be registered is functional.  The burden then shifts to the applicant to present sufficient evidence to rebut the prima facie case. In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993); TMEP §1202.02(a)(iv).   See the attached online excerpts showing functional bits that are nearly identical to the applicant’s configuration.

A determination that an applied-for configuration mark is functional constitutes an absolute bar to registration on the Principal or Supplemental Registers, regardless of any evidence of acquired distinctiveness.  Trademark Act Sections 2(e)(5) and 23(c), 15 U.S.C. §§1052(e)(5), 1091(c); see TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001, 1006 (2001); In re Controls Corp. of Am., 46 USPQ2d 1308, 1311 (TTAB 1998); TMEP §1202.02(a)(iii)(A).

Determining functionality normally involves consideration of one or more of the following factors, commonly known as the “Morton-Norwich factors”:

(1)        The existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2)        Advertising by the applicant that touts the utilitarian advantages of the design;

(3)        Facts pertaining to the availability of alternative designs; and

(4)        Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §1202.02(a)(v).

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Special Requirements for Unusual Trademarks

Like word and design trademarks, unusual types of marks must also function as marks but not be functional as marks. Potential marks that are just sounds or shapes or colors but do not identify and distinguish any goods or services are not registrable as trademarks.

Note that unusual trademarks require special considerations in applications. Some of the special requirements are:

• Three Dimensional Marks (3D Trademarks) : If the mark has three-dimensional (3D) features, the applicant must include a description of the mark indicating that the mark is three-dimensional, and the applicant must submit a drawing that depicts a single rendition of the mark. 37 C.F.R. §2.52(a)(2)(iii). If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition to the Commissioner requesting that the rule be waived.
•  Marks With Motion: If the mark has motion, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also submit a written description of the mark. 37 C.F.R. §2.52(a)(2)(iv).
• Sound, Scent, and Non-Visual Marks: The applicant is not required to submit a drawing if the applicant's mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed written description of the mark. 37 C.F.R. §2.52(a)(3).

If you have a distinctive product configuration or packaging that is ornamental and not just functional, give us a call and we can help get it registered. Trade dress marks are a specialty branch of trademark law and refusals are common and difficult to overcome.

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied for a USPTO trademark and have been refused.