You cannot dissociate the world’s most prestigious brands from their trademarks. Corporations like McDonald’s, Nike, and Gucci are good examples of businesses that have successfully leveraged their trademark potential to attain global status.  

Is a trade dress protected by US trademark law? Read on to find out. 

What is a Trade Dress? – The Fundamentals  

The concept of trade dress encompasses a product’s total image and overall appearance that immediately creates a connection between a company and its customers.  

The term refers to the totality of elements that are part of a specific product or service, including characteristics like size, color, shape, texture, and distinct combinations of these factors. Well-known examples of trade dress include:  

  • The red tab on Levis jeans 
  • The shape of Coca-Cola bottles 
  • The design and colors of IHOP restaurants 
  • The colors on the packaging of Reese’s Peanut Butter  

As a part of a business trademark, an unauthorized third party cannot appropriate or copy a trade dress. Also, using a confusingly similar design or diluting an original trade dress is considered an infringement. 

Trade Dress vs. Trademark – Is it Possible to Register with USPTO for Trade Dress Protection? 

The United States Patent and Trademark Office (USPTO) provides that a business trade dress “includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product.” 

USPTO rules highlight that “the nature of a potential trade dress mark may not be readily apparent.” 

If you are applying to register a trade dress with USPTO, this fact must be informed by the application content, which must contain a description of the mark, a drawing, the accurate identification of goods or services, and a specimen (if applicable). 

USPTO considers two substantive elements to determine the eligibility of a trade dress for trademark protection – functionality and distinctiveness. 

First, trade dress protection only applies to wholly non-functional elements. For example, if the shape or packaging of a product has a functional purpose (e.g., preserving content, securing grip, facilitating emptying), it is not eligible for trade dress protection. 

Functional elements fall under the category of patent law as utility patents. Additionally, a trade dress must be distinctive to enjoy trademark protection. Trademark law has several degrees of distinctiveness to differentiate marks, which are generic, descriptive, suggestive, arbitrary, and fanciful. 

Generic trademarks are not eligible for trademark protection. Descriptive trademarks must obtain a secondary meaning. Otherwise, they cannot meet USPTO’s distinctiveness requirement. 

If a trade dress is considered a suggestive‚ fanciful‚ and arbitrary trademark, it is eligible for USPTO registration. As it is plain to see, navigating trademark protection laws is a complex task. 

Consulting with an expert attorney to assess your circumstances is fundamental to identifying a proper strategy for trade dress protection.  

Trade Dress vs. Trademark – Immediately Seek Expert Legal Guidance 

A well-versed legal advisor in intellectual property law, Attorney Romy B. Jurado willingly wants to help protect your interests. Contact us by calling (305) 921-0976 or emailing [email protected] to schedule a consultation.