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For decades, the U.S. Patent and Trademark Office (PTO) has allowed registration of trade dress, provided that the trade dress sought to be registered complies with certain requirements: that it is either inherently distinctive or has acquired distinctive — also known as secondary — meaning and is also not functional. Trade dress includes product designs or configurations, packaging and even the distinctive decor of a restaurant or a building. It has been defined as “the total image of a product [or service], including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” John H. Harland Co. v. Clarke Checks Inc., 711 F.2d 966, 980 (11th Cir. 1983). Federal registration has been extended to such trade dress as bottle shapes; the configuration of a product, such as a Weber barbeque ( In re Weber-Stephen Products Co., 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987)); a Honeywell thermostat ( In re Honeywell Inc., 8 U.S.P.Q.2d 1600 (T.T.A.B. 1988)); and other examples. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985). Even special forms of trade dress, such as a single color ( Owens-Corning, 774 F.2d 1116 (color pink registration for insulation upheld)) or a fragrance ( In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)) have been registered at the PTO, though many attempts have been unsuccessful. See In re Howard S. Leight and Associates Inc., 39 U.S.P.Q. 1058 (T.T.A.B. 1996) (coral-colored ear plug color found to be unregistrable as functional); British Seagull Ltd. v. Brunswick Corp., 28 U.S.P.Q.2d 1197 (T.T.A.B. 1993) (refusing registration of color black for boat engines). Many attorneys and companies are not even aware that trade dress, like trademarks in general, can be federally registered. Indeed, until fairly recently, very few businesses sought to register their trade dress federally, and fewer still were successful. See, e.g., In re American National Can Co., 41 U.S.P.Q.2d 1841 (T.T.A.B. 1997) (registration refusal upheld for fluted beverage container). In the wake of two recent U.S. Supreme Court decisions favoring protection of trade dress — Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992), and Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995) — it appears that the floodgates have opened. It should be no surprise that a rush of trade dress owners have taken advantage of the opportunity to register their trade dress — see generally, William Levin, “Trade Dress Protection,” � 26.01 et seq. (West Group 1996) — albeit with mixed results at the PTO. Compare In re EBSCO Industries Inc., 41 U.S.P.Q.2d 1917 (T.T.A.B. 1997) (registration allowed for distinctive “stickbait” fishing-lure design) with In Re EBSCO Industries Inc., 41 U.S.P.Q.2d 1913 (T.T.A.B. 1997) (refusing registration for same company’s “chugger” fishing-lure design as de jure functional). RESTRICTIONS ON PRODUCT- DESIGN REGISTRATIONS Before the Supreme Court’s decision last year in Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205 (2000) (holding that product designs, like color, cannot be inherently distinctive), the PTO allowed federal registration of product designs, such as bottle shapes or the configuration of products, if the trade dress was either inherently distinctive or had acquired distinctiveness, and was not de jure functional. See, e.g., In re Babies Beat Inc., 13 U.S.P.Q.2d 1729 (T.T.A.B. 1990) (holding that company’s inherently distinctive baby bottle design was de jure functional). What the PTO generally calls “acquired distinctiveness” is usually referred to by the courts as “secondary meaning.” After the Supreme Court’s Wal-Martdecision in March 2000, at least one type of trade dress — product designs without acquired distinctiveness — no longer can be federally registered, though no specific change has yet been made to the Trademark Manual of Examining Procedure (TMEP) used by PTO examiners. The PTO, however, has promulgated an examination guide implementing the Wal-Martdecision, which will be included whenever the TMEP is next revised. (Examination Guide No. 2-00, dated Aug. 15, 2000.) For product designs that have acquired distinctiveness, on the other hand, it may be “business as usual” for trade dress owners in the PTO. Nonetheless, the future probably will bring some curtailment of all product-design trade dress in the PTO, or at least stricter enforcement of the entry barriers to the exclusive club of registered trade dress. THE TESTS FOR REGISTERING FUNCTIONAL TRADE DRESS Trade dress that is de jure functional can never be federally registered, while trade dress that is merely de facto functional may be registered. If a product design has such utility that it constitutes a “superior” design which competitors must use to compete effectively, then it is de jure functional, and unregistrable. In Re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817 (T.T.A.B. 1994) (refusing registration for configuration of medical apparatus for multiple skin tests for allergies as de jure functional). In contrast, de facto functionality means that the trade dress has some utilitarian purpose; for example, most bottles are de facto functional because they will hold contents, but particular bottles may also be de jure functional. The PTO bases its determination of whether trade dress sought to be registered is de jure functional on the four-factor test developed by the former Court of Customs and Patent Appeals in In Re Morton-Norwich Products Inc., 671 F.2d 1332 (C.C.P.A. 1982): whether a utility patent exists that discloses the utilitarian features of the design; whether the trade dress owner touts the utilitarian advantages of the design in its own advertising materials; whether there are sufficient alternative designs available to competitors; and whether the design results from a relatively cheaper or simpler manufacturing method. Id. See also Lincoln Diagnostics, 30 U.S.P.Q.2d 1817. The applicant usually addresses these factors by submitting declarations from its own executives, designers or salespeople; its customers or suppliers; industry experts; and sometimes even competitors, together with appropriate exhibits, such as any existing or expired patents or alternative designs and their comparative cost to manufacture. The burden of proof is on the PTO to show that the trade dress in question is de jure functional. Nonetheless, the trade dress owner must reasonably cooperate with the PTO’s request for information, helpful or not, or registration may be refused on that ground alone. Babies Beat, 13 U.S.P.Q.2d at 1731. See alsoTrademark Rules of Practice, Rules 2.142(c), 2.61(b). The alternative designs need not be commercially available to be considered. Even if some alternative designs are available to competitors, so that competition is not totally foreclosed, this fact alone is insufficient when the alternative designs are fairly limited in number. In other words, the design in question does not need to be the only, or the best, possible design to be de jure functional. The PTO has also recognized that for some products, such as bottles, an unlimited choice of shapes may be available, but for others, a far more limited variety may exist. In Re Vico Products Manufacturing Co. Inc., 229 U.S.P.Q. 364 (T.T.A.B. 1985); In Re Bose Corp., 772 F. 2d 866 (Fed. Cir. 1985). If a design patent exists or did exist covering the trade dress in issue, the patent should be introduced into evidence to the PTO. Although some courts afford such a patent presumption that the design is not functional, the PTO’s position is that it is evidence of nonfunctionality, but does not, by itself, establish nonfunctionality. In re R.M. Smith Inc., 219 U.S.P.Q. 629 (T.T.A.B. 1983), aff’d, 734 F.2d 1482 (Fed. Cir. 1984); Vico Products, 229 U.S.P.Q. 364. SHOWING DISTINCTIVENESS FOR TRADE DRESS IN THE PTO Trade dress that is held de jure functional may never be registered even if it has acquired distinctiveness under � 2(f) of the Lanham Act. Conversely, if trade dress has acquired distinctiveness, it can be federally registered unless the PTO carries its burden of proving that the trade dress is de jure functional. Trademark Rule 2.41(b) provides that a trade dress has prima facie distinctiveness if it is accompanied by a declaration stating that the trade dress has been in substantially exclusive and continuous use in commerce by the applicant. A � 2(f) declaration, however, is often bolstered by declarations as to the exact length of time the trade dress has been in use, the total amount of sales in the past, the amount of annual sales, the amount spent advertising the trade dress and samples of advertisements that tout the trade dress — known as “image” advertising. Inherently distinctive trade dress — at least, if it is not a product design — is registrable, and trade dress such as packaging is much easier to register. The PTO adheres to the test of inherent distinctiveness formulated in Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977), rather than the traditional test articulated in Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4 (2d Cir. 1976) applied by the Supreme Court to restaurant decor trade dress in Two Pesos. The test in Seabrookis whether the trade dress is “a ‘common’ basic shape or design, whether it [is] a mere refinement of a commonly-adopted and well-known form or ornamentation for the goods, or whether it [is] capable of creating a commercial impression distinct from the accompanying words.” 568 F.2d at 1344. The PTO has a judicial expediency policy of deciding, at the examiner and the Trademark Trial and Appeal Board levels, both the issue of acquired distinctiveness and the issue of de jure functionality. Thus, if it is reversed or affirmed on one ground only, the other ground has also been decided. The trade dress owner should, therefore, make all of its arguments on both issues during the prosecution of the application. Often the PTO rejects the trade dress as not inherently distinctive, and requires evidence of acquired distinctiveness. Before the Wal-Martdecision negating inherently distinctive trade dress, it made sense for the applicant to expressly reserve its rights and its position that, by submitting such a claim of acquired distinctiveness, it was not thereby abandoning the original position of inherent distinctiveness. Now this approach may be moot, unless there is an arguable position that the trade dress would not be considered a product design, but would be more akin to product packaging or another form of trade dress. If a business has obtained a victory in a court case involving the trade dress sought to be registered, this fact should certainly be brought to the attention of the trademark examining attorney handling the application, but a consent decree, unlike an adjudicated decision on the merits, may not be given much weight. Lincoln Diagnostics, 30 U.S.P.Q.2d at 1825 and n. 11. On the other hand, the existence of federal trade dress registration, while not a magic talisman to ward off all challenges in federal court litigation ( Aromatique Inc. v. Gold Seal Inc., 28 F.3d 863 (8th Cir. 1994), rev’g, 833 F. Supp. 739 (E.D. Ark. 1993) (federally registered trade dress for potpourri ordered cancelled)), or even in the PTO ( Kasco Corp. v. Southern Saw Service Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993) (registration cancelled for green-colored saw blade wrapper)), is potent medicine ( Kohler Co. v. Moen Inc., 12 F.3d 632 (7th Cir. 1993) (upholding federal registration for water faucet and faucet handle design)) and will often carry the day. Certainly federal trade dress registration makes any validity challenge an uphill battle for competitors that choose to copy distinctive trade dress. MORE TRADE DRESS REGISTRATION SHOULD RESULT Various courts have at times confused their terminology or trade-dress law by indicating that trade dress may not be federally registered, but as the foregoing PTO and Supreme Court precedents demonstrate, trade dress was and still is federally registrable so long as it meets all of the trade dress sui generis requirements for registration. Whenever possible, federal trade-dress registration should be attempted, despite the likely future trend in the PTO toward making some of these registrations more difficult to obtain in light of the Supreme Court’s most recent trade-dress edict. Now that trade dress is specifically enumerated in the federal trademark laws, more and more trade dress registrations should result, and many of those will become incontestable. William Levin is managing partner and head of the trademark litigation group at Laguna Beach, Calif.’s Levin & Hawes, and the author of “Trade Dress Protection” (West Group 1996). He has been lead trial counsel in numerous trade dress cases and has been retained as an expert witness in such cases.

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