Federal trademark protection of a product’s design or packaging can provide significant commercial advantages to the trademark owner, but it is often challenging to obtain. Most applicants for rights to such “trade dress” face two significant hurdles from the U.S. Trademark Office: a functionality refusal and a refusal on the basis of failure to function as a mark, that is, a finding that the applied for matter is nondistinctive and incapable of serving as an indicator of source. Nonetheless, given that trademark rights, properly maintained, can potentially last forever, it is well worthwhile to file a trademark application for such marks, when appropriate. If successful, a federal trademark registration on the Principal Register will issue, carrying with it the presumption that the registration is valid, the mark is nonfunctional and the owner has the exclusive right to use the particular product design or packaging.

Careful planning before the application is filed will help an applicant set forth its best initial case for registration and prepare to overcome the inevitable first refusal. When the product is still in the design phase, one of the most useful steps is to purposely add a significant, arbitrary element to the product design, one that is separate from the utilitarian function of the product. For example, an applicant was recently able to overcome a functionality refusal and register a shoe heel insert as a trademark because the product incorporated a flower petal design on both sides. Similarly, a corkscrew with a design of a rabbit on top was deemed protectable as a trademark, despite the existence of an expired utility patent.

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