Protecting Trade Dress Through Trademark Registration

One way to compete in the marketplace these days is to introduce a product with a cool new design. What does that mean? It means the consumer is encountering an existing product that is designed or packaged differently. If you have a product like that, that’s s distinctive over prior designs or packaging, and unique enough in appearance to create some significant brand value for your company, you may have a cool new design. You can also create fresh product packaging to gain some value through customer recognition. 

A good design, whether for a product or its packaging, is often something that your competitor may swiftly want to imitate. Once you’ve devised something new (design or packaging) it’s important to protect it. But how? You can protect your product design or product packaging through a design patent or through a design trademark. 

Design Patents
Product designs and product packaging designs are often protected through design patents. Design patents protect the non-functional aspects of the design. For example, you can protect the particular shape of your product such as the shape of a bottle, or perhaps the innovative grill of a new car design. As long as the design is not primarily functional, and it is distinctive, you can patent it. However, a design patent only has a life of 14 years. While that may seem like a long time, imagine a product like Weber grills or the Coca Cola® swirled bottle design. Those products have been on the market for decades. Their distinctive designs are now extremely recognizable and valuable. If they were protected by only a design patent the designs would be in the public domain now, and Weber® and Coca Cola’s® competitors could create knock-off designs. If your patent design expires, others are free to imitate and, the once distinctiveness of your design(s) would be diluted, perhaps to the point of no longer being unique.

Design Trademarks – Trade Dress 
To avoid others’ stealing your cool design, you can protect it in the US with a trademark design registration, specifically to protect the trade dress i.e. the product shape, configuration ,its packaging or “dressing,” even the color of the product or packaging, to name some. Product shape: think the GIBSON® guitar body, registered in 1983 or elliptical-shaped Pringles® trademarked since 1976; color: think Tiffany blue, trademarked since 1998; or packaging: think TIDE’s® squat plastic bottles covered in bright, bold colors. Trade dress is registered through the United States Patent & Trademark Office. If successful, you can maintain exclusive rights to that design indefinitely. Trademark registrations are renewed every 10 years for as long as you desire to keep the registration alive.

Protecting designs through the trademark registration process is not a “slam dunk” process.  There is a key distinction between product designs and product packaging.  It is easier to protect product packaging than a product design for example.  The test for registration of each differs.  Consider for example the registration of a product design as a trademark.  In a moment we will address registration of a product packaging design as a trademark.  But first we have to define the two categories so you will know how to distinguish between trademark product design and trademarks packaging design.  Let’s say you want to register the design of a glass bottle and you want to sell the bottle and protect the trademark in association with the category of goods “bottles.” Your trademark registration would involve the class code that includes bottles made of glass, class 21.  You would be protecting that particular design in association with selling bottles.  Since the trademark category is bottles, this would be a product design trademark application.  

Alternatively, let’s say you want to protect the design of a glass whiskey bottle that has wax dripping down it and you want to protect it in association with the product “whiskey.” In that case, the trademark application would be filed in class 033 for “whiskey” and the product would be categorized as whiskey. So what you would be protecting is the product packaging design for the product whiskey rather than the product itself, namely the bottle with wax drippings. You are protecting the distinctive design of the packaging used for selling your whiskey. 

Product Design
To be registrable as a trademark, a product configuration must pass a two-part test:

First, you must determine whether the product design has utility. If not, you can register the design if the design is distinctive. If the product does have utility, you must determine whether the shape and/or feature is essential to the use or purpose of the product or device, or whether shape and/or feature affects the cost or quality. If the answer is yes, the product design is not registerable as a trademark. If the answer is no, then it is registerable as a trademark. 

For example:

Popcorn funneling
Not registerable due to utility of funneling the popcorn into a bowl.
Spinning bullet
Not registerable due to utility of the barreling in the shaft for spinning a bullet.
Soda bottle
Registerable as a design for a soda bottle because the shape is not essential to the use of the bottle, and it was distinctive at the time of filing.
Sole of Shoe
Registerable as a design for a shoe sole since the color is not essential to the use of the shoe and it was distinctive at the time of filing.
In all instances, the trademark applicant must demonstrate that the product design has acquired distinctiveness. This can be accomplished through sales, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that buyers chiefly associate an otherwise non-distinctive mark with the trademark owner and its products. The responsibility is on the trademark applicant and the applicant faces a heavy burden in establishing distinctiveness in an application to register trade dress. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009). A mere statement of five year’s use is generally not sufficient. See, e.g., In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284 (TTAB 2000).

Product Package Design 
Unlike product design trade dress, trade dress constituting product packaging may be inherently distinctive for goods and services and registerable on the Principal Register without a showing of acquired distinctiveness. If it is a close case between product design and packaging design, the trade dress should be classified as product design for which secondary meaning is required. If the trademark is being registered in association with a product that is completely different from its packaging, there is a reasonable likelihood it will be deemed a product packaging design and will be deemed distinctive assuming no other prior similar marks exists.

Examples of product packaging designs include:

Maker’s Mark® Design

Maker's Mark design
Reese’s Peanut Butter Cup Design
Reeses Peanut butter cup design
A trademark application for product packaging trade dress is similar to any other United States trademark application for a stylized mark or design. The application must include a drawing file of the mark. You can elect to claim certain aspects of the mark in the drawing file. Use of dotted lines and the description of the mark can assist with defining the scope of the mark being registered. For example, in the Maker’s Mark trademark application, they described the mark as follows: “Color is not claimed as a feature of the mark. The mark consists of a wax-like coating covering the cap and neck of the container of the goods and trickling down the body of the container in a freeform irregular pattern. The dotted outline of the container is not claimed as part of the mark and is intended only to show the position of the mark.”

If you are interested in pursuing Federal registration of your trade dress we would be happy to assist you with the process. If your trade dress is a product design, we will want to explore the extent you have used the mark in commerce to determine whether it has acquired distinctiveness. If your trade dress is a product packaging design, we should find it easier to navigate the registration process.
For more information or assistance with registering your trademark you can contact Ted Karr at or 503-439-6500.

Skip to content