Many businesses spend considerable money and effort to develop and promote unique brand identities, and those identities frequently extend to the design of packaging, products, storefronts and in-store merchandising. Consequently, businesses often understandably are interested in protecting those identities against others who would try to trade off of their success by using similar designs. For the most part, the only intellectual property regime that affords this level of protection in a practical way is trademark law, under which a business’ “trade dress” may be registered and protected like other marks.

Unfortunately, trade dress registrations almost always are more complicated to obtain than registrations for “traditional” trademarks. The U.S. Supreme Court held in 2000 in the Wal-Mart v. Samara case that trade dress is never “inherently distinctive”—that is, the design of a package or a product or a store by itself legally never is capable of signifying the source or quality of the products or services associated with the design. Therefore, in order to register a store design as protectable trade dress, it is necessary to show that the design has “secondary meaning” or “acquired distinctiveness,” which generally means that through extensive use the design has come to be associated in consumers’ minds with the products or services in question.

Acquired distinctiveness typically is proven either by certifying that the mark has been used continuously in commerce for five years or by actual evidence of secondary meaning. However, in some cases the USPTO’s examiners may determine that continuous use over the five-year period is insufficient to establish a prima facie case of acquired distinctiveness, forcing the applicant to submit actual evidence. That evidence often consists of:

  • Statements demonstrating the expense or effort that the applicant has undertaken to promote the design,
  • Recognition of the design in third-party media (e.g., reviews and community guides),
  • Consumer surveys,
  • Consumer testimony,
  • Some combination of the above or other types of evidence.

The result of this is that trade dress registrations often can be time-consuming and expensive to obtain. A good example is Apple’s recent attempts to register the design of its Apple Stores with the USPTO. (File information is available here.) In that case, the USPTO issued two “Office Actions,” or formal rejections of Apple’s application, based in part on a finding that the design is not inherently distinctive. The USPTO eventually relented on that point only after Apple filed a response that incorporated several hundred pages of supporting evidence in the form of surveys, sworn statements, and revenue information, among other items. Moreover, even though the USPTO subsequently published the application, Microsoft has requested an extension on the deadline to file a formal opposition to the application before the Trademark Trial and Appeal Board, and it appears we soon may see a dispute between the two companies as to whether the design is protectable.

Nevertheless, if a business has invested substantially in its design and intends to use that design extensively for the foreseeable future, then it may make sense to seek a trade dress registration. Moreover, even if it is not feasible to demonstrate acquired distinctiveness for the purposes of obtaining a registration on the USPTO’s Principal Register (“PR”), it still may be possible to obtain registration on the Supplemental Register (“SR”). While not as valuable as a PR registration, a SR registration still has a number of benefits, including:

  • The registrant may use the registration symbol ®;
  • The registration is protected against registration of a confusingly similar mark; and
  • The registrant may bring suit for infringement in federal court (albeit without the strong evidentiary presumptions available for PR registrations).