This is one of the most difficult trademarks to register.

A recent Trademark Trial and Appeal Board (TTAB) decision is illustrative on how the US Trademark Office treats product configuration applications.

On May 2019 the TTAB In re Creative Edge Design Group, Ltd., Serial No. 87287662 affirmed the refusal, under Section 2(e)(5) finding the design of this milk container  to be “de jure” functional.

Under Section 2(e)(5), 15 U.S.C. § 1052(e)(5), (e) Consists of a mark which … (5) comprises any matter that, as a whole, is functional”). Matter is functional if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted).

The following factors to be considered in determining whether a particular design is functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Morton- Norwich, 213 USPQ at 15-16.

How to overcome this type of rejection? If the product configuration/design is not functional then, “product configuration trade dress is registrable only upon proof of acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros., 529 US 205, 209-210, 54 USPQ2d 1065, 1066 (2000).

“Distinctiveness is acquired by “substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984).

However, please note that a “trade dress for services unlike for goods, may be inherently distinctive. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1084 (1992).

The following product configuration applications have been rejected based on these factors and were unable to demonstrate acquired distinctiveness. (Matters shown in broken lines are for placement of the mark purposes only and are not claimed as a feature of each mark).

  1. humidifiers for household use. Denied deemed Functional.
  2. Package Canned Fish. Denied although it was deemed non-Functional, was denied because it lacked acquired distinctiveness.
  3. Wedge Shape for Yoga Blocks. Denied deemed Functional.
  4. Umbrella Design. Denied deemed Functional and lacked acquired distinctiveness.
  5. Honda Motor Configuration – Functional and, Alternatively, Lacks Acquired Distinctiveness

The following product configuration applications were accepted  based on these factors: (Matters shown in broken lines are for placement of the mark purposes only and are not claimed as a feature of each mark).

  1. The design of the pocket stitching of the Levi Jeans granted registration November 16, 1943.
  2. The decorations of this monster truck was considered to be an ornamental (trade dress) packaging and was inherently distinctive thus allowed to register.
  3. Recently approved applications for   
  4. configuration of a computer mouse by Apple.

I can help you navigate the intricacies of product configuration/design in trademark law to secure and protect your intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas before a trademark squatter does.

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