In our last post, we looked a colors of products or packaging as potential trademarks that can be protected for certain brands.  This time, let’s consider products themselves.  Not the packaging of the products or the colors used in advertising, but the things themselves.  When can the shape of the thing carry trademark rights for its sellers, and how does that work?

First, a few familiar product examples where the shape of the product is a product configuration trademark.

Coca Cola bottle

Coca Cola bottle

The shape of a Coke bottle has become very recognizable over time.  It says not just “soda bottle,” but “Coca-Cola.” This is the “secondary meaning” that trademark law exists to protect. And a Hershey bar’s “configuration of a candy bar” with 12 recessed rectangles is also a registered trademark. These are examples of product configuration trademarks, where the trademark owner has taken the step of demonstrating and then protecting the shape and appearance of the product itself. This is one kind of “trade dress” protection, with product packaging being the other main area where trade dress protection exists.

Is this a viable intellectual property strategy for all products?  No, but where the shape of the thing is distinctive and communicates to consumers where the thing came from, then trademark lawyers will want to discuss this protection with their clients.

The configuration of a product may constitute protectable trade dress so long as the configuration is not functional and it has secondary meaning, so that it serves a trademark function by signifying the source of a product.

So how does registration and trademark protection for product configurations trademarks work?  Let’s refer to the USPTO’s guidance that it gives to its own examining attorneys, in the TMEP:

Hershey bar's protected product configuration

Hershey bar’s protected product configuration

Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product[citing cases] However, this is not an exhaustive list, because “almost anything at all that is capable of carrying meaning” may be used as a “symbol” or “device” and constitute trade dress that identifies the source or origin of a product. [citing case]

When an applicant applies to register a product design, product packaging, color, or other trade dress for goods or services, the examining attorney must separately consider two substantive issues: (1) functionality; and (2) distinctiveness. [citing cases and other TMEP guidance] … In any application where a product design is refused because it is functional, registration must also be refused on the ground that the proposed mark is nondistinctive because product design is never inherently distinctive. …

If a proposed trade dress mark is ultimately determined to be functional, claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant and registration will be refused. TrafFix , 532 U.S. at 33, 58 USPQ2d at 1007.

One important restriction on product configuration protection is that no product configuration is going to be deemed distinctive from the beginning.  It is use over time that gives a particular product design its brand-boosting recognition in the market.  So this is a protection strategy for the long term, but it is a very powerful one where it fits.

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