A hat with a beard face mask

Trade Dress Series, Part 5: Ineffective trade dress claims

In Part 1 of this series, I introduced the different methods for seeking protection on product designs, namely, trade dress, copyright, and design patent. In Part 2, we took a closer look at trade dress and how to obtain this type of intellectual property protection. Part 3 further explained the consumer recognition requirement for trade dress protection. Part 4 provided examples of popular brands that have successful trade dress claims.

Trade dress can be a difficult trademark to acquire. It requires distinctiveness, non-functionality, and consumer recognition. In the previous article, I provided examples of popular brands that succeeded in registering trade dress for their brand. However, not all attempts at trade dress protection have been successful.

Attempts to claim trade dress in distinctive quilting patterns on toilet paper has be unsuccessful. The courts opined that the quilted features were functional and utilitarian. Similarly, Goodyear’s rubber tire tracks were deemed functional in nature.
A pet grooming product design and brackets for attaching traffic signal were deemed utilitarian in nature. In other words, the design of the tool was critical to its function.

Chevron’s pole spanner sign was not distinctive in the mind of the  consumer.

A company that produces knitted hats that also cover mustaches and beards applied for registration for this design, but it had not yet acquired distinctiveness in the eyes of the consumer.

The latter two items are relatively popular, so consumers could recognize the product, but they couldn’t necessarily identify that the product came from a single source. The design of the first two products serves a functional purpose, and therefore is disqualified from protection. These four products show the factors needed to be trade dress eligible. If trade dress protection does not appear to be an option, there are other avenues that an experienced intellectual property attorney can help you take.