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. This article will further explain the consumer recognition requirement for trade dress protection.

Because product designs are generally selected for utilitarian purposes or consumer appeal, design attributes are not readily perceived by consumers as source-identifying or branding features. Most companies design a product to suit a certain function or because consumers find the feature trendy. But to be eligible for trade dress protection under trademark law, the product design must be distinctive (unique) enough such that consumers automatically connect those features to the company’s brand. Usefulness (functionality) prohibits trade dress protection – the feature serves a function instead of serving to identify the company and its brand. Trends imply popularity, not uniqueness.

If a company wants to create a source-identifying design feature, it must engage the executives, sales and marketing people in this strategy. It is important that marketing and promotion of the product not tout any usefulness of a “signature” feature. If it has any purpose other than branding admitted by the company, it is going to be difficult to register the feature as trade dress. Pennzoil’s advertising of the usefulness of its transparent motor oil packaging precluded it form later asserting it was distinctive and nonfunctional element of its trade dress. A steel manufacturer was denied registration for aesthetic functionality of its product designs of roofing tiles and ventilating ducts and vents. These were architectural elements whose function was aesthetic appeal. They would therefore not be uncommon, unique or unusual.

Even in cases where applicants have submitted evidence that there are numerous alternative designs available for competitors, the courts have been reluctant to grant one company a monopoly over a utilitarian feature. Alternative designs are considered in the analysis, but are insufficient to overcome the functionality rejection in most cases since the feature often plays a role in the cost of manufacturing or other advantages rather than functioning purely as a source indicator.

It will also be important to include patent and trademark counsel on your team. The existence of a utility patent describing the utilitarian features of a product design will also be fatal to a trade dress claim incorporating that same feature. A design patent, on the other hand, will support claims of pure ornamental attributes and lack of functionality. In some circumstances, a  combination of individually functional features may be protected by trade dress, so learning how to package the functional elements into one unique trade dress can be a way around this exclusion.

Part 4 of this series provides examples of popular brands that have successful trade dress claims, and Part 5 reveals some unsuccessful attempts at trade dress protection.