Frequently Asked Questions

Why is trade dress usually not registered with the U.S. Patent and Trademark Office?

Trade dress, a type of intellectual property, encompasses all elements that contribute to the overall image of a product or service. It can be as simple as a color or as complex as the configuration and packaging of a product. Trade dress is protected under trademark law, specifically the Lanham (Trademark) Act, which applies to both registered and unregistered marks. Despite this, trade dress is usually not registered with the U.S. Patent and Trademark Office (USPTO). The primary reason for this is practicality. Registering trade dress involves costs, particularly those associated with proving distinctiveness. This process requires demonstrating that the trade dress is not primarily functional, is inherently distinctive or has acquired distinctiveness through secondary meaning, and that there is a likelihood of customer confusion if other products or services use the same trade dress. Moreover, functionality plays a crucial role in trade dress cases. If a trade dress is found to be primarily functional rather than promotional, it cannot be protected. This was demonstrated in the case of Jay Franco & Sons, Inc. v. Franek, where the court ruled that the round design of a beach towel was primarily functional and therefore could not be protected under trade dress.