A trademark is traditionally a “word, name, symbol, device, or combination” that identifies and distinguishes the source of goods or services, but has been expanded to include “shapes, sounds, fragrances and colors.” To be eligible for trademark protection, the “mark” must be distinctive and used in commerce. The requirement that it be distinctive describes the extent to which a mark identifies or distinguishes a particular product or the source of that product from all others. The requirement that it be used in commerce may be fulfilled by a showing that the applicant intends to use the mark in the near future.
Although “trade dress” traditionally covered only the packaging of a product, trade dress protection has been expanded in recent years to extend to the design of a product as well. Trade dress registrations do not protect the functionality of the item -- only its look and feel. To qualify as trade dress, there must be proof that the trademarked aspect has acquired distinctiveness in the market place. This may be established by evidence such as a consistent history of advertising campaigns or results from market surveys.
Although tangible products have traditionally been protected by patent, they may also be eligible for trademark protection as trade dress to the extent that the non-functional design elements are uniquely distinctive in the marketplace. The aspect of a product’s design that is susceptible to trademark protection is its distinctive market-significant appearance or feel.
As with product design, to the extent that packaging of a product performs the secondary nonfunctional role of delivering a visually distinctive marketing message about the product and its source, the packaging may also be eligible for trade dress trademark protection. (See Reference 2)
Advantages and Disadvantages of Trademark Protection
The term of a utility patent is 20 years, while that of a design patent is fixed at just 14 years from the date of issuance. Trade dress trademark protection, on the other hand, may extend indefinitely so long as it remains consistently in actual use and its registration is renewed every ten years. However, the showing required to qualify for trade dress protection is far more stringent than that for a patent. The applicant for trade dress trademark protection must establish that the specific design has already achieved distinction in the marketplace. As noted, this may require submission of expensive market surveys or evidence of continuous advertising promotion of the item in the marketplace. The cost of establishing the market-distinction aspect of trade dress trademark protection tends to limit its use to products and packaging that are the subjects of well-funded, widely distributed marketing campaigns.