About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline
LOG IN
LOG IN

95 Trademark Rep. 1374 (2005)
Trade Dress 101: Best Practices for the Registration of Product Configuration Trade Dress with the USPTO

handle is hein.journals/thetmr95 and id is 1398 raw text is: Vol. 95 TMR TRADE DRESS 101: BEST PRACTICES FOR THE REGISTRATION OF PRODUCT CONFIGURATION TRADE DRESS WITH THE USPTO By Karen Feisthamel, Amy Kelly and Johanna Sistek * I. INTRODUCTION Registration of trade dress can be a challenging process for even the most experienced trademark practitioners. This article will focus on product configuration trade dress and discuss ways to overcome the two hurdles to registration: establishing non- functionality and proof of distinctiveness. The registration of other trade dress, such as packaging or color, will not be addressed. The examination guidelines of the United States Patent and Trademark Office (USPTO), as applied to product configuration trade dress in light of recent case law in this area, will be examined, as will the lessons to be learned from file histories of registrations of product configuration trade dress that were granted in various product categories, such as food, household items, and musical instruments. Lastly, best practices for registering product configuration trade dress will be proposed. II. THE LEGACY OF WAL-MART Two recent Supreme Court decisions have affected the ability to register and protect product configuration trade dress by addressing the questions of inherent distinctiveness and the evidentiary role of a prior utility patent in determining non- functionality. In 2000, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,1 the Supreme Court addressed the issue of the evidentiary burden that must be met by a plaintiff seeking to claim * Ms. Feisthamel is a partner with the Intellectual Property Law Group of Hinckley, Allen & Snyder LLP, Associate Member of the International Trademark Association. Ms. Kelly is Intellectual Property Counsel for Payless ShoeSource, Inc., a Regular Member of the International Trademark Association. Ms. Sistek is an associate in the Trademark and Brand Management Group of the San Francisco office of Dorsey and Whitney LLP, Associate Member of the International Trademark Association. The views expressed herein do not necessarily reflect the views of Hinckley, Allen & Snyder LLP, Dorsey and Whitney, LLP, or Payless ShoeSource, Inc. The authors are members of the INTA Trade Dress Committee, North American Subcommittee, and wish to thank their committee for its support. 1. 529 U.S. 205, 120 S. Ct. 1339 (2000). 1374

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Purchase Access

Contact us for annual subscription options:

Contact Us

Already a HeinOnline Subscriber?

Log In

profiles profiles most