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).

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