In addition to words and logos protected by registration as trademarks and service marks, Federal trademark law (Lanham Act) also protects trade dress. Trade dress is the design or configuration of a product or the product packaging that can be shown to identify the source of the goods or service. The key is that the product design or package design is a source identifier for the consuming public.

It has become increasingly difficult to achieve trademark protection for trade dress.

The old law created by the Supreme Court in Two Pesos, Inc. v. Taco Cabana has largely been eroded in the later Supreme Court decisions of Wal-Mart Stores v. Samara Bros and later in TrafFix Devices, Inc. Marketing Displays, Inc.

It is possible to register trade dress on the Principal Trademark Register. However the applicant bears a high burden.

In summary, a product feature can not serve as a trademark if the feature has a functional component. A feature is functional if it is essential to the use or purpose of the product or affects the cost or quality of the product. (Citing TrafFix Devices.) If the feature is functional, then it is irrelevant if there are other competing ways of accomplishing the function. If the manufacturer has ever touted the benefits or usefulness of the feature, it will be presumptively functional. Functionality is an absolute bar to registration or trademark protection.

In addition, even if shown not to be functional, the applicant still bears a significant burden to show that the feature of the product has become associated with the public as an identifier of the product source. Stated differently, a product design can never be inherently distinctive. The applicant must show that over time, the design feature has acquired “secondary meaning” wherein it is now perceived by the consumer as indicating the product source.

This can be a difficult proof. First, use of the feature for 5 or more years does not automatically establish acquired distinctiveness under 2(f) of Lanham Act 2 (Title 15 §1052(f)). Normally, the USPTO will accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use as a mark during the preceding 5 years. For trade dress, the applicant will need to show that it has advertised the feature as a source identifier. A showing that advertising incorporating the feature as a source (not product) identifier will be helpful. For example, advertising stating “look for the bright green gel for Halo brand shampoo”.

It is somewhat easier to obtain trademark protection for product packaging. The Supreme Court has declared that packaging can be inherently distinctive as a source identifier. However, the packaging must be unique and unusual to be protected. In re Creative Beauty Innovations Inc.