What is Trade Dress Registration?
Trade dress is a term defining the visual appearance of a product. It can include elements such as colors, shapes, graphics, textures, and packaging, helping to distinguish a brand’s goods from others on the market.
Registering a trade dress serves to protect your brand identity and can help effectively deal with infringements or violations.
Read the rest of this article to learn more about trade dress and how to register it. We’ll also feature advice on why you should hire a lawyer to assist you through the process.
How Does Trade Dress Vary From Trademark?
A common query surrounding trade dress is how it differs from a trademark. Here’s a simple way to distinguish between the two:
- A trademark is a mark, such as a logo or name, that is directly associated with a specific brand. It has to be distinctive.
- A trade dress is the look and feel of the product, which can include how it’s presented. It doesn’t include any functional features, which can make it challenging to register.
Where Do You Register a Trade Dress?
You’ll register your trade dress on the United States Patent and Trademark Office (USPTO), because it is considered a subcategory of trademark law.
To be able to register your trade dress, you have to ensure it meets certain requirements.
What is Required to Register a Trade Dress?
There are two main requirements your trade dress has to meet before you can register it.
Non-Functionality
A trade dress must not be functional, meaning that it shouldn’t be essential for the purpose or use of the article. Similarly, it mustn’t influence the article’s cost or quality.
Functionality is determined by one or more of the following:
- A utility patent that describes the practical or functional advantages of the design.
- The applicant’s advertising highlights the design’s practical or functional benefits.
- Alternative designs are available that could achieve the same purpose.
- The design results from a relatively simple or cost-effective method of manufacture.
Distinctiveness
The applicant must show that the product design has achieved distinctiveness. You can provide strong evidence of product distinctiveness by one or more of the following:
- Sales success
- Length and exclusivity of use
- Advertising expenditure
- Unsolicited media coverage
The evidence you supply must prove that the exact configuration or design you want to register and protect is associated with your brand. As an example, if you’re registering a unique bottle shape, you must provide evidence specifically about the bottle shape. This can include advertisements that clearly display the shape.
What are Tips for Qualifying for Trade Dress Protection?
There are specific tips to consider to ensure you qualify for trade dress protection.
Start Early
You should try to register your design elements early on to protect your brand. This will help you to build a strong link between your trade dress and brand, such as via consistent marketing efforts, that will distinguish your product from others.
Be Consistent
Your design must be consistent across all packaging, products, and marketing materials. This strengthens your trade dress distinctiveness.
Maintain Records
You want to keep records of all your designs and how they’re used to strengthen your application. This can include product photos, sales records, and even design sketches.
Monitor for Infringements
You should monitor your trade dress for potential infringements. You can do this by checking competitors’ products or marketing materials. The earlier you notice infringements, the easier it will be to stop the offending action.
How Do You Register Your Trade Dress?
You can register your trade dress on the USPTO’s trademark system. Here’s how the process works.
1. Conduct a Trade Dress Search
Before registering your trade dress, conduct a trademark search for similar marks or trade dresses that have been registered. This can be done directly on the USPTO portal.
2. Prepare Your Application
You’ll need to source elements for your application, such as a detailed description of the trade dress and a specimen, such as photos of the product packaging with a clear design or color combination.
3. Choose a Filing Basis
You’ll select between “use in commerce” if you’re already using the trade dress and “intent to use” if you’re not yet using it.
4. Application Review
Once you submit your application for registration, an examining attorney will review it and send you a notification or office action should there be any concerns or issues you need to remedy.
5. Approval
When your registration is successful, it will be published in the Official Gazette. There is a 30-day period in which third parties can oppose it if they feel it is in violation of their rights.
Do You Need a Lawyer for Trade Dress Registration?
It’s advisable to hire a qualified lawyer to help you with your trade dress registration. Even though the process might seem simple and straightforward, it’s easy to make mistakes that can result in office actions, such as if your descriptions are vague or the evidence you’ve provided for non-functionality isn’t strong enough.
Here’s how a lawyer will help you with the registration:
- A trademark lawyer will evaluate if your design or packaging can be legally protected. They’ll check and confirm distinctiveness and non-functionality.
- They’ll conduct thorough trade dress clearance searches so that you’re made aware of any potential conflicts with other trademarks. This will save you money and time on the application.
- They’ll prepare your application, including precise sketches and descriptions to meet all requirements.
- They’ll handle all office actions you receive, helping you to submit evidence to resolve them and prevent registration delays.
- They’ll ensure your trade dress is aligned with other brand elements and intellectual property (IP), such as design patents, for consistency.
Where to Find a Lawyer for Trade Dress Registration
If you need to hire a trademark lawyer to help you register a trade dress, you can easily connect with one on ContractsCounsel, one of the largest online legal marketplaces that gives you access to vetted lawyers. The user-friendly platform streamlines your lawyer search and is much more convenient than having to cold-call traditional law firms.
You can search for a lawyer who’s the best match for your legal requirements according to factors such as their location, previous projects they’ve completed, their level of expertise, and their years of experience. You can also read their client ratings and reviews on the platform.
