The Trademark Prosecution Review 2027 – Specialist chapter: Avoiding USPTO refusals when protecting product look and feel

In summary

A distinctive trade dress is one of the most effective ways for a company to differentiate their products and services in a crowded marketplace. Beyond conventional packaging and product shapes, trade dress encompasses a broad spectrum of visual and sensory design elements, enabling companies to protect their signature look and feel. Navigating prosecution before the US Patent and Trademark Office (USPTO) presents unique procedural and evidentiary hurdles, but a well-crafted registration strategy secures enforceable rights and enhances long-term portfolio value. This article examines the core principles, recent legal developments and strategic best practices governing federal trade dress protection under US trademark law.

Discussion points

• What is trade dress?
• What are the benefits of trade dress protection?
• What special components are required in trade dress applications?
• What are some limits on trade dress registration?
• What are the key considerations when registering trade dress?

Referenced in this article

• USPTO Trademark Manual of Examining Procedure (TMEP)
• Inwood Laboratories, Inc. v Ives Laboratories, Inc., 456 U.S. 844, 102 S. Ct. 2182, 72 L. Ed. 2d 606 (1982)
• In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982)
• Seabrook Foods, Inc. v Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977)
• Cardinal Motors, Inc. v H&H Sports Protection USA, Inc. 128 F.4th 112 (2d Cir. 2025)
• In re Misty Everson and Christine Maynard, No. 97104306, 2026 WL 906530 (TTAB 31 March 2026)
• In re Ralph’s Famous Italian Ices Franchise Corp., No. 90302728, 2026 WL 1920835 (TTAB 25 June 2026)
• In re: PT Medisafe Technologies, 134 F.4th 1368 (Fed. Cir. 2025)

What is trade dress?

While a trademark protects brand identifiers such as words, names, symbols, slogans or logos, trade dress covers a broader category of protection. It safeguards the overall visual appearance or ambience – or the “look and feel” – associated with a product, its packaging or the commercial environment where a service is provided.

By protecting the distinctive combination of elements that function as a source identifier, trade dress prevents competitors from mimicking a brand’s unique appearance. Although historically limited to product packaging, modern trade dress doctrine covers a much broader range of visual and sensory features, including:

• Product design: trade dress protects the shape and design of the product or a particular feature of the product. For example, the distinct flat-bottomed conical shape of a Hershey’s Kiss chocolate or the three-dimensional shape, flap closure structure and strap arrangement of Hermès’ Kelly bags.
• Service environment: trade dress also protects the overall interior layout, visual décor, architectural motif and sensory atmosphere of a business establishment. For example, the design of Apple retail stores or a chain restaurant such as In-N-Out Burger.
• Non-traditional elements: under US trademark law, sensory and non-standard visual elements – such as colours, scents, sounds, textures and motions – can function as trade dress. Examples of such protected elements are the use of “Tiffany Blue” with jewellery, the Netflix “Ta-Dum” played at the launch of a streaming interface, the distinctive scent of Play-Doh and the feel of the velvet-like coating on an American Wholesale wine bottle.

Although trade dress began as a relatively limited concept, it has evolved into a versatile tool. Modern trade dress law now covers nearly any non-functional design element or sensory feature that distinguishes the source of a product or service.

Benefits of trade dress protection

Trade dress protection plays a crucial role in safeguarding a company’s brand value and market share. While common law and state protections exist, federal registration provides far broader nationwide rights and streamlined enforcement mechanisms. Key advantages of securing federal registration include:

• Nationwide constructive notice to competitors. Such notice prevents infringers from claiming that they adopted a confusingly similar trade dress in good faith.
• The exclusive right to use the mark nationwide.
• The ability to enforce the trade dress in federal court.
• The legal presumptions that the trade dress is valid, owned by the registrant and non-functional. This shifts the burden to the infringer to refute these presumptions and prove otherwise.
• After five years of continuous use and registration on the Principal Register, the trade dress can achieve “incontestable status”, which limits the grounds on which a third party can challenge the validity of the mark.
• Protection will last indefinitely, as long as the trade dress is being used in commerce.

Beyond these legal rights, trade dress protection delivers vital strategic advantages. It enables a business to safeguard the signature visual features – such as shape, colour, size, texture, graphics and layout – that consumers instinctively associate with its products or services. This prevents competitors from free riding on substantial investments in brand design or attempting to pass off confusingly similar goods and services.

A distinctive trade dress cultivates brand loyalty and consumer trust, making expanding into new product lines far more efficient. When entering a new market, a recognised trade dress carries existing goodwill with it, significantly lowering the customer acquisition costs and marketing effort needed to launch new offerings.

Trade dress also creates an intuitive buying experience. Consumers instantly recognise a trusted brand and its quality from a single visual cue. For instance, an iconic bottle silhouette or particular colour can instantly communicate the brand and the consistent quality consumers expect.

For these reasons, trade dress serves as an essential tool in any IP portfolio, especially when patent protection is unavailable or has expired. Because visual appeal heavily influences purchasing behaviour, protecting the brand’s unique look and feel provides a substantial and lasting competitive advantage.

Trade dress applications require special components

Securing a federal trade dress registration at the USPTO mirrors the traditional trademark process but imposes significantly more rigorous technical standards regarding visual depiction and scope. Like standard filings, an application requires applicant details, identified goods or services, a statutory filing basis, specimens of use (if applicable), contact information and requisite fees. However, trade dress applications add two critical components: a specialised form drawing and a detailed written description.

The drawing is the most critical element of the application, as it defines the precise legal scope of the claimed trade dress. Applicants must submit a high-quality “special form” drawing (typically a digital illustration) depicting the mark in its entirety. Under USPTO practice, solid lines depict the specific visual features claimed as trade dress, while broken or dotted lines indicate unclaimed matter, functional parts or background elements. Because USPTO rules generally limit an application to a single drawing page, applicants requiring multi-perspective views to adequately depict their three-dimensional design must petition the Director for a waiver – a petition that is routinely granted.

The applicant must also submit a written description that accurately explains the mark. This statement must clearly detail every claimed visual element, specify whether the mark is two- or three-dimensional, categorise the subject matter as product packaging or product design (configuration) and explicitly identify which elements are depicted in dotted lines and disclaimed.

Given these technical hurdles and the legal requirements to be discussed below, careful planning and preparation of these visual and descriptive elements is vital for a successful and effective registration.

Limits on US federal trade dress registration

Once filed, the trade dress application undergoes substantive examination by the USPTO for compliance with all statutory and technical requirements. This review is governed by strict legal doctrines that serve as substantial hurdles to registration. The two most formidable hurdles to registration are proving that the trade dress is non-functional and establishing that it is distinctive.

Functionality

Functionality represents one of the most formidable hurdles to securing trade dress protection. The non-functionality requirement is designed to prevent trademark law – which provides perpetual rights – from undermining patent law’s balance of granting limited-term exclusive rights in exchange for the eventual public dedication of useful designs. Consequently, functionality serves as an absolute statutory bar to registration on both the Principal and Supplemental Trademark Registers.

The Supreme Court’s Inwood test (Inwood Laboratories, Inc. v Ives Laboratories, Inc.) provides the primary standard for utilitarian functionality. Under this inquiry, a product feature is functional if:

1. it is essential to the use or purpose of the article; or
2. it affects the cost or quality of the article.

A design feature is “essential to the use or purpose” and therefore functional if it represents an indispensable mechanical or structural component. For example, the raised studs on LEGO building bricks cannot be protected as trade dress because those features are vital to the interlocking mechanism that makes the toy work. Granting trade dress protection would block competitors from manufacturing compatible construction toys, conferring an unlawful, perpetual monopoly over a functional product feature.

A feature is also functional if its design provides a significant advantage in terms of cost or quality. More specifically, the inquiry is whether the design delivers significant manufacturing, cost or operational benefits. This prong examines whether the design renders the product cheaper, simpler or faster to fabricate, or whether it enhances performance, safety or durability. For example, the distinctive pillow shape of Shredded Wheat cereal was deemed functional because alternative shapes would increase production costs and degrade the finished cereal’s quality – the pillow contour represented the most efficient form for baking without compromising structural integrity.

When the evidence does not clearly establish functionality under the primary “essential to the use or purpose” test, the courts and USPTO generally apply the four factors established in In re Morton-Norwich Prods. (Morton-Norwich)to determine if a feature is functional. These factors include:

1. Utility patents: the existence of an active or expired utility patent that discloses the utilitarian advantages of the design sought to be registered.
2. Advertising and marketing: promotional materials by the applicant touting the functional or utilitarian benefits of the design.
3. Alternative designs: the availability to competitors of other functionally equivalent designs.
4. Manufacturing efficiency: evidence showing that the design results from a comparatively simple, inexpensive or superior method of manufacture.

The Supreme Court has established that if the first two Morton-Norwich factors – patent disclosures and advertising touting utilitarian advantages – clearly demonstrate that a feature is “essential to the use or purpose”, the feature is functional as a matter of law. Under this threshold standard, the inquiry ends immediately without requiring consideration of alternative designs.

While utility patents create a strong evidentiary presumption of functionality, the existence of a design patent can weigh in favour of non-functionality because design patents protect purely ornamental features. Nevertheless, a design patent does not create a per se rule of non-functionality and can be outweighed by other evidence – particularly the applicant’s advertising – supporting a functionality determination.

Recent Trademark Trial and Appeal Board (TTAB) decisions have placed decisive weight on an applicant’s advertising and marketing materials. In cases such as In re Misty Everson and Christine Maynard, the TTAB determined that advertising functional or convenience-driven benefits (eg, “easy to share”, “utensil-free”, or “portion-controlled”) conclusively establishes utilitarian functionality – a finding that cannot be overcome by asserting ornamental intent or attempting to prove acquired distinctiveness.

By denying trade dress protection to functional features, the law keeps trademark protection focused on brand identity, preventing companies from locking up functional product features and preserving room for ongoing market innovation.

Distinctiveness

To qualify for registration with the USPTO, trade dress must also be distinctive. The distinctiveness analysis evaluates whether the trade dress functions as a source identifier or fails to distinguish the goods or services from those of competitors.

The determination of distinctiveness depends on the type of trade dress:

• Product packaging and service designs: packaging (eg, the graphics on a box) and service-related trade dress (eg, the décor of a restaurant) can be protected by establishing either inherent distinctiveness or acquired distinctiveness.
• Product design and configuration: a product design (eg, the physical shape of the product itself, such as the shape of a Hershey’s Kiss), on the other hand, can never be inherently distinctive and is only protectable if it acquires distinctiveness through secondary meaning.

Trade dress is inherently distinctive if its design immediately identifies the source of the product or service upon first encounter, without requiring prior market association. Because consumers are conditioned to view product packaging and business décor as source indicators, the US Supreme Court has held that these categories can be inherently distinctive.

To evaluate whether packaging or service décor is inherently distinctive, courts and the USPTO apply the four-factor test established in Seabrook Foods, Inc. v Bar-Well Foods, Ltd. (Seabrook), assessing whether the trade dress is:

• a “common” basic shape or design (weighing against inherent distinctiveness);
• unique or unusual in the relevant market (weighing in favour of inherent distinctiveness);
• a mere refinement of a well-known, commonly adopted form of ornamentation for that class of goods (weighing against inherent distinctiveness); and
• capable of creating a commercial impression distinct from the accompanying words (weighing in favour of inherent distinctiveness).

Establishing inherent distinctiveness provides the most efficient pathway to trademark protection and enforcement, establishing validity without the evidentiary burden of establishing market recognition.

Conversely, certain types of trade dress can never be inherently distinctive. This includes product configuration, single colours and scents. Because consumers do not naturally understand these features to be source identifiers, they are only protectable upon a showing of acquired distinctiveness through secondary meaning – demonstrating that consumers have learned through market exposure to associate the feature exclusively with a single source.

While the Seabrook factors govern inherent distinctiveness, federal circuits have formulated their own multi-factor tests to assess whether a mark has acquired secondary meaning. For proceedings before the USPTO, the Federal Circuit weighs several evidentiary factors together, including:

1. Actual consumer association: evidence that purchasers link the trade dress to a single source, typically demonstrated through consumer surveys or customer testimony.
2. Length, degree and exclusivity of use: the duration and consistency of the applicant’s continuous use in commerce.
3. Advertising expenditures and strategy: the scale of promotional efforts, particularly “look-for” advertising that explicitly directs consumers to view the trade dress as a source identifier.
4. Commercial success: sales volume, revenue and customer base size.
5. Intentional copying: evidence that competitors have deliberately copied the trade dress to benefit from the owner’s goodwill.
6. Unsolicited media coverage: third-party press and media attention highlighting the design.

In practice, the applicant must demonstrate that substantial time, capital and promotional efforts (factors 2–4) have succeeded in training the public to recognise the trade dress as a brand identifier (factor 1).

Acquired distinctiveness serves as the legal mechanism that transforms a product design into an enforceable trademark. When an applicant cannot yet prove secondary meaning, the mark may still be registered on the USPTO’s Supplemental Register, preserving priority while the owner continues building secondary meaning in the marketplace.

The Supplemental Register is reserved for marks – including trade dress – that are “capable of distinguishing” an applicant’s goods or services, even if they currently lack the secondary meaning required for the Principal Register. To qualify, the trade dress must be non-functional and currently in use in commerce. Consequently, intent-to-use applications cannot be registered on the Supplemental Register until an acceptable allegation of use has been filed and approved.

Because product configurations can never be inherently distinctive, applicants often seek registration on the Supplemental Register – either upon initial filing or by amending an application – as an interim measure to protect their non-functional designs while they build consumer recognition.

Although registration on the Supplemental Register does not confer all the statutory presumptions of the Principal Register (such as presumptive validity and ownership), it delivers critical legal and commercial benefits:

• Right to use the registration symbol: the owner is entitled to use the circle-R symbol (®), providing formal notice of federal registration and deterring potential infringers.
• Public notice and search clearance: the registration appears in the USPTO database, ensuring it surfaces in third-party clearance searches and discourages the adoption of confusingly similar designs.
• USPTO ex parte refusals: examining attorneys will be able to cite the registration and block later-filed third-party applications for confusingly similar marks.
• Federal court jurisdiction: the registration provides an independent basis for federal subject-matter jurisdiction in infringement actions, allowing the owner to pursue injunctive relief, actual damages and potentially attorneys’ fees.
• Stepping stone to the Principal Register: after five years of substantially exclusive and continuous commercial use, the registrant can leverage that duration under Section 2(f) as prima facie evidence of acquired distinctiveness to seek registration on the Principal Register.

Key considerations when registering trade dress

Securing a federal trade dress registration can be a complex yet highly valuable endeavour, as it protects the overarching commercial impression – the distinct “look and feel” – of a product or service. An essential step before submitting a trade dress application to the USPTO is conducting a comprehensive pre-filing evaluation. This assessment determines the overall viability of the application, shapes prosecution strategy to pre-empt common examination refusals and identifies the evidentiary support required for registration. A thorough pre-filing review should focus on three foundational issues: definition, functionality and distinctiveness.

Defining the trade dress

The initial step in any pre-filing evaluation is to define the scope of the trade dress. To optimise the trade dress portfolio, a brand owner should consider both individual non-functional design attributes and the overall visual presentation of a product or service. Under the modern view, trade dress encompasses virtually any non-functional visual element that functions as a source identifier.

The evaluation must identify every component contributing to the “total image” presented to consumers, including size, shape, colours, textures, graphics and arrangement. An application typically claims protection for the composite combination rather than isolated, generic elements. This composite standard protects the unique arrangement of features that, viewed in their entirety, create a distinct visual impression that consumers recognise as coming from a single source.

Additionally, counsel must classify the trade dress at the outset as either a product configuration (the shape or design of the product itself) or product packaging/business décor (a container, packaging graphics or a retail/restaurant layout). This classification dictates the legal standard and evidentiary burden required to establish distinctiveness before the USPTO.

Although it is an enforcement decision, the Second Circuit’s decision in Cardinal Motors, Inc. v H&H Sports Protection USA, Inc. (2d Cir. Feb. 2025) clarified the structural requirements for defining protectable trade dress. Specifically, the court distinguished the procedural requirement to articulate the discrete, identifiable elements of a claimed product-design trade dress from the substantive requirement to plead and prove secondary meaning. Under this articulation requirement, a trade dress owner must specify with precision the exact components that constitute the claimed trade dress. This distinction directly underscores the importance of drafting mark descriptions and drawings with exacting clarity during USPTO prosecution to withstand future litigation and invalidity challenges.

Establishing non-functionality is mandatory

Non-functionality is an absolute requirement for trade dress protection. In product trade dress applications, the USPTO will scrutinise whether the claimed design is functional under the Morton-Norwich factors. An applicant must establish that the design is non-functional and does not serve a utilitarian purpose; that is, it must not be essential to the use or purpose of the article, or affect its cost or quality.

Therefore, conducting a thorough pre-filing investigation is vital to uncover any evidence that could trigger a functionality refusal. This review should include analysing existing utility and design patents, auditing marketing and promotional materials for utilitarian claims, and evaluating industry-standard manufacturing methods and competitive alternatives. Addressing functionality before filing ensures a smoother, more defensible prosecution – a principle recently underscored in In re Misty Everson and Christine Maynard (TTAB March 2026).

In that case, the TTAB evaluated Misty Everson and Christine Maynard’s three-dimensional product configuration trade dress comprising a circular pancake pre-sliced into eight uniform wedges. The Board underscored how an applicant’s own promotional messaging, branding materials and prosecution arguments can fatally undermine registrability under the Morton-Norwich functionality doctrine. Specifically, the TTAB placed significant weight on the applicants’ internal brand style guide, which touted the claimed design features as “shareable”, “dippable” and ideal for “life on the go”. The applicants compounded the issue during prosecution by arguing that the segmented configuration facilitated utensil-free consumption, convenient portion sharing and slice-by-slice topping customisation. Instead of establishing acquired distinctiveness, these submissions provided direct evidentiary proof of utilitarian functionality. The decision stands as a clear caution to brand owners: marketing or touting the utilitarian and convenience advantages of a product feature can significantly compromise its viability for trade dress protection.

Key strategies to establish non-functionality include:

• Disclaiming and disassociating functional elements: functional components – such as an ergonomic grip or a pour spout – should be excluded from the trade dress claim. Applicants should depict functional elements in broken or dashed lines in the drawing and explicitly disclaim them in the written description.
• Navigating patent disclosures: an existing or expired utility patent covering the claimed features serves as strong evidence of functionality. If a utility patent exists for the underlying product, the applicant must demonstrate that the specific trade dress elements are purely ornamental or distinct from the utilitarian features disclosed or claimed in the patent.
• Auditing promotional and marketing materials: the USPTO routinely uses promotional language that touts utilitarian advantages (eg, “ergonomic design”, “aerodynamic shape” or “superior grip”) to establish functionality. Advertising should emphasise source identification and brand origin (“look-for” advertising) rather than functional performance.
• Documenting commercially viable alternative designs: to demonstrate that trade dress protection will not hinder competition, the applicant should compile evidence showing that alternative designs are readily available to competitors to achieve the same utilitarian result.

Establishing distinctiveness is critical

Distinctiveness determines whether a trade dress qualifies for immediate protection or requires proof of acquired market recognition. While product packaging and business décor can qualify as inherently distinctive under Seabrook, an applicant must be prepared to demonstrate that the trade dress is arbitrary, unique or unusual in the relevant marketplace. If inherent distinctiveness is established, the mark can be registered on the Principal Register without extensive evidentiary showings of consumer perception.

In contrast, product configurations, single colours and scents can never be inherently distinctive as a matter of law. For these categories, the applicant must establish acquired distinctiveness (secondary meaning) by demonstrating that, through extensive commercial use and promotion, the primary significance of the design in the consumer’s mind is to identify the product’s source rather than the product itself.

The critical importance of properly substantiating distinctiveness was recently demonstrated in In re Ralph’s Famous Italian Ices Franchise Corp. (TTAB June 2026). In that case, the TTAB affirmed the refusal to register a repeating pattern of blue-and-white stripes used for confections, beverages and restaurant services, finding the design neither inherently distinctive nor possessive of acquired distinctiveness:

• Inherent distinctiveness: the TTAB observed that the applicant’s repeating stripes were merely a refinement of the alternating coloured stripes ubiquitous across the industry.
• Acquired distinctiveness: despite decades of use and significant sales figures, the applicant failed to prove secondary meaning. The TTAB noted the absence of “look-for” advertising directing consumers to the trade dress, any direct educational efforts teaching consumers that the pattern identified a unique commercial source, or empirical evidence demonstrating the success of its marketing.
• Third-party crowding: widespread third-party use of similar striped patterns for identical goods and services created a “nearly insurmountable hurdle”, defeating the applicant’s claim that its use had been “substantially exclusive”.

In re Ralph’s Famous Italian Ices Franchise Corp. reaffirms that relying solely on raw sales volume and advertising expenditures is insufficient to establish acquired distinctiveness under Section 2(f). To satisfy this standard, an applicant must provide targeted evidence demonstrating concerted efforts to educate the public – such as “look-for” advertising – alongside concrete proof that consumers actually perceive the trade dress as a unique source indicator rather than mere ornamentation.

Key strategies to prove acquired distinctiveness include:

• Documenting duration and exclusivity of use: establishing substantially exclusive and continuous commercial use for at least five years preceding the application, which serves as statutory prima facie evidence of secondary meaning under Section 2(f).
• Leveraging “look-for” advertising: providing promotional materials that prominently showcase the design, particularly “look-for” advertising that explicitly directs consumers to identify the trade dress as a brand indicator (eg, “Look for the unique triangular shape of our product”). Marketing materials highlighting utilitarian benefits must be strictly avoided, as they undermine distinctiveness and support functionality refusals.
• Commissioning consumer surveys: submitting methodologically sound, unbiased consumer perception surveys. Survey evidence is widely regarded by the USPTO and federal courts as the most persuasive direct proof that the relevant consumer base connects the design to a single brand, where net recognition rates of approximately 25% or higher generally establish secondary meaning.

Likelihood of confusion cannot be overlooked

Prior to filing a trade dress application, conducting trademark clearance searches of the USPTO database is essential to ensure that the proposed design does not conflict with existing registrations or pending applications. Under Section 2(d) of the Lanham Act, the USPTO will refuse registration if the trade dress so closely resembles a prior mark as to create a likelihood of consumer confusion regarding the source, sponsorship, or affiliation of the goods or services.

A thorough clearance strategy must also incorporate a common law search to uncover unregistered trade dress in the marketplace. Because trademark rights in the United States derive from use rather than registration, a senior common law user of an identical or confusingly similar design poses significant risks. Such parties can file an opposition during the USPTO publication period, initiate cancellation proceedings or assert common law infringement claims to enjoin commercial use.

Layering intellectual property rights (IP stacking)

A comprehensive brand protection strategy requires a proactive, multi-layered approach to trade dress protection. Brand owners frequently optimise their enforcement posture by “stacking” complementary forms of IP – namely trade dress, design patents and copyrights – to protect the non-functional, ornamental features of a product or its packaging. This layered approach creates a robust shield, addressing the weaknesses and leveraging the strengths of each type of protection.

A primary objective of IP stacking is leveraging the immediate, limited-term exclusivity of design patents to bridge the market-entry gap until the design establishes the acquired distinctiveness (secondary meaning) necessary for perpetual trade dress protection:

• Design patents (15-year term): design patents protect the new, original and ornamental design of an article of manufacture without requiring any showing of consumer recognition or secondary meaning. Securing a design patent provides a 15-year statutory monopoly that prevents competitor copying during the critical commercialisation phase, giving the owner time and market exclusivity to build brand recognition. Moreover, because a design patent grants protection exclusively for ornamental features, its issuance can serve as supporting evidence that the design is non-functional in subsequent trade dress proceedings.
• Copyright (long-term exclusivity): copyright protects original two- and three-dimensional artistic elements of a useful article that are physically or conceptually separable from its utilitarian aspects (eg, a unique, separable sculpture on a lamp base, but not the overall shape of the lamp itself). This includes repeating patterns, surface graphics, fabric prints and ornamental features. Lasting for the author’s life plus 70 years (or 95 years for works made for hire), copyright delivers immediate, long-term protection from the moment of creation, shielding the visual assets while trade dress distinctiveness develops in the marketplace.
• Trade dress (potentially perpetual): once the design achieves consumer recognition and secondary meaning in commerce, trade dress registration on the Principal Register secures perpetual federal protection for the overall commercial image.

Preventing genericide and genericness refusals

Securing and maintaining trade dress rights can be particularly difficult in crowded industries where certain design features or colour schemes are widely adopted. Courts and the USPTO consistently hold that features common to an industry cannot serve as source identifiers.

Under the standard genericness framework, courts assess two fundamental questions:

1. What is the genus of goods or services at issue?
2. Does the relevant public primarily understand the mark to refer to that genus of goods or services?

In the case In re: PT Medisafe Technologies, the US Court of Appeals for the Federal Circuit refined this framework to evaluate whether colour trademarks are generic:

1. What is the genus of the goods or services at issue?
2. Does the relevant public understand the colour primarily as a product category identifier or a standard type of trade dress for that genus?

Applying this test, the Federal Circuit affirmed that the colour dark green is generic for chloroprene medical examination gloves and cannot be registered as a trademark.

The Medisafe case is a warning to brand owners that trade dress can rapidly degrade into generic, unprotectable ornamentation if competitors freely adopt similar elements. To preserve exclusivity and avoid genericness, brand owners should employ proactive policing and enforcement strategies:

• Marketplace surveillance: track e-commerce marketplaces (eg, Amazon), competitor marketing, social media platforms and industry trade journals to identify unauthorised uses and emerging marketplace trends that dilute the trade dress.
• Trademark watch services: implement formal watch services to detect conflicting USPTO filings and common law developments before third-party uses mature.
• Tiered enforcement action: issue targeted cease-and-desist demands, initiate TTAB opposition or cancellation proceedings, or pursue federal litigation against infringing designs.
• Preserving exclusivity: enforce rights consistently against minor infractions to prevent marketplace saturation from destroying the exclusive commercial association necessary for trade dress protection.

Key takeaways: essentials of federal trade dress protection

1. Broad subject-matter scope: trade dress extends beyond a product’s shape to encompass packaging graphics and overall business décor – safeguarding any distinctive, non-functional visual element that identifies the source.
2. Coordinated IP strategy: a company’s utility patents and utilitarian marketing claims can severely compromise the ability to secure trade dress protection. A cohesive IP strategy is vital to avoid creating evidence of functionality.
3. Heightened distinctiveness burdens: product configurations and single colours are legally incapable of inherent distinctiveness, requiring robust evidentiary showings of acquired distinctiveness (secondary meaning).
4. Early evidentiary preparation: assembling compelling evidence of secondary meaning – such as “look-for” advertising, duration of exclusive use, sales volume and consumer perception surveys – streamlines USPTO prosecution and strengthens the enforcement record.
5. Perpetual commercial value: because valid trade dress rights do not expire as long as the mark remains in continuous use and distinct, it serves as an exceptionally valuable long-term asset within an IP portfolio.