Trade Dress Hurdles at the TTAB

According to a November 2004 article by John Welch, "One who seeks to
register product configuration trade dress in particular
had better be a good hurdler." If the utilitarian advantages of the configuration or other trade dress are disclosed and/or claimed in a utility patent, or if the applicant has touted such advantages in its advertising, there is little or no chance of proving non-functionality. Even if the functionality hurdle is cleared, the product configuration trade dress applicant must then meet the "heavier" burden of proof that applies to the establishment of secondary meaning for a product shape. Unless the applicant has made a significant effort to promote the configuration as a trademark, there is again little hope that registration can be achieved. Trademark practitioners, given the opportunity, would advise trade dress clients to avoid "touting" advertising and instead to make use of "look for" advertising that emphasizes that the design in question is a trademark.