1202.02(f)(i)    Product Design

Trade dress includes the three-dimensional design or configuration of the product itself. In such cases, the drawing usually depicts the item listed in the identification of goods (e.g., the drawing shows a three-dimensional design of a guitar and the goods are "guitars"). However, sometimes the identification of goods/services in a product-design application includes different or unrelated products or services that are, on their face, inconsistent with the product design depicted on the drawing (e.g., the drawing shows a three-dimensional design of a guitar and the identification includes "drums and pianos" or "retail music stores"). This presents an issue of "inconsistent goods." In rare cases, slight variations are acceptable if the products have a "consistent overall look" such that the changes do not alter the distinctive characteristics and the trade dress conveys a "single and continuing" commercial impression. Cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quoting Rose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998), rev’d on other grounds sub nom. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (stating that trade dress protection for a series or line of products or packaging depends on them having a consistent overall look and remanding for proper application of the standard); The Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 766, 29 USPQ2d 1047, 1050 (S.D.N.Y. 1993) (setting forth the "consistent overall look" standard and applying it to a claim of protection for a line of packaging trade dress). For example, the drawing of a three-dimensional design of a guitar might reasonably reflect the consistent overall look of both guitars and ukuleles, which can share a very similar shape and appearance.

Section 1(a) Applications: Where the identification of goods/services, the description of the mark, or other evidence of record indicate that not all of the goods/services in the identification are represented in the three-dimensional mark depicted on the drawing, the examining attorney must refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services. The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127  for trademarks and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.

The examining attorney must specify the inconsistent goods/services subject to refusal and request evidence and/or additional specimens to substantiate use of the mark in connection with the inconsistent goods/services. 37 C.F.R. §2.61(b). The applicant may overcome the refusal by providing (1) additional specimens showing the inconsistent goods in the shape of the design depicted on the drawing or (2) sufficient evidence that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. The applicant may also delete the inconsistent goods/services.

The examining attorney must also examine the drawing and the specimen to determine whether the specific three-dimensional product design mark depicted on the drawing is a substantially exact representation of the mark shown on the specimen. TMEP §807.12(a).

Section 1(b) Applications: In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that the applicant may not be able to show proper trademark use of the product design mark for the inconsistent goods/services, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This advisory is given strictly as a courtesy. If information regarding the possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration after submission of the use allegation. When the record indicates that the product design would not be perceived as a mark for the inconsistent goods/services, the examining attorney may make the failure to function as a mark refusal prior to the filing of the allegation of use.

When an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d),  is submitted in connection with a §1(b) application, the examining attorney should follow the procedures discussed above for product-design trade dress in §1(a) applications.

Section 44 and Section 66(a) Applications: A specimen is not required in a §44 or §66(a) application to show use of the proposed mark in commerce in connection with the identified goods/services. However, since these applications are otherwise examined under the same standards as applications under §1, it is appropriate for the examining attorney to refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services where the drawing, the description of the mark, the identification of goods/services, or other evidence indicates that the identification includes goods/services that are, on their face, inconsistent with the specific three-dimensional product design depicted on the drawing (e.g., a three-dimensional toy car product design for "toy boats"). The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application). The examining attorney must also request evidence to substantiate that the proposed mark could function as a source indicator in connection with the inconsistent goods/services.37 C.F.R. §2.61(b). This is not a requirement for specimens. To overcome the refusal, the applicant must provide evidence showing that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. Absent such a showing, the identification of goods/services must be amended to delete the inconsistent goods/services.