Trade Dress


A functional feature of a product or service may not receive trade dress protection. Functionality may be utilitarian or aesthetic.


Utilitarian functionality exists where features or designs derive from practical, engineering-type decisions.

Utilitarian Functionality
Test for Functionality

Courts consider factors in determining whether a feature is functional:     

(1) whether the feature is essential to the use or purpose of the article;

(2) whether the feature affects the cost or quality of the article; and  


(3) whether the exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.

Aesthetic functionality exists where an aesthetic feature or design leads consumers to prefer the product or service, unrelated to the reputation of the source. The feature or design places competitors at a significant non-reputation-related disadvantage.

Aesthetic Functionality
Secondary Meaning

Trade dress protection is possible without establishing secondary meaning if the trade dress is inherently distinctive (Two Pesos). However, the specific attributes of color (Qualitex) and product design (Wal-Mart) may not receive trade dress protection without establishing secondary meaning.

Trade dress is the overall appearance and total image of a product or service. Trade dress may include features such as size, shape, color, texture, graphics, or even particular sales techniques.  When those aspects of a product or service serve to identity source, the trade dress may receive protection.

Trade Dress

































Answer to Question 3

Not likely. As an initial matter, Abraham would be seeking trade dress for the design of his product. Trade-dress protection for product design requires a showing of secondary meaning, so consumers would have to perceive the elephant and donkey shapes as indicating source. This seems unlikely. Consumers seem to regard the shapes of the gummies as indicating support for the Democrat or Republican political party. Moreover, consumers prefer the two shapes because of their apparent connection to the respective political parties. This preference is unrelated to the reputation of the source, Abraham, as producer of the gummy candies. Therefore, aesthetic functionality would preclude trade-dress protection for the shapes.

Answer to Question 4

Likely yes. The atmosphere of the car wash, including the employee greeting, sales technique, and lime-green color may potentially be eligible for trade-dress protection. Taken together, that atmosphere may communicate a message of source.

Note that secondary meaning may not be necessary to receive trade-dress protection. Although standing alone the lime-green color would require secondary meaning, secondary meaning is not necessary if the color is the subject matter of the trade dress in conjunction with the overall atmosphere of the car-wash service. Secondary meaning is not necessary for the overall atmosphere only if a factfinder determines that the atmosphere is inherently distinctive.

Note also that the car-wash machine by itself would not be eligible for trade-dress protection because of its utilitarian functionality.

Practice Problems

Question 1

William sells covers for cell phones. All covers that William sells are made from beige rubber surrounding a plastic case for the cell phone.

Question: Is William’s cell-phone cover eligible for trademark protection as trade dress?

Question 2

Jen sells home-made jelly. She packages the jelly in a container that is shaped like a penguin. She has only a small business and has not been selling the jelly for very long, so the penguin shape has not yet developed secondary meaning.

Question: Is the penguin shape eligible for trade-dress protection?

Question 3

Abraham sells gummy candies that are in the shape of a donkeys and elephants. His gummy donkey and elephant candies are very popular at political gatherings. The donkey-shaped gummies sell well at Democrat gatherings; the elephant-shaped gummies sell well at Republican gatherings. Customers love the shapes.

Question: Are the shapes of the gummy candies eligible for trade-dress protection?

Question 4

Brook owns a car-wash service, The Ultimate Car Wash. The car wash service is unique in that the automatic washer is painted lime green. Also, her employees always greet customers by saying: “Welcome to the Ultimate!” Then the employees spin three times and yell “Yipee! What’ll it be?!” After the customer orders either a basic, detailed, or deluxe car wash, the employees start the automatic car wash, which wash is like many other car-wash machines.

Question: Is Brook’s car wash service eligible for trade dress protection?


Answer to Question 1

Not likely. The plastic case and beige rubber seem essential to the purpose of the cover—to protect the cell phone from damage. Hence, the functional aspects of the cover, which comprise the entire cover, would not be eligible for trade-dress protection. This is an example of utilitarian functionality.

Note, however, that the color beige could be eligible for trade dress protection if William can establish secondary meaning for that color. He would have to show that consumers understand the beige color to represent source of the cell-phone cover.

Answer to Question 2

Likely yes. A container may serve as trade dress. The penguin shape of the container for jelly seems inherently distinct as related to the product for sale—jelly. If a factfinder does determine it to be inherently distinct, then Jen need not demonstrate secondary meaning for trade dress protection.

On the other hand, if consumers purchase the jelly for the penguin-shaped container that the jelly comes in, the container would arguably be the product itself, so Jen would be seeking trade dress on the product design. Product design would require secondary meaning. However, it seems unlikely that consumers would purchase the jelly for the container that it comes in, so this conclusion likely is not correct.