Trademarks typically consist of the words, symbols or phrases that distinguish a particular manufacturer’s product. In some cases, protection under trademark law can be extended to other features of a product including its shape and color, or the way in which the product is configured or displayed. These characteristics may be eligible for trademark protection if consumers are able to make a clear connection between that feature and the source of the product.

Trademarks that are conferred to products based on “trade dress” must be distinctive or have acquired “secondary meaning.” The court in Duraco Products Inc. v. Joy Plastic Enterprises Ltd. defined distinctiveness for the purpose of a trademark as “unusual” and “memorable,” and required the trade dress to function “primarily as a designator of origin of the product.” Alternatively, secondary meaning can be obtained when the public recognizes the mark as belonging to that particular manufacturer rather than just representing the underlying item.

However, the features of trade dress are ineligible for trademark protection if they are functional in nature. The Supreme Court held in Qualitex Co. v. Jacobson Products Co. that a product element is considered functional only if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” The plaintiff in that case used a green-gold color for the pads that it manufactured for dry cleaning firms to use in their presses. The defendant sold pads with a similar color in its dry cleaning business. The plaintiff subsequently registered the color of the pads with the United States Patent and Trademark Office and filed an action for trademark infringement. The Court found that the color of the pads served no practical purpose and was purely symbolic. It identified the product but was not a necessary component of the functionality of the item.

The experienced team of attorneys at Connors & Associates can provide you with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

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