Trademarks: Product Shape as a Trademark?

Most business owners have at least a vague familiarity with the two most common types of trademarks; wordmarks (ie product names and slogans) and design marks (i.e. logos). These two types make up the vast majority of trademark registrations that the USPTO processes each year.
However, there is another category of protectable intellectual property that is known as “trade dress,” which under certain circumstances can qualify as a trademark. Originally, trade dress referred to the “dressing” or packaging of a product, but this category has expanded in recent years to include features such as the shape, size, color, and texture of a product. Essentially, any product feature that serves to identify the source of the product can serve as a trademark. That said, it is an uphill battle for most applications.
A prime example of a trade dress trademark can be found in the recent trademark application from Frito-Lay North America, which seeks to register the unique shape of their chip. The Frito-Lay application (Serial # 97321975) describes the trademark as a “puffed potato product in a circular shape with a waffle-shaped grid on each side and hollow in the middle.” (See Figure 1).

As you can see from the drawing, the shape of the chip is not the typical flat thin chip shape. The key to pursuing this trademark application is going to be to show the USPTO that this unique shape is “non-functional” and it has “acquired distinctiveness” in the minds of the public. In other words, Frito-Lay that the shape does not perform a necessary function of a chip and that this unique shape is connected to Frito-Lay in the minds of the public.
While any product characteristic can serve as a trademark, the applicant must overcome a few hurdles before their mark will register.

Non-Functional
First, the applicant must show that the unique characteristic is not functional. In general, a feature is if a feature of that trade dress is “essential to the use or purpose of the article or if it affects the cost or quality of the article.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995). In Qualitex, the green-gold color (See Figure 2) of the Qualitex press pads was found not to be an essential function of the product.

These press pads are used to press clothes in a dry-cleaning facility. The finding that the color was non-functional allowed Qualitex to proceed with its trademark infringement claim. This outcome is not always the case as many courts have determined colors to be functional. For example in Saint-Gobain Corp. v. 3M Co ., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional); In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (finding the flavor orange functional for pharmaceuticals where the evidence showed the flavor served to mask the otherwise unpleasant taste of the medicine flavor).
With the Frito-Lay application, the applicant will need to show that the unique shape of the chip is non-functional. This might be a tall order considering that the shape and texture will affect the taste of the chip and thus its function as food.

Acquired Distinctiveness
Secondly, the applicant must show that the claimed characteristic (i.e. green-gold color in Qualitex or the chip shape in the Frito-Lay application) has acquired distinctiveness. A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216, 54 USPQ2d 1065, 1069-70 (2000). To show acquired distinctiveness, the application must show that the primary significance of the proposed mark in the minds of the consuming public is not the product but the producer of the product.
Here, Frito-Lay will need to show to the satisfaction of the examining attorney that in the minds of consumers that the unique “puffed…circular shape with a waffle-shaped grid on each side and hollow in the middle” is a shape that consumers strongly associate with Frito-Lay. Showing this will require extensive proof of sales, advertising, customer surveys, and media coverage.
It will be interesting to follow the progress of Frito-Lay’s chip application.
Product design trademarks are fairly rare, but they can be a useful tool for business owners seeking to protect their unique product designs.