Articled - Published in 34 John Marshall Law Review 947-971 (2001).


William T. Fryer, III
Professor, University of Baltimore School of Law.


Trademark law has recently undergone a significant evolution both
nationally and internationally. In the United States this change resulted
from fundamental case law developments, while the creation and
establishment of international agreements sparked the international
evolution. Trade dress protection also experienced significant change, both
in the United States and internationally. This Article focuses on the
"product appearance features" aspect of trade dress protection.

Trade dress includes both the product's packaging and the product's
independent appearance, exemplified by the customized design of the
packaging juxtaposed with the product's appearance and surface designs. The
line between packaging and product appearance features is not easily drawn.
1 For example, while a bottle is itself a product by way of functioning as
a container, it could also be construed, for trade dress purposes, as a
"package" for perfume or liquor.

New terms, concepts, and issues surfaced in product appearance trademark
protection, which resulted in a general change in the direction of
intellectual property law. Questions arise concerning the propriety of
using trademark protection alone, or using trademark law in combination
with a design patent on the same product appearance. These questions demand
an understanding of the relationship between trademark law and  [*949]
other fields of intellectual property, particularly patent law and
especially utility and design patents. Another related issue is whether
protection arises at the time of product introduction, as would be the case
if inherently distinctive product appearance features receive protection,
or whether product appearance features must acquire secondary meaning
within the traditional parameters of trademark protection.

While lawyers and judges review the legal issues, the commercial world,
primarily industrial designers, continues to create several varieties of
product appearance features in an effort to provide more useful and
attractive products. The essence of trademark law creates the inherent
overlapping of the legal community and the commercial world, and thus, when
developing or amending trademark law, the legal community must consider the
industrial designers' perspective.

Before analyzing current developments, a brief introduction of basic
trademark law terms and concepts is necessary to demonstrate how recent
changes in trade dress protection align with prior law. To familiarize the
reader with basic trademark concepts, this Article first considers word
marks and progresses to product appearance feature marks.

I. Basic Principles Of Trademark Law For Word And Product Appearance
Feature Marks

A general introduction to basic trademark law will assist in understanding
the more complex issues concerning the trademark protection of product
appearance features. 2 Protection for registered and unregistered marks
under the Lanham Act 3 will be used in the examples.

The word "Sunkist" 4 exists as a trademark for citrus fruits, since it is
distinctive for such products. While "Sunkist" has a relation to the use of
the sunlight that makes an orange grow, it does not describe the process in
a commonly articulated manner. The "Sunkist" mark is used to help customers
identify oranges grown by a producer organization. Consumers benefit by
avoiding confusion in the product selection process. Additionally, the
business develops goodwill through the creation of increased sales due to
consumer identification with the mark. Economically, the company with the
freshest oranges based on consumer experience is recognized and rewarded
for its quality products, whereas those  [*950]  companies with poor
quality products are identified and eliminated from the market. Without
word mark protection, the aforementioned market conditions and the normal
conduct of business would not be possible.

Mere descriptive words do not receive trademark protection. 5 For example,
the words "ripe" or "fresh" could not be marks for oranges because these
terms do not identify a product source, which is the essential purpose of a
trademark. Over time some words that have general meanings might become
marks. For example, "North American" acquired identification with a product
source through acquisition of secondary meaning. 6

Finally, when a word functions as the name for a type of product, it does
not receive trademark protection. For example, "generic" terms such as
"orange," do not receive trademark protection. 7 For practical commercial
reasons, generic terms must be reserved for general use.

When a word is used with a product, it may be protected immediately from
subsequent marks that are likely to cause confusion. 8 A word that raises
no descriptive issues and is not generic for a type of product may receive
immediate protection as a mark. A word attaining this status is commonly
called "inherently distinctive." Generally, a word is given this important
trademark right when its use is associated with a product and consumers
consider it to be a mark. 9

The aforementioned principles define the broad framework of trademark
protection for words and other marks. With word marks, each situation is
examined on its facts for descriptiveness,  [*951]  mere descriptiveness,
generic use, inherent distinctiveness, and secondary meaning. Most
situations are not difficult, and the disputes that do require litigation
often settle because most parties would rather invest their money in
promoting distinctive product marks.

When assessing trade dress marks, the courts try to apply the general
principles used for word marks to the product packaging protection. 10
However, product appearance features require further analysis given the
dual role (function and appearance) inherent in product design. For
example, scissors must have a shape to achieve cutting action, but they
also exude the general appearance of the two cross components. Trademark
law would deny protection for the appearance since it is de jure
functional. 11 A product appearance, such as the color of a knife, could be
denied trademark status because it is merely an aesthetically functional
product feature. 12 In litigation, the trademark owner possesses the burden
of proof and must establish that the product appearance features are not
functional, or more precisely "merely functional," in terms of technical
operation or aesthetics. 13

Indeed, products have features that are not primarily related to their
function. For example, watches come in many shapes and watch faces have a
multitude of appearances designed to attract customers. 14 These product
appearance features are evaluated under the "distinctiveness doctrine" to
determine if they are merely ornamental or if they can serve as a mark.
Marks have a dual role in that they attract consumers through appearance
while functioning to signify the product's source. While a product
appearance case may involve more issues than a word mark dispute, courts
decide product appearance disputes on their particular facts. Historically,
except on the general principles mentioned, the courts gave little guidance
relating to product appearance protection. However, a recent group of
Supreme Court  [*952]  cases has significantly impacted product appearance
feature trademark protection. 15

II. Supreme Court Product Appearance Features Case Law Development

Prior to a recent group of Supreme Court cases, some product appearance
features were protected. These rights arose either immediately, if the
features were inherently distinctive, or after acquiring secondary meaning.
Features that were merely functional, either due to aesthetics or
utilitarian function, were not protected. From a competitive viewpoint,
these features were considered commercial necessities and, hence, beyond
the scope of protection. Before the Supreme Court recently spoke on the
issue, the line between merely functional, unprotectable, product
appearance features and protectable appearance features was rather gray.
One of the initial debates was whether product color could qualify as a
mark. 16

A. Qualitex Co. v. Jacobson Prods. Co., Inc.

In Qualitex, the Supreme Court settled the color debate, at least
partially. 17 Specifically, the Supreme Court held that color could be a
mark if it is non-functional, but also recognized that color generally had
an aesthetic or utilitarian function. 18 In reaching this conclusion, the
Court applied the general principles used for marks in the past. In
Qualitex, the colors white and green were used for pads placed on laundry
clothing presses. There was no design shape associated with the mark. The
product manufacturer used the colors on press pads for many years, and the
Court found that secondary meaning did exist. The only question was whether
color could be a mark as a matter of law. Some considered colors
unprotectable, because of the limited number of colors available for use
and the difficulty in identifying between color shades. 19

 [*953]  Qualitex established a broad foundation for the protection of
product appearance features. Particularly, it reaffirmed the notion that
merely functional marks could not be protected. Thus, colors such as red
fire extinguishers or black and white for electrical cable, could not be
marks since they were colors used to identify the nature or characteristics
of the product. In Qualitex, the colors associated with the press pads had
no utilitarian function and their aesthetic role was not competitively
significant. 20

However, in the Qualitex decision, the Supreme Court did not address
whether protection could be based solely on the colors being inherently
distinctive if no secondary meaning was present. If the press pads had been
a unique combination of colors for this type of product, they could have
been recognized as a mark immediately. Much depended on the circumstances
of the business and comparison to prior products in the market. The Court's
example of an orange jam jar with a word mark and orange colored label,
illustrated the need for an analysis of color effect on the product for
trademark determination. 21 The Court pointed out that, at least initially,
the jar's outside color would have no trademark significance. Instead, the
focus would be on the word mark. In this example, the Court did not suggest
that product color alone could not be an inherently distinctive mark, or
that color in other factual situations might not be inherently distinctive.
Thus, the Supreme Court did not eliminate the possibility that color could
be inherently distinctive.

B. Two Pesos, Inc. v. Taco Cabanna, Inc.

The next significant Supreme Court opinion to address trademark product
appearance features protection was Two Pesos, Inc. 22 The district court
found that the restaurant decor, a combination of internal and external
building features, was inherently distinctive. 23 In affirming, the
district court's decision,  [*954]  the Supreme Court established, as a
matter of law, that at least some product appearance features could be
inherently distinctive. 24 The Court rejected the rule that appearance
feature marks require secondary meaning for protection. 25 Thus, Two Pesos,
Inc. appeared to suggest that all product appearance features would be
tested against the general principles of trademark law, i.e., there would
be no absolute protection bars for certain subject matter. That Court was
then left to decide the distinctiveness requirements for product appearance

C. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

In Wal-Mart, the Supreme Court's evolution of trademark protection for
product appearance features continued when the Court finally addressed the
distinctiveness issue. 26 However, even though the Supreme Court addressed
this issue, the debate on whether the doctrine of inherent distinctiveness
should apply to product appearance still continues. 27 The Court limited
its review to whether, as a matter of law, secondary meaning was required
to protect trade dress. 28 Unfortunately, the case analysis and conclusions
in Wal-Mart confuse both scholars and practitioners. 29

 [*955]  In Wal-Mart, the Court was asked to resolve the question of
whether a dress design, with appliques in several unique places on a dress,
was inherently distinctive. 30 The appliques themselves were registered
copyrights. However, the overall dress appearance was the product
appearance feature on which trademark protection was sought. In reversing
the lower court's finding of inherent distinctiveness, the Supreme Court
appeared to create new law that acknowledged that no "product design" could
be inherently distinctive. 31 Instead, secondary meaning was required to
protect the dress. The Court held that product packaging would be analyzed
by the general principles applied to word marks and consequently could be
inherently distinctive.

The Wal-Mart Court created a separate class of product features called
"product design" that were denied market entry protection. The Wal-Mart
Court found support for this new law in the dicta from Qualitex.
Essentially, the Court found that color could never be inherently
distinctive and required secondary meaning for trademark protection. 32 The
Court's underlying principle was the notion that product appearance
features were not recognized by customers as serving a trademark role. 33
All product appearance features that are not packaging would be subject to
this rule. This decision created several new issues for  [*956]  product
appearance trademark protection, such as the definitional aspects of
"packaging," "product design," and "product."

The Wal-Mart Court gave several reasons for its decision. A major concern
was the likelihood of protracted litigation over "product design" trademark
protection. 34 The Court reasoned that lower courts lacked the capacity to
deal with the issue of inherent distinctiveness on summary judgments in
most cases, therefore ensuring that litigation would become burdensome and
protracted. As an alternative, the Court urged protection of product design
by other types of intellectual property, noting that in this case copyright
law provided significant protection and that design patents might have been
obtained. 35

While the Wal-Mart Court briefly discussed the application of the doctrine
of functionality to remove uncertainty in what product designs might be
protected, it did not suggest that this analysis would resolve the
litigation uncertainty over product design protection. 36 However, less
than two years after Wal-Mart, the Supreme Court addressed the
functionality doctrine, the relation of trademark to utility patents, and,
by analogy, the use of design patents to provide necessary early


D. TrafFix Devices, Inc. v. Marketing Displays, Inc.

In TrafFix, 37 the final Supreme Court case in the recent product
appearance features group, the Court determined whether an expired utility
patent precluded a mark on the same product appearance features covered in
the utility patent claims. Because the Wal-Mart holding left many questions
unanswered, both practitioners and academics were uncertain about how the
Supreme Court would examine the issues in TrafFix. The Court could have
applied a bright line test, as it did in Wal-Mart, by holding that there
could be no mark, either during the patent term or after the utility patent
expired. This alternative would have simplified the determination of
protectable subject matter and reduced frequent litigation on the patent
conflict issue.

Instead, the Court unanimously applied the functionality test, including
the aesthetic functionality test, to avoid a conflict with utility patent
law. 38 The Court left open the question of whether the functionality test
is sufficient to clearly define the interface between utility patents and
trademarks. 39 The decision made clear that trademark law should not
protect utility patent subject matter or non-patented primarily functional
features. This holding has strong implications; one of which being that the
courts will now use the doctrine of functionality to maintain the proper
relation between product feature trademark protection and patent law.

TrafFix eliminated, to some extent, the test that permitted product feature
protection for alternative embodiments of a product. 40 This previous
analysis was a common method of deciding whether a product appearance
feature had a competitive impact and consequently could not be protected as
a mark. The prior alternative embodiments test resulted in a narrow form of
 [*958]  product appearance trademark protection for function related
product appearance features. This test protected essentially the same
subject matter as utility patent protection, where there was no significant
competitive benefit from the trademark protected alternative embodiment.
There was significant value in this protection due to a trademark's
perpetual term.

Under the TrafFix rule, product appearance features related to significant
functional operation will not be protected under trademark law. This new
test leaves room for protecting appearance variations that have no
essential function. The aesthetic role of a feature will be considered, and
if competitive significance from the appearance features exists, there will
be no trademark protection.

The new trademark test for product functionality will require a
comprehensive study of how an industry uses the alleged trademark product
appearance features. For example, the dresses at the center of controversy
in Wal-Mart would be evaluated to determine the functionality of the
alleged trademark appearance features. Under the new TrafFix test, the
Court would hold that the appliques are primarily functional as aesthetic
features and hence would not grant trademark protection.

In the TrafFix opinion, the Supreme Court hinted that perhaps Wal-Mart was
too strong in its bar of inherent distinctiveness for product appearance
features. The TrafFix case suggested that there was ample basis for
interpreting Wal-Mart narrowly or even limiting it to its facts.

III. Wal-Mart Viewed From the Industrial Design Professional and Consumer

In the practice of industrial design, professionals make products easier to
use and more attractive. A good example of the importance of the industrial
designers' role is the recently developed I-MAC computer desktop series.
The computer CPU and monitor are one unit, equating to one product. It is
immediately indicative of the company making the product, even with several
models available. The computer cabinets are not packaging, or are they?
From the perspective of an industrial designer, features are added to give
products a unique appearance and make them attractive. For example,
restaurants such as Pizza Hut have unique roofs that serve both as an
immediately recognizable trademark and as an attractive building feature.
Label producing machines, such as Casio and Brother, have different and
unique appearances both in form and in their respective packaging. It is
these distinctive appearances that enable consumers to recognize a given
product. Are these machines, found in plastic cases with instructions and
advertising, a package or a product?

 [*959]  Package design has its own art and sometimes the product
appearance plays an important role in the package design. For example, a
picture of the product inside may be shown on the package, or the product
may be visible through a transparent window. Thus, the reality of packaging
creates questions about just how Wal-Mart applies to the real world of the
industrial designer. 41

IV. A Proposed Lower Court Interpretation of The Wal-Mart Decision

There is ample basis for interpreting Wal-Mart narrowly and even limiting
it to its facts. Specifically, the Wal-Mart 42 opinion misconstrues dicta
found in Qualitex, 43 and fails to fully consider the role of the
functionality doctrine that the Supreme Court later clarified in TrafFix.
44 Lower courts possess a great deal of flexibility when interpreting the
Wal-Mart decision, and should recognize that Wal-Mart introduced several
new terms and issues. Instead of following the Court's dicta, i.e., the
general package and product test, lower courts should apply the essence of
Wal-Mart and focus on what customers expect from the particular features
and specific products involved. Essentially, courts should focus their
analysis on whether the features are serving as a trademark or whether they
are merely utilitarian or aesthetic features. This approach recognizes that
some product appearance features can be inherently distinctive - a
conclusion derived from dicta in the TrafFix decision.

In Wal-Mart, the Court denied trademark protection without secondary
meaning under a test that asked whether customers would generally expect
that this type of product appearance had trademark significance. In
discussing the issue, the Court used the example of a penguin shaped
cocktail shaker as merely aesthetic and not protectable under trademark
law. 45 Apparently, the cocktail shaker users would view the shaker as
primarily aesthetic, simply a conversation piece for partygoers. On the
other hand, product appearance features exist that consumers could use to
help in the identification of a product source.

I-MAC computer and Compaq desktop computers are  [*960]  examples of
products that probably have inherently distinctive appearances. Customers
have learned to expect this type of product to have significant trademark
appearances. When an individual enters a large computer store looking for
an Apple brand computer product, the appearance of the I-Mac directs the
customer to the respective product brand. As discussed earlier, label
producing machines are another example of brand focused appearance
products. Customers shop visually, initially looking for the product
appearance to find their preferred product brand. However, while these
products might be attractive, a customer will not buy a product, such as an
Apple computer, solely based on appearance. Hence, there is no significant
competitive advantage in protecting the appearance of a computer as a
trademark. Industrial designers have created a distinctive and attractive
product. 46

These examples demonstrate that the Wal-Mart criteria, which requires
secondary meaning for product appearance protection, is in reality more
limiting than a literal interpretation might indicate. The proper analysis
is to evaluate customer expectations in light of whether the product
appearance features generally serve as a mark for that type of product.
This view is consistent with the Wal-Mart holding and leaves the general
doctrine of "inherently distinctive" on a firm foundation.

The Supreme Court's dicta in the TrafFix decision supports this narrower
interpretation of Wal-Mart. Specifically, the Court stated:

In a case where a manufacturer seeks to protect arbitrary, incidental, or
ornamental aspects of features of a product found in patent claims, such as
arbitrary curves in the legs or an ornamental pattern painted on the
springs, a different result might obtain. 47

While merely dicta, the statement suggests that design patent features that
have some ornamental aspects, 48 may fall outside the TrafFix case's
"merely functional" exclusion. It also opens the door for the possibility
that some product appearance features could be inherently distinctive.

Furthermore, the proposed interpretation of the Wal-Mart decision would
provide important market entry rights for products that need immediate
protection. It would also preserve the conceptual framework of trademark
law, which is focused on the facts of each situation. In addition, as will
be discussed in the  [*961]  foreign law section of this Article, this
interpretation would provide a proper fit with generally accepted
international practice by facilitating harmonization of product appearance
trademark protection.

The uncertainty resulting from the Wal-Mart decision has generated
significant concern, 49 with a movement urging clarification of the Lanham
Act. A proposed legislative revision is presented in the next section.

V. Legislative Proposal to Clarify the Effect of the Wal-Mart Decision

In addition to the narrow interpretation of the Wal-Mart decision, this
Article recommends a supportive legislative clarification of the Lanham
Act. 50 One part of the proposed legislation would confirm that the
trademark owner has the burden to show that a mark is distinctive, either
inherently or through secondary meaning. While the owner's burden currently
exists, a statutory change would clarify this point. This proposal follows
a recent change in the Lanham Act concerning functionality, which placed
the burden to establish that an alleged trade dress is not (merely)
functional on the trademark owner. 51 The proposed legislative change and
the narrow interpretation of the Wal-Mart case would help courts handle
product appearance trademark cases more efficiently. Further, many cases
could be decided on summary judgments, or otherwise settled more rapidly.
The second aspect of the proposed legislation would clarify that product
appearance may be inherently distinctive if the general requirements for
inherent distinctiveness are met.

A wide spectrum of interest groups would support this  [*962]  legislative
proposal, especially after considering the serious nature of product
piracy. For example, sometimes the appearance of a product is copied to
gain the benefit of the originating company's product introduction.
Protection timing is critical because much of the economic benefit is lost
if the copier cannot be stopped immediately. In other words, the potential
value of a mark would be weakened if users of similar product appearances
were allowed to continue. Use of a different word mark by the copier would
not resolve the confusion since consumers would simply assume, given the
similarity in product appearance, that the original company is using a
different word mark.

While there are other forms of intellectual property protection now
applicable to product appearance features, the role of trademark law in
this area is unique. Trademark law can develop a sensitive framework with
which to identify whether a product has trademark significance upon
entering the market, through the inherent distinctiveness principle. The
safeguards that are now in place due to the aforementioned recent group of
Supreme Court decisions, along with an appropriate narrow interpretation of
the Wal-Mart decision, offer a necessary means to prevent trademark piracy.

VI. Renewed Emphasis on Functionality Analysis

The Supreme Court in TrafFix sharpened the focus on the role of the
functionality doctrine in trademark law. 52 Before TrafFix, there was a
serious division in the literature and case law on how to apply this
standard. 53 A product appearance that has  [*963]  primarily a utilitarian
or aesthetic role will no longer be given trademark protection, and the
fact that competitively effective alternative embodiments might exist is
not enough to support trademark protection.

The new focus on the merely functional doctrine is supported by the Court's
statement in TrafFix that "as explained in Qualitex ... and Inwood, ... a
feature is also functional when it is essential to the use or purpose of
the device or when it affects the cost or quality of the device." 54 This
statement signals that if a product appearance feature has a competitively
important function, it cannot be protected under trademark law. Further,
the Supreme Court's reference to Inwood Lab., Inc. v. Ives Lab., Inc. is a
reminder to the lower courts that trademark law cannot protect a merely
functional product appearance. 55 The existence of alternative embodiments
with competitively equal utilitarian functions will not be a basis for
proving there should be trademark protection. This new test refocuses the
functionality doctrine, broadens it, and properly adjusts the balance
between utility  [*964]  patent law and trademark product appearance

The TrafFix Court also emphasized another aspect of functionality, the
marketing impact of product appearance. The TrafFix decision explained that
aesthetic functionality was a separate part of the functionality test.
Specifically, the Court stated that "in Qualitex, by contrast, aesthetical
functionality was the central question, there having been no indication
that the green-gold color of the laundry press pad had any bearing on the
use or purpose of the product or its cost or quality." 56 The Qualitex
opinion expanded on this point, stating in essence that color did not play
a significant role in the product's purpose or use. 57 The colors did make
the press pads attractive and covered up stains, but these roles were not
significant enough for that product to deny color trademark protection. It
is apparent that each case should be decided on a case-by-case factual
analysis basis.

A great deal of controversy exists regarding the use of an aesthetic
functionality test. 58 The main criticism centers on the notion that the
test is too vague. In view of the TrafFix and Wal-Mart cases, there is
little doubt that aesthetic functionality will be used more extensively to
limit product appearance protection. The TrafFix opinion refocused the
lower courts on the limits of trademark product appearance protection.

VII. Boosting Product Appearance Features Trademark Rights by Obtaining a
Design Patent

The Supreme Court in Wal-Mart suggested that a design patent could be an
alternative to trademark protection. 59 While design patents are not the
answer for market entry protection, they may be used to boost the
effectiveness of product appearance features as trademarks for those marks
that require secondary  [*965]  meaning. This step can be taken only if the
presence of a design patent does not preclude trademark protection, both
upon issuance of the design patent and later when the design patent
expires. Notwithstanding the TrafFix decision, this subject continues to
generate much debate. 60

The Supreme Court's refusal to establish a blanket rule denying trademark
protection for a utility patent protected product appearance suggests that
the Court will not rush into the question of design patent protection's
overlap with trademark protection. The Court has applied trademark
principles that keep the notion of trademark focused on what it should

The fundamental principle that design patents and trademarks do not involve
primarily functional features makes the trademark and design patent systems
compatible, albeit with different objectives and principles. Product
features that are merely ornamental, a design patent requirement, 61 are
not trademarks. This indicates that the systems do not conflict, because a
trademark requires source identification. These fundamental differences
between trademarks and design patents suggest that a conflict would not
exist if there were a design patent on a product design that was also a
trademark, or was acquiring secondary meaning en route to trademark status.

The use of design patents to boost trademark status for product appearance
features should be a useful step for product appearance features that are
not inherently distinctive. Nevertheless, the acquisition of trademark
distinctiveness is not guaranteed. The design patent would provide some
degree of protection against piracy, within the limitations imposed by the
delays and restrictions of the design patent system. 62

The next section of this Article discusses foreign and international
protection of product appearance features. These international developments
should influence the legislative decisions that pertain to the United
States' protection of product appearance features.

VIII. Foreign Product Appearance Features Trademark Protection

Globally, the concurrent use of trademarks and design patents (or their
equivalent registration form) is widely accepted. While national law binds
American courts, many national intellectual property laws are controlled,
or at least influenced, by  [*966]  international agreements. Congress and
the appropriate governmental offices participate in meetings on proposed
treaties and bi-lateral agreements, and continuously review foreign laws to
determine if they provide effective protection for American interests

Many events have significantly influenced the international development of
trademark product appearance protection. The most notable are recent events
such as the General Agreement on Tariffs and Trade (GATT-TRIPS), 63 and the
Community Trademark (CMTM). 64 In the next section of this Article, the
international agreements, as well as several foreign laws that were the
product of significant trend-setting changes, are reviewed.

A. International Perspective on Product Appearance Protection - GATT-TRIPS

Internationally, TRIPS is one of the current driving forces with respect to
product appearance trademark registration protection 65 because it includes
a requirement for a broad scope of trademark protection. While TRIPS does
not specifically refer to trademark registration law product appearance,
the expressed language encompasses product appearance. 66 Particularly,
member countries have interpreted TRIPS to include product appearance
protection. Article 15(1) of TRIPS does not address the issue of what
constitutes inherent distinctiveness or secondary meaning, but it does
grant members the freedom to decide if secondary meaning is a requirement
for product shape trademark  [*967]  registration protection. 67

B. International Perspective of Product Appearance Protection - Community
Trademark (CMTM).

The European Union Community Trademark (CMTM) Directive and its related
CMTM Trademark Regulations are also major influences on international
product appearance trademark registration protection. In general, the
European Union (EU) Directive requires members to change their national
laws to conform to the Directive. Essentially, the CMTM Directive requires
protection by trademark registration of product appearance. 68 The United
Kingdom experienced the impact of this Directive, because, up to that time,
it had not permitted trademark registration of product shape. 69

The exclusion from CMTM, which related to product appearance protection,
included several important provisions. One of these exclusions was the
product shape necessary for a technical result, which takes form in United
States law as the purely functional design feature exclusion. 70

A few years after the Directive, the EU enacted the CMTM Regulation, which
established a trademark registration system. 71  [*968]  The scope of
subject matter and exclusions were the same as those set up nationally by
the Directive. Using a complex set of laws that retained priority for prior
national rights, the registration system provided trademark and service
mark rights throughout the community. Analyzing a few of the EU trademark
registration office decisions on product shape marks, it appeared that the
Board of Appeals was applying a high distinctiveness standard. 72 This
practice transformed the registration issue to a question of whether the
product appearance had created distinctiveness, i.e., secondary meaning.
This approach applied the distinctiveness standard to effectively minimize
product appearance registration without secondary meaning. The CMTM system
used an evenhanded approach to trademark registration, retaining
consideration of inherent distinctiveness.

A CMTM registration cannot be obtained if it is the same as a nationally
protected copyright or industrial design right for the same design that is
owned by a third party. 73 This feature allows members to use their
national laws to settle disputes as to who has the right to protect a
design, when a coexisting right exists. The EU is in the process of
developing a harmonized approach to product appearance trademark
registration protection.

IX. International View of Product Shape Protection - Selected National
Trademark Registration and Industrial Design Registration Laws on Product
Appearance Protection

Fortunately, the International Association for the Protection of
Intellectual Property (AIPPI) recently surveyed thirty-one countries on the
relationship between trademark registration laws and industrial design
registration laws in an effort to determine their interfaces. The final
report contains a wealth of information, and an analysis of this material
developed the following points:

1. Product appearance is protected in all of these countries by trademark
law, applying the basic trademark law principle of  [*969]

2. Secondary meaning is not necessary in almost all of these countries to
protect product appearance. Most countries use a case-by-case analysis to
determine if a product shape is distinctive, and if it is not distinctive,
then secondary meaning may be sufficient to permit registration.

3. Most countries permit protection of product shape by trademark
registration at the same time a product shape is protected by industrial
design registration. The trademark protection continues after expiration of
the industrial design registration. The reasoning behind this approach,
generally, was that the regular exclusions from trademark protection, such
as a technical result, the appearance as the natural form of a product, or
additions in value, adequately eliminated any major policy conflicts with
extending design protection by trademark registration. Also, as mentioned
earlier, some countries applied a high level of distinctiveness,
essentially requiring secondary meaning for many product shapes to minimize
unwanted policy issues. There were some countries, particular the French
Group, that expressed concern about extended protection from trademark
registration after an industrial design registration expired. All reports
indicated that a strong policy argument existed to maintain product shape
trademark registration protection, for appropriate subject matter, to
prevent customer confusion.

4. The reports revealed general agreement on the concurrent protection by
trademark registration and industrial design registration, and the
continued trademark registration protection after expiration of the
industrial design registration, within the context of each system. There
was recognition that the extent of subject matter protected for each system
might be different, and the basis for infringement determination might
differ, producing unique overlapping protection for each IP form and for
each product.

5. While there was considerable agreement on the basic trademark principles
and how to apply them, there was expressed a general need for more
harmonization on legal and procedural aspects, including what should be
excluded from protection. This discussion should be convened soon. 74


The basic trademark law principles that are applied to word marks work
effectively for product appearance features with the proper application of
the functionality test. Utility patent law and  [*970]  trademark law have
different criteria, and as long as that separation is carefully maintained,
there should be no need to have an absolute bar for inherently distinctive
product appearance features. Each case should be reviewed separately on a
factual basis.

The principle of inherent distinctiveness is a fundamental aspect of
trademark law. Specifically, inherent distinctiveness provides word marks
and product appearance feature marks with important protection against
copying at the time of market introduction. Product appearance features can
serve as marks immediately upon market entry. This deduction is self
evident from the success of industrial designers in creating distinctive

In Qualitex, the Supreme Court did not hold as a matter of law that color
could never be inherently distinctive, and in Wal-Mart the Court
incorrectly relied on Qualitex to support the principle that "product
design" (product appearance features) is not protectable under the
inherently distinctive principle. Lower courts are urged to interpret
Wal-Mart narrowly and instead focus on the basic principle stated in
Wal-Mart: the importance of the customer's likely expectation on the role
of product appearance. If customers would expect that an appearance might
serve as a mark for that type of product, then there should be inherent
distinctiveness. Again, this is a factual analysis, and each case should be
considered on its own merits.

Congress is urged to enact legislation that will clarify that the Lanham
Act does not bar product appearance features from being inherently
distinctive. In addition, this clarifying legislation should affirm that
the mark owner bears the burden to prove a product appearance feature is
inherently distinctive.

Globally, trademark law is becoming more uniform. Countries other than the
United States have overwhelmingly adopted the case-by-case analysis, with
the same principles applied for word marks and product appearance. The
merely functional test is also used to deny protection. The goal of
harmonization would not be reached if the United States adopted a bar to
inherent distinctiveness in product appearance.

The use of design patents to boost trademark rights, by maintaining
exclusive rights for some product appearance features, is a sound approach
based on existing American law and is used in most foreign countries. The
unique requirements for a mark will justify its existence during design
patent protection and after patent expiration. As the Supreme Court stated
in Qualitex and suggested in Wal-Mart and TrafFix, aesthetic functionality
will play a special role to keep product appearance feature marks on the
right course. Where there is no role other than aesthetics or
ornamentation, an expired design patent's features are  [*971]  available
for all to use. Only if customers have found trademark significance will
there be a trademark that continues after design patent expiration. These
principles will balance competition and fair business dealing.

The interpretation of the recent Supreme Court decisions coupled with the
current legislation will trigger a reduction in the subject matter scope
for trademark product appearance protection. Fewer product appearances will
be protectable under trademark law. The protection door has closed
significantly. Sharper focus and narrower scope of subject protection for
trademark product appearance is a strong incentive to follow the lead of
other countries and develop a new market entry design protection law. There
is significant support for this type of legislation in the United States,
as evidenced by the recently enacted market entry protection of vessel
hulls and the history of similar legislative efforts. 75

n1  See, e.g., Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209-215 (2000)
(addressing the trade dress protection of product design in infringement
actions under the Lanham Act). In the Wal-Mart decision, the Court used the
term "product design" to separate product packaging analysis from how
product appearance would be treated under trademark law. Wal-Mart Stores,
Inc., 529 U.S. at 211-213. The term "product design" may be used as a
general term that refers to how a product is constructed internally and
externally, including functional and aesthetic features. Id. at 213. In
this Article the phrase "product appearance features" is used to define
what a customer sees on a product that may or may not be a mark. Because
the phrase "product design" has several possible meanings, this Article
uses the phrase "product appearance features" to describe what the customer
sees on the product, including its shape and surface features. The term
"package" is used to describe that which contains a product. A customer
must unwrap or open a package to reach the product. For example, cereal,
soft drinks, and dolls all come in packages. Sometimes a product can show
through a transparent package, and thus, the product becomes a part of the
package appearance. The term "trademark" is used in this Article to include
all forms of marks, including product appearance feature marks. For a
description of Industrial Design see the Industrial Designers Society of
America, ID Defined: Comprehensive Description of Industrial Design, at (last visited Aug. 29, 2001).

n2. For a discussion of
the general background of basic trademark law see generally Charles R.
MacManis, Intellectual Property and Unfair Competition in a Nutshell (West
Group 4th ed. 2001); J. Thomas McCarthy, McCarthy on Trademark and Unfair
Competition (4th ed. 2001); Jerome Gilson et al, Trademark Protection and
Practice (2001).

n3. 15 U.S.C. 1051-1127

n4. U.S. Trademark Reg.
No. 0117107 (registered June 19, 1917).

n5. See 42 U.S.C. 1052(e)
(2001) (denying trademark protection for merely descriptive terms).

n6. North Am. Aircoach
Sys., Inc. v. North Am. Aviation, Inc., 231 F.2d 205, 209 (1955). In this
famous case regarding the phrase "North American" as a mark for airplanes,
the fact that the manufacturer was in the United States did not prevent the
primary significance of the geographic phrase from acquiring secondary
meaning and functioning as a mark. Id. at 210. The secondary meaning for
"North American" derived from the extensive publicity of the fighter planes
during World War II. Id. There are several U.S. trademark registrations for
"North American." For example, "North American" is a registered trademark
for, among other things, compressed air-oil, torch and blower controls.
U.S. Trademark Reg. No. 1292737 (registered Sept. 4, 1984).

n7. See King-Seeley
Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2nd Cir. 1963) (denying
trademark protection for generic terms).

n8. See, e.g., Estee
Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1509-10 (2d Cir. 1997)
(discussing trade mark protection in the event of a likelihood of

n9. See In Re Pennsylvania
Fashion Factory, Inc., 588 F.2d 1343, 1345 (C.C.P.A. 1978) (holding that
the alleged mark was not sufficiently associated with the clothes for which
mark protection was sought because it was only on the store bag).
Essentially, the alleged mark was not located in a manner that would create
trademark identification for customers. Id.

n10. See Syndicate Sales,
Inc. v. Hampshire Paper Corp., 192 F.3d 633, 638 (7th Cir. 1999) (holding
that a different packaging of nearly identical floral baskets effectively
limited any alleged confusion and consequently precluded an alarm for trade
dress infringement

n11. See In re Teledyne Indus., Inc., 696 F.2d 968 (Fed. Cir. 1982) (holding that the showerhead
appearance was de facto functional, and thus, not registrable).

n12. See Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d 402 (2d Cir. 1997) (holding that a Swiss army knife's red color was aesthetically functional).

n13. See 15 U.S.C. 1125(a)(3) (2001) (stating that a "person who asserts trade dress
protection has the burden of proving that the matter sought to be protected
is not functional").

n14. See Sunrise Jewelry Mfr. v. Fred, 175 F.3d 1322 (Fed. Cir. 1999) (affirming the U.S. Patent and Trademark Office's dismissal of a petition to cancel the registration of a
"metallic nautical rope design" for clocks, watches, and jewelry made of
precious metal).

n15. See infra notes 17 to 41 and accompanying text (discussing the relevance and significance of
recent Supreme Court decisions that have impacted trademark law).

n16. See Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 160-61 (1995) (addressing
trademark protection for color under the Lanham Act).

n17. Qualitex, 514 U.S. at 173. The Court asserted that "color may sometimes meet the basic legal requirements for use as a trademark.

n18. Id. The Court noted that the language of the Lanham Act, which "permits an ordinary word,
normally used for nontrademark purposes (e.g., description), to act as a
trademark where it has gained "secondary meaning'," should logically apply
to color as well. Id. at 171-72.

n19. Id. at 167. The Court recognized that courts have traditionally addressed whether word marks require protection when secondary meaning is acquired, finding that
protection was warranted. Id. The Court applied the word mark analysis to
the question of color protection, and maintained that color should be
treated in the same manner. Id.

n20. Id. at 166. The Court stated that the "green-gold color served no other function," but recognized that it did have a role in making the product attractive by covering up
stains. Id. The primary significance of the color combination was source
identification. Id.

n21. Id. at 163. The Court asserted that "over time, customers may come to treat a particular color on a product or it's packaging [] as signifying a brand." Id.

n22. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

n23. Two Pesos, Inc., 505 U.S. at 766. The District Court's jury instructions defined trade dress as the: total image of the business. Taco Cabanna's trade dress may include the
shape and general appearance of the exterior of the restaurant, the
identifying sign, the interior kitchen floor plan, the decor, the menu, the
equipment used to serve food, the servers' uniforms and other features
reflecting on the total image of the restaurant. Id. at 765 n.1.

n24. Id. at 776.

n25. Id. at 772. The Courtrecognized that section 2 of the Lanham Act only required secondary meaning as a condition to registering descriptive marks; and thus, some marks were
registrable without establishing a secondary meaning. Id.

n26. Wal-Mart Stores, Inc.v. Samara Brothers, Inc., 529 U.S. 205, 205 (2000)

n27. See, e.g., McCarthy, supra note 2, 8.13 (preferring a multi-factor test to determine inherent
distinctiveness). See also Adam J. Cermak, Inherent Distinctiveness in
Product Configuration Trade Dress, 3 U. Balt. Intell. Prop. L.J. 79 (1994)
(favoring a flexible approach with several factors proposed). In
Reconceptualizing the Inherent Distinctiveness of Product Trade Dress, the
author, Graeme B. Dinwoodie, generally supported the multi-factor test,
originally discussed in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F.2d 1342 (C.C.P.A. 1977). 75 N.C. L. Rev. 471 (1997). Specifically,
Dinwoodie opposed separate tests for packaging and product configuration
marks. Professor Dinwoodie's article is an excellent review of the major
trade dress protection literature published prior to the Wal-Mart decision.
See also Jay Dratler, Jr., Trademark Protection for Industrial Designs,
1988 U. Ill. L. Rev. 887 (supporting limited trademark protection for
industrial designs, but also addressing a concern with respect to the
extent that the doctrine of aesthetic functionality should be applied);
William F. Gaske, Comment, Trade Dress Protection: Inherent Distinctiveness
as an Alternative to Secondary Meaning, 57 Fordham L. Rev. 1123, 1130
(1989) (urging a requirement of secondary meaning for all trade dress

n28. Wal-Mart, 529 U.S. at207.

n29. See, e.g., Jeffery M. Samuels & Linda B. Samuels, Trade Dress Undressed: Wal-Mart v. Samara, 29AIPLA Q. J. 43 (2001) (asserting that the Supreme Court's decision in
Wal-Mart was troublesome in several respects). Specifically, the authors
noted that:  the Supreme Court's Wal-Mart decision was ill advised. It will render legal
protection for new designs more problematic and will create additional
uncertainty in the law.[] The application of different tests to packaging
and design cases is impractical and unwarranted. The Court's
"anti-competitiveness" concerns could be effectively addressed through
application of the functionality doctrine.

Id. at 63. See also infra note 49 (discussing the American Bar
Association's opposition to the Supreme Court's decision in Wal-Mart).

n30. Wal-Mart, 529 U.S. at 207.

n31. Id. at 212. In addressing this issue, the Court asserted that, "the fact that product
design almost invariably serves purposes other than source identification
not only renders inherent distinctiveness problematic; it also renders
application of an inherent-distinctiveness principle more harmful to other
consumer interests." Id.

n32. Id. at 216. The Court stated its findings and held that "in an action for infringement of
unregistered trade dress under 43(a) of the Lanham Act, a product's design
is distinctive, and therefore protectible, only upon a showing of secondary
meaning." Id.

n33. Id. at 212. In
defending the proposition that customers do not recognize product
appearance features as serving a trademark purpose, the Court noted that:
in the case of product design, as in the case of color, we think consumer
predisposition to equate the feature with the source does not exist.
Consumers are aware of the reality that, almost invariably, even the most
unusual of product designs - such as a cocktail shaker shaped like a
penguin - is intended not to identify the source, but to render the product
itself more useful or more appealing.


n34. Id. at 213-214 (discussing the reality that competition would be deterred by a successful
suit, or the threat of a successful suit).

n35. Id. at 214 (noting that the "availability of these other protections [i.e., copyright and
design patents] greatly reduces any harm to the producers that might ensue
from our conclusion that a product design cannot be protected under 43(a)
without a showing of secondary meaning"). The copyright protection at issue
in Wal-Mart extended only to the appliques, not to the total dress image.
The courts and the Copyright Office have seriously limited copyright law
protection of product appearance, by exercising a narrow interpretation of
the statutory requirement for separability of the protected design from
functional product features. See 17 U.S.C. 101 (1) (2001) (defining "useful
article" and "pictorial, graphic and sculptural work"); 17 U.S.C. 113
(2001) (discussing the scope of exclusive rights in pictorial, graphic, and
sculptural works); 17 U.S.C. 102(8) (2001) (providing that copyright law
does afford effective copyright protection for architectural works). Design
patents require novelty as well as the general patent requirements, 35
U.S.C 1 et seq. (1998). Design patents provide very good protection for
product appearances if they satisfy novelty and prompt filing requirements.
Unfortunately, design patents do not have retroactive rights. Only upon
issuance of the design patent can one file an action; a design patent is
issued approximately one to two years after the date of filing. This delay
in filing an infringement suit can be critical. See William T. Fryer, III,
Design Patent System for the Twenty-First Century, 24 AIPLA Q. J. 331,
339-341 (1996) (illustrating statistics on design patent pendancy).

n36. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213 (2000) (noting that the capacity to bring a plausible suit depends, "upon the clarity of the test
for inherent distinctiveness, and where product design is concerned we have
little confidence that a reasonably clear test can be devised).

n37. TrafFix Devices Inc. v. Marketing Displays Inc., 121 S.Ct. 1255 (2001).

n38. TrafFix, 121 S.Ct. at 1261-1263. In discussing the functionality test, the Court noted that "in
general terms, a product feature is functional, and cannot serve as a
trademark, if it is essential to the use or purpose of the article or if it
affects the cost or quality of the article." Id. at 1261.

n39. See id. at 1263(stating that, "[if], despite the rule that functional features may not be
the subject of trade dress protection, a case arises in which trade dress
becomes the practical equivalent of an expired utility patent, that will be
time enough to consider the matter").

n40. See supra notes 11 to15 and accompanying text (discussing the implication of product appearance protection). A Federal Circuit case illustrates the product appearance
protection for alternative embodiments of a product. In In re Teledyne, the
appellant attempted to maintain a trademark for the configuration of a
showerhead nozzle. 692 F.2d 968, 969 (Fed. Cir. 1982). The Federal Circuit
held that in the absence of evidence showing the existence of commercially
feasible alternative showerhead configurations, which others could utilize
to successfully compete with appellant on the basis of utility, the
appellant had failed to rebut the Patent and Trademark Offices' case of de
jure functionality. Id. at 971.

n41. The Industrial Designers Society of American (IDSA) web site is an informative industrial
design source. IDSA, at (last visited Aug. 29, 2001).

n42. See supra text accompanying notes 26 to 36 (discussing the application and analysis of the
Supreme Court's decision in Wal-Mart).

n43. See supra text accompanying notes 16 to 21 (discussing the application and analysis of the
Supreme Court's decision in Qualitex).

n44. See supra textaccompanying notes 37 to 40 (discussing the application and analysis of the
Supreme Court's decision in TrafFix).

n45. Wal-Mart, 529 U.S. at213.

n46. See supra note 41 (discussing the role of the industrial designer in the context of trademark

n47. TrafFix Devices Inc.v. Marketing Displays Inc., 121 S.Ct. 1255, 1262 (2001).

n48. Design patents musthave ornamental features in order to fall within the scope of protectable
subject matter. 35 U.S.C. 171 (2001).

n49. See Samuels & Samuelssupra note 29 and accompanying text (discussing the troublesome
aspects andnegative implications of the Supreme Court's decision in Wal-Mart). The American
Bar Association Section of Intellectual Property Law also voiced
its concerns about the Wal-Mart decision at its 2001 annual business
meeting in Seattle, Washington. Action Taken on Resolution 412-1 at the
2001 Summer IPL Conference, Trade Dress Inherent Distinctiveness for
Product Configuration Resolved, American Bar Association Section of
Intellectual Property Law (June 27-July, 1 2001). Specifically, the
proposed resolution stated that "the Section of Intellectual Property Law
favors in principle the revision of the Lanham Act, 15 U.S.C. 1051-1127, to
state that there can be inherent distinctiveness of a non-functional
product configuration when the general requirements for inherent
distinctiveness applied to all trade dress are met."

n50. 15 U.S.C. 1051-1127.

n51. See 15 U.S.C. 1125(a)(2001) ("the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional."). See
also Theodore H. Davis, Jr., The Burden of Proof in Determinations of Trade
Dress, 88 Trademark Rpt. 325, 347-48 (1998) (supporting the proposed
legislative change and providing the ground work for the passage of the

n52. See supra, textaccompanying notes 37 to 40 (discussing the application and analysis of the
Supreme Court's decision in TrafFix).

n53. Perry J. Saidman inhis article, Kan TrafFix Kops Katch the Kararan Kopy Kats? Or Beyond
Functionality; Design Patents are the Key to Unlocking Trade Dress Patent
Conundrum, concluded that:  simply stated, the doctrine of functionality falls short in answering the
question of whether granting trade dress rights in the subject matter of an
expired patent unduly extends the exclusive rights (i.e., the conundrum),
for two reasons: one, the doctrine of functionality fails to distinguish
between unexpired and expired utility patents; and two, it cannot be
applied in any reasonable objective manner to design patents.

Perry J. Saidman, Kan TrafFix Kops Katch the Kararan Kopy Kats? Or Beyond
Functionality; Design Patents are the Key to Unlocking Trade Dress Patent
Conundrum, 82 J. Pat. & Trademark Off. Soc'y 839, 884 (2000). At the
present time the Court answered these objections by holding the doctrine of
functionality, when properly applied, did substantially resolve the trade
dress and utility patent conflict, so the issue of design patent interface
did not require a change in the law. See Theodore H. Davis, Jr., Copying in
the Shadow of the Constitution: the Rational Limits of Trade Dress
Protection, 86 Trademark Rep. 223 (1986) (finding a constitutional basis
for applying the test of merely functional to exclude features); see, e.g.,
Ronald J. Horta, Comment, Without Secondary Meaning: Do Product Design
Trade Dress Protection Function as Infinite Patents, 27 Suffolk U. L. Rev.
113, 132-134 (1993) (theorizing that secondary meaning is necessary for
trade dress protection as it gives notice of possible rights and reduces
conflicts with patents). This solution is consistent with the liberal
interpretation of the Wal-Mart decision. See Jay Dratler, Jr., Trade dress
protection for product configurations: is there a conflict with patent
policy?, 427 AIPLA Q.J. 427, 594-98 (applying a Kewanee type patent policy
analysis, concluding that trade dress and utility patents can coexist).
Professor Dratler urged a continuation of the current law and suggested
that a strict interpretation of the current standards would most likely
create negative effects. Id. at 594-598. See also Todd R. Geremia, Comment,
Protecting the Right to Copy: Trade Dress Claims for Configurations in
Expired Utility Patents, 92 Nw. U. L. Rev. 779, 815-16 (1998) (recommending
that trade dress rights end after a utility patent disclosing the trade
dress expired, and concluding that the doctrine of functionality does not
adequately eliminate unwarranted protection); Willajeanne F. McLean,
Opening Another Can of Worms: Protecting Product Configuration as Trade
Dress, 66 U. Cin. L. Rev. 119, 146 (1997) (identifying several problems in
protecting product configurations using trademark law); Glynn S. Lunney,
Jr., The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong
on the Principle Register, 51 Hastings L.J. 1131, 1195 (2000) (noting that
the Lanham Act did not specifically include trade dress, and the courts
should follow the precedent set fourth in Wal-Mart, and limit undue
expansion of trade dress protection); Grame B. Dinwoodie, The Death of
Ontology: a Teleological Approach to Trademark Law, 84 Iowa L. Rev. 611,
728 (1999) (analyzing the functionality component of trade dress law and
concluding that the protection needed could be reduced significantly by
stricter requirements for word mark labeling of the copier's product).

n54. TrafFix Devices Inc.v. Marketing Displays Inc., 121 S.Ct. 1255, 1261 (2001).

n55. See Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 853 (1982) (holding that colored medicine pills were not protectable by trademark law, because the customers
identified the content and quality of the pills by these features).

n56. TrafFix, 121 S.Ct. at 1262.

n57. Qualitex, 514 U.S. at166. The Court emphasized that "the green-gold color acts as a symbol," and "having developed secondary meaning (for customers identified the
green-gold color as Qualitex's), it identifies the press pads' source. And,
the green-gold color servers no other function." Id.

n58. See McCarthy, supranote 2 at 7.79-7.82 (suggesting a merely ornamental test, and expressingthe view, held by many, that the aesthetic functional test is too vague and
open-ended); Mitchell M. Wong, Comment, The Aesthetic Functionality
Doctrine and the Law of Trade Dress Protection, 83 Cornell L. Rev. 1116,
1165-67 (1998) (urging trademark protection where there is only trademark
significance, and no aesthetical role for a product design); Spencer
Davczy, Comment, Aesthetic Functionality in Trade Dress: Post Secondary
Aesthetic Functionality Proposed, 105 Com. Law J. 309, 329-30 (2000)
(supporting the Wal-Mart decision requirement for secondary meaning and
other steps using the aesthetic functionality principle to narrow
protection of trade dress).

n59. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214 (2000); see supra text
accompanying note 35 (discussing the significance and function of design

n60. See supra textaccompanying notes 53-59 (discussing the relationship between design
patents and the functionality test).

n61. 35 U.S.C. 171.

n62. See Fryer, supra note35, at 339-41 (discussing design patent statistics with respect to
application pendency).

n63. Agreement on Trade-Dress Related Aspects of Intellectual Property Rights, Including
Trade in Counterfeit Goods, Dec. 15, 1993, art. 15, 33 I.L.M. 81,
[hereinafter "TRIPS"], available at<uscore>e/trips<uscore>e/trips<uscore>e.htm.

n64. Commission Regulation 2868/95 of 13 December 1995 on Implementing Council Regulation (EC) No 40/94 on the Community Trademark, 1995 O.J. (L303/1), available at
http://www.wipo.ini on the Library page in the Collection of Laws for
Electronic Archive (CLEA).

n65. See generally TRIPS, supra note 63, 33 I.L.M. 81.

n66. In particular,article 15 of TRIPS states in part that:
any sign, or any combination of signs, capable of distinguishing the goods
or services of one undertaking from those of other undertakings, shall be
capable of constituting a trademark. Such signs, in particularly words
including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be
eligible for registration as trademarks. Where signs are not inherently
capable of distinguishing the relevant goods or services, Members may make
registrability depend on distinctiveness acquired through use. Members may
require, as a condition of registration, that signs be visually
perceptible."  TRIPS supra, note 63, art. 15, 33 I.L.M. at 89.

n67. Id.

n68. Council Directive 89/104 of 21 December 1988 To Approximate the Laws of the Member States Relating to Trademarks, art. 2, 1989 O.J. (L 40/1), on the WIPO Library
page in the Collection of Laws for Electronic Archive (CLEA) (last visited Aug. 29, 2001).

Specifically, article 2 of the Council Directive states that:
[a] trademark may consist of any sign capable of being represented
graphically, particularly words, including personal names, designs,
letters, numerals, the shape of goods or of their packaging, provided that
such signs are capable of distinguishing the goods or services of one
undertaking from those of other undertakings. Id.

n69. International Association for the Protection of Intellectual Property [hereinafter
AIPPI], Executive Committee Meeting, Sorrento, Italy (April 8-15, 2000),
Three-Dimensional Marks: The Border Line Between Trade Marks and Industrial
Design, available at (last visited Aug. 29, 2001).

n70. Council Directive, supra note 68, art. 3, 1989 O.J. (L 40/1). Specifically, article 3, Grounds
for Refusal or Invalidity, lists several important exclusions that are
beyond the scope of this paper, however, it states in part that:
The following shall not be registered or if registered shall be liable to
be declared invalid;
(e) signs which consist exclusively of:
the shape which results from the nature of the goods themselves, or
the shape of goods which is necessary to obtain a technical result, or
the shape which gives substantial value to the goods... . Id.

n71. Commission Regulation, supra note 64, 1995 O.J. (L303/1). See Ruth E. Annand & Helen
E. Norman, Blackstone's Guide to the Community Trade Mark 21-59 (1998)
(providing a comprehensive review of the CMTM system, and an excellent
in-depth review of the procedures and legal interpretations under the CMTM

n72. See generally Office for Harmonization in the Internal Market (Trade Marks and Designs),
Decisions of the Boards of Appeal in 2000, at (last
visited Sept. 23, 2000). Take note of the First Board of Appeal's decision
on March 8, 2000, in Case R 512/1999-1, on an application filed by Proctor
& Gamble Company for a three-dimensional soap container shape with color
features, and the First Board of Appeal's decision on April 14, 2000, in
Case R 179/1999-1, on an application filed by Telephone Products, Inc. for
the shape of electrical connectors. Id. at 50, 86. The result in each cases
was the same. Id. The Board affirmed the examiner's decision, which held
that the product shapes were not distinctive. Id.

n73. Annand & Norman, supra note 71, at 59; Commission Regulation, supra note 64, art. 1, rule
52(2) 1995 O.J. (L303/1).

n74. See generally AIPPI, supra note 69, Executive Committee Meeting, Sorrento, Italy (April 8-15, 2000), Summary Report, available at

n75. See 17 U.S.C. 1301 et. seq. (2001) (Vessell Hull Design Protection Act). See also William T .Fryer, III, The Evolution of Market Entry Industrial Design Protection: An
International Comparative Analysis, 21 Eur. Intell. Prop. Rev. 618 (1999)
(discussing 17 U.S.C 1301 et. seq., and the international trend with
respect to market entry product appearance protection).

End of Document

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