Advantages and Limitations of Trade Dress Registration (Using iPod Nano Registration as an Example)

By Robert X.

This blog posting discusses the pros and cons of trade dress registration using the iPod Nano as an actual example. The table below contains a drawing for the trade dress registration (registration # 3,365,816, top left) and five different brands of MP3 players found in the market. Can you tell which MP3 player the registered trade dress protects?

Drawing in trade dress registration:


(1):


(2):


(3):


(4):


(5):



The answer is that the registration is owned by Apple Inc. and is based on Apple’s 1st generation iPod Nano. The current and 5th generation of iPod Nano is # 3 in the table. If you cannot match the drawing to any of the players, it is because the design of the iPod Nano has changed from 1st generation to the current generation. (Note: the MP3 players are made by: (1) JWin, (2) Coby, (3) Apple, (4) Sandisk, (5) Coby.)

A photo of the 1st generation iPod Nano was used as part of the evidence in the trademark application file, shown below. Compared to the photo, the drawing does not show color, texture, polish, and build quality of the unit, and the symbols “MENU”, play, back, and forward are missing. The differences between the drawing and the photo are substantial, so is this a problem for the validity of the trade dress registration?




Trademark registration is based on the drawing. The first question is: what is the trade dress this registration is supposed to protect: is it the drawing, the actual iPod as depicted in the photo, or something in between? A common sense answer is that it cannot be something in between because it is undefined as to where in between. One may argue that because the registration is intended to protect the actual trade dress, the registration should protect the actual trade dress based on the photo. On the other hand, the actual photo is only shown in the application file. The examiner examined the application based on the drawing. Over, in a trademark search, only the drawing is shown on the trademark registration. Moreover, if more than one photos are used (for example, showing the iPod’s front, back, and side), which photo controls? So the argument seems to favor the drawing. In fact, this is the view expressed by the 6th Circuit in the dicta in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 546 (6th Cir. 2005). The case dealt with a registration for the trade dress of an electric guitar where the drawing was 2-dimensional and showed only the contour of the guitar. The court stated: “[W]e do not believe that the two-dimensional drawing included in the LP Trademark should be construed to create a trademark on the entire guitar as depicted in photographs accompanying the trademark application (including the location and style of knobs, switches, and other hardware).” Id.
If the trade dress registration is based on the drawing, then there are questions as to the validity of the registration.

Lack of secondary meaning. In the trade dress application, the color picture of the iPod was used in the declarations filed to prove “acquired distinctiveness.” In each of the declaration, a customer or a sales person vouched that when they see a picture of an iPod, they could immediately recognize that it is an iPod made by Apple. Because the registration is based on the drawing instead of the photo, the proper question should be whether the declarants could recognize the drawing as an iPod. Because the declarations focused on the wrong question, the application failed to show that the drawing was recognized by an appreciable number of relevant consumers as an indication of product origin or sponsorship. Thus, the registration is invalid.
In contrast, traditional stylized (or design) trademark registration has much less of such problem because they are usually simple and distinctive even when reduced to a drawing. For example, the Nike swoosh, the Apple with a bite, and Mercedes Star are simple and distinctive. One can easily recognize these marks by looking a drawing without seeing a photo.

Distinctiveness or genericness. To be registrable, product designs always require a showing of acquired secondary meaning; thus, a product design needs to be not generic to be capable of acquiring secondary meaning. The features that remain in the iPod drawing include (1) the square shape of the screen, (2) the square shape of the entire unit, (3) the circular shape of the control dial, and (4) the arrangement of the square and the circle. The square shape of the screen was disclaimed in the amended application because the examiner thought it was functional. The square shape of the entire unit should have been disclaimed as well because the rectangular shape is generic to most mp3 players. The circular shape of the control is also generic because such dial controls have long been used in TV remote controls and are widely popular on portable electronics. Lastly, the arrangement of the square and the circle is likely generic because there are only two possible arrangements of the square screen and the circular control: the circle on the top, or at the bottom. Overall, the impression of the drawing is so generic that it is unlikely to acquire secondary meaning.
The drawing omitted the symbols “MENU”, play, back, and forward. This would have been a good idea if this were a patent because patent coverage is wider if there are fewer limitations in the claims. However, here it seems that removal of these symbols further renders the drawing unrecognizable as an iPod Nano.

Functionality. There are several factors in analyzing the functionality of a product design for trade dress protection. For brevity, we focus on the fundamental question of whether the exclusive use of the trademarked feature would put competitors at a significant non-reputation related disadvantage. Here we find many products are based on the same simple design, but each with variations (including Apple’s own product, which includes features not found in the drawing). Because the drawing contains only the basic design elements that the other designs necessarily build upon, the other manufactures are likely disadvantaged if they are not allowed to use the basic design elements. Thus, it is likely that the basic design in the drawing is functional.

Changing Product Design. Product designs change faster than traditional trademarks such as logos. For example, the shape of iPod Nano has undergone major changes twice. On the other hand, trade dress registrations must be given narrow interpretation because many products look alike. Thus, as product design changes, the trade dress registration based on the design will likely be abandoned. This is not a huge problem for trade dresses such as the gold fish shape for a cracker because there is no incentive to change. However, the design of an iPod is dictated by its function. For example, the demand for photo and video functions dictates that the current generation has a larger screen.

Advantages of registration despite validity concerns. Trademark registration is inexpensive, and the protection afforded by registration is on top of any trade dress right the owner already has. A federal registration on the Principal Register is prima facie evidence of validity, which becomes incontestable after five years. In case of litigation, registration shifts the burden to the defendant to prove that the mark is invalid. A trademark registration also serves as a nationwide notice to potential infringers. In this case, even if a potential infringer could successfully challenge the validity of the iPod trade dress registration, it cannot say it does not have notice. Then if Apple wins on the merit of the case based on its trade dress right in the iPod itself, the infringement would be more likely to be found to be willful because of the notice.

In applying for a trade dress registration, attention needs to be paid to the drawing to reflect the right amount of detail of the product to get the maximum level of protection. The registration can include a short description, so this should be used to capture additional features that cannot be expressed in the drawing. The registration can take one to two years to complete, so it is probably not worth the effort if the design is expected to change quickly, or if the designs of similar products have been changing every year. Used properly, trade dress registration is helpful to provide additional protection to the brand owner.