Whether Trade Dress Is Product Design Is a Factual Finding

Case: In re Slokevage, Case No. 05-1389 (Fed. Cir. 3/21/06)

The One Sentence Summary: Affirms refusal by United States Patent and Trademark Office to register a mark described as a "configuration" consisting of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label.


What They Were Fighting About: Trade dress applicant claimed that whether trade dress is product design was a legal not factual question, and that her trade dress was inherently distinctive.

Federal Circuit Holdings:

• Resolved an issue of first impression by concluding that whether trade dress is product design is a factual finding akin to determining whether a trademark is inherently distinctive or deceptive.
• Applicant's "configuration" of registered word mark, registered design mark , and patented design for cut-outs on the rear of garments constituted product design and thus could not be inherently distinctive.
• Unlike a trademark whose "predominant function" is source identification, product design serves other functions, such as rendering the product more useful or appealing. The design at issue could serve such utilitarian and aesthetic functions.
• The display of elements in the drawing of the trade dress and the separate registration of the word and design aspects of the trade dress showed that the trade dress was not unitary.