Can 3D product designs be trademarked?

Trademarks are commonly known as names and logos. It may surprise you to learn that three-dimensional product shapes (aka product configurations), designs and features may also be registered as trademarks if they help to indicate source and do not serve any functional purposes.

What is the test for registering a product configuration trademark?

To be registrable as a trademark, a product configuration must pass a two-part test:

(1) Does the product configuration or feature have utility?

If not, then it may be registrable if it has acquired distinctiveness.

(2) If utility exists, then ask: Is the shape/feature essential to the use or purpose of the device, or does it affect the cost or quality of the device?

  • (2A): If Yes, then not registrable
  • (2B): If No, may be registrable if it has acquired distinctiveness.

Let’s look at examples of specific product configurations that failed to meet these elements.

Examples of unregistrable product configurations

Unregistrable product configurations that are de jure functional (functional in law) [Question 2A]

  • popcorn popper
de jure functional popcorn popper

 

  • rifle barrel with internal and external spiral grooves
de jure functional rifle barrel

Unregistrable product configurations that lack acquired distinctiveness [Question 2B]

  • curved handles of electric skillet
not de jure functional, but curved handles lacking acquired distinctiveness
  • curved corner of yoga mat
not de jure functional, but curved corner lacking acquired distinctiveness

How to show acquired distinctiveness

“Look for” advertising

Would consumers associate the product design with a particular company/applicant, and therefore view the product as coming from a single source?

Industry practice

Submit declarations from customers regarding the feature as identifying source.

Product design protection: trademarks vs. design patents

So far, this post has discussed the possibility and process registering three-dimensional product configurations as trademarks. Unlike trademarks, design patents do not require any showing of consumer recognition.

An IP owner may obtain design patent protection to cover the ornamental appearance of a product or component without showing any acquired distinctiveness.

Functionality is a valid defense to claims of infringement of both trademarks and design patents.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.