Protecting Trade Dress: A Practitioner's Guide to Product Packaging, Product Design, and Registration
By Casey Scott McKay ·
This guide walks a trade dress matter from intake to enforcement in ten stages, assuming the doctrine and spending its length on execution. It shows how to articulate a claimed dress as a closed list of discrete elements, why vague "overall look and feel" claims are dismissed, and how to draft the mark description and the broken-line drawing that decide what you actually own. It covers the functionality audit you should run before filing, the Morton-Norwich record the examining attorney will build against you, and a six-part architecture for answering a Section 2(e)(5) refusal under TMEP 1202.02. It sets out the acquired distinctiveness record in detail — look-for advertising, sales and advertising figures, unsolicited media, trade declarations, and secondary meaning surveys — and explains why five years of use almost never carries a product configuration. It also covers sequencing with design patents and copyright, USPTO fees and realistic timelines, pleading a trade dress complaint that survives Rule 12(b)(6), and what to do when the case turns into a functionality summary judgment motion.
IP and Technology > Trademarks | Guide | Published 10 April 2025 - Updated 25 April 2026 | Casey Scott McKay - marksy.us
Summary. This guide takes a trade dress matter from intake to enforcement in ten stages, assuming the doctrine and spending its length on execution. It shows how to articulate a claimed dress as a closed list of discrete elements, why "overall look and feel" pleadings get dismissed, and how the drawing and the mark description decide what you actually own. It covers the functionality audit you should run before filing, the Morton-Norwich record the examining attorney will assemble against you, and a six-part architecture for answering a § 2(e)(5) refusal under TMEP § 1202.02. It sets out the acquired distinctiveness record in detail — look-for advertising, sales and advertising figures, unsolicited media, trade declarations, surveys — and explains why five years of use almost never carries a product configuration. It also covers sequencing with design patents and copyright, USPTO fees and realistic timelines, pleading a complaint that survives Rule 12(b)(6), and what to do when the case becomes a functionality summary judgment motion.
Keywords: trade dress registration · product packaging · product configuration · morton-norwich factors · functionality refusal · tmep 1202.02 · section 2(e)(5) · dotted line drawing · mark description · acquired distinctiveness · look-for advertising · secondary meaning evidence · discrete elements · trade dress pleading · design patent coordination · section 2(f) claim · requirement for information · alternative designs evidence · trade dress specimen · expired utility patent
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