article: SECTION 1. SHORT TITLE. This Act may be cited as the ``Trade Dress Protection Act''. SEC. 2. PROTECTION FOR TRADE DRESS. (a) Principal Register.--The Act entitled ``An Act to provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.'' (hereinafter referred to in this Act as the ``Trademark Act of 1946'') is amended in section 2 thereof (15 U.S.C. 1052)-- (1) in subsection (e)-- (A) in clause (3) by striking ``or'' after ``them,''; and (B) by inserting before the period at the end the following: ``, or (5) comprises any matter that, as a whole, is functional''; (2) in subsection (f), by striking ``paragraphs (a), (b), (c), (d), and (e)(3)'' and inserting ``subsections (a), (b), (c), (d), (e)(3), and (e)(5)''; and (3) by adding at the end the following: ``(g) Except as expressly excluded in subsections (a), (b), (c), (d), and (e) of this section, trade dress which functions as a mark may be registered and protected without the need to show that it has become distinctive under subsection (f) of this section if the relevant public is likely to identify the source of the product or service by reference to the subject matter claimed as trade dress. In determining whether the relevant public is likely to identify the source of the product or service by reference to the subject matter claimed as trade dress, the factors to be considered shall include, but not be limited to-- ``(1) whether the trade dress is unique or unusual in the particular field to which the subject matter pertains; ``(2) whether the trade dress comprises a common basic shape or design; ``(3) whether the trade dress is a mere refinement of commonly adopted and well known forms of ornamentation for that particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; and ``(4) whether the trade dress is capable of creating a commercial impression distinct from any accompanying words.''. (b) Supplemental Register.--Section 23(c) of the Trademark Act of 1946 (15 U.S.C. 1091(c)) is amended to read as follows: ``(c) For the purposes of registration on the supplemental register, a mark may consist of any symbol, name, word, slogan, phrase, surname, geographical name, numeral, device, color, label, any matter that is not functional, or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services.''. (c) Construction and Definitions.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition of ``mark'' and inserting the following: ``The term `trade dress' means the total image or overall appearance of a product or service, including, but not limited to, the design of packaging, labels, containers, displays, decor, color, the design of a product, a product feature, or a combination of product features, except that trade dress shall not be registered or protected under this Act if it is functional. ``The term `functional' means, with respect to matter sought to be protected under this Act, that the matter is of such superior design for its purpose that to afford it protection under this Act would significantly hinder effective competition. In determining whether matter sought to be protected under this Act is functional, the factors to be considered shall include, but not be limited to-- ``(1) whether the matter yields a competitive advantage; ``(2) whether alternative designs are available; and ``(3) whether the matter achieves economies in the manufacture or use of the goods or services, or affects their cost or quality. ``The term `mark' includes any trademark, service mark, collective mark, or certification mark.''. (d) Civil Actions for Trade Dress Infringement.--Section 43(a) of the Trademark Act of 1946 (15 U.S.C. 1125(a)) is amended by adding at the end the following: ``(3) In a civil action for trade dress infringement under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.''. SEC. 3. EFFECTIVE DATE. This Act and the amendments made by this Act shall take effect on the date of the enactment of this Act, but shall not apply to any proceeding before the United States Patent and Trademark Office relating to the registration of a mark, or to any civil action, that is pending on that date. SEC. 4. TECHNICAL AMENDMENTS. The Trademark Act of 1946 is amended as follows: (1) Section 1(a)(1)(A) (15 U.S.C. 1051(a)(1)(A)) is amended by striking ``goods in connection'' each place it appears and inserting ``goods on or in connection''. (2) Section 7(a) (15 U.S.C. 1057(a)) is amended in the first sentence by striking the second period at the end. (3) Section 10 (15 U.S.C. 1060) is amended-- (A) at the end of the first sentence, by striking the comma before the period; and (B) in the third sentence, by striking the second period at the end. (4) Section 26 (15 U.S.C. 1094) is amended by striking ``7(c),,'' and inserting ``, 7(c),''. (5) Section 31 (15 U.S.C. 1113) is amended-- (A) by striking ``Sec. 31. Fees''; and (B) by striking ``(a)'' and inserting ``Sec. 31. (a)''. (6) Section 32(1) (15 U.S.C. 1114(1)) is amended by striking ``As used in this subsection'' and inserting ``As used in this paragraph''. (7) Section 39(a) (15 U.S.C. 1121(a)) is amended by striking ``circuit courts'' and inserting ``courts''. (8) Section 42 (15 U.S.C. 1124) is amended by striking ``the any domestic'' and inserting ``any domestic''. (9) Section 44(d) (15 U.S.C. 1126(d)) is amended-- (A) by striking ``23, or 44(e) of this Act'' and inserting ``23, or subsection (e) of this section that is''; and (B) in paragraphs (3) and (4) by striking ``this subsection (d)'' and inserting ``this subsection''. (10) The Act is amended by striking ``trade-mark'' each place it appears in the text and the title and inserting ``trademark''.
summary: Trade Dress Protection Act - Amends the Trademark Act of 1946 to add to the list of trademarks that may be refused registration on the principal register on account of their nature those marks that comprise any matter that, as a whole, is functional. Authorizes trade dress which functions as a mark to be registered and protected (except as expressly excluded by existing law) without the need to show that it has become distinctive if the relevant public is likely to identify the source of the product or service by reference to the subject matter claimed as trade dress. Revises a provision regarding registration on the supplemental register to authorize registration of a mark that: (1) consists of any symbol, name, word, slogan, phrase, surname, geographical name, numeral, device, color, label, any matter that is not functional, or any combination of the foregoing; and (2) is capable of distinguishing the applicant's goods or services. Defines "trade dress" as the total image or overall appearance of a product or service. Prohibits registration or protection of trade dress that is functional. Defines "functional," with respect to matter seeking protection under the Act, to mean that the matter is of such superior design that to afford it protection would significantly hinder effective competition. Places the burden of proving that matter is not functional in a civil action for trade dress infringement for unregistered trade dress on the person asserting trade dress protection.