HR 3163

105th CONGRESS

2d Session

H. R. 3163

To amend the Trademark Act of 1946 to provide protection for trade dress, and

for other purposes.

IN THE HOUSE OF REPRESENTATIVES

February 5, 1998

Mr. COBLE introduced the following bill; which was referred to the Committee on

the Judiciary

A BILL

To amend the Trademark Act of 1946 to provide protection for trade dress, and

for other purposes.

Be it enacted by the Senate and House of Representatives of the United

States of America in Congress assembled,

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.'.

(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'.

END