I
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 Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Trade Dress Protec-
tion 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 mat-
ter that, as a whole, is functional’’;
(2) in subsection (f), by striking ‘‘paragraphs
(a), (b), (c), (d), and (e)(3)’’ and inserting ‘‘sub-
sections (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 with-
out 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 determin-
ing 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 un-
usual in the particular field to which the subject
matter pertains;
‘‘(2) whether the trade dress comprises a com-
mon basic shape or design;
‘‘(3) whether the trade dress is a mere refine-
ment 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 ornamen-
tation for the goods or services; and
‘‘(4) whether the trade dress is capable of cre-
ating a commercial impression distinct from any ac-
companying 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 supple-
mental register, a mark may consist of any symbol, name,
word, slogan, phrase, surname, geographical name, nu-
meral, device, color, label, any matter that is not func-
tional, or any combination of any of the foregoing, but
such mark must be capable of distinguishing the appli-
cant’s goods or services.’’.
(c) CONSTRUCTION AND DEFINITIONS.—Section 45
of the Trademark Act of 1946 (15 U.S.C. 1127) is amend-
ed 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 effec-
tive 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 INFRINGE-
MENT.—Section 43(a) of the Trademark Act of 1946 (15
U.S.C. 1125(a)) is amended by adding at the end the fol-
lowing:
‘‘(3) In a civil action for trade dress infringement
under this Act for trade dress not registered on the prin-
cipal register, the person who asserts trade dress protec-
tion 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 amend-
ed 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
‘‘§ 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 do-
mestic’’.
(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 sec-
tion that is’’; and
(B) in paragraphs (3) and (4) by striking
‘‘this subsection (d)’’ and inserting ‘‘this sub-
section’’.
(10) 
The 
Act 
is 
amended 
by 
striking
‘‘trade-mark’’ each place it appears in the text and
the title and inserting ‘‘trademark’’.
Æ