Trade Dress Protection Act

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.