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Dilbert Advocates Trademark Shape Depletion Theory

Posted in Non-Traditional Trademarks, Product Configurations, Trademarks

Remember the days when the color depletion theory justified courts and the U.S. Trademark Office in denying any federal trademark protection for single colors, per se?

This was the status of the trademark law for many decades, at least until the Court of the Appeals for the Federal Circuit disagreed in 1985 (In re Owens Corning Fiberglas Corporation) (pink colored insulation) and the U.S. Supreme Court in 1995 (Qualitex Co. v. Jacobsen Products Co.) (shade of green/gold colored dry cleaning press pads) settled the conflict among the circuits in favor of the Federal Circuit’s ruling in Owens Corning.

The notion that occasional problems don’t justify per se prohibitions was the prevailing argument.

Dilbert’s comic strip from a couple of days ago, appears to advocate a revival of a similar depletion theory, but this time, for product shape and product configuration trademarks, not single colors.


Mr. Dilbert, please keep in mind that Qualitex requires a showing of acquired distinctiveness or secondary meaning to obtain exclusive rights in a product shape or configuration trademark, and as TTABlogger John Welch has succinctly concluded:

"It’s danged hard to get a product configuration past the TTAB. There have been a few during the life of this blog (the Walther "James Bond" pistol, the Cartier watch, and the Baldwin key head come to mind), but not many." [link added]

What do you think, are product configuration trademarks out of control, as Dilbert suggests?

  • I believe it was a serious mistake for the law to recognize product features such as color or shape as trademarks. Historically, the law of trademarks stood apart from the underlying goods or services served by the legal doctrine.
    You and I could make identical widgets so long as we used verbal or non-verbal symbols to distinguish those widgets.
    In granting legal protection to product features, the law collapsed this distinction. Now I can stop you from making your widgets if you make them a certain way.
    Does collapsing this distinction foster completion? Does it increase consumer choice? Sadly, the answer is no.

  • Lawence Binderow

    Hi Steve,
    Thanks for the interesting entry on product configurations as trademarks.
    Check out U.S. Reg. No. 3496068.
    Not only did we overcome a configuration refusal, we also succeeded in overcoming an immoral or scandalous matter refusal. I really enjoyed sending the certificate of registration to the client for this registration!
    Lawrence Binderow

  • Thanks for the post. Enjoyed it much!