Say what you will about Apple, but there’s one thing we can all agree on: their IP lawyers sure know how to cover all of their bases.

On January 22, Apple’s latest trademark, its retail store layout, was registered by the United States Patent and Trademark Office (“PTO”) on the Principal Register. The layout, which has been described as iconic, did not have an easy path to registration. The application, which was initially filed in May 2010, was rejected twice before finally being accepted.

The first rejection, issued on September 6, 2010, claimed the mark was not “inherently distinctive.” However, this wasn’t a comment on the store’s layout itself, but rather the failure to submit a proper description of what the mark consists of.  The second rejection, issued on August 23, 2011, was also primarily a commentary not on the mark itself but on the procedural elements still missing for registration. Even the rejection on the grounds of failure to show acquired distinctiveness (or “secondary meaning,” pursuant to § 2(f) of the Lanham Act) was a rejection not on the merits of their claim, but on the sufficiency of evidence provided.

This registration has drawn some particularly harsh criticisms, including that it merely trademarks something fundamentally basic to retail, and not anything that is unique to Apple. However, the Apple retail store boasts a look that many, including Microsoft and Samsung, have been trying to emulate. The success of the Apple store has even led to the operation of fake Apple stores in China. The PTO’s second rejection letter even concedes that the Apple retail store has been immensely successful.

Beyond anecdotal support for protection of retail layouts, trade dress protection has been upheld by the United States Supreme Court. In Two Pesos v. Taco Cabana, the Court held that where trade dress is inherently distinctive (that is, capable of identifying the source of products or services), no secondary meaning is required to claim trademark protection. In its decision, the Court recalls the purpose of the Lanham Act, which is to make “actionable the deceptive and misleading use of marks” and “to protect persons engaged in such commerce against unfair competition.” Naturally, all other bars to registration, such as deception and functionality, under § 2 of the Lanham Act would still apply in the trade dress context.

While this registration certainly raises questions of the outer limits of trademark protection, critics should keep a few things in mind. Trademark law is unlike other sects of intellectual property because its purpose is centered on unfair competition. In an infringement action, there is no strict liability standard, but rather a highly fact-specific inquiry into the likelihood of consumer confusion, which includes a multifactor test. As a result, others who wish to use a similar layout may still be able to without infringing on Apple’s mark. Additionally, neither functional nor generic marks receive trademark protection, so an entity would not be able to claim rights over something fundamental.

While trusting the government may not be everybody’s first reaction, it seems to have worked in this case. The PTO rejected Apple’s application twice for failure to describe a distinctive, non-functional layout. After two and a half years, the description of the mark on the final registration is highly detailed, and does not include any functional features.

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