Trade Dress and Design Patents

You’re starting a tea company. To set yourself apart from the competition, your teas come packaged in lightbulb-shaped containers.

How do you make sure that no one else sells tea that way?

You can protect it as trade dress, get a design patent, or do both.

Trade Dress

Selling stuff in special packaging is a type of trade dress, which is a trademark.[1] That makes sense, because the whole point of trade dress is to allow customers to identify the source of a product, which is what a trademark does. You know it’s a:

  • CocaCola® brand soda by the shape of the bottle;
  • Maker’s Mark® brand whiskey by the red wax dripping down the top of the bottle;
  • McDonald’s® brand hamburger by the golden arches on the building.

Design Patent

Usually, intellectual property can be protected in only one way, but you could also get a design patent for your lightbulb-shaped container.  A design patent protects the way an article looks.[2] Some famous products that have patented design elements are:

  • Oakley® sunglasses;
  • a Eames® chair;
  • Beats by Dre® headphones.

Making a Decision

So, should you get a design patent or register the lightbulb-shaped container as a trademark? It depends. Not all trade dress is patentable and not all design patents can be the subject of a trademark. For example, if you’ve been selling tea in the lightbulb-shaped container for a year, you can NOT get a design patent, but you’re in great shape to get a trademark.

Here are some other important differences:

Patent Trademark/Trade dress
Expiration Expires after 15 years. No expiration. It can last forever.
Requirements Has to be “novel”.[3]

Has to be “non-obvious”.[4]

It must not be useful.[5]

Can’t be “confusingly similar” to another trademark.

Can’t be functional.

How do rights come about? Granted by patent office. Start using it to sell goods or services.

 

 

Shout out to Cody B for the suggestion for this post.

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[1] “Trade dress constitutes a ‘symbol’ or ‘device’ within the meaning of §2 of the Trademark Act. Trade dress originally included only the packaging or ‘dressing’ of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the ‘total image and overall appearance’ of a product, or the totality of the elements, and ‘may include features such as size, shape, color or color combinations, texture, graphics.’” Trademark Manual of Examination Procedure Section 1202.02 [Citations omitted.]

[2] Manual of Patent Examination Procedure Section 1502 citing 35 U.S.C. Section 171.

[3] It can’t be something that was in a prior patent, or in a printed publication, or in public use or for sale or otherwise available to the public.

[4] It has to be an invention that wasn’t obvious to a designer having “ordinary skill in the art”. So, if it’s packaging, it has to be something that isn’t obvious to someone who is skilled in creating packaging design.

[5] If the packaging shape is useful in protecting the product in some way (for freshness, against breakage, to fit better while shipping or on store shelves, etc,), then you can’t get a design patent. You might be able to get a utility patent, though.

Battle of the Bottles

There are hundreds of registered trademarks for bottle shapes, but using a bottle shape as a trademark is subject to all the same issues as word trademarks: If other companies are using something the same or similar, then it’s not a trademark because it can’t serve to identify a single source of goods.

For example, these bottle design trademarks are distinctive:

Screen Shot 2018-06-05 at 12.05.24 PM.pngScreen Shot 2018-06-05 at 12.03.08 PM.pngScreen Shot 2018-06-05 at 12.04.11 PM.png

Drawing for bottlw

S’well’s bottle.

Contrast those distinctive designs with the registered bottle design of Can’t Live Without It, LLC, dba S’well Bottle, which is more pedestrian.

S’well has had some success enforcing its bottle-design trademark rights, but it recently lost a case. Here’s what went down.

S’well sued ETS Express, Inc. for infringing S’well’s bottle design. The jury found that ETS was not liable on any of S’well’s claims. It’s likely that ETS submitted evidence that it was able to purchase “S’well-like bottles from various stores and websites . . .”* which helped the jury conclude that S’well’s design is not distinctive enough to serve as a trademark.

In May 2017, ETS filed to have S’well’s registration for the bottle design cancelled. Now that the lawsuit is over, the cancellation proceeding can move forward. I’ll keep an eye on it and let you know how it turns out.

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Not S’well’s bottle.

The moral of the story: If you want people to know you by your trade dress, pick something that really sets you apart. For long-time readers, you’ll no doubt recognize this as the same advice as I give for word marks and logos.

 

 

Thanks, Cody B. for another great sighting and for letting me use his photo!

 

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*I’m quoting an Opinion and Order of District Judge Rakoff from January 2018, in which Judge Rakoff granted ETS’s motion for summary judgment on some of the claims brought by S’well and denied the motion for summary judgment on other claims.

Judge Rakoff denied ETS’s motion for summary judgment in connection with claims that would have required him to conclude that the shape of S’well’s bottle is generic. Those claims were then argued in front of a jury as part of the trial. I’m assuming that ETS submitted evidence at trial that was similar to the evidence ETS submitted in support of its motion for summary judgment.