Trade Dress: Protecting the Packaging that Makes Your Product Stand Out
POSTED BY Brett Leininger
Many wineries understand the importance of protecting their brand names through trademark registration and enforcement in the market, but producers should not overlook protection that may be available under U.S. trademark law for distinctive elements of product packaging and design. Considering trade dress within your overall intellectual property enforcement strategy will allow you to protect the unique aspects of presentation that make your product stand out on crowded market shelves.
Trade dress is a type of trademark encompassing elements of product packaging and design which, taken together or separately, indicate to consumers that a product or service originates from a particular source, and which distinguish goods of one producer from those of its competitors. It is the look and feel of a product or service in the marketplace, and may consist of elements like size, shape, color, imagery, and decorative aspects of packaging.
Trade dress must either be inherently distinctive or have acquired distinctiveness to qualify for protection. To be inherently distinctive, trade dress must—
(i) not be a common, basic shape or design;
(ii) be unique or unusual in the particular field; and
(iii) not be a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods.[i]
To show acquired distinctiveness, a mark owner must demonstrate that consumers have come to associate the trade dress with a single source. This may be done through consumer testimony, surveys, or evidence of extensive marketing efforts focusing on the trade dress.[ii] Additionally, trade dress cannot be functional—i.e., the design element(s) cannot be dictated by utilitarian advantages like product performance or cost.
In the alcoholic beverage industry, unusual bottle shapes (see Fig. 1) and other packaging elements (see Fig. 2) may be distinctive enough on their own to indicate source. For example, although wax seals are relatively common, unique applications may be protected. Maker’s Mark Distillery has registered as trade dress “a wax-like coating covering the cap of the bottle and trickling down the neck . . . in a freeform irregular pattern,” and, in 2012, it prevailed on a claim of trade dress infringement against Diageo for using a similar “freeform” wax seal trickling down the neck of a tequila bottle. Diageo could use a wax seal going forward but had to remove the freeform wax trickle.[iii] On the other hand, common imagery and industry motifs are not protectable—for instance, a grape leaf on a wine label may not be unique enough to warrant protection.[iv]
Fig. 1. U.S. TM Reg. No. 4,043,730 (left); Reg. No. 5,852,320 (center); Reg. No. 4,086,012 (right).
Fig. 2. Reg. No. 1,370,465 (left); Reg. No. 6,197,824 (center); Reg. No. 7,693,688 (right)
Color may also constitute trade dress, but the bar is high for establishing trade dress rights in a color on its own. The use of several colors in combination with one another may be found to be inherently distinctive, but the use of a single color has not been found to be inherently protectable and distinctive. However, a color or color combination may also be protected when proven to be recognized by consumers as unique to the producer.[v] A single color (or several colors) can also be protected within a combination of other elements, such as graphics, comprising an overall protectable trade dress.
As with any other trademark, trade dress can be registered with the U.S. Patent and Trademark Office. Registration confers a legal presumption that the trade dress is a valid mark, that the registrant owns the mark, that the registrant has the exclusive right to use the mark throughout the United States, and that the trade dress is non-functional. The application process is the same as for traditional marks, though the applicant will also need to establish that the claimed trade dress is non-functional.
Brett Leininger is an intellectual property attorney focused on trademark and unfair competition matters. For questions about your trademarks and distinctive trade dress, please contact DP&F’s Intellectual Property Team.
[i] Seabrook Foods, Inc v Bar-Well Foods Ltd., 568 F.2d 1342, 1344–1346 (CCPA 1977).
[ii] See In re Mogen David Wine Corp., 372 F.2d 539 (CCPA 1967) (where advertising depicting the bottle design sought to be registered always featured the word mark MOGEN DAVID, such evidence failed to prove acquired distinctiveness in the design itself).
[iii] Maker’s Mark Distillery Inc. v. Diageo North America, Inc., 679 F.3d 410 (6th Cir. 2012).
[iv] Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1049 (9th Cir. 1998).
[v] For example, Tiffany’s “robin’s-egg blue” (Reg. No. 2,359,351) and UPS’s brown (Reg. No. 2,901,090).
