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Category archives for “Design Patent”

Can Package Designs be Registered as Trademarks?

May 6th, 2013

Alcoholic beverage products typically are sold in glass or plastic bottles or in aluminum cans. There are a few alternative packaging options, such as bag-in-box and Tetra-packs, but the beer and wine section at the grocery store is mostly full of bottles and cans. Suppliers distinguish their products from competitors’ products by creating unique brand names and label designs, both of which can be protected as trademarks. But what about the package itself? Can you register your bottle shape as a trademark? The answer is yes, if the design is distinctive and not merely functional.

U.S. trademark law (15 USC § 1052(e)(5)) provides that a proposed trademark cannot be registered if it “comprises any matter that, as a whole, is functional.” This applies to colors, sounds and also to package designs. The U.S. Patent & Trademark Office (“USPTO”) will not grant trademark registration, and the exclusivity that trademark registration provides, if it would foreclose competitors from using a design that is functional. A four-factor test was established to determine whether a container design is functional: 1) whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered; 2) whether applicant’s advertising touts the utilitarian advantages of the design; 3) whether alternative designs are available that serve the same utilitarian purpose; and, 4) whether the design results from a comparatively simple or inexpensive method of manufacture. Package designs commonly fail the functionality test based on at least one of the above factors because packages are inherently intended to be functional. But it is possible to incorporate design features into an otherwise functional package that are purely for aesthetics, such as the shape of the iconic Coca-Cola bottle, which has been a registered trademark for decades. However, designs that are functional, such as bottle designs that offer efficient stacking or pouring methods, might be subject to refusal based on the test detailed above.

The USPTO may also refuse to register a package design if it lacks inherent distinctiveness. Several factors must be considered in evaluating a design’s distinctiveness, including whether it: 1) is a “common” basic shape or design; 2) is unique or unusual in a particular field; 3) is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods; or 4) is capable of creating a commercial impression distinct from the accompanying words.

A recent opinion issued by the Trademark Trial and Appeal Board in In re Mars is a good illustration of the application of the above factors to a package design – a pet food container in that case. The pet food package was an inverted cylindrical container. The registration in that case was denied based on the factors discussed above, but many package designs have been successfully registered as trademarks, so if your package has a unique element or design, you may wish to consider protecting it as a trademark.

Contact one of the attorneys at Strike & Techel if you have questions about trademark registrations.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2013 · All Rights Reserved ·

Bottle Design: Trademark versus Patent?

July 19th, 2011

Distinctiveness: It’s a core product feature. After putting in the time and money it takes to make your product distinguishable in the marketplace, how do you protect that investment? Alcoholic beverage producers are likely familiar with the concept of trademarks, which are used to identify products and protect consumers from being confused about the source of goods or services.  Trademark rights exist for as long as the marks are used in commerce. They do not have to be registered with the United States Patent and Trademark Office, but registration is highly advisable to provide notice to others interested in the mark that it is already being used in commerce. Trademark laws also protect “trade dress,” meaning features of a product or a product’s packaging that are distinctive and not required for functionality, but rather are used to identify the product in the marketplace as being made by a certain producer. For example the color green in a stop light is functional and could not be protected by trade dress, while the color green used on a product bottle may be protectable under trademark law.

Patents, on the other hand, must be registered in order to secure protection in the market, and the protection exists for a certain time period even if the item or design registered is not used in commerce. A design patent protects the ornamental design for a functional item—such as a unique bottle design that is not explicitly tied to the overall functionality of the item. Depending on the uniqueness and importance of the bottle design, it may be worth the time and capital required to fully prosecute a design patent. Obtaining a design patent requires proof that the design is (a) novel, (b) useful, and (c) not obvious. While the shapes, sizes, and colors that are used to create an association in consumers’ minds between a product itself and the product’s manufacturer may be protectable as trade dress, they may also be protectable, for a limited period of time, by a design patent. For example, the distinctive curved bottle for Coca-Cola was once covered by a design patent. The design patent expired; however, the bottle is still protected under trademark law as trade dress. The process for prosecuting a patent is lengthy and often costly, but if a bottle design is a key product element, it might be worth investigating.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2010-2011 · All Rights Reserved ·