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Goodbye Big Logos—Hello Snazzy Packaging

By: Julia Anne Matheson and Anna Balichina
Posted: January 9, 2009, from the January 2009 issue of GCI Magazine.

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The ultimate success of any packaging strategy will largely depend on the consistency and uniformity of the overall look and feel of the product line. If the use of variable colors, shapes and elements deprives the product line of a single consistent overall visual image, consumers, competitors and the courts are unlikely to recognize the packaging as a trademark. If, on the other hand, the packaging uses a consistent and uniform set of colors and shapes, e.g., the sea-foam green and frosted glass typically associated with Clinique, the public is far more likely to associate those elements with a particular brand.

Why is this important for product packaging? Because, given the profusion of products in the marketplace, it is more and more difficult to develop product packaging so distinctive and unique as to qualify for protection upon initial use of the “look.” Thus, in most situations, the scope of protection afforded the trade dress will depend on the degree to which the public has come to associate it exclusively with the product.

It goes without saying that a single color or a combination of colors can serve as an important source-identifying function—provided consumers have come to associate either with a particular brand—but if a color or color combination is relatively common in the industry, the necessary association (or secondary meaning) may be impossible to establish. Thus, in one case, the court rejected alleged trademark rights in the color black for compacts, finding “countless numbers of cosmetic companies that sell black compacts” and that black is “as common a color for a makeup case as brown is for a paper bag.”

The Issue of Functionality

Functionality is yet another hurdle to keep in mind in developing and promoting a product’s trade dress. If elements forming the packaging contribute to the product’s durability, improve the efficiency of or lower the cost for, manufacture or facilitate the consumer’s evaluation of a product’s features, they will be considered functional and unsuitable for exclusive appropriation as a trademark. For example, a potpourri company can never claim trade-dress protection in transparent packaging since such packaging is among the least expensive alternatives available to the marketplace and permits consumers to both view the product and smell the fragrance—important features in any purchasing decision. Utilitarian elements are, for obvious reasons, often sufficiently commonplace that they fail to satisfy the distinctiveness requirement for trade-dress protection. Thus, in one case, the court held that “there are only a limited number of designs available for cosmetic bags,” and such “common and useful product features” as plastic coating and gold zipper pulls “must remain available to competitors.”

In addition to the classic utilitarian functionality, e.g., the shape of the tube cap helps facial cream retain its quality during transportation, trademark law also recognizes a so-called aesthetic-functionality bar to trade-dress protection. If consumers view product packaging as simply decorative and aesthetically appealing as opposed to brand identifying, the packaging will not be protectable. Thus, pumpkin-shaped candy offered at Halloween is decoratively appealing to the buyer and, accordingly, functional rather than source identifying. The shape is an “important ingredient in the commercial success of the product” because it enhances the candy’s value to those shopping for trick-or-treat giveaways. Since prohibiting imitation of this feature by others would impede competition, pumpkin-shaped Halloween candy is considered aesthetically functional and not protectable. Thus, this factor too should guide the overall design.

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