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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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Given the market obstacles to creating an inherently distinctive packaging design, creative design is only part of the marketing battle. Using marketing dollars wisely to educate consumers that a fanciful or stylish new packaging identifies the source of the product is as important, as expensive and as challenging a task as the design process itself.

Courts faced with deciding whether to grant what is, in essence, a monopoly in a style of packaging will focus on sales history, advertising budget and advertising content in reaching their decision. For example, the court concluded in a recent case that the public had come to recognize the trade dress of a fragrance line as the “hallmark of a particular source.” The court pointed to evidence that the brand owner spent more than $14 million in print and retail advertising to promote the packaging, that the packaging had been the subject of an industry award and that marketing studies showed that consumers recognized the brand owner’s packaging as a source identifier for the product.

High sales volumes and a large advertising budget alone will not support a claim of secondary meaning. The promotional campaign must direct consumers to “look for” the packaging features when shopping for a particular brand. Thus, advertisements for a new line of cosmetic products that tell consumers to “look for the purple box,” alert purchasers to the source of the product and thereby support a claim of secondary meaning. Advertisements that focus only on the aesthetic appeal of the product design or product packaging, on the other hand, will not support a claim of secondary meaning even if sales are extensive.

Conclusion

The new trend away from big splashy logos to more stylish and transitional product packaging requires marketers to refocus their trademark strategy. While product packaging can be a source identifier, some key concepts must drive the design and marketing efforts. The primary goal of trademark law is to protect against consumer source confusion, not to reward creativity. While product packaging that is so unusual and unique, e.g., “inherently distinctive,” can qualify for trademark protection immediately upon introduction to the market, given the realities of the marketplace, such packaging is more and more difficult to create. The consistency and uniformity of the elements and overall appearance of the product line will factor significantly in the ultimate success of any packaging-based strategy.

Julia Anne Matheson is a partner in the Washington, D.C. office of Finnegan, a global intellectual property law firm, where she practices a full range of trademark services—including trademark prosecution, client counseling and trademark clearance.