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Originally posted 2014-09-02 11:00:05.
By Eliana Rocchi | amdlawgroup.com
Sometimes patenting an invention to protect how it is made or the way it works doesn’t cut it. Sometimes a lot of resources have been funneled into creating a unique aesthetical appearance for the final product, for the packaging it will come with, or both. Consider the Coca-Cola bottle, for example, it certainly is unique and distinctive and it immediately brings the drink to mind.
Along with an original shape other features can also be used to confer distinctiveness to the overall appearance of a product or its packaging, like combinations of colors, graphics, textures, sizes, or even particular marketing strategies. These features are known as the “trade dress”, because they are the visual “wrap” that helps the customers to identify the product as belonging to a specific company and distinguish it from the products of its competitors. In other words a trade dress has the same “identification function” of a word trademark and can be protected under trademark law.
Nonetheless, gaining trademark protection for product designs or packaging with the US Patent and Trademark Office (USPTO) may prove extremely challenging. What can an applicant do in order to avoid a refusal and stand a better chance to achieve such protection? There are some important factors that need to be considered.
First of all the applicant must give proof that the trade dress actually fulfills the basic trademark function. In other words that it is capable of operating as an indicator of source and that the customers actually perceive it as a trademark and univocally relate it to the products to which it refers. In order to achieve that result it will be useful to choose designs that are original, clearly different from those already used in commerce and that contain distinctive, arbitrary elements that will help customers to instantly recognize them and refer them to the right producer. An applicant who succeeds, choosing the right combination of colors, shapes or other elements, in creating an inherently distinctive packaging or design, the chances to obtain registration will be much higher. On the other hand, if the design created is perceived as merely ornamental and lacking in distinctiveness the proof that it actually functions as a trademark will be much harder: the applicant will have to prove that the design has acquired distinctiveness over time by showing how it has been promoted as a trademark to the public, how the public has come to recognize it as such and how it has been used exclusively and continuously, for at least 5 years, within the United States or internationally.
Secondly, it has to be kept in mind that the functional elements of a product’s trade dress are not protectable under trademark law and the concept of “functional elements” is construed broadly by US Courts. In fact, not just those features that are useful or essential to the use of the product and make it work better than others are considered to be functional elements, but also those features that improve its quality or make it cheaper to produce, affecting its cost. Only the elements of the design that are purely ornamental and merely serve a source-identifying purpose can be granted trademark protection. Therefore the applicant should be careful, when filing the trademark application, to avoid including any of the non protectable elements. It is also important to avoid any overlapping between a utility patent and a trademark application as this would make it clear to the Trademark Office that some utilitarian advantages are claimed for the same design, making it impossible to register the same design as trademark. Therefore, if a patent application is filed, the applicant can seek trademark protection only for the parts of the product that exclusively involve its design and uniquely have aesthetic purposes. If that is the case the applicant should carefully and clearly highlight in the application that the design feature in question is not a useful part of the invention, but merely an ornamental and non essential aspect of the product.
The last considerations regard the way the design feature is presented when promoting the product. For the reasons we saw, when advertising the product, the marketing team should clearly present the design as a trademark, highlight how it represents the brand, draw the customer’s attention to its uniqueness, encouraging them to associate it with the producing company and avoid attributing to the trade dress qualities that may be suggestive of some utility or functional purpose.