Shape of Things to Come: Protecting Product Configuration and Packaging Design

The Shape of Things to Come:  The Benefits and Challenges of Protecting Product Configuration and Packaging Design

Originally appeared in Kaye Scholer’s Fall 2016 Consumer Products: Adapting to Innovation Report.

—By Paul Llewellyn, Richard De Sevo and Kyle Gooch

»  Click here to read more articles from our Consumer Products: Adapting to Innovation Report.

Consumer products manufacturers have sought to protect the configuration of their products under US law for well over a century—the seminal US Supreme Court case on design patents, involving silverware pattern designs, was decided in 1871. Recent court decisions involving design patents as well as trade dress, however, demonstrate this to be a still-evolving area of law, and highlight some of the benefits and challenges of protecting product configuration.

Both patent law, through design patents, and trademark law, through trade dress, protect the nonfunctional aspects of a product configuration or packaging design. (In some circumstances, copyright law might also protect the appearance of a product.) The protectable elements include overall product shape and color and packaging color and design schemes, but do not include elements that are functional. As one would expect, given that the potential designs of products and packaging are almost limitless, the courts have protected a wide variety of product configuration and packaging designs.

For example, Apple has used design patents to protect the shape of the iPhone,[i] and the Federal Circuit has recently held that sporting equipment company Coleman Company Inc. could protect the ornamental design of its personal flotation devices using design patents.[ii] As for trade dress, the US Patent and Trademark Office has granted a number of trademark registrations protecting the conical shape of The Hershey Company’s KISSES candy as used in a variety of products,[iii] and for more than 20 years Yamaha has held a registered trademark for the three-dimensional spray of water sent up during the operation of its personal watercraft.[iv]

In addition to physical shape, trademark law can be used to protect product color in fields as diverse as fashion and pharmaceuticals. For example, in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), the court held that footwear designer Louboutin was entitled to trademark protection covering the use of red lacquered outsoles when contrasted with another color for the shoe, while in AstraZeneca AB v. Dr. Reddy’s Labs., Inc., Case 1:15-cv-00988-SLR, 2015 WL 6870038 (D. Del. Nov. 6, 2015), the court granted a temporary restraining order barring Dr. Reddy’s from selling generic versions of AstraZeneca’s drug Prilosec in purple capsules, which were similar in shade to the color AstraZeneca used for its Prilosec and Nexium capsules.[v]

Trademark protection has also been granted to colors used in packaging and advertising. For example, Tiffany holds registrations for the color Tiffany Blue as used in a variety of product packaging. Other advertisers have gone further and asserted trademark rights covering the use of a color more broadly. In T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888 (S.D. Tex. 2014), the court granted a preliminary injunction protecting T-Mobile’s use of a magenta color scheme in advertising and in store displays. Indeed, trademark law has been used to protect the design of a store interior: In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765, 775-76 (1992), the Supreme Court affirmed that the distinctive layout and décor of a chain of Mexican fast-food restaurants could be protected under the Lanham Act. Along similar lines, Apple has since obtained a trademark registration covering the design and layout of its Apple Stores.[vi]

As noted above, trade dress and design patent law are the two legal schemes most commonly used to protect product configuration. Trade dress is an aspect of trademark law that covers those aspects of a product’s design and packaging that serve as source identifiers. Trade dress protection lasts as long as the trade dress is used and defended against infringement. It is usually easier to obtain trade dress protection for product packaging designs than protection for product design, because consumers are more likely to view elements of a product’s packaging (in contrast to the product’s appearance) as source identifiers. Therefore, neither a single color of a product nor the design of a product itself may be protected as a trademark without establishing that consumers view it as a source identifier, i.e., as having “acquired distinctiveness.”[vii] Because of this, trade dress protection for a product’s design might not arise until after the product has been marketed.

As for patent protection, the Patent Act allows design patents to be granted for “new, original, and ornamental design[s] for an article of manufacture,”[viii] and, unlike trade dress protection, does not require proof of “acquired distinctiveness.” Also unlike trade dress protection, which lasts as long as the mark signifies the source of the product, design patent protection only lasts for 15 years from the date the patent was granted.[ix] Similarly, design patents are limited by many of the same rules that apply to utility patents. For example, a design patent cannot be granted where the design was previously used or offered for sale publically.[x]

Often, the most significant limitations on product design protection under both regimes relate to the functionality of the design. The Lanham Act prohibits the registration of “functional” trademarks.[xi] A product design is functional if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.”[xii] In determining whether a design has utilitarian functionality, a court considers the existence of a utility patent disclosing the utilitarian advantages of the design; advertising materials in which the originator of the design touts the design’s utilitarian advantages; the availability to competitors of functionally equivalent designs; and facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.[xiii]

A design may also be aesthetically functional if the visual aspects of the design perform a non-trademark function so that protection of the design as a trademark would significantly hinder the ability of competitors to legitimately compete with the mark holder.[xiv] For example, the Trademark Trial and Appeals Board (TTAB) recently rejected an attempt to register “the color black as applied to a substantial portion of the outside surface of a box which serves as a container or packaging” for “flowers and live cut floral arrangements.”[xv] The TTAB noted that in the floral industry, “color has significance and communicates particular messages” and “packaging that the flowers are delivered in plays a part in the presentation of the flowers.” Because registration of the mark would disadvantage competitors seeking to offer flowers for these purposes or to convey these messages, the mark was deemed aesthetically functional.

Like trade dress protection, design patent protection does not extend to functional aspects of a design. However, courts may assess the functional aspects of a design differently under the patent laws than under trademark law. This was vividly illustrated in the Federal Circuit’s decision in Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015), in which Apple alleged that Samsung’s phones infringed several design patents as well as registered and unregistered trade dress associated with the configuration of the iPhone. Applying the Ninth Circuit’s test for functionality, the court held that the elements of Apple’s trade dress that Apple sought to protect served some functional purpose, and under the Ninth Circuit precedent, in order to be protected, trade dress had to “serve[] no purpose other than identification.” The court found, for example, that the shape of the phone served to increase durability and “pocketability” and therefore could not be protected. In contrast, Apple’s design patent covering the same product configuration was held valid. Applying a different standard for design patents, the Federal Circuit held that even the elements of the design that had some utilitarian function could be considered as part of the overall ornamental design and protectable with a design patent.[xvi]

The trademark and design patent schemes also provide for slightly different damages in the event of infringement. The Lanham Act allows for an injured party to recover a defendant’s profits, damages sustained by the party, and costs.[xvii] In exceptional cases, the court may award attorney’s fees.[xviii] Where the defendant has used a counterfeit mark, treble damages may be awarded.[xix] Where a design patent has been infringed, the patentee may receive all of the profits from the sale of the infringing products or a reasonable royalty, regardless of whether the profits are due to the infringing elements of the defendant’s design.[xx] A patentee may also recover attorney fees and treble damages in exceptional cases.[xxi]

Given the value that can be derived from product design, proactive measures should be taken to protect trade dress and designs. Designers and business leaders should be educated on what can be protected under different intellectual property regimes, and counsel should work in advance with relevant groups including design and marketing teams to enhance protectability, by, for example, protecting against early disclosure of designs when patent protection is desirable, and delineating between functional elements of a design and elements intended to serve as source identifiers in advertising and applications seeking design protection. Counsel should be strategic about applying for protection and consider the relative benefits of seeking trade dress and design patent protection and the timelines for doing so.

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[i]  Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015).

[ii]  Sport Dimension, Inc. v. Coleman Co., No. 2015-1553, 2016 WL 1567151 (Fed. Cir. Apr. 19, 2016).

[iii]  E.g., Reg. No. 3,059,066 (“the three dimensional configuration of a conically-shaped candy piece with alternating swirls or stripes wrapped around it”); Reg. No 4,916,452 (“three-dimensional faceted conical configuration of a dish in the shape of the iconic KISSES candy”).

[iv]  Reg. No. 1,946,170.

[v]  See also CIBA-GEIGY Corp. v. Bolar Pharm. Co., 747 F.2d 844, 854-55 (3d Cir. 1984) (affirming finding of infringement of trade dress of drug capsules, including a single-color capsule).

[vi]   Reg. No. 4,277,914.

[vii]  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212 (2000).

[viii]  35 U.S.C. § 171(a).

[ix]  35 U.S.C. § 173.

[x]  35 U.S.C. § 102(a)(1).

[xi]  15 U.S.C. § 1052(e)(5).

[xii]  Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.10 (1982).

[xiii]  In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982).

[xiv]  Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).

[xv]  In re Florists’ Transworld Delivery, Inc., Serial No. 77590475, 2013 WL 2951796 (T.T.A.B. Mar. 28, 2013) [Precedential].

[xvi]  See also Sport Dimension, Inc. v. Coleman Co., No. 2015-1553, 2016 WL 1567151 (Fed. Cir. Apr. 19, 2016).

[xvii]  15 U.S.C. § 1117(a).

[xviii]  15 U.S.C. § 1117(a).

[xix]  15 U.S.C. § 1117(b).

[xx]  35 U.S.C. §§ 284, 289; Apple Inc., 786 F.3d 983. The Supreme Court has granted certiorari in that case to consider the scope of the design patent damages remedy. Samsung Elecs. Co. v. Apple Inc., 136 S. Ct. 1453 (2016).

[xxi]  35 U.S.C. §§ 284-85.