This post is Part III of our new miniseries on the “Fundamentals of Trademarks,” where a number of upcoming blog posts will be dedicated to exploring trademarks in detail & depth. In Part II, we hammered on the five categories of the spectrum of distinctiveness in our blog post titled “Trademark Protection Requirements: Spectrum of Distinctiveness” and mentioned that the level where a mark falls on the spectrum of distinctiveness determines its “strength” or level of distinctiveness. The categories we discussed include – fanciful, arbitrary, suggestive, descriptive, and generic.
Amidst our discussion, we hinted that the analysis of product packaging, or what is known as “trade dress,” is technically different in light of this spectrum of distinctiveness. Accordingly, we now shift gears to focus on Trade Dress (Product Packaging) in this discussion.
So, let us get on with it.
Trademark Law on Trade Dress (Product Packaging)
Generally speaking, trade dress can be described as the commercial feel & look of a service or product that is used to distinguish and identify the source of that service or product. Product packaging and product designs are both considered trade dress. For example, Coca-Cola’s fluted bottle is a perfect example of product packaging, while Stella D’Oro’s “S” shaped cookie is a perfect example of product design.
Under the trademark law, trade dress protection depends on whether it is (1) distinctive and (2) nonfunctional. Notably, a product feature will be considered functional and, subsequently, protectable under trade law if it affects the quality or cost of the product and/or is essential to the use or purpose of that product. In other instances where competitors would be put at a significant disadvantage, unrelated to reputation, following the exclusive use of such a feature, then the product feature will be considered functional. Whenever the issue of product configuration arises, the most probable question asked concerns “functionality.” Accordingly, courts may require differentiating between the component’s design and the component’s function. As courts have held in the past, if a device’s aspects had previously been the subject of an issued patent, then trademark protection will not be granted automatically.
One critical thing to note is that product packaging and product configuration are not treated the same under the trademark law, where it concerns distinctiveness. On the one hand, this implies that in order to obtain trade dress protection, secondary meaning must be provided by owners since product configuration can never be inherently distinctive. On the other hand, if, for instance, a distinct, unique visual image and a commercial impression are created by the combined elements of product packaging to consumers, product packaging may be inherently distinctive. Nonetheless, by showing that one’s trade dress has acquired secondary meaning, an owner may manage to obtain protection where packaging is not inherently distinctive.
In the next update of the content we have already published pertaining to trademarks, we shall switch gears and focus on “Limitations on Trademark Protection.” This subject concerns the individual’s power to control how one’s mark is used. To hint, the major limitations include “acquiescence,” “laches,” “fair use defense,” and “first sale doctrine.” While each of these limitations will be discussed under individual posts, we will start with the first in our blog post and Part IV of the miniseries titled “Acquiescence – The First Limitation on Trademark Protection.”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.