Trademark protection comes in many forms and sometimes what is in the bottle is almost as important as the bottle itself. Customers come to associate brands with not just names and logos but often the way a product looks, its bottle shape, or how it's packaged. When that association is strong, the brand may be entitled to protect those attributes through a special trademark registration called "Trade Dress." In the beauty and personal care industries, designing a bottle or package that stands out amongst its peers can be a great way to get noticed in a sea of competing products. However, if a bottle shape is interesting enough, it is only a matter of time before knock-offs show up. Brand owners who have registered trade dress rights are well positioned to combat that activity. Obtaining trade dress protection can be tricky and brand owners benefit from advance planning if a successful trade dress registration is in the plans.
For the sake of simplicity, this article contemplates a bottle shape as the target for trade dress protection but this information can apply to many packaging aspects of a product. First off, any design seeking protection cannot be functional, it must be purely decorative. Next up, when filing an application for trade dress protection, a brand owner must show either that (1) the bottle shape is inherently distinctive (i.e. very unique or unusual in its particular field and customers automatically associate it with the brand after a short period of time) or (2) the design has acquired distinctiveness (i.e. consumers have come to recognize the specific design as a signifier of a brand over time). Inherent distinctiveness is extremely rare. When looking at bottle shapes, a brand owner almost always needs to submit evidence to the trademark office to prove that the shape has achieved acquired distinctiveness.
Evidence of acquired distinctiveness needs to support arguments that: 1) there has been exclusive and continuous use of the bottle in connection with the product; 2) the brand has committed significant resources to advertising and marketing efforts which associate the shape to the brand; and 3) as a result, consumers associate the bottle with the source of the goods.
When working with clients to collect this type of evidence, I will ask for as much as they have available in the following categories:
- Data tracking ad spend and copies of ads and marketing assets that highlight the bottle shape
- Data tracking the brand's history of selling products in the particular bottle shape and the associated sales numbers and numbers of customers
- Anything that shows the bottle is unique to the brand and that it "stands out on the shelf"
- Unsolicited media or social media coverage or design awards referencing the bottle shape
- Proof of intentional copying of the design by others
If a brand is able to gather a quantity of evidence in the majority of the above categories, they may have a good shot at protection. It typically takes at least a few years of use before the trademark office will consider that acquired distinctiveness has been achieved. Careful record keeping from launch may speed up that practice and will ensure that, when the time comes, the brand will be ready to submit an impressive package for consideration. Owning the exclusive rights to your bottle shape can be a powerful tool in differentiating your products and keeping others from benefiting from your unique ideas.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.