When Imitation Is Not Flattery

Trade Dress Protection for Packaging

By David P. Badanes, Esq. and Edward M. Weisz, Esq.

Trade dress protects the look of products and packages that have distinctive qualities or characteristics, or an overall distinctive impression.

In product marketing, how a product looks or how it's packaged can be just as important—or even more important—than what's inside. If it's yours, you should protect it, and there are laws to support you.

Under federal law governing unfair competition, a product's packaging, or "trade dress," may be protected against copying by competitors. Trade dress refers to a product 's characteristics or its packaging. These can include a three-dimensional shape, graphic design, color, or even smell. Those seeking trade dress protection must show that their product 's packaging is distinctive and not functional.

If the product or packaging meets these trade dress criteria, its owner can seek to enjoin a competitor from using similar product packaging that creates a "likelihood of confusion" with the owner's packaging. If a competitor's product looks so much like your product, smells so much like your product, and is packaged so much like your product that it is likely to confuse your customers who buy the competitor 's nearly identical product instead of yours, your trade dress likely qualifies for protection.

Trade dress rights in product packaging are balanced by the strong federal policy in favor of promoting competitive markets. Thus, if it is a close call as to whether a packaging is distinct or functional, the decision will likely favor competition and against a finding that protectable trade dress rights exist.

Trade dress protection is designed for the benefit of both the consumer and seller. Consumers generally rely on packaging for information about the product and its source. Packaging helps a consumer distinguish among competing products and protects sellers by assuring that any goodwill associated with their products is not misappropriated by competitors.

A seller seeking trade dress protection for its packaging must articulate the specific elements that make up its trade dress. Courts evaluate trade dress distinctiveness by looking at all the elements and consider the total impression the trade dress gives to the observer. In some instances, while each individual feature may be considered common (courts refer to this as "generic"), the impression given by the combination of all of the elements may be considered distinctive. The focus of the distinctiveness inquiry is whether the packaging trade dress distinguishes the seller 's goods from those of others.

Courts recognize that there is an almost unlimited variety of labeling and packaging choices available to sellers of goods. For this reason, the courts uphold trade dress protection because granting such rights does not significantly diminish the number of package design choices available to competitors to market their competing goods. In other words, in most instances granting trade dress protection to product packaging will not stifle competition.

However, there are many examples of "generic" packaging, the rights to which if granted to one seller would stifle competition. For example, dairy product packaging typically uses light pink and blue colors. So the use of these colors on dairy product packaging is considered "generic" and not protectable. Likewise, the wide use of orange or green colors in the food industry to designate decaffeinated products is not protectable in decaffeinated product packaging because that would give the product manufacturer an unfair advantage over its competitors. Accordingly, each package design for which a party seeks trade dress protection is evaluated on a case-by-case basis to determine whether the packaging is so distinctive as to designate "a single source of origin" of the goods and entitle the owner to protection in that package design. The following are some examples of packages that have qualified for trade dress protection.

Courts recognize that there is an almost unlimited variety of labeling and packaging, so trade dress aims to prevent customer confusion by discouraging copycats.

Klondike® ice cream bar packaging. The Klondike trade dress consists of a square size wrapper, bright coloring, pebbled texture, polar bear, and sunburst images that create a distinctive visual impression.

M&M's® milk chocolate candies packaging. The M&M's package consists of a rectangular paper-based package with a brown background and white lettering. The M &M's mark appears at an upward slant across the face of the package, and a display of the different colored candies featuring a half-candy showing a view of the interior of the chocolate candy.

Novelty "Toilet Bank" coin bank packaging. This is a toy coin bank resembling a familiar white tank toilet. The packaging was a royal blue triangular-shaped box, where the Toilet Bank itself was visible within the open-style box. The box contained several labels, including the product name, and the legend "TRY ME" and "PRESS HANDLE".

According to the New York Daily News, a Manhattan judge ordered the makers of this knockoff to stop producing and selling their version of the original "Toilet Can."

In the coin bank examples, the triangular shape of the "Toilet Bank" box and its open styling were found elsewhere on toy store shelves. Similarly, the "Try Me" label and raised back panel were considered usual legends in the toy business. Yet, the overall impression of the packaging was considered distinctive. In this instance, the court considered the product's packaging in conjunction with the product being sold, rather than simply evaluating the empty box, because the packaging contained an opening that revealed the product. Thus, the court evaluated the packaging in the context of its use; that is, with the product contained inside.

In order to warrant trade dress protection and obtain an injunction against a competitor, there must be a likelihood of confusion between your trade dress packaging and a competitor's packaging. Several factors are considered in evaluating the likelihood of confusion, including:

• The degree of similarity between the two packages and the products sold in the packages
• Evidence of actual consumer confusion between the two packages and their respective products, usually established by consumer survey evidence
• The competitor's bad faith in using the accused packaging
• The strength of the trade dress, measured by how consumers associate the packaging with its source

Competitors can challenge a trade dress claim by asserting that the trade dress is functional. A first test used to determine functionality is if the feature in the product packaging is essential to the article's use or purpose or if it affects its cost or quality. A second test for functionality is whether exclusive use of the alleged functional feature would put competitors at a significant disadvantage. However, there is no need for this second test if the first test deems the packaging feature functional.

Although individual elements of packaging may be considered functional, that does not necessarily render the package as a whole unprotectable. For example, the Klondike ice-cream bar wrapper may be functional, but its appearance is primarily nonfunctional.

A product's packaging trade dress is a valuable intellectual property right. Sellers should be cognizant of this right and vigilant in asserting their trade dress rights against competitors who misappropriate their product's packaging appearance. To that end, sellers must identify the elements of the trade dress to be protected and be prepared to show that the packaging is not functional and that there is a likelihood of confusion between their packaging and the competitor's allegedly infringing packaging.

Edward M. Weisz is a partner in and David P. Badanes is an associate of Cohen Pontani Lieberman & Pavane LL in New York City. A substantial portion of Mr. Weisz's practice is devoted to trade dress, trademark, and copyright matters. Mr. Badanes concentrates on intellectual property litigation and has experience litigating general commercial matters. Cohen Pontani Lieberman & Pavane (www.cplplaw.com) is an intellectual property firm serving a worldwide roster of companies from a diverse range of industries.