Product packaging is a critical part of every manufacturer’s operations (and even that of many wholesalers and retailers). A product’s packaging is often the first thing customers see: and first impressions count. That is why, for example, an entirely new discipline – packaging engineering – has grown over the last several decades and why companies like Starbucks® and Apple® work so hard to have every napkin, cup, box and bag uniformly branded.

Yet despite the obvious commercial and marketing importance of product packaging, many companies fail to protect the intellectual property rights embodied in such packaging – rights which can often be secured under patent, copyright and/or trademark law.

Product packaging is one of those often overlooked areas of intellectual property. Manufacturing clients rightly focus on protecting their products but sometimes forget that consumers usually see their packaging first. Failing to protect such packaging can be a major misstep since competitors often infringe upon both packaging as well as products.

Design Patent

A design patent protects the ornamental design (i.e., the “look and feel”) of an invention. In other words, design patents protect the way an invention (including, potentially, product packaging) looks. When most people think about patents, they think about a “utility patent” – something which protects utilitarian or functional aspects of an invention. But a “design patent” is different – it protects the appearance of an invention. That’s often perfect for packaging. In general, that means that new, useful and non-obvious packaging designs can potentially be protected.

Major companies have been using design patents to protect product packaging for over a century. For example, U.S. D48160 is a design patent issued in 1915 over what we now know as the Coca-Cola® bottle. More recent examples include everything from Chobani’s design patent covering product packaging for yogurt boxes (U.S. D828766S1) and Kraft’s design patent covering a salad dressing bottle (U.S. D659000S1) to Starbucks’ design patents for a coffee cup (U.S. D529762S1) and a coffee cup lid (U.S. D516424).

How should companies decide whether or not to consider seeking design patent rights?

First, always talk to to a registered patent attorney. Second, and more generally, if clients use standard, off-the-shelf packaging such as a regular cardboard box, don’t worry about design patent rights. One of the first questions I ask clients is whether their packaging has any customization. If so, then a client needs to evaluate whether a design patent might be appropriate.

Trade Dress Registration

A trademark is a symbol or other device which functions as an indication of the source or origin of goods or services. Courts have held that a trade dress – the total image and overall appearance of a product – can function as such a “symbol” or other “device.”

According to the U.S. Supreme Court, trade dress “may include features such as size, shape, color or color combinations, texture, [or] graphics.” One of the best examples of this is the Coca-Cola bottle. The Coca-Cola Company has spent hundreds of millions of dollars advertising the shape of their bottle and consumers can recognize one from a mile away. Among other rights, the Coca-Cola® bottle design is registered as U.S. Trademark Reg. No. 696147.

In order to secure a Federal trademark registration for a particular trade dress, such trade dress must: (a) not be functional; and (b) be distinctive. Functionality is something of a contradiction. All trade dress has a function – look at the Coca-Cola bottle which has the function of holding liquid. What the Trademark Office looks for in evaluating functionality is whether a trade dress is essential to the use or purpose of a product or affects the cost or quality of the product in some way.

There is nothing about the unique shape of the Coca Cola bottle that helps it hold liquid, makes it less expensive to manufacture or helps improve the taste of Coca Cola. Distinctiveness is a measure of whether the nature of a particular trade dress is to identify a particular source. While some trade dress may be inherently distinctive, others may need to acquire distinctiveness through years of careful marketing.

Any time we are working to protect a trade dress, it is important to work closely with a client’s marketing team. We know the type of activity that the Trademark Office will find compelling and can help clients take the necessary steps to engage in and document such activity.

Copyright Registration

Copyright law protects creative expressions of an idea. While we are most familiar with copyrights for things like text or two-dimensional artwork, copyright law can also apply to creative, sculptural work. That means copyright protection can be sought both for the two dimensional text, layout and graphics on product packaging as well as the packaging itself where it has some creative, three-dimensional components.

To be protectable under copyright law, a product needs to be fixed in a tangible medium and an original work of authorship (meaning that it was not copied from elsewhere and has at least a minimal degree of creativity). The “minimal degree of creativity” requirement is a very low threshold. Frankly, most of the product packaging you see every day – from the text, graphics and color scheme used on a bag of chips to a uniquely shaped bottle of sunscreen – could likely meet this threshold.

Benefits of Overlapping Protection

As noted above, there is often overlap between the various types of intellectual property rights as applied to packaging. That is an important point — the more overlapping layers of protection a client has, the better. Each form of intellectual property has its own pros and cons such as the ability to recover certain damages and attorney’s fees, burdens of proof, duration and scope of protection, etc. The more layers we have to work with, the more we can do to stop infringers.

Independent Contractor Agreements

As with all intellectual property rights, having a clean chain of ownership is critical. For example, if packaging is designed by an independent contractor, then the default rule is that some intellectual property – such as copyrights – are owned by that independent contractor. The way to avoid this is to ensure that everyone who “touches” the design of product packaging has signed proper intellectual property agreements – such as a work-for-hire agreement.

Those needing assistance in any aspect of intellectual property law, may contact me at luca.hickman@henlaw.com or by phone at 239-344-1307.