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Distinctive packaging can drive sales, but it can also lead to knockoffs. Imitation may be the sincerest form of flattery, but it kills value in the branding world. How you protect your packaging can have a tremendous impact on the return you will obtain from your business.

The best way to protect your packaging is with a trademark. Packaging that functions as a trademark (called “trade dress”) is entitled to a limited scope of protection. To maximize this protection, you need a federal trademark registration. Federal trademark registration provides important legal benefits such as a presumption of nationwide validity and the right to use the ® symbol.

Before pursuing federal trademark protection, you should consider whether your packaging can be registered. Registration will be refused if the packaging is found to be functional and/or nondistinctive.

FUNCTIONALITY

The United States Patent and Trademark Office (USPTO) will not allow a business to monopolize a useful feature under the guise of identifying the feature as the source of the product or service. Therefore, registration will be refused if the packaging is functional.

The USPTO considers the following factors in determining whether packaging is functional:

  • The existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • Advertising that touts the utilitarian advantages of the design;
  • Availability of alternative designs; and
  • Ease or economy of manufacture.

DISTINCTIVENESS

To be registrable, packaging must also be distinctive. While some types of packaging can be inherently distinctive through their intrinsic source-identifying nature, others must acquire distinctiveness before they are entitled to registration. Packaging may acquire distinctiveness when consumers begin to associate it with a particular seller over time.

There is a 4-part test for determining the inherent distinctiveness of packaging:

  • Whether it is a common basic shape or design;
  • Whether it is unique or unusual in a particular field;
  • Whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and
  • Whether it is capable of creating a commercial impression distinct from the accompanying words.

One of the leading cases on the distinctiveness of packaging involves the “Cuffs & Collar” costume worn by Chippendales performers:

In a decision that sent shockwaves through bachelorette parties across the country, the Cuffs & Collar costume was found not inherently distinctive because it was a refinement of the Playboy bunny costume:

Even though Chippendales lost its inherent distinctiveness argument, it was still able to obtain a federal trademark registration on the basis that the Cuffs & Collars costume had acquired distinctiveness.

Marks that have acquired or inherent distinctiveness are entitled to the same benefits of a federal registration. There is a difference, however, when it comes to enforcement. Marks that are inherently distinctive are stronger and therefore easier to enforce against infringers than a mark of acquired distinctiveness. Fortunately for Chippendales, this has not dampened the enthusiasm of the men who dream of joining its elite group of performers.