One of the biggest sources of confusion for people seeking trademark and other IP protection is the range of IP that may be protected. For example, most people know that names and logos can be legally protected by trademark, and that the functions of products can be protected with patents, but what many people don’t know is that non-functional aspects of a product or its packaging can be protected too! This type of appearance trademark is usually referred to as “trade dress” and can be any physical properties of a product that do not have function, but instead serve to identify the source of the product to consumers.
Trade dress can be anything from the shape of a cell phone charger to the way that a liquid is sealed in a bottle. For example, have you ever wondered why only Maker’s Mark bourbon is sealed with red wax? It’s a protected trade dress!
It’s important to mention here that the reason that the Maker’s Mark seal qualifies for trademark protection is because it is not actually functional. The bottles are sealed with stoppers like any other bottle, but the red wax signifies to consumers that the product is Maker’s Mark, and no one else’s.
Another good example of trade dress is a soft cornered cube shape for an electronic charger, an appearance that is trademarked by Apple. As with Maker’s Mark, this probably makes intuitive sense, when most people see white soft cornered plugs, they think that the plugs are for Apple products, and so Apple has successfully protected this shape, claiming it as an exclusive trademark.
So how far does it go? Well, even colors have been held to be registrable trade dress. Owens Corning, a major producer of fiberglass insulation successfully trademarked the color pink as trade dress for its insulation products in the 1980s, with a federal circuit court holding that color could be considered a source identifier if the registrant could show that a sufficient connection has been made in the minds of consumers between the color and the product. See In Re Owens-corning Fiberglas Corporation, 774 F.2d 1116 (Fed. Cir. 1985).
That said, trademarking a color is a daunting task as the USPTO does not consider colors to be “inherently distinctive” like names, logos, and designs like the Maker’s Mark seal, which means that a prospective registrant must show continuous and exclusive use and advertising linking the color to the brand in the minds of consumers. This can prove difficult for even the largest brands, as General Mills, the makers of Cheerios, recently lost their bid to trademark the color yellow for cereal boxes, with the Trademark Trial and Appeal Board holding that yellow boxes did not indicate a General Mills product in the minds of consumers, and that a color trademark registration was therefore inappropriate. See In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017).
Still, while trademarking color remains a tall order, a trademark for a general shape remains a powerful tool for protecting the way in which your products are presented and identified to consumers.