By Alan Haus
Since it is difficult in the food and beverages industries to keep trade secrets, or to invent things so totally new that they can be patented, “trade dress” and other types of branding are especially important forms of intellectual property protection. A recent case, however, shows the challenges for maintaining Trade Dress protection in packaging. In this case, a court decided that the shape of a whiskey bottle had received too much exposure.
Most people who are knowledgeable in this field have heard that in the middle of the last century the Coca Cola Company was able to register the shape of its iconic bottle as a trademark. That launched a trend whereby packaging and other three-dimensional things could be registered as so-called “trade dress.” The costume of the robin that struts around some Red Robin Restaurants, for example, has also been a federally registered Trade Dress trademark.
More recently, Diageo North America had obtained federal trademark registration for the bottle design of its BULLEIT brand of bourbon whiskey. Diageo thought that W.J. Deutsch & Sons Ltd. was infringing its trade dress rights in its bottle, and brought a lawsuit.
W.J. Deutsch filed counterclaims, asserting that it was not infringing because Diageo did not have valid a trademark in the Trade Dress, for a variety of reasons. The federal court in New York agreed with W.J. Deutsch, although the legal battle is likely to continue.
Since Trade Dress is a category of trademarks, its function is to brand the product as originating from a particular company.
Trade Dress Must Be Almost Useless
One of the limitations in granting Trade Dress protection is that the Trade Dress aspects of the item cannot be functional. Protection of useful functionality is usually accomplished by patent law, and is subject to rigorous examination. It is beyond the scope of trademark law to remove functional items from the public domain where anyone can use them. Thus, even if a particular item is original, and is unique to one company, to the extent that it is functional it cannot be protected as Trade Dress.
The Court found that features that Diageo claimed as Trade Dress were in fact dictated by the function to be performed by the bottle. These included the clear glass which allowed consumers to view the color of the contents; the oval “old medicine bottle” shape, which makes it easier to hold the bottle and to put it in one’s pocket; the arched embossed text that was on the bottle that both allows visually impaired people to recognize the brand and also so that if the label comes off, the consumer still knows what he or she is drinking; and the geometric designs to bring the consumer’s attention to the name of the product.
In finding those elements to be functional, the court said those were strong enough arguments to deny dismissing the Deutsch’s counterclaim that Diageo’s claimed Trade Dress was not worthy of trademark protection, but is instead functional.
Have Others Diluted the Trademark?
One could fairly debate the court’s analysis and conclusions on at least some of the points stated above. What might have tipped the balance, however, was the issue of distinctiveness. As noted above, the function of a trademark is to brand the product as originating from a particular company. What happens when a trademark owner allows some other companies to copy its Trade Dress (or for that matter when any company allows any of its trademarks to be used by others)?
W.J. Deutsch claimed that Diageo abandoned its Trade Dress rights because there are other bottles on the market that look similar. W.J. Deutsch showed the court dozens of medicine bottles that look like the Bulleit bottle, including representative images of third-party alcohol bottles with clear glass, rounded shoulders, embossed words, arched text, text dividers, label borders, cork caps, black caps, and medicine bottle shapes with vertical sides. W.J. Deutsch concluded its presentation with the bottle for Highland Park whisky, which the court described as “displaying a combination of several elements of the Bulleit trade dress: clear glass, arched embossed text, and a cork bottle cap.”
By allowing others to use similar Trade Dress, Diageo had allowed the trademark to get weaker, argued W.J. Deutsch. The court agreed.
This is a principle of trademark law that applies not just to trade dress, but to word marks, design marks, and indeed to all trademarks. When a term becomes so widely used that the public at large considers it to be generic, the terms loses its legal status as a proprietary trademark. Thus, for example, the 3M Company’s “Scotch” brand cellophane tape became generic “scotch tape.” Similarly, “aspirin” and “escalator” were once trademarks, that also suffered the fate of so-called “genericide.”
While there are several implications of the Diageo case, the one that is most often overlooked is that unlike a patent, which substantially locks the owner’s rights in place when it is issued, trademarks require more regular maintenance. Monitoring and taking action when trademarks are being infringed is necessary if trademark rights are to be maintained, even in a registered mark.