The central purpose in trademark law is to protect against customers confusion as to the source of goods and services. A company's logo or the name of a product may serve to identify the company as the source. McDonald's Golden Arches, the red tab on a pair of Levi's and the term "Volkswagen" are just a few examples. But what about the design of a product when the design identifies the source of the product? Should product design be protected under trademark law?
The Coke bottle is a good example. In 1915, the Coca-Cola Company launched a competition in an effort to create a new bottle that would distinguish it from all other beverage bottles – a bottle people could recognize even in the dark. The contoured Coke bottle was born. But unlike the logo or name of a product, a bottle also serves utilitarian purposes: at the very least, it holds liquid. Should Coke be permitted to prevent all other soda manufacturers from using soda bottles? Obviously not. But what degree of protection should it be afforded for the design of its bottle? Should Coke be permitted to prevent others from using bottles that include contours, bottles that are the pinched middle, or bottles that use its green shade of glass? This is the subject of an area of trademark law called "trade dress."
Trade dress generally offers protection for a product or packaging that is both nonfunctional and distinctive. In the Ninth Circuit, to prevail on a claim for trade dress infringement, the plaintiff must show that: (1) it owns a protectable trade dress that is not functional, (2) the trade dress is either inherently distinctive or has acquired distinctiveness through secondary meaning, and (3) the defendant's trade dress creates a likelihood of confusion as to the source, affiliation, connection to or sponsorship of the product.
Context is critical to the analysis. The court may consider a list of discrete elements that make up the total image of the product. The list may include such features as size, shape, color, color combinations, texture and graphics. Courts will focus not on the individual elements themselves, but on the combination and arrangement of those elements and the resulting overall visual impression of the product or its packaging.
But even if the overall impression serves to identify the source, it still does not qualify for protection unless the design is nonfunctional. Functional features of a product are those that are essential to its use or purpose or affect its cost or quality. That is, if exclusive use of the features would put competitors at a significant non-reputation related disadvantage, the product's design is considered functional and is not protectable as trade dress.
To determine whether a product's trade dress is functional, courts collectively weigh four factors:
(1) whether the trade dress yields a utilitarian advantage;
(2) whether alternative designs are available;
(3) whether advertising touts the utilitarian advantages of the design; and
(4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.
None of these factors alone is dispositive. The inquiry is directed at whether the whole collection of elements taken together are functional.
Recently, the issue of trademark protection for a bottle design arose again, this time in the context of the packaging and design elements of the square FIJI water bottle. Judge Cormac J. Carney, of the U.S. District Court for the Central District of California issued a preliminary injunction against an alleged infringer.
The case was filed by the Fiji Water Company and its affiliates, who produce bottled water under the name "FIJI", against the Fiji Mineral Water USA and others who also produce bottled water under the label “VITI”. FIJI argued that the marketing and sale of VITI water in the U.S. irreparably harms FIJI by infringing on its trade dress. The court found that FIJI met its burden and that the consuming public was likely to be confused into believing that they are purchasing bottled water that is made by or affiliated with FIJI. The court issued the preliminary injunction to prevent that confusion.
VITI argued that the FIJI bottle was not protectable trade dress because of the functionality of the bottle's square design. However the court explained that even if VITI established that the square shape of the FIJI bottle is primarily functional (because it wastes less space in packaging so more cases of water can fit into a shipping container), VITI failed to meet its burden of proving functionality because it only focused on a single element rather than “the overall visual impression” of the trade dress as a whole.
FIJI argued that its trade dress is primarily based on aesthetic elements, including: (1) a three-dimensional effect of its transparent label, (2) the use of tropical foliage on the inside back label, (3) the placement of a pink accent in the lower right corner of the front label, (4) the use of a stylized raindrop, (5) the use of white block letters, and (6) placement of the word FIJI and the phrases “From the islands of FIJI/NATURAL ARTESIAN WATER” in the upper third of the front label. The court found that none of these elements affect the “actual benefit” that consumers wish to purchase and that the combination of aesthetic elements identifies the bottle as the FIJI brand.
There was also substantial evidence that commercially feasible alternative designs exist and that providing trademark protection to the FIJI bottle design would not hinder competition. Several other brands also use square-shaped bottles and several brands use tropical foliage elements and some of the other elements, but none of them combined all the elements together with the font and three-dimensional effect like the VITI bottle.
There was also evidence that FIJI's trade dress was not the result of a simple or inexpensive method VITI alleged that FIJI advertised the utilitarian advantages of the square bottle shape in a 2001 Newsweek article that interviewed the founder and former CEO of FIJI. The article reported that the FIJI square bottle shape was designed to save shipping costs and to "look cool." But the overwhelming majority of FIJI's advertising does not tout the square bottle shape and instead focuses on the water's purity and other features of the water itself.
Simply stated, the court found, all four factors weigh in favor of a finding that FIJI's bottle and label trade dress is non-functional.
The case is Fiji Water Company, LLC, et al. v. Fiji Mineral Water USA, LLC, et al., U.S. District Court, Central District of California, Case No. SACV09-1148 (Sept. 30, 2010).
Final note: In 1977, the U.S. Patent & Trademark Office registered Coca-Cola's "distinctive bottle" design, U.S. Reg. No. 1,057,884.
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