CHAPTER 2 - § 2.03

• Jurisdiction: United States

§ 2.03 PRODUCT PACKAGING

Product packaging may be defined as the overall "look and feel" of a product. There are many different types of product packaging, including restaurant décor, colors, sounds, scents, textures, flavors, and business methods.

[1]—Décor

The seminal case on both internal and external décor is the Supreme Court decision in Two Pesos, which will be discussed in detail in Chapter 4.²¹ Two Pesos dealt with the décor of two competing chains of Mexican restaurants, Two Pesos (the plaintiff) and Taco Cabana. Even though Two Pesos's trade dress was unregistered, they ultimately succeeded at trial by arguing that the trade dress was inherently distinctive. Interestingly, the jury found that Two Pesos's trade dress had not acquired secondary meaning based on the evidence presented at trial.²² Thus, the entire case hinged on the issue of whether trade dress in décor could be inherently distinctive. The Supreme Court held that it could,²³ Two Pesos prevailed, and a wide world of litigation over décor was laid open.

We encounter décor trade dress virtually every day—whether going out to eat, going to the drugstore, or taking a vacation to Las Vegas.

[a]—External Décor

External décor represents the goodwill of the business to the passerby. To many, the colors red and yellow and a set of yellow arches represent a type and quality of food. Merely seeing that décor evokes a certain feeling within the observer. This is the essence of trade dress in external décor. However, external décor is not limited to color schemes and signage—elements of architecture may also be protected. Three examples of such architectural trade dress are shown below.

The drawing above comes from U.S. Trademark Reg. No. 3,232,036 assigned to McDonald's Corporation for "restaurant services." The mark is described as "the configuration of [a] barrel roof in the color yellow. The matter shown in broken lines serves to show positioning of the mark and is not a feature of the mark."

The drawing above comes from U.S. Trademark Reg. No. 3,095,532 assigned to Walgreen Co. for "retail drug store services." The mark is described as "the shape of the building from which the services are provided. The mark is three dimensional and has a trapezoid shaped front protruding from the top of the building to form the entrance. Three sides of the trapezoid are fashioned by using glass windows."

The drawing below is from U.S. Trademark Reg. No. 3,195,978 assigned to Wynn Resorts Holdings, LLC, for "casino services." The mark is described as "a three-dimensional building with concave facade, a curved roofline sweeping up toward the left top corner when viewed from the front and the word WYNN' in a stylized script in the top left corner. The horizontal lining does not indicate color, but is a feature of the trade dress."

These registrations evidence the intersection between trade dress and other areas of intellectual property. In many cases, the unique architecture of a building is protected by copyright. However, where the architecture is so unique so as to be associated with a single source, trade dress protection is also available. One obvious benefit to trade dress protection is that it is unlimited, whereas copyright protection is tied to the life of the creator or author.

[b]—Internal Décor

Just like external décor, internal décor may also include elements of color, signage, and architecture. It may comprise something as simple as a color scheme, or may combine one or more of the above elements with certain colors.

Following the theme of Mexican restaurants set by Two Pesos, the drawing below comes from U.S. Trademark Reg. Nos. 3,105,875 and 3,128,649 assigned to Chipotle Mexican Grill, Inc., for "restaurant services." The mark is described as

the appearance and design of the interior of a restaurant evoking a neoindustrial feel through the use of unpainted galvanized or stainless steel metal finishes on table and bar tops, baseboards, wainscots, and trash surrounds; light-colored natural wood finishes as accents on table and/or chair edges, bench seating, wall finishes, and/or chairs; and the use industrial-look light fixtures with exposed electrical junction box fitting and porcelain keyless bulb sockets suspended from the end of electrical conduit pendants. The representation of a restaurant dining room shown in dashed or broken lines forms no part of the mark and merely serves to show the position of those items on the mark.

The Chipotle registration makes clear that the overall feel of a business may be protected ("neoindustrial"), as well as accents such as metalwork ("unpainted galvanized or stainless steel metal finishes"), woodwork ("light-colored natural wood finishes as accents on table and/or chair edges") and lighting ("industrial-look light fixtures with exposed electrical junction box").

[2]—The Overall Look and Feel of Packaging

As one might expect, the overall look and feel of packaging combines elements of color, shape, and presentation. There are some color schemes and presentations that call out to us as consumers, despite any wording that may also appear in connection with the product. Some notable examples are shown below.

The above drawing is described as "the cover of a book in which the background is the color yellow and the horizontal and diagonal stripes are the color black." For some this description will immediately call to mind how they first got acquainted with Moby Dick or War and Peace, via the Cliffs Notes. The Cliffs Notes brand is now owned by Wiley Publishing, but to the ordinary consumer, there is little difference in what they come to expect from the product. This trade dress is protected by U.S. Trademark Reg. No. 2,503,644 for "books, tutorials, and study guides."

The drawing shown above may not look like an M&M candy, but it is in fact the drawing from the trade dress registration for a product described as "the color green applied to the surface of a candy piece with a white stylized letter 'M' depicted in the center." Mars Incorporated ("Mars"), the owner of the M&M brand, actually maintains six separate trade dress registrations for each of the colors orange, red, blue, yellow, and green.²⁴ The green M&M shown above is protected by U.S. Trademark Reg. No. 3,352,030 for "Confectionery, namely, candy."

Mars also has trade dress protection in the overall packaging for M&Ms.²⁵ In 2002, a court in New York found that Mars's unregistered product packaging trade dress in "a brown, for plain, and yellow for peanut, paperbased rectangular package" along with the words chocolate candies (and some other elements) were inherently distinctive, in granting a preliminary injunction against a company using similar packaging but selling under the name Rocklets.

[3]—Sounds

Trade dress in sound is infrequently claimed, but there are some notable examples. Some readers may recall Harley-Davidson 's fight with the U.S. Trademark Office to register the alleged unique roar of its motorcycles, which ultimately ended with Harley withdrawing the application.²⁶ However, other companies have had success registering sound marks. The descriptions for the NBC chime and the AFLAC duck sound are shown below.

"The mark comprises a sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the 'G' being the one just below middle C, the 'E' the one just above middle C, and the 'C' being middle C, thereby to identify applicant's broadcasting service" (Registration No. 916,522).

"The mark...