Coca-Cola discovers small design changes can mean lack of protection of product designs: protecting product shapes and appearances
How Famous is the Coca-Cola bottle design? Not quite enough to protect small differences 
Design patents are an increasingly useful tool in product configuration protection, but as Coca-Cola recently learned, even a famous product design has its limits. As surely everyone knows, Coca-Cola owns a protected famous trademark for it’s original hour-glass bottle shape featuring fluted ridged lines. Earlier this year, however, the European Union (“EU”) Court denied trademark protection to Coca-Cola for a newly evolved, smooth shaped bottle. The Coca-Cola Company v. Office from Harmonisation in the Internal Market (Trademarks and Designs)(OHIM) 2016.
Under EU law, a trademark may consist of “the shape of goods”, as long as the shape is distinguishable from other third-party products. Coca-Cola’s original hour-glass bottle featuring ripple contours is “one of the most famous shapes in the world… is so distinctive it could be recognized in the dark” Coca-Cola stated. However, the EU court found that Coca-Cola failed to establish that the new smooth bottle design had acquired distinctive familiar connection and character through use.
Coca-Cola originally developed the fluted contoured bottle in the U.S. in 1915 to distinguish its bottle from competitors making similar bottles. Cola-Cola developed a glass “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.” After several years of continuous use the unique distinction and recognition lead to trademark protection.
The new smooth bottle shape maintains the hour-glass bulge in the center of the bottle consistent with the original bottle shape, but does not feature the rippled contours that brought the original bottle its worldwide recognition. Although Coca-Cola argued that the smooth bottle is “a natural evolution” of the traditional bottle, both the EU Trademark Office in 2014 and the EU court in 2016, denied the request for trademark protection.
Strategies to Secure Initial Product Appearance and Shape Protection via Design Patents
Similar to the EU, U.S law also allows for trademark protection of product configuration and packaging that acquire distinctiveness over time. See Section 43(a) of the Lanham Act, Section 15 U.S. Code 1051. However, the design must gain “secondary meaning” as the Supreme Court has ruled that “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning”. See Walmart v. Samara.
Design patents can fill this “use” gap – as they also have the ability to protect unique product appearance and packaging at initial launch of products. This form of protection can serve as the first line of protection to claim ownership of distinctive shapes before the established passage of time that later may provide a basis for prolonged customer recognition which eventually may be used to establish trademark protection for the source of origin of the product. While design patent protection has a definitive term of protection– 15 years (See Manual of Patent Examining Procedures (MPEP) 1501), trademark protection, once established, may continue perpetually so long as the trademark is in use.
Coca-Cola first obtained U.S. design patents on its ornamental bottle shape in 1916, and again on it’s redesigned contoured bottle in 1923 and 1937. Design patent protection at that time lasted 14 years (currently 15 years). Years later in April 1960, after the product gained established customer recognition over time, Coca-Cola obtained federal trademark registration for its fluted contour bottle shape, thereby enabling the company to protect its fluted bottle design indefinitely with continuous use and protecting the iconic bottle that it is today.
If Coca-Cola is seeking to protect its new bottle shape in the U.S., one avenue may be to investigate the availability of design patent protection for the initial protection of the new bottle shape, and then look to secure trademark protection after prolonged continued use of the product. This strategy faired well for Coca-Cola in obtaining initial design patent protection and then continued trademark protection of its original rippled bottle shape.
Discussing these concepts in the current age – the design elements of product are becoming very important. For example, Apple protected its iPhone design and recovered significant damages against Samsung for infringement. Car manufacturers have recently filed claims against game manufacturers for digitizing their car shapes into a game. See as an example BMW v Turbosquid.
Should you seek Design Patent Protection for the Appearances and Shapes on Products or Packaging?
A protectable design must be manifested in the appearance of the product and consist of “visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” MPEP 1500 et seq.; 35 USC 171 et seq. Design protection is based on specifically drawn product figures made in accordance with the U.S. Patent Office Rules, and submitted to the U.S. Patent Office with a patent application in order to identify the legal metes and bounds of the protected design. If you are interested in preventing others from making, using, selling or importing the same or similar product shape or appearance, you may want to engage a patent attorney to investigate whether design patent protection may be available for your product or packaging. An investigation generally consists of a preliminary search and initial evaluation of your product shape or appearance as being new, novel and non-obvious in order to meet the requirements of the U.S. Patent Office.
Should you Trademark the Appearance and Shape of Products or Packaging?
You do not need to register a trademark with the U.S. Trademark Office to establish trademark rights. Protection is established through use of the trademark. However, without federal registration, the trademark is only enforceable in the geographic area where the product is sold. A federal registration on the principal register, however, provides additional advantages and is likely beneficial in most cases primarily because a federally registered trademark on the principal register establishes nationwide priority throughout the entire U.S. Therefore, registration ultimately gives you the right to prevent others from using or registering your trademark nationwide and provides notice to third-parties of your registration. It should be noted that even with principal register trademark protection you cannot prevent someone in a remote location where you do not actually market or sell your product from using a trademark or product design that is confusingly similar until you actually enter that market. A registered trademark is also presumed valid and may eliminate certain invalidity arguments after 5 years of continuous use (incontestability).
How to Register Appearances and Shapes on Products or Packaging:
In order to register your product shape or packaging in the U.S. Patent and Trademark Office, as a trademark your packaging or product design must have acquired secondary meaning – that is, unique, original, and recognizable by consumers as the source of origin. Can the public identify your company as the source of origin of the product or the packaging by its distinctive features?
In addition, the trade dress must not be functional. See generally, Manual of Trademark Examining Procedures (TMEP) Section 1202.02 The original Coca-Cola bottle design met all of these requirements (i.e. the fluted ridges did not serve a significant function in the product, but rather were merely ornamental).
If a product design or packaging is not inherently distinctive it can still be registered after it acquires distinctiveness through long use, known as secondary meaning.
There are three ways that a mark itself may be inherently distinctive—if its intrinsic nature serves to identify a particular source.
1) Fanciful trademarks, such as a made-up word (Xerox- a created name with no other meaning than acting as a trademark);
2) Arbitrary trademarks, having no relation to the product other than as a means of identifying the company that produces it (Apple computers- a word in the English language not related to the product);
3) Suggestive trademarks, providing a link between the characteristics of a particular product and its producer (Microsoft- suggestive of software for microcomputers).
Generally, any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product.
To prove that the trademark product or packaging has acquired distinctiveness through secondary meaning, a mark must be shown to be distinct in the minds of the consumer and with a recognizable source of origin. Proving distinctive secondary meaning, however, is often expensive and legally challenging and often involves consumer surveys for recognition.
If you are interested in filing a design patent and/or registering your product configuration or packaging with the USPTO, you should contact an attorney to investigate, advise, and file an application for your product or packaging for registration.
Should you need assistance with design patents or trademark protection, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC at: Pamela@olivergrimsley.com
More information may be found on the following websites:
http://www.uspto.gov/trademark
http://en.wikipedia.org/wiki/Trade_dress
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