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Appearances Can be Deceiving: Protecting Design

Albion Minerals®
 
CapsCanada
Deceiving Appearances Deceiving Appearances

Intellectual property is important to every industry, and the nutrition industry is no exception. Savvy executives are no doubt aware that patents and trade secrets protect product formulations and that trademarks protect their brand names and logos. However, they often overlook protection for the appearance of their products and their packaging. Design patents, trade dress and copyright each protect different aspects of the appearance, and do so at a reasonable cost. This protection can be critical to combatting counterfeits and me-too brands.

Design Patents

Design patents can protect the novel shape, color and markings on nutritional pills, tablets and capsules. For example, U.S. Patent No. D907760 protects the appearance of REMfresh melatonin supplements for 15 years from the date of issuance.

Design patents can also protect the appearance of the packaging for these supplements. For example, U.S. Patent No. D833,883 protects the appearance and placement of a leaf design on the package for New Chapter supplements.

Design patent applications must be filed within one year of the first public disclosure of the design. It takes about 20.4 months to obtain a design patent, and the allowance rate is just over 85 percent. Design patents provide 15 years of protection from the date of issuance, providing exclusivity until the design can be registered as a trademark.

Trade Dress/Trademark

The distinctive, non-functional appearance of a product and its packaging is protected trade dress. While trade dress will be protected by the courts against another’s use of the same or similar trade dress that is likely to cause confusion, it is advisable to document and secure this protection by registering it as a trademark. Registering trade dress as a trademark makes the trade dress easier for third parties to find and avoid, and it speeds up enforcement and reduces costs as the certificate of ownership is evidence of ownership and the exclusive right to use.

While design patents protect a design from the date of issuance, trade dress only protects a design that has become distinctive of the owner in the minds of consumers.

Reg. No. 5832336 protects the appearance of the same Refresh melatonin supplement protected by U.S. Patent No. D907760 (above): Trademark protection largely overlaps design patent protection with one important distinction: trademark protection lasts as long as the mark remains in use. Any distinctive, non-functional color, shape or designation of a product can be protected with a trademark registration.

Packaging color schemes and graphics can also be protected. Reg. No. 4816250 protects the blue color of the Beast Creature package; Reg. No. 5882812 protects the graphics on the Menta Biotics package; Reg. Nos. 6373743 and 6373744 the shape of the bottle and coap of Zarbee’s Naturals Immune Support; and Reg. No. 5,148,890 protects the blue and silver bands on Douglas Laboratories’ Eye Moisture Support.

Any distinctive, non-functional, feature of a nutritional product or its packaging can be protected with a trademark registration, and if it is something that customers recognize, it probably should be protected. Unlike design patents, which must be filed within a year of the first publication of the design, trademark applications on product and packaging features can be filed at any time, and in fact the longer the mark has been in use, the easier it can be to register.

Copyright

Copyright protects works of authorship, including written text, drawings and photographs—the staples of advertising and packaging. It is probably the favorite intellectual property right of most executives because it arises automatically when the work is created (with the intervention of the lawyers). There are two steps that greatly enhance copyright protection. The first is applying copyright notice, which consists of the © or the word “copyright,” the name of the copyright owner, and the year of first publication of the work. For example, the label on Acme Nutrition’s supplement first published in 2020 might have this notice: © Acme Nutrition LLC 2020. The second step is to register this copyright with the Copyright Office. The copyright exists even without registration, but registration makes it easier to enforce the copyright, and provides some valuable additional remedies against infringers.

The most difficult aspect of copyright protection is securing ownership. If Acme Nutrition’s label was created by regular employees of Acme Nutrition, no problem—the label is considered a work-made-for-hire, and Acme Nutrition is considered the author and owner of the copyright. However, if Acme Nutrition hired an individual or a company to help with the label—for example a photographer to provide the picture for the label, then things get complicated. The photographer, or her company, owns the copyright (even if Acme Nutrition pays the photographer), and Acme Nutrition must obtain an assignment of the copyright. Once this small but important detail is attended to, Acme Nutrition is in a position to protect itself against counterfeiters and me-too brands using copied text and graphics.

Considerations for New Products

In developing new products, a business should consider how to make the product and the packaging distinctive and take the appropriate steps to protect those distinctive features. Consistent, themed, graphics make the product easy to identify, and are relatively easy and inexpensive to protect. Filing design patents on the product and the packaging within a year of introduction, applying appropriate copyright notices and making the appropriate copyright registrations is the next step. Then, once the features are established in the minds of consumers, applying for trademark registrations to document ownership of the features and provide potentially infinite protection (trademark registrations last for 10 years, but can be renewed indefinitely as long as the mark is still in use).

Considerations for Existing Products

For existing products, the company should review what features about the product and its packaging are distinctive and recognizable by its customers, and then take steps to protect them. It may be too late to use design patents, which must be applied for within one year of the first public disclosure, but it is not too late to apply copyright notice (if the company has not already been doing so) and obtain copyright registrations. Moreover, it is the perfect time to apply for trademarks on the distinctive, non-functional features of the product and its packaging. In a fairly short period of time, and without spending a lot, the company can protect its product from counterfeiting, and simulation by the me-too brands.

Enforcement of Rights

In Oct. 2021, Windmill Health Products, LLC sued Force Factor in federal court in New Jersey. While Windmill was able to identify a number similarities between their packaging and Force Factor’s packing; Windmill’s position certainly would be stronger had its pursed design patents, trademark registrations and copyrights registrations on its trade dress.

Not all infringers are going to steal your name; many will just steal your identity by mimicking your product and its packaging. Fortunately, protection is available—particularly for those nutrition businesses that plan ahead. NIE

Bryan Wheelock is a principal in the St. Louis, MO office of Harness IP. He is a registered patent attorney whose practice includes the preparation and prosecution of patent and trademark applications for clients in diverse industries. Wheelock regularly drafts intellectual property agreements, such as non-compete agreements, and is a frequent speaker on the subject of intellectual property law.

Albion Minerals®
 
CapsCanada