True Colors Shining Through: Update on Protection for Product Packaging and Its Impact on the Nutrition and Food Industry

Product Packaging

The nutrition and food industry has long struggled to protect product and packaging designs from competitors and copycats seeking to trade on their looks. But even after committing significant resources to creating a design that will resonate with the public, companies may find it hard to convince the U.S. Patent and Trademark Office (USPTO) or a federal court that their packaging is worthy of trademark or trade dress protection.

Protecting shapes and colors is particularly challenging because trademark law seeks to prevent monopolizing of common words, shapes or colors. However, the Court of Appeals for the Federal Circuit, which oversees the USPTO, may have opened a narrow window for nutrition and food brands. The court reversed the USPTO’s refusal to register the following multicolor mark, owned by Forney Industries (though the case dealt with packaging for welding and machining products, it is applicable to all industries): Before the Federal Circuit’s decision, the USPTO had operated under the presumption that (1) product configuration and color marks are not inherently distinctive (i.e., worthy of protection based on their unique design and impressions) and, therefore, (2) one seeking protection must show that the packaging or color configuration had become recognized by consumers through years of exclusive use, promotion, commercial success or other indicators. This requisite consumer recognition is often referred to as “secondary meaning” or “acquired distinctiveness.” Nutrition and food product packaging presents fundamental obstacles, given the common use of certain shapes, colors, and functional elements (for example, the color green for natural or herbal products, clear packaging or “windows,” or common shapes such as a heart for health-related products). Even well-known package designs, like the iconic Coke bottle or the turquoise Tiffany box, needed to meet the secondary meaning threshold. In contrast, unique brand names are considered to be inherently distinctive and are accorded almost automatic protection (for example, Zoom for videoconferencing or Charmin for toilet paper).

After carefully reviewing precedential trademark cases, the Federal Circuit found that the U.S. Supreme Court never explicitly “addressed whether a multicolor mark applied to product packaging can be inherently distinctive.” Therefore, there was no blanket prohibition, as previously assumed, against registration without proof of secondary meaning. While colors standing alone (i.e., without the packaging) are not inherently distinctive, the combination of multiple distinct colors on packaging may be protectable. Prior to this decision, the nutrition and food industry typically acted in accordance with the USPTO’s practices and court precedents, often only trying to protect or register multicolor marks until after building sufficient consumer recognition through years of exclusive use, advertising, and sales. By way of example, although Bio-Engineered Supplements & Nutrition, Inc. had been using a multicolor mark on its NITRIX dietary supplements packaging since 2005, it waited until 2010 to file an application to register the multicolor mark. The USPTO refused to register the multicolor mark initially and only registered it once Bio-Engineered proved acquired distinctiveness by pointing to its exclusive use of the mark since 2005 coupled with its advertising efforts and sales.

Nutrition and food brands creating new packaging should understand that this is a fairly narrow decision and, more importantly, it retains the basic legal principle that the analysis of the uniqueness of any particular packaging design must be judged on the combination of colors and placement on packaging. Last fall, a Tennessee federal court found a clear juice bottle to be protectable because it included the shape of the bottle and certain design elements on the label. In a few cases, the USPTO has registered designs without requiring the owner to show the mark has attained consumer recognition (the Centrum “rainbow band” or the Coca-Cola “wave”).

Although somewhat narrow, the Appellate Court’s decision may profoundly impact the nutrition and food industry because packaging often contains multiple colors, like the red, blue and green panels on the JIF peanut butter label, for which the J.M. Smucker company submitted extensive evidence of 50 years of market presence to overcome the USPTO’s original refusal. Additionally, this decision serves as a reminder to those in the industry that packaging is not merely functional. Rather, the “look and feel” of it is often an important branding asset. With this in mind, brands should seek to develop unique and distinctive packaging that can serve as a protectable trademark or trade dress.

Therefore, when creating packaging for new products or a brand relaunch, a guiding principle for designers (and legal teams) is whether they can convince the USPTO or a court that the proposed mark is not just a “color mark” requiring proof of long-term use, sales, and advertising but is also a “symbol” designating the origin of the goods. Put another way, the overall impression created by the combination of colors and the pattern created by those colors still must be sufficiently unique to identify the source of the goods inside the package, just as the brand name does.

It remains to be seen how the USPTO and federal courts in other circuits will interpret this case. Time after time, cases like this one embolden brands to file trademark registration applications. Indeed, food companies may start filing applications to register multi-color marks they are using, or plan to use, on their products’ packaging. But we may have to wait for some USPTO actions on specific cases before the full impact is realized. The case is In re Forney Industries, Inc., Fed. Cir. No. 19-1073 (April 8, 2020). NIE

James Donoian, a partner in the New York, NY office of McCarter & English LLP and a member of the firm’s Intellectual Property Group, has counseled clients for more than 25 years on various global intellectual property and brand management issues. He can be reached at jdonoian@mccarter.com. An associate in the firm’s Boston, MA office, Alexander L. Ried focuses his practice on intellectual property and business litigation. He can be reached at aried@mccarter.com.