Trademark, Copyright & IP

Protecting Product Design:
What Does Your Advertising Say?

May 2004

By Susan M. Richey*
for New Hampshire Business Review

Product manufacturers or distributors interested in protecting the design of their products as proprietary should pay particular attention to the messages communicated in their advertising.

Product advertising is a reliable source of circumstantial evidence for purposes of determining whether a design feature acts as trade dress and can be protected under the trademark laws against copying by a competitor. (Trade dress, one type of trademark, often refers to the packaging, shape or overall appearance of a product.) Protection may be sought either through registration with the U.S. Patent and Trademark Office or through a court action alleging infringement by a competitor. In either case, product advertising will be consulted to determine whether the materials tout the superiority of the design element for purposes of use, cost, or quality of the product and whether they direct the consumer’s attention to the design element at issue. Both determinations are relevant to the issue of trade dress protection.

The first determination focuses on the issue of functionality. A design element that contributes to the product’s superior use or quality or reduces the producer’s costs is functional and cannot be protected under the trademark laws. The policy underlying this prohibition is the desire to stimulate fair competition in the marketplace.

For example, allowing a bicycle rack manufacturer to assert trade dress rights over the undulating shape of its bicycle rack runs the risk of foreclosing competition if the shape lends itself to more efficient bicycle storage than traditional rectangular-shaped racks and if it reduces injuries to children because of the absence of sharp corners.

Two recent cases emphasize the importance of advertising messages as a way of deciding whether trade dress protection is functional and, therefore, its protection would hinder fair competition.

Talking Rain Beverage Co. sued the makers of the SoBe bicycle water bottle for infringement of its trademark bottle shape, which features a recessed grip area above the middle of the bottle. The U.S. Court of Appeals concluded that Talking Rain’s bottle shape was functional-based, in part, on the company’s advertising campaign that utilized the slogan “Get a Grip!” The company asserted that that slogan was a double entendre, referring not only to ease of grip but also to the slang expression for “get in control.”

The court rejected the argument because at least one clear meaning of the slogan had to do with the ease of gripping the bottle, a significant competitive advantage in the product niche of bicycle bottles.

A final refusal of the USPTO to grant a federal trademark registration to Gibson Guitar Corp. for the design of its guitar body was upheld based primarily on the company’s product advertising. The following advertising copy was deemed to tout the competitive advantage of the guitar’s unique shape:

“The new Epiphone Advanced Jumbo (AJ) acoustics are different from any other ordinary dreadnought guitar. Our AJ body shape not only looks more like a bell, but also rings like a bell. The more rounded upper bout produces sweeter highs while the broader waist and wider lower bout creates more powerful lows ... [T]his unique body shape creates a sound which is more balanced and less “muddy” than other ordinary dreadnought acoustics.”

The Trademark Trial and Appeal Board declined to accept the company’s explanation that the advertising was mere puffery and pointed out that “the clear import of the advertisement is that the shape of the guitar is what produces a better musical sound” than that emanating from competitors’ instruments.

Apart from the issue of functionality, the content of advertising helps determine whether or not product design exhibits enough distinctiveness to perform a branding or trademark function.

The U.S. Supreme Court has taken the position that product design is not capable of acting as a trademark unless the consuming public has been trained to understand a particular design element as denoting one distinct source of the goods — an understanding known as secondary meaning. Typically, product manufacturers and distributors attempt to develop secondary meaning in the minds of consumers through the medium of advertising.

The U.S. District Court in New Hampshire recently adopted a magistrate’s recommendation regarding the import of promotional materials submitted by Annalee Mobilitee Dolls Inc., a distributor of hand-crafted, soft-sculptured dolls, in support of its assertion of trade dress rights.
The recommendation characterized the purported trade dress — the facial features of Santa Claus dolls — as follows:

“[S]creen-printed features made to resemble hand-made brush strokes; line art on the face that features spike eyebrows, a serrated moustache flowing to upturned points that do not connect with the beard, white highlights on the cheeks, lips, eyes, and nose; and heightened rosiness on the cheeks with an airbrushed look, intense in the center and fading toward the edges.”

Because Annalee’s advertising mentioned only “the famous whimsical expressions” of the company’s dolls and did not emphasize the details listed above, the magistrate opined that the advertising was not probative of secondary meaning. In other words, because Annalee did not utilize its advertising explicitly to draw the public’s attention to the specific Santa Claus facial features, the magistrate had no confidence that the consuming public had been trained to regard such details as denoting a brand of hand-crafted, soft-sculptured dolls.

When the producer of a product attempts to assert trade dress rights in the product’s shape or other design element, the advertising for that product undoubtedly will come under scrutiny. For this reason, it is incumbent upon trade dress proponents to monitor their promotional materials and make certain that the advertising conveys the message intended and does not undermine the desire for trade dress protection.

* Susan Richey, Of Counsel, is admitted in California.

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