You are probably familiar with using trademarks, trade secrets and even utility patents to protect culinary innovations. But, you might be surprised to learn that many companies also turn to intellectual property rights to protect the appearance of their food products and packaging—specifically through design patents and trade dress rights.
Design Patent Rights
In the last twenty years, the U.S. Patent and Trademark Office (USPTO) has issued more than 1,100 design patents for edible products and over 14,000 design patents directed to packaging (although this is packaging of all types, not just for food). So-called “edibles” design patents include Breyer’s Viennetta frozen dessert,1 Wrigley’s Eclipse gum,2 and Kraft Foods’s shaped pastas, including a map of the United States of America,3 a dinosaur,4 and a magic wand.5 Food packaging design patents include the Pom Wonderful bottle,6 Kraft Trio Snackfulls containers,7 Red Bull’s aluminum can tabs,8 and the Anheuser-Busch metal “bottle.”9
Design patents provide the owner with a right to exclude others from using the design (or a substantially similar design) for 15 years after the design patent issues. In the United States, design rights must be issued by the USPTO; there are no “unregistered” design patent rights. For the USPTO to approve a patent application, the design must have ornamental aspects, be new and not an obvious variant over existing designs (known as the “prior art”), and be clearly depicted in the figures that accompany the application. In addition, the applicant may not have publicly disclosed or used the design for more than one year before the patent application is filed. So it is important to keep your patent rights in mind when you are planning to start promotional activities, pilots, or “soft” launching a new food design or package design, because these activities will likely start the one-year clock ticking.
In 2010, Heinz launched its Dip & Squeeze ketchup packet. Hailed as the first upgrade to the ketchup packet in more than 40 years, this invention allowed diners to either “squeeze” their ketchup from a packet, as they have done for years, or “dip” their food into their ketchup receptacle. To protect its innovation, Heinz filed for utility and design patent protection10 as well as trademark rights in the name.
U.S. Design Patent D641642, Condiment container
Similarly, Sugarfina, a luxury boutique candy retailer, has also looked to design patents to protect its unique “Bento Box” packaging scheme. While Sugarfina sells many different types of candy, the company has chosen to protect its packaging (which is consistent across its entire product line) with design rights. To date, Sugarfina has a portfolio of eleven issued U.S. design patents (along with related foreign design rights in various countries).
U.S. Design Patent D755,641, Packaging
Trade Dress Rights
Design patents must be secured within one year of debuting a design publicly and issued patents expire after 15 years. If you decide to protect your design after the one-year window passes or plan on using the design long into the future, trade dress protection may be an option.
Trade dress is a type of trademark that allows protection for the appearance of a product (such as food) or product packaging under certain circumstances. Once trade dress rights have been established, the rights endure as long as the owner continues to use the trade dress in commerce, theoretically, forever. While it is possible to register trade dress rights with the USPTO, which offers certain legal benefits, it is also possible to attain and enforce unregistered rights.
To be registrable, a trade dress must be used in commerce as a distinctive source identifier, meaning that consumers associate the appearance of your product with a single source (such as your company). Developing this “secondary meaning” takes time and often registration will require evidence proving consumer recognition of the claimed trade dress as a source identifier as opposed to a merely ornamental or functional feature. This evidence can take the form of ads suggesting that consumers “look for” the particular shape and color, media coverage of the design, significant sales, long periods of use, etc. And finally, trade dress for which protection is sought must pertain to non-functional features (those essential to the use or purpose of the product). This additional functionality consideration is in place to avoid creating a monopoly on utilitarian subject matter that would ultimately be designated to the public under the patent regime.
Pepperidge Farm introduced its orange, cheese-flavored “Goldfish” snack cracker in 1962. Nearly three decades later, in 1991, Pepperidge Farm registered the shape of the Goldfish cracker with the USPTO. Then, in 1999, a court in New York issued a preliminary injunction against Nabisco, keeping Nabisco from selling another orange, cheese-flavored goldfish-shaped cracker.11 In the process, the court determined that the Pepperidge Farm’s Goldfish was distinctive and “famous” and therefore protected by federal law from trademark dilution.
Combining More Than One IP Right
Design patents, trade dress rights, and even copyrights are not mutually exclusive. Indeed, many companies use all of these rights to protect their most important designs. With respect to design rights and trade dress rights, some companies first secure design rights for their products because this provides protection without proof of secondary meaning, giving the company time to develop trade dress rights without interference from their competitors during the term of the design patent.
Recently, Sugarfina filed suits against multiple competitors claiming infringement of its design, trade dress, and copyright rights in certain product packaging, including its Bento Box. Below is an image from Sugarfina’s complaint against Bouquet Bar, Inc.12 In its complaint, Sugarfina alleges that Bouquet Bar has adopted Sugarfina’s trade dress, including its clear top cube with patterned band label and its series of clear cube wells spaced apart from one another within the product packaging; uses a two-cube packaging that is substantially the same as Sugarfina’s design patent; and copied its labels and other specific graphical elements. The case was filed in 2018 and is still pending.
Sugarfina’s Alleged Trade Dress and Bouquet Bar’s Accused Packaging
You have many options to consider for protecting the appearance of food and food packaging innovations. While the options are different, in many cases, they are complementary. When possible, it may be best practice to secure both a design patent and trade dress registration. If, however, you don’t know how long the design may be used or if it will be successful, opting for a design patent offers important protection that can be obtained relatively quickly. If you are past the one-year mark, then trade dress rights may be your best bet. Either way, taking steps now to protect your product can give you options in the future if needed.
Endnotes 1 D486951 (Food product, especially an ice cream cake)
2 D539007 (Elliptical confectionary tablet)
3 D525,411 (United States of America shaped food product)
4 D517,772 (Dinosaur-shaped food product)
5 D515,272 (Wand-shaped food product)
6 D565,413 (Bottle)
7 D714,660 (Package)
8 D533,775 (Beverage can tab, with stylized bull design cutout in dark blue color)
9 D739732 (Metal beverage bottle)
10 D641642 (Condiment container); 9,061,796 (Multi-function condiment container)
11 Nabisco, Inc. v. PF Brands, Inc.50 F. Supp. 2d 1888 (S.D.N.Y. 1999).
12 Sugarfina, Inc., v. Bouquet Bar, Inc. et al, Case No. 8:18-cv-1305 (C.D.C.A. filed July 27, 2018).