What’s More Important: The Product or the Package?
In Some Cases the Box is More Valuable Than What’s Inside It.
A staple of Valentine’s Day is a heart-shaped box of chocolates complete with a red ribbon. Your Valentine feels special when untying the ribbon, lifting the lid, and inhaling the aroma of chocolates to be enjoyed.
Admit it: those chocolates taste just a little bit better with because of the fancy presentation.
While many of us cherish the chocolate contents, lawyers focus on the heart-shaped box. Did you know the heart-shaped box is a protected design under U.S. trademark law?
The Rich Dark Chocolate Facts
A design can be functional (and thus protected under the law) because of its decorative aspect. This value is called Aesthetic Functionality. It basically means that a purely aesthetic feature of a product (like a heart-shaped box) which does not affect the product’s function (holding delicious chocolates) can be protected as a trademark.
Aesthetic functionality exists only of the aesthetic value “only if it confers a significant benefit that cannot practically be duplicated by the use of alternative designs.”
In other words, your sweetheart is at the store to select your Valentine’s Day gift. His/Her choices are between the heart-shaped box and an odd triangular box of chocolates. No contest, right? The alternative design of a triangular box is not capable of satisfying the aesthetic desires of prospective purchasers. The heart-shaped box is an important factor in the appeal of the gift to you even though both boxes contain the same type and amount of chocolates. Thus, the heart-shaped box is a protected trademark.
Not all aesthetics can be protected as trademarks
In 2011, Mattel, Inc. and MGA Entertainment fought over the intellectual property rights to the pouty-lipped, urbanized Bratz dolls, including their packaging, which were trapezoid-shaped boxes with bright patterns and colors. Although the boxes were unique, the court concluded the aesthetical function of the Bratz boxes were not protected under trademark law.
Why? MGA failed to link the box shape and appearance to its product, the Bratz dolls. This is known as source identification. MGA failed to market so consumers would identify the trapezoid-box shape and color solely with the Bratz product. The court specifically stated MGA failed to mention the shape or coloring of the boxes in the Bratz advertisements and MGA failed to feature the supposedly unique box design in news articles or press releases relating to the Bratz dolls. (As a side note, I was looking for an image of the Bratz box for this enews and the Bratz website does not display the box when advertising its dolls.) Without this important link, MGA did not adequately protect its rights in this aspect.
Trademark law can be complex. Dodge Legal Group, PC can help you through the process. Contact us for more information.