Trademark Protection for Product Packaging: Key Legal Requirements
Product packaging and product configuration are two distinct aspects of intellectual property law. While both can be protected under trademark law, they have different requirements and legal standards. In this blog, we will examine the differences between product packaging and product configuration under trademark law.
Product Packaging
Product packaging refers to the physical appearance of a product package, which can include the design, shape, color, or graphics of the packaging. Under trademark law, product packaging can be protected as a trademark if it meets certain legal requirements. The Lanham Act, which governs federal trademark law, defines a trademark as “any word, name, symbol, or device, or any combination thereof” that is used to identify and distinguish goods from those of others.
To qualify for trademark protection, product packaging must be distinctive and non-functional. The Supreme Court has held that “the design of a product’s container or wrapper may be inherently distinctive, and thus capable of being protected without proof of secondary meaning, if it is arbitrary or fanciful.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
In other words, product packaging that is unique, creative, or imaginative may be eligible for trademark protection without the need to prove that consumers associate it with a particular source or origin. However, if the packaging is merely functional or necessary for the product, it cannot be protected as a trademark.
Product Configuration
Product configuration, on the other hand, refers to the arrangement or composition of a product’s functional or non-functional elements. Under trademark law, product configuration can also be protected as a trademark if it meets certain legal requirements. An example of a product configuration is the design and layout of a computer keyboard. While the individual components of the keyboard, such as the keys, switches, and wiring, may be functional and necessary for the keyboard to work properly, the arrangement of these components on the keyboard is not essential to its function. Therefore, the keyboard configuration may be eligible for trademark protection if it has acquired secondary meaning and is non-functional. For example, the QWERTY keyboard layout is a well-known configuration that is associated with specific brands and manufacturers.
However, the legal standards for protecting product configuration are much higher than those for product packaging.
In Qualitex Co. v. Jacobson Prods. Co., the Supreme Court held that product configuration can be protected under trademark law if it is “non-functional” and has “secondary meaning.” The Court explained that a product configuration is “functional” if it is “essential to the use or purpose of the article” or “affects the cost or quality of the article.” Id. at 165.
If a product configuration is functional, it cannot be protected as a trademark. However, if it is non-functional, it may be eligible for trademark protection if it has “secondary meaning,” which means that consumers associate it with a particular source or origin.
Overall, product packaging and product configuration are two distinct aspects of trademark law. While both can be protected under trademark law, they have different legal standards and requirements. Product packaging must be distinctive and non-functional, while product configuration must be non-functional and have secondary meaning. Understanding these differences can help businesses protect their intellectual property and avoid potential legal disputes.
Special thanks to our Partner, Jorge Franco, for the drafting of this blog post.