Celebrate the New Year with Champagne and Trade Dress!

Introduction:

Trade dress is one form of intellectual property. It is a type of source identifier (i.e., trademark) that applies to the design or packaging of a product or service. Unlike traditional trademarks, which protect words, names, or symbols, trade dress refers to the visual appearance of a product that signifies its source to consumers. This could include the product’s size, shape, color, texture, or even the unique way it’s presented.

Here are several examples of trade dress for well-known products and services:

·       The curved and fluted lines of a certain iconic soda bottle have become a classic example of trade dress, recognized globally for its unique shape.

·       A minimalist retail store design featuring a spacious layout, large glass facades, and sleek, modern furniture, embodying a high-tech, contemporary aesthetic.

·       High heels with a distinctive red sole, providing a striking contrast to the shoe’s color signifying style and luxury.

·       The combination of golden arches, a red and yellow color scheme, and a specific arrangement of seating and counters for a famous fast-food chain.

·       A distinctive robin’s egg blue box with a white satin ribbon has become synonymous with luxury and exclusivity in jewelry packaging.

Wine brands benefit from trade dress, as well. By way of example, can you identify a specific champagne house when I provide the following description:

The mark consists of the following features on a three-dimensional configuration of a green bottle: the top and neck of the bottle are covered in gold with black and gold borders; on the neck of the bottle, in front, is a small red diagonal band in the nature of a ribbon, higher on the left than the right, with the ends of the band curling; below that is the word “MUMM” in vertical black letters; at the upper center of the front of the bottle in gold is the design of an eagle with a crown and outspread wings perched on a branch; below that is a prominent red diagonal band in the nature of a ribbon that extends diagonally, higher on the left and lower on the right from one side, across the entire front of the bottle, and onto the other side; beneath the red band, the surface of the bottle is sculpted with rippling protrusions and indentations that render the red ribbon three-dimensional; below that in gold are the words “G.H. MUMM”; . . . .

U.S. Registration No. 5096014 (emphasis added). If the description above was not enough, perhaps the graphic below will assist:

By now, hopefully you identified the trade dress above as that of G.H. Mumm. We visited Mumm’s champagne house earlier this year during a visit of Reims, France.

In this post, we will explore some trade dress issues with G.H. Mumm as our example.

Section 1: Defining Trade Dress

Trade dress refers to the visual aspects of a product design or packaging that make it distinctive. This can include a wide range of elements such as the product’s shape, color scheme, texture, graphics, and overall design. For example, the distinctive red ribbon on G.H. Mumm’s bottle is recognizable worldwide and is protected as trade dress. Under the Lanham Act, which governs trademarks and trade dress in the United States, trade dress is given the same level of protection as traditional trademarks. In addition to the legal requirements discussed below, the trade dress owner must be able to articulate the trade dress.

Here, G.H. Mumm and other brand owners must be able to identify their trade dress. Consider, for example, the descriptions provided above. Brands cannot simply point to their product design packaging and say “Look, that is our trade dress.”

Section 2: Importance of Trade Dress in Branding

Trade dress is an important component of branding and marketing strategies. It is more than aesthetics: it is about creating an identity that resonates with consumers. A unique and well-designed trade dress can make a product stand out on a crowded shelf, build brand loyalty, and even become iconic over time. According to G.H. Mumm,

Georges Hermann Mumm made a decision that would shape the destiny of his champagne house. Paying tribute to his prestigious clients, he had the neck of every bottle of his Cuvée Brut decorated with a red silk ribbon. This decoration was inspired by the red sashes bestowed upon those distinguished individuals receiving the highest of French honours, the Ordre Royal et Militaire de Saint Louis and the Grand Cordon de la Légion d’Honneur. Beyond the visual strength of the Cordon Rouge, this decision firmly established Maison MUMM as an ambassador of the Champagne spirit, in due recognition of its accomplishments.

We felt quite distinguished during our tour of the champagne house and I think the experience conveyed elegance. When consumers encounter G.H. Mumm’s red ribbon, they are reminded of these feelings. These visual cues help consumers identify and connect with the brand, fostering a sense of familiarity and trust.

Section 3: Requirements for Trade Dress Protection

There are legal requirements when establishing trade dress rights, including distinctiveness and non-functionality.

Distinctiveness: Trade dress must be unique enough to identify the product’s source. Initially, the trade dress may be inherently distinctive, or it may acquire distinctiveness over time through extensive use and promotion. Eventually, it may have acquired ‘secondary meaning’ in the minds of consumers. Some trade dress is never inherently distinctive (e.g., color, product design). Wine bottles such as the G.H. Mumm trade dress identified above can be inherently distinctive. Courts and the USPTO consider four factors when assessing whether the bottle design is inherently distinctive:

(1)  Whether the applied-for mark is a “common” basic shape or design

(2)  Whether the applied-for mark is unique or unusual in the field in which it is used

(3)  Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods

(4)  Whether the applied-for mark is incapable of creating a commercial impression distinct from the accompanying words

In re Pacer Tech., 338 F.3d 1348, 1350 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii).

G.H. Mumm has addressed the distinctiveness of its bottle design and addressed these factors previously. It previously stated:

Part of the shape of the bottle is unique and capable of trademark significance. Specifically, at the center of the bottle’s body, a red band or ribbon is painted directly onto the glass in a diagonal that extends from one side of the bottle, across the entire front and onto the other side of the bottle. As viewed from the front of the bottle, the diagonal is higher on the left and lower on the right. The glass underneath the painted ribbon is sculpted or embossed so that the glass protrudes and indents in a wavy pattern, resulting in a three-dimensional ribbon that is rippling from the glass. Such treatment of the glass is unique. [G.H. Mumm’s] design is not a mere refinement of a commonly-adopted or well-known format for a particular class of goods.

The red diagonal ribbon (or “Cordon Rouge”) has been a prominent feature of [G.H. Mumm’s] branding in connection with champagne and sparkling wine for more than 130 years in the U.S. [G.H. Mumm] owns a number of U.S. trademarks for, or incorporating the red ribbon, including Reg. Nos. 0395907 and 4645957, and others. The current mark merely renders [G.H. Mumm’s] longstanding and well-known “Cordon Rouge” brand directly onto the bottle (as opposed to a label, for example), and in a three dimensional form. As such, the instant mark creates a distinctive commercial impression that is strongly associated with [G.H. Mumm’s] brand and immediately identifies the source of the goods.

Response to Office Action, U.S. Trademark Application Serial No. 86439722 (Aug. 26, 2015).

Non-functionality: The elements of trade dress cannot be functional. That is, they must not be essential to the use or purpose of the article or affect the cost or quality of the article. This requirement ensures that patent law, not trade dress, protects useful product features. For example, a winery would likely fail to establish trade dress rights in a textured bottle that makes it easier for consumers to grip and pour wine from the bottle. The textured bottle is functional and therefore not protectable trade dress. By contrast, the red ribbon and other aspects of G.H. Mumm’s trade dress above are non-functional.

For wineries and other businesses to secure trade dress protection—or enforce their trade dress in court—they must demonstrate that the trade dress is distinctive and non-functional. These requirements are often complex, requiring significant evidence and sometimes consumer surveys to establish that the public associates the trade dress with a particular source.

Section 4: Registering Trade Dress

Registering trade dress with the United States Patent and Trademark Office (USPTO) can provide an additional layer of protection. The process is similar to trademark registration but requires a specific focus on the visual aspects of the product or packaging. Applicants must provide a clear and precise description of the trade dress, along with representations or drawings that illustrate the unique features they seek to protect. A trademark examining attorney will review the application to ensure it meets the criteria for distinctiveness and non-functionality. The registration of trade dress, like other trademarks, grants the owner several benefits, including the following listed by the USPTO:

·       [Trade dress] is listed in our database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. They will see your [trade dress], the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered.

·       Legal presumption that you own the [trade dress] and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.

·       Can use your registration as a basis for filing for [trade dress] protection in foreign countries.

·       Right to bring a lawsuit concerning the [trade dress] in federal court.

·       May use the federal trademark registration symbol, ®, with your [trade dress] to show that you are registered with us. This may help deter others from using your [trade dress] or one too similar to yours.

·       Record your registration with U.S. Customs and Border Protection (CBP). They can stop the importation of goods with infringing [trade dress].

Section 5: Enforcing Trade Dress Rights

Once trade dress is registered, enforcing these rights becomes crucial in preventing unauthorized use by competitors. If a business suspects infringement, it can take legal action to enforce its rights. The remedies available in cases of trade dress infringement can include injunctions, which prevent further infringement, and monetary damages for any losses incurred due to the infringement. Enforcing trade dress rights can be challenging, as it often requires demonstrating that consumers are likely to be confused by the similarity between the two appearances. However, successful enforcement not only protects the business but also strengthens the trade dress’s distinctiveness.

Section 6: Tips for Businesses

For wineries and other businesses looking to develop a protectable trade dress, here are some tips that may help:

·       Focus on creating a unique and distinctive appearance that does not serve a functional purpose.

·       Document the process of designing and using the trade dress, including consumer research, design choices, and marketing strategies.

·       Consider the longevity and consistency of the trade dress’s use in commerce, as this can help establish secondary meaning.

·       Regularly monitor the market for potential infringements and enforce your rights where necessary.

·       Maintain and document the distinctiveness of trade dress over time is crucial. Regularly review and update trade dress registrations to reflect any changes or evolution in the design.

Conclusion:

Trade dress is an important component of a wine business’s intellectual property strategy. It provides businesses with the opportunity to protect the unique visual aspects of products and packaging, which can be integral to brand identity and consumer recognition. By appreciating and leveraging this form of intellectual property, businesses can maintain a distinct and recognizable presence, contributing to their overall success.

If you would like to discuss trade dress for your wine or business with an experienced trademark attorney, schedule a consultation here.

*In case you wanted to confirm, the trade dress examples at the beginning of this blog included: Coca-Cola, Apple, Christian Louboutin, McDonald’s, Tiffany & Co. and Hershey’s Kisses.