It is entirely possible to register trademarks for shapes and containers even though such marks are inherently incapable of distinguishing the specific goods from other brands. However, through extensive use, these types of marks may very well acquire distinctiveness and act as a unique source identifier to consumers.
For instance, roughly 100 years after it was first released, Chanel is seeking to register the shape of its No.5 fragrance bottle as a trademark in the U.S. – initially refused in a non-final Office action by the USPTO since "the mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness." The examiner also said that "the shape is a common or basic shape that is not unique or unusual in the fields of cosmetics, fragrances, perfumery, and Eau de parfum".
One might ask if you have a unique shape, or container which is seemingly, unique and you intend to register a trademark for such goods, how would you go about acquiring distinctiveness for such a shape or container?
In this regard, it is important to remember that there is a large overlap between the various intellectual property rights capable of protecting your products. One such overlap is between registered designs and trademarks.
For instance, a registered aesthetic design protects the appearance of an article – which must be new and original and capable of being reproduced by an industrial process. Registered aesthetic designs afford protection for a period of 15 years. Yet, it is possible to obtain a trademark for such a product if it has already acquired distinctiveness. Consequently, the same product is susceptible to multiple forms of intellectual property protection.
Therefore, should you have a unique shape or container for your goods, it would be advisable to apply for an aesthetic design. Once the aesthetic design is registered you will enjoy protection for the use of thereof for a 15-year period to the exclusion of others. Perhaps, during this period, and with extensive use of such a registered aesthetic design, your product may be able to acquire distinctiveness in the eyes of the consumer.
By first obtaining registered design protection you may provide your shape and or container with the required time and leverage to obtain distinctiveness which will then enable you to obtain a registered trademark for your shape or container – and that trademark can be perpetually renewed!
One cannot help but wonder; had Chanel registered an aesthetic design back in the day, might the USPTO have had a different approach as the container might have acquired distinctiveness through extensive use during the afforded design protection period?
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
