Corrugated box design found to be functional, trade dress application denied. REELEX PACKAGING

A trademark is traditionally thought of as a word, phrase or symbol that a manufacturer places on their products. However, just about anything that signals to consumers the identity of the company that produced a product can be granted trademark protection.

The packaging that contains a product can be registered as trade dress. Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Thus, trade dress includes the shape of a product.

Registering trade dress is slightly more complicated that a normal trademark application. When an applicant applies to register a product design or other trade dress, two substantive issues are considered: (1) functionality; and (2) distinctiveness. If the design of a product is essential to the use or purpose of the product or if it affects the cost or quality of the article it is functional and cannot be registered. However, the analysis for functionality does not stop there.

To determine whether a particular design is functional, a court will consider the four factors from In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) which are:(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) facts pertaining to the availability of alternative designs; and (4) facts indicating that the design results from a comparatively simple or inexpensive method of manufacture.

Gaining trademark protection for a product design can be difficult however the benefits of registration of a product design as a trademark out weight the cost of the registration process.

IN RE: REELEX PACKAGING SOLUTIONS, 2020-1282 (C.A.F.C. 2020) is a case where packaging was deemed functional and not eligible for trade dress protection.

Applicant in this case is a manufacturer of specialized coiling machines that use a patented method of winding a filamentary product (such as cord, wire, cable or tubing) into a figure-eight coil. Applicant licenses patents and trademarks associated with this winding technology to wire and cable manufacturers. Licensees use proprietary winding machines that are designed, manufactured, and patented by Applicant, and use Applicant knowledge to wind the cable and wire into finished coils of cable and wire. A key feature of the proprietary winding machines is the figure-eight pattern of the finished coil that allows the wire to be dispensed from the box without kinking and tangling. The finished coils are then packaged into a “Reelex Box.”

In December 2016, Applicant filed two applications seeking to register the box designs shown above for coils of cables and wire. The examining attorney refused registration, finding the trade dress functional and nondistinctive. The examining attorney further found that the designs do not function as trademarks to indicate the source of the goods identified in the applications. Applicant appealed to the Trademark Trial and Appeal Board.

The Board affirmed the examining attorney’s refusal to register on two grounds: functionality and distinctiveness. The Board explained that certain features of these boxes are clearly dictated by utilitarian concerns, including: (1) the rectangular shape of the boxes . . . which is useful for shipping and storing; and (2) the built-in handle in the ’412 design, which makes it easier to lift and carry the box. The Board then went on to consider the four Morton-Norwich factors and found evidence to support each of the factors. Applicant then appealed to the Court of Appeals for the Federal Circuit.

On appeal the Applicant’s primary argument was that the Board erred in denying the trade dress application because there were alternative designs available. The Federal Circuit noted that availability of alternative designs does not determine whether a feature is functional. The Board concluded that the applied for trade dress are simple basic boxes with utilitarian features, that means the boxes are functional. Applicant’s competitors need not look for
alternative designs. The Federal Circuit affirmed the Board’s decision because there was no legal error in the functionality analysis and because the Board’s conclusion was supported by substantial evidence

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