I confess. I successfully represented a private labeler against Chesebrough-Pond's Vaseline Intensive Care lotion and its familiar yellow bottle and label. But maybe there are some lessons that national brands can learn from the experience.
In the 1960s, the private label trade started producing their own versions of Vaseline Intensive Care-with yellow bottles; with green and yellow labels; and without objection from Chesebrough-Pond's. In fact, in the early years, some of the private label versions were supplied by Chesebrough.
National brands have often been lax and permissive in allowing private label growth around them. In defense of the national brands, imitation has not always been the sincerest form of flattery. Many times the national brands have faced the dilemma of protecting their trade dress by cracking down on some of their best customers who produce private label versions.
But all is not lost. Some store brands, like President's Choice (which our law firm has helped to protect) have created their own image without reference to a national brand. Is this a trend? Maybe in some categories. But private labelers will (rightfully, I contend) insist that they be allowed to continue labeling and packaging practices that have come to identify entire categories of products rather than a single national brand.
For example, one of our contentions in the Vaseline Intensive Care case was that Chesbrough had permitted so many private label versions of VIC that it could not now "recapture" a packaging and labelling image that had come to define a category of skincare lotions.
But national brands can win against private labelers if the private labeler lies, tries to deceive the public and is caught early before it establishes a color combination, bottle design or label as representing its own product or a product category, and if the national brand takes steps to protect itself.
I have a few tips (not intended to be exhaustive) for companies that want to establish a brand identity for their trade label, bottle design or package.
First, remember that trade dress is a broad term that includes both product labeling and product design. One of the issues we encountered in the Vaseline Intensive Care case was a rather indefinite notion of what Chesebrough was trying to protect as "trade dress." You will see that this theme of defining the trade dress you are trying to protect is central to my suggestions for a trade dress protection strategy.
1. Promote the trade dress in advertising ("Look for the Purple Bottle").
2. Be upfront with the trade about what you are claiming as trade dress. Don't try to set traps for unwary private labelers.
3. Create a trade dress that is new and different, not one with only subtle or inconsequential changes to existing trade dress. This rule is especially important where the brand has allowed itself to be surrounded by similar looking private label products in the past.
4. Use a proprietary legend on unregistered trade dress, like: "The design of this package and the label graphics are trademarks of .*.*."
5. Register the trade dress as a mark and then use a registration notice that clearly identifies the trade dress as a protected feature.
6. Make sure the trade dress you are claiming is nonfunctional. A revised bottle design that provides a distinct advantage over earlier bottles may be functional and not capable of protection as trade dress.
7. Using elements of new and old trade dress together is tricky if you have allowed private label competitors to use the old trade dress in the past. You can claim that a "revised" trade dress is protected but be clear in labeling and advertising that it is the combination of new and old elements that you are trying to protect.
8. Don't forget design patent protection. It is less expensive than a utility patent and may give you rights beyond trade dress protection.
9. Capture instances of actual confusion. Likelihood of confusion is the legal test for infringement. Everyone up and down the sales, advertising and distribution chain should be alerted to recording any suspected instances of confusion.
10. Consumer recognition of your trade dress will help you against imitators. Collect everything from quantitative research data to letters from satisfied customers who recognize your company as the source of a product with a unique trade dress. Trademark protection is largely based upon the "source" indicating function of the mark or trade dress for the product.
11. Don't let even a small competitor get away with infringement. That may act as a green light for your bigger competitors to infringe.
12. Don't blame me. I'm just a trademark lawyer. Cases are generally won or lost on the facts. Decide what trade dress you want to protect, set up a program to protect it and don't let other companies too close.
Mr. Kilmer is an intellectual property partner with the Washington law offices of Gadsby & Hannah.