By Jon Lee Andersen

An interesting and not frequently discussed part of trademark law deals with trade dress, which is defined for a product as "the total image of a product, including size, shape, color or color combinations, texture and graphics. The packaging for products is a frequent source of trade dress disputes. This article is based around a rather recent decision of a Federal Court of Appeals in Pennsylvania, and will be of particular interest to any readers who design packaging for private label brands. Typically these products are sold using Trademark of the Seller, but sold right along side those of other national sellers of the product. A good example, and the products involved in the case, was the store brands of grocery stores artificial sweeteners and the Splenda brand sold by McNeil Nutritional, LLC. McNeil alleged that the store brands of certain grocery stores (Food Lion, Giant, Safeway and Wal-Mart) infringed on their trade dress for Splenda.

The court decision gives an interesting history of artificial sweeteners, beginning with saccharin based products (Sweet 'N Low), aspartame based products (Equal) and the newest, sucralose based products (Splenda). It noted the distinctive color schemes that the products adopted, describing a typical restaurant table top, with sugar in white or brown packets, Sweet 'N Low in pink packets, Equal in blue packets and Splenda in yellow packets. It then described the trade dress for Splenda as sold in the stores: the background is yellow, and the name Splenda, in italicized blue lettering appears in the top center, surrounded by a white oval-shaped cloud. The lower right side of the front of the package has a white coffee cup and saucer with a packet of the product resting in the saucer, and the left side has a picture of a pitcher of iced tea and a glass. Finally, at the bottom left was a circular element which contained the text "Made From Sugar, Tastes Like Sugar."

The packaging allegedly infringing, varied a bit from store to store, but in all cases the package was yellow, the trade name adopted by the store was on the package, in a couple of cases there were white areas (not quite clouds) and pictures of cups, saucers and fruits. A house mark of the stores was also displayed.

The crux of trade dress contests is whether the trade dress of the two products is so similar that it will create a genuine likelihood of confusion in the minds of consumers as to who is manufacturer of the product. The part of the case I thought would be of value to my readers was the listing by the court of the factors they consider in determining this issue. They listed 9 primary matters of consideration:
1. The degree of similarity between the trade dress
2. The strength of the plaintiffs trade dress
3. The price of the product and the care and attention expected of consumers
4. the length of time the defendant has used its trade dress without actual confusion
5. the intent of the defendant in adopting the trade dress
6. Any evidence of actual confusion
7. 7. Whether the products are marketed in the same channels and advertised in the same media
8. The extent to which the targets of sales efforts are the same
9. The relationship of the products in a consumer's mind because of the similarity of the trade dress

In this case the court affirmed most of the lower court's decision that there was no infringement. In the decision the judge made an interesting comment, worth remembering for those working on design of private label packaging, when he stated, "store brands can "get away" with a little more similarity that other defendants when they display prominently a store specific signature on packages; but they cannot copy the national brands to such a degree of similarity and then merely affix a tiny differentiating label and become immune to infringement actions."

The lesson here seems to be, you can get very close, so long as you put your clients house mark prominently on the package.

Honestly put another way:

I copied your colors, fonts and design
Then I put all my boxes next to your line
And while you advertise
I cannibalize
And customers think yours, but buy mine

© November 2008 Jon Lee Andersen All Rights Reserved