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The Zest

A Competitor’s Package Looks Like Yours: What Trade Dress Protects and What to Do First

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A look-alike package can be a trade dress problem, but only if your packaging is distinctive, isn't functional, and the resemblance is likely to confuse shoppers. The first step is a review of both packages and your history with yours, not a letter and not a post. At Citrus Legal that review starts with a paid consultation, and if there's a case, a cease and desist letter is a flat fee.

Here's how I think about it when a client sends me two photos from a store aisle.

Your name and your package are two different rights

The word on the front of the box is a trademark. The overall look of the box is trade dress. The USPTO's manual describes trade dress as the "total image and overall appearance" of a product, and it counts as a "symbol" or "device" under the Trademark Act, which is why it can be registered. The manual treats product packaging and product design as two kinds of trade dress, and they're handled differently, which matters below.

So when a competitor copies the colors, the layout, the bottle shape and the way the label wraps, but uses their own name, your word mark may not reach it. That's a trade dress question. If they also used a name close to yours, that's the easier claim, and the article on someone using your business name covers it.

What has to be true for the package to be protected

Three things, and the first two are about your package, not theirs.

It can't be functional. If a feature does a job, like a grip, a spout or a shape that stacks on the shelf, nobody gets to own it as trade dress. The USPTO calls functionality "an absolute bar to registration on either the Principal or the Supplemental Register," and says that once a design is found functional, "claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant." In court, for trade dress you haven't registered, the statute puts the burden on you: "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional."

It has to be distinctive. Here's where packaging and product design split. The USPTO manual says "a mark that consists of product design trade dress is never inherently distinctive." The shape of the product itself only gets protection once you can show it has come to identify you, what the law calls acquired distinctiveness. Packaging is treated more generously; the manual notes "product packaging may be inherently distinctive," so a striking, unusual package can be protectable from the start. And the manual says that in close cases, courts should treat the trade dress as product design, which means you'd need the harder showing. A plain kraft box with a white label is going to struggle. A package that looks like nothing else in the category has a better start.

The resemblance has to be likely to confuse. The federal claim is for use of a design that "is likely to cause confusion, or to cause mistake, or to deceive" as to the "origin, sponsorship, or approval" of the goods. Shoppers in the aisle have to be likely to pick up theirs thinking it's yours, or think the two come from the same company. "It reminds me of ours" isn't the test. The article on dupes looks at how that line gets drawn when the products are deliberately similar.

Gather the evidence this week

Whatever we end up doing, these are the things that decide it, and they're easier to collect now than later.

Photograph both packages on the shelf, side by side, in the store, with the date. Keep the receipt. Buy one of theirs. Pull your own history: when the package first went on sale, where it's been sold, how many units, what you've spent on marketing that shows the package, any press that describes the look. That history is what proves acquired distinctiveness if we need it, and it's what shows you were first.

Write down any confusion you've actually seen: a customer who tagged the wrong brand, a retailer who shelved them together, a review that mixes them up. Real confusion is the strongest evidence there is, and it evaporates if nobody records it.

Don't post, and don't send your own letter

The instinct is to put the two photos on social media and let your customers do the work. Don't. A public accusation can expose you to a claim of your own, and it tells the competitor exactly what you're thinking before you've decided what you can prove. The same goes for an angry email from the founder. A demand that overstates your rights can be used against you, and a demand that understates them gives away ground.

The first step is a review. I look at both packages, your sales and marketing history, whether the features you want to protect do a job, and whether anything is already registered on either side. Then we talk about whether a letter makes sense, and what it should ask for. The cease and desist page explains what that costs and how it works.

Register the package before the next copycat

If the review shows you have protectable packaging, register it. A registration on the Principal Register means you don't carry the burden of proving non-functionality in court the way you do with an unregistered trade dress, and it puts the claim on the public record where the next competitor's attorney will find it. The application needs a drawing and an accurate description of what you're claiming, which is a different drafting job from a word mark. The article on scent, color and packaging marks explains what those applications look like.

And make sure your word mark is already filed. For most brands, the name is the stronger, cheaper right, and it's the one a buyer asks about. The article on trademark steps before your first retail order covers that sequence. If your package has a real look of its own, trade dress is the second layer, not the first.

Seed is a $650 clearance search with a written opinion. Grove is $2,600: the search, the opinion and the federal application, with procedural Office Actions included. USPTO fees are separate, $350 per class.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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