American law has long granted trademark protection to the shapes of products and containers. Perhaps the most famous example is the instantly recognizable Coca-Cola bottle, which is almost as important a trademark as the soft drink company's stylized name logo. (Trademark protection for the product shapes and containers should not be confused with the safeguards afforded by design patents).
But in one case, actions taken by two well-known companies brought the concept of product shapes into the headlines.
Zippo Manufacturing Co. announced that it received trademark protection for its cigarette lighters' distinctive rectangular shape in late 2002. The Pennsylvania manufacturer informed wholesalers and retailers that it intends to take action against merchants found selling lighters designed to mislead consumers by infringing on Zippo's trademarked shape.
The company contended that its authorized distributors and retailers have lost millions of dollars in profits over the years as a result of the sale of copycat products. It demanded that all infringing merchandise be removed from store shelves.
In another claim of trademark protection for a distinctively-shaped product, General Motors Corporation filed suit against Avanti Motor Corp., claiming that Avanti's Studebaker XUV infringes on the distinctive shape of GM's popular Hummer H2. GM argues that consumers will be confused by the similarity of the design of the two vehicles in violation of trademark law. Avanti responded that the design of the XUV is clearly distinct from that of the H2 and therefore causes no confusion among the buying public.
Traditionally, trademark protection is granted only to products or containers with a shape that is easily recognized by the public. In legal language, a trademark exists if the shape has developed a "secondary meaning" indicating it is associated with the company of origin. Although the above examples might seem to indicate that trademark protection only exists for well-known products or containers that have been around for an extended period of time, business owners should be aware that protection is becoming easier to obtain. Today, a distinctive shape may be seen as worthy of trademark protection after a short period of time on the market.
The implications of trademark law for container and product shapes affect businesses across all sectors of the economy. While manufacturers are protected against copying of their products and containers' shapes, intellectual property lawyers warn that businesses must also be careful not to copy the design of a competitor's product. In addition to manufacturers, merchants can be held liable for significant damages for selling merchandise that infringes on another company's trademark.
Although product shapes and containers are eligible for protection under trademark law, they may also be protected by a design patent as well. Not surprisingly, the coverage afforded by design patents differs from that provided by trademark law.
Design patents prohibit a third party from making, selling or using a product that infringes on a patented design. There is no requirement that companies show that a product or container's content is in any way similar to that of the protected design. Under trademark law, however, it is necessary to show that the infringing product or container could be confused with that of the company seeking the protection of the law. The buying habits of consumers are crucial in proving trademark infringement occurred. An intellectual property attorney can provide more information.
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