In early 2019, the beauty and skincare brand Glossier Inc. filed two trademark applications with the United States Patent and Trademark Office (USPTO) relating to the packaging of its goods. The first application was filed with respect to its pink-lined boxes, with the colour pink claimed as a feature of the mark. The second application relates to the pink bubble wrap pouches also used to package the goods. Both applications were filed for the same goods and services – cosmetics, makeup, skincare products, and the like.
INITIAL REFUSAL BY THE USPTO
On July 24, 2019 and August 28, 2019, the USPTO responded to the bubble wrap trademark application and to the application for the pink-lined boxes with initial refusals.
With respect to the pink-lined box trademark application, the USPTO argued that the colour mark was not inherently distinctive. As stated by the USPTO, colour marks are never inherently distinctive and can only be registered if there is sufficient proof of acquired distinctiveness. This was not the case for Glossier. Specifically, the Office points the applicants to different versions of pink-branded boxes sold with beauty and cosmetic products, including various goods from Kylie Cosmetics. Since consumers are accustomed to seeing the colour pink used on packaging for cosmetic and beauty goods, the USPTO states that consumers are likely to believe that the pink colour is a decorative feature, rather than attributable to a particular owner.
The pink bubble wrap was also refused by the USPTO, specifically due to the fact that the packaging appears to be a functional design, as outlined in section 2(e)(5) of the US Trademark Act. The applicant’s specimen demonstrates that the circles that appear on the packaging are a type of cushioning that is generally used as a protective feature for the goods being stored. Therefore, a central feature of the packaging has a specific utilitarian function. Further, the Office notes that the mark consists of a non-distinctive configuration of packaging that is not registrable without sufficient proof of acquired distinctiveness.
With the increase of social media and influencer marketing, brands continue to distinguish themselves from competitors based on the packaging of their products. When sending products to influencers and public figures, companies are aware that the “unboxing” process may be shared on the influencer’s social media feed, likely reaching a large number of highly engaged followers. If the product that is sent is promotional or advertised, a video of the influencer unboxing the goods may even form part of the sponsorship agreement.
Brands use this unboxing experience as a way to reach new and existing consumers. This is especially relevant with respect to millennial consumers. It is unsurprising that brands like Glossier, who have built an identifiable, prevalent and consistent brand image, are seeking trademark protection for their investment in their product packaging.
Although the both of the Glossier’s marks have been refused registration, Glossier may respond to the refusals contained in the USPTO office action by submitting evidence and arguments in support of registration within six months. Given the increasing and prevalent use of product packaging to appeal to consumers and define a brand’s image, it is likely that trademark applications such as Glossier’s will continue to be filed in the USPTO and in other jurisdictions, including in Canada.
Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.
Responses were filed for both office actions, overcoming the initial refusals for both applications. The “pink-lined box” mark (“box”) was published for opposition on September 29, 2020—it does not appear that anyone opposed this mark within the applicable 30-day timeframe. Accordingly, it should proceed to registration. The “pink bubble wrap pouch” mark (“pouch”) was registered with the USPTO on August 25, 2020.
The functionality objection for the pouch was overcome by changing the application description and drawing—the solid lines depicting the bubbles of the bubble wrap were amended to dotted lines, illustrating how air bubbles are not claimed features of the mark. Instead, the mark consists of the claimed colour pink, applied to the packaging. The non-distinctiveness objections for both the box and pouch (the “packaging”) were overcome by filing extensive evidence of acquired distinctiveness, showing that when a relevant consumer sees the packaging, they immediately attribute it to Glossier. For example, Glossier filed an abundance of customer declarations asserting recognition of the packaging as source indicators.
I agree that we will likely see more applications for packaging designs and similar branding strategies in the future. Glossier’s designs demonstrate how unique product packaging can serve as source indicators, as revealed through consumer brand-recognition and acquired distinctiveness, enabling such designs as effective trademarks worthy of registration. Nevertheless, the provision of trademark registrations for packaging designs should be approached with caution to avoid creating monopolies over functional characteristics that should be left to be enjoyed by many.