Registering Store Design as a Trademark in the United States and Germany:
A Comparative Analysis
Nicolas Hohn-Hein
Why Louboutin Matters: What Red Soles Teach Us About the Strategy
of Trade Dress Protection
Anne H. Hocking and Anne Desmousseaux
Trade Dress versus Design Patents:
Understanding the Different Tests for Infringement
Bryan K. Wheelock
Deliberate Differentiation: Strategies for Creating and Protecting
Iconic Designs (How Planning Trumps Serendipity in Pursuit of
The Real Thing and Other True-Life Stories of Design Protection)
Joshua Cohen and Rex Donnelly
Karen Millen Fashions Ltd v. Dunnes Stores, Dunnes Stores (Limerick) Ltd:
Clarifying the Assessment of Individual Character in EU Designs
Richard Hing and Leighton Cassidy
Commentary: Faux Amis in Design Law
Sarah Burstein
Commentary: Should Implementation of the Hague Agreement Cause
United States–Based Owners of Fashion Designs to Double Down on
Their Dual-System Filing Strategies Under the Lanham Act and Patent Act?
Jessica Elliott Cardon
November–December, 2015
Vol. 105 No. 6
Vol. 105 TMR
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DELIBERATE DIFFERENTIATION:
STRATEGIES FOR CREATING AND
PROTECTING ICONIC DESIGNS ∗
(HOW PLANNING TRUMPS SERENDIPITY IN
PURSUIT OF THE REAL THING AND
OTHER TRUE-LIFE STORIES OF
DESIGN PROTECTION)
By Joshua Cohen ∗∗ and Rex Donnelly ∗∗∗
When given a choice between $1 now or “taking her chances
on the tooth fairy,” Ruthie Cohen took the buck. My young
daughter had been questioning her belief in the tooth fairy
and outright asked me to confirm it. Though she was
clinging to hope for her tooth, Ruthie worried that faith
alone was not a good plan. She wanted to take some
control over her pulled tooth, and in the end she elected
certainty. Ruthie wanted to believe the tooth fairy would
swing by later and slip a dollar gently under her pillow,
but chose not to rely solely on serendipity.
While design innovators hope that their products will
enjoy good fortune in the marketplace, the beauty of their
designs will not, by itself, ensure that result. Even the
efforts of the most talented designers are not
automatically destined for success. Beautiful designs can
fail to enjoy long-term success if they fail to differentiate
from the competition and if that differentiation cannot be
preserved and protected. Serendipity alone is not a plan.
Product designers and their legal teams should instead
execute strategies designed to differentiate and protect
their product offerings and should do so deliberately.
That’s what The Coca-Cola Company (“Coca-Cola”) did in
creating, protecting and promoting its bottle design, now
universally recognized as a powerful source identifier. As
Coca-Cola celebrates the centennial of its iconic bottle
∗ An earlier version of this work was presented by Joshua L. Cohen at the Tsinghua
International Design Management Symposium, held in 2009 at the Academy of Arts &
Design of Beijing’s prestigious Tsinghua University, and was subsequently published by Mr.
Cohen in that Symposium’s peer-reviewed DESIGN2BUSINESS Proceedings.
∗∗ Shareholder, RatnerPrestia, Valley Forge, Pennsylvania, Associate Member,
International Trademark Association.
∗∗∗ Shareholder, RatnerPrestia,
International Trademark Association.
Wilmington,
Delaware,
Associate
Member,
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design, product designers, marketing professionals, and
intellectual property counsel should pause to examine its
origins and reflect on—and pay homage to— Coca-Cola’s
achievement. As we explain below, the success of this
iconic design is attributable to more than just good fortune
in the marketplace; instead, the Coca-Cola bottle
represents a case study in deliberate differentiation. It
stands tall among other examples in confirming that
product designers, working together with counsel, can do
more than rely on hope alone. If companies plan for and
purposefully deliver differentiation, and then protect and
promote it, they can guide the forces that create iconic and
unique designs.
© 2015 The Coca-Cola Company.
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I. INTRODUCTION
To succeed in the modern marketplace, firms face a growing
pressure—or even imperative—to offer unique product designs,
protect that uniqueness, and sustain the competitive advantage
that uniqueness confers. Over the past century, product design has
evolved from an esoteric discipline appreciated by a select few to a
business imperative discussed in the boardroom.
Being first-to-market with an innovative product design
provides a competitive edge that can boost market share and grow
profit margins. But, unless steps are taken to preserve design
exclusivity, that competitive edge can erode quickly once
competitors and other “fast followers” enter the marketplace.
Successful designs will be emulated or outright copied, while
global manufacturing networks and agile distribution channels
have diminished the time-to-market for imitations. And when the
market quickly resorts to cost-based competition, the market
advantages and profit margins once associated with the original
design evaporate. The full commercial value of the original design
innovation is thus left unrealized if it can be copied without
recourse.
Innovators must therefore find ways to parlay the first-tomarket competitive edge of innovative designs into robust and
sustained commercial assets, by securing exclusive rights to
recognized design features. Intellectual property (“IP”) counsel can
and should strive to facilitate (if not proactively promote) these
efforts. Intellectual property counsel should help promote product
differentiation and commercial success by working with design
teams and brand managers throughout the design process, by
adopting and executing strategies for creating unique designs, and
by protecting IP rights in design innovations comprehensively.
Such strategies include planning for and obtaining utility and/or
design patents and consciously delineating the scope of each with
an eye toward realizing sustained trade dress protection, as well as
shaping promotional campaigns to raise consumer awareness of
the source of unique design innovations.
Uniqueness of design—or design differentiation—is a
fundamental component of success of product offerings in the
marketplace. In a commercial sense, design efforts are much more
than creative endeavors to pursue beautiful form. They are
business initiatives that, when successful, will secure sustained
commercial advantages, generate valuable business assets, and
feed the bottom line. Put simply, every design effort has a returnon-investment, or “ROI.” Sustained design differentiation
transforms design innovations into long-lasting commercial assets,
allowing firms to parlay the first-to-market competitive edge of
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innovative designs into robust and sustained commercial
advantage.
By analyzing time-tested design icons, designers and legal
practitioners alike can understand the true meaning of design
differentiation, follow best practices for securing and sustaining
differentiation, and execute practical plans for integrating design
and business strategies. Through case studies of time-tested
design innovations that have succeeded (some more than others) in
achieving iconic status, we will illustrate the power of design
differentiation and how it fuels success in the marketplace. These
case studies also help IP counsel to better understand how they
can facilitate innovation and play an active role in promoting the
creation of innovative designs that stand out in the marketplace.
II. PURSUING DIFFERENTIATION BY DESIGN
Though its benefits are pursued relentlessly, design
differentiation is a concept that defies simple definition. But it is
deserving of thoughtful explication—both in terms of what it is
and what it does. To answer what it is, design differentiation must
be seen in the context of the relationship among competing designs
within a particular product category. But to answer what it does, it
is best viewed from the perspective of the competitive advantage it
confers—a perspective from which design is viewed as a business
tool for generating valuable IP and business assets rather than
simply as an aesthetic endeavor.
Design differentiation is borne from the space interposed
between a design innovation and the designs of others. This
contemplates not only the advance made over prior designs but
also the distance from competitive designs concurrently offered in
the marketplace. Ultimately, design differentiation creates an
enviable gap between one’s product offering and those of
competitors. It is the attribute that establishes a relationship
between a product and its consumers. In today’s branding lexicon,
it is the psychological reaction to the cognitive touch-points of the
user experience. 1 And just how design elements communicate
meaning to consumers is the subject of the emergent field of design
semiotics.
Design innovations take many forms, including creative
product and packaging designs, functional features of products and
manufacturing processes, graphics, source-identifying symbols,
artistic and literary works, and valuable commercial secrets.
Various regimes for protecting these innovations are provided by
law. Utility patent, design patent, trademark, trade dress,
copyright, and trade secret rights each advances different policies
1. James G. Conley, The Competitive Edge: Using Brand Identity to Reinforce Market
Value, Innovation J. IDSA, December 2005.
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and provides distinct protections. Utility patents and trade secrets
can protect technology innovations and slow the activities of
competitors—at least until they find a way to act outside the scope
of the patents or until technological advances render the
innovation obsolete. Design patents provide a limited monopoly to
the ornamental qualities of product offerings. The exclusivity
provided by design patents can also buy time to establish
secondary meaning in the subject design, thus achieving
exclusivity for a potentially infinite amount of time. Strategic use
and promotion of trademarks can also help build and sustain a
brand.
Design innovations are protectable in a number of ways under
U.S. law and under the various global treaties to which U.S. law
conforms. A utility patent confers exclusive rights covering novel
and non-obvious functional features of a design, for twenty years
from the patent’s filing date. A design patent confers exclusive
rights for the ornamental design of an article for fifteen years from
the date the design patent is granted. Generally, preserving patent
rights in a design requires filing a patent application before the
publication, 2 use or other unprotected disclosure of the design,
including one or more applications at least preserving rights in all
countries of interest by certain deadlines. The distinction between
design patents and utility patents parallels form and function—a
utility patent protects “the way an article is used and works” while
a design patent protects “the way an article looks.” 3
Copyright protection confers exclusive rights in the design of a
useful article for the author’s life plus 70 years (or for works made
for hire for the shorter of 95 years from first publication or 120
years from creation). The design of a useful article is protectable
by copyright “only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.” 4 Copyright
rights attach at creation, and are worldwide in scope, without a
need to file for registration to preserve rights (although
registration may be required prior to enforcement in some
countries, such as in the United States).
This work primarily focuses on the “holy grail” of IP
protection—trade dress—capable of enduring indefinitely 5 to
protect non-functional and distinctive design elements that serve
2. U.S. AIA 35 U.S.C. § 102(b)(1) provides for a limited 1-year grace period to file a
patent application after public disclosure, but most other countries provide no such grace
period.
3. Manual of Patent Examination Procedure § 1502.01.
4. 17 U.S.C. § 101.
5. Subject to meeting continued use requirements and maintenance of rights, such as
through periodic renewal of trademark registrations.
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as source indicators. Achieving trade dress protection for product
designs requires not only showing distinctiveness that is either
acquired (required for product configurations) or inherent (as it
may be for product packaging), 6 but also establishing nonfunctionality of the design elements sought to be protected. 7
Because distinctiveness can be acquired, 8 the exclusivity conferred
by design patent and/or copyright protection can facilitate trade
dress protection. Even something once considered functional can
become non-functional over time, 9 but not while a utility patent is
still in effect. 10
Functional elements of a design are not eligible for trademark
protection, because such protection “is the province of patent law.”
In general “a product feature is functional ... if it is essential to the
use or purpose of the article or if it affects the cost or quality of the
article.” 11 Once functionality has been established for a particular
feature, secondary meaning is irrelevant. 12 A utility patent or
advertising touting utilitarian advantages of the design are
considered evidence of functionality. 13 For this reason, a deliberate
IP strategy should accompany a deliberate design process to
ensure that the line between form and function is not
inadvertently blurred to the detriment of long-term protection.
Competitors are entitled to copy unpatented functional designs,
even if the resulting designs look exactly alike and are likely to
confuse the public. 14
When non-functional designs achieve a secondary meaning in
the minds of consumers, that is, an association between a design
and its source, such designs may be deemed protectable trade
dress, entitled to exclusivity. Examples illustrating the power and
breadth of significant design elements include color elements like
6. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 215, 120 S. Ct. 1339, 1345,
146 L. Ed. 2d 182 (2000).
7. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255, 1259,
149 L. Ed. 2d 164 (2001).
8. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 215, 120 S. Ct. 1339, 1345,
146 L. Ed. 2d 182 (2000).
9. See, e.g., Eco Mfg. LLC v. Honeywell Intern., Inc., 357 F.3d 649 (7th Cir. 2003); In
re Zippo Manufacturing Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999).
10. Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 547 F.3d 723, 730
(7th Cir. 2011).
11. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 102 S.
Ct. 2182, 72 L. Ed. 2d 606 (1982).
12. Traffix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1258-1262 (U.S.
2001).
13. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1341 (C.C.P.A. 1982).
14. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 84 S. Ct. 784, 789, 11 L. Ed.
2d 661 (1964) (“mere inability of the public to tell two identical articles apart is not enough
to support an injunction against copying or an award of damages for copying that which the
federal patent laws permit to be copied.”).
Vol. 105 TMR
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the robin’s-egg blue of Tiffany & Co., 15 AstraZeneca’s purple pill
Nexium, 16 and UPS brown. 17 They also include patterns ranging
from Levi Strauss’ iconic jean pocket stitching 18 to the rooster-tail
of water generated by Yamaha’s Wave Runner watercraft. 19 Other
examples include product configurations like the WEBER
barbeque grill 20 and LIFE SAVERS candies. 21 Even scents such as
the cherry scent of Manhattan Oil’s synthetic lubricant illustrate
the wide range of design differentiators. 22 No matter the form, the
result is a valuable consumer-to-product relationship. In
marketing terms, this is the stuff of brand equity—it is the reason
that consumers select one product over another, a reason that is
not shared by rivals.
Companies therefore have a strong opportunity to outperform
rivals if they can establish a difference that they can sustain. 23
This stands true across all categories and classes of consumer
goods—from kitchen utensils to cars and from luxury goods to
everyday items. In a design-rich and design-sensitive marketplace,
the success of a design is measured in large part by how well it
differentiates. Designs can be beautiful but still fail to enjoy longterm success if they are not unique.
III. SECURING A COMPETITIVE ADVANTAGE
BY DESIGN
Corporate executives increasingly recognize protected design
as an important asset. It is as much an asset as capital equipment.
In fact, the value of a firm’s physical assets is often exceeded by
the value of its inventions, brands, designs, and other intellectual
property. Though Caroline Davidson created Nike’s “swoosh”
design in 1971 for a mere $35, 24 that iconic symbol is now a
principal asset of Nike, while the hourglass-shaped bottle designed
by the Root Glass Company one hundred years ago became and
remains an immensely valuable design asset of Coca-Cola.
Product shape and configuration—the primary focus of this
paper—have proven to be very important bases for powerful design
15. U.S. Trademark Reg. No. 2,184,128.
16. U.S. Trademark Reg. No. 2,806,099.
17. U.S. Trademark Reg. No. 2,901,090.
18. U.S. Trademark Reg. No. 223,725.
19. U.S. Trademark Reg. No. 1,946,170.
20. U.S. Trademark Reg. No. 1,481,521.
21. U.S. Trademark Reg. Nos. 1,130,067 and 1,707,055.
22. U.S. Trademark Reg. No. 2,463,044.
23. Michael E. Porter, What Is Strategy?, Harv. Bus. Rev. December 1996.
24. Steven Heller, Swoosh: 40 Years Fly By, Print Magazine, August 4, 2011
(http://www.printmag.com/imprint/swoosh-40-years-fly-by/).
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differentiation. The following case studies of time-tested designs
illustrate design differentiation at work in the marketplace.
A. Protecting Iconic Designs
Trade dress protection for product configurations can provide
long-lasting and powerful protection and reinforce the emotional
bond between consumers and the products they love. Although
“registered” design elements confer substantial benefit,
unregistered trade dress rights are also protectable as well and
are, in fact, more commonly relied upon. Trade dress rights can
sometimes arise out of happenstance or serendipity, but business
strategies that rely on such protection require a deliberate
approach. Keeping to a strategy can lead to valuable protection
and, as you will see, failure to do so can forfeit its benefits.
1. EAMES Lounge Chair
The EAMES Lounge Chair illustrates the long-term value of
trade dress protection and the fruits of long-term design
promotion. The iconic EAMES Lounge Chair exemplifies furniture
design innovation. It was original and unique in terms of both
appearance and construction. The EAMES Lounge Chair was
introduced in 1956 on the set of NBC Studios’ TV Home Show,
when Arlene Francis interviewed Charles and Ray Eames about
their new approach to furniture design. It is now and has long
been firmly linked in the minds of furniture buyers with its maker,
Herman Miller. The Eames design now enjoys exclusive trade
dress rights protecting the commercial advantage enjoyed by
Herman Miller.
But it was not necessarily an easy path. Knock-off products
plagued Herman Miller, which responded by warning imitators to
keep a distance. To create an association that Herman Miller is the
“source” of furniture reflecting the EAMES design, Herman Miller
also needed to educate consumers, and in doing so launched at
least two notable campaigns, beginning as early as 1963 and
continuing into this century.
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“BEWARE OF IMITATIONS” warned a 1963 poster produced
for Herman Miller by the Eames Office. It prominently featured
directives and information for consumers to build and reinforce
brand identity:
• “LOOK FOR THIS MARK”
• “ENJOY THE COMFORT OF THE REAL THING”
• “Designed by Charles EAMES for HERMAN MILLER, Inc.”
• “These are the ORIGINALS! Accept no substitutes”
At the 2003 International Contemporary Furniture Fair in
New York, Herman Miller launched another campaign: a national
consumer awareness campaign designed to educate consumers
about knockoffs of classic furniture. Its 2003 “Get Real” campaign
aimed to educate consumers about the differences between
genuine products and poorly constructed imitations. In the words
of Herman Miller, “‘Get Real’ is designed to alert consumers to the
ethical and economic implications related to the purchase of design
knock-offs, rather than supporting original designs and their
designers.” Acknowledging a trend of growing awareness among
consumers, it added: “The public is becoming increasingly aware of
intellectual property protection (patents, trademarks, trade dress
and copyrights) and the importance of supporting original design,
while the knock-off producers are learning the consequences of
infringement.”
With such campaigns, Herman Miller took a lead in promoting
all genuine articles, protecting both the uninformed buyer and the
intellectual property rights of the original designer and
manufacturer. The campaign was said to encourage buyers to
check products for the signature Herman Miller mark (“Check the
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Source”). It also invited those knowingly buying knockoffs to check
something else (“Check your Conscience”). 25 26
In a more direct attack against knockoffs, Herman Miller sued
Palazzetti Imports and Exports, Inc. in 1994, testing its trade
dress rights in the design of the lounge chair and ottoman.
Herman Miller argued that nine aspects of the design justified
trade dress protection, including, for example, elements such as:
“smooth curved, molded shells”; “molded shells shaped like a
flattened ‘U’”; “molded shells with cushioned upholstery”; “molded
shells having ‘buttons’ that create permanent creases in the
upholstery”; and “upholstered armrests extending downwardly
into the chair and that connect the two molded back shells to the
molded seat shell.” 27
To prevail, Herman Miller had to establish that the trade
dress of the chair and ottoman was protectable, that consumer
confusion was likely as between Herman Miller’s and Palazzetti’s
products, and that the cited features of the chair and ottoman were
primarily nonfunctional. Herman Miller presented sufficient
evidence to establish that it could have prevailed, but the parties
settled before this issue was decided by the courts. Later, Herman
Miller was awarded U.S. Trademark Registration No. 2,716,843
for the three-dimensional design of the Eames Lounge Chair, thus
conferring presumptive rights to exclude others from
commercializing a confusingly similar design.
This success inspired others. Eames Demetrios, grandson of
Charles Eames and principal of the Eames Office, lauded Knoll’s
subsequent success in registering the Mies van der Rohe Barcelona
design, among others. 28 And the reporting of that success in the
public press helped to advance the awareness campaigns first
initiated by Herman Miller in 1963. 29,30
25. HERMAN MILLER WAGES “GET REAL” CAMPAIGN: Traveling Authenticity
Exhibit Draws Public’s Attention to Modern Classic Furniture Knock-Offs, Press Release,
Oct. 14, 2003.
26. HERMAN MILLER, INC., WILL “GET REAL” AT THE ICFF: New York’s 2003
International Contemporary Furniture Fair marks company launch of concerted campaign
for awareness and education against knock-offs, Press Release, May 16, 2003.
27. Herman Miller, Inc. v. Palazzetti Imports and Exports, 270 F.3d 298, 308 (6th Cir.
2001).
28. J. Lasky, Interview of Eames Demetrios, I.D. Magazine, Apr. 2005.
29. Ernest Beck, Knocking Off The Knockoffs, N.Y. Times, Oct. 28, 2004.
30. Ernest Beck, Look-Alikes Draw Lawyers’ Stares, N.Y. Times, June 2, 2005.
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2. HERSHEY’S KISSES
HERSHEY’S KISSES candies illustrate a deliberate
differentiation strategy dating back to 1921, for candies first
introduced to consumers in 1907. Over the years, Hershey has
employed look-for advertising, registered its product configuration,
and strategically used and registered two-dimensional marks to
reinforce consumer recognition of its three-dimensional product
shape. Hershey now owns over twenty U.S. trademark
registrations for design marks. They span a timeline of 1924
through 2013, depicting various configurations of HERSHEY’S
KISSES candies. A thorough review of the registrations, the
descriptions of the marks, and the specimens reveals a veritable
thicket of protection.
When HERSHEY’S KISSES candies first debuted in 1907,
however, they faced competition for the configuration of the
candies and an uphill battle for establishing KISSES as a brand
name. 31 The term “kiss” was originally a generic term for bite-sized
candy, 32 and at least one rival candy manufacturer had been
selling foil-wrapped drop-shaped chocolate candies (still marketed
as BUDS candies today) since before the turn of the twentieth
century. Both similarly sized chocolates have a conical shape, but
BUDS candies sport a curled loop at the top and have a bottom
featuring the letters W I L B U R, each displayed inside one
segment of a pinwheel design embossed into the bottom. 33 KISSES
candies instead have a pointed top and a flat bottom without
markings. Individually wrapped in foil, however, the early
products were probably indistinguishable.
To introduce a prominent differentiator, Hershey extended an
“identification tag” or “plume” from the top of its wrapper in 1921,
initiated look-for advertising to plant that differentiator in the
minds of consumers, and secured its first registration for the
wrapped candies featuring the plume in 1924. Hershey’s ads
notified consumers that “THE GENUINE HERSHEY KISSES
CONTAIN THE IDENTIFICATION TAG ‘HERSHEY’S’.”
31. See, e.g., Samira Kawash, Kissing Cousins: the Hershey’s Kiss and the Wilbur Bud,
CandyProfessor.com, Mar. 1, 2010.
32. But, according to Hershey, the generic term “kiss” was never associated with the
distinct product category of chocolate candy. See, e.g., In re Homestead, Inc., Ser. No.
75/183,278, Applicant’s Reply Brief, Feb. 2, 1999, pp. 8-12.
33. U.S. Trademark Reg. No. 3,803,126, Description of Mark
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Courtesy of Hershey Community Archives, Hershey, PA.
Decades later, Hershey secured a registration for the word
mark KISSES alone, with the help of survey evidence showing that
nearly 80% of consumers recognized the term KISSES as a brand
rather than a generic term. 34 Meanwhile, Hershey continued to
solidify and expand the protection for its chocolate drop
configurations, including obtaining registrations (‘836 and ‘025
below) in the mid-1970s for configurations without the plume.
Today, with respect to the individual candies alone, Hershey owns
registrations covering not only the product configuration in the
iconic standard size (‘822) but also in larger (‘566) and miniature
(‘381) sizes, in solid (‘828, ‘566, ‘189, ‘216, ‘381) and swirled (‘429,
‘066) configurations, with a color claim (‘836) and without (‘828,
‘025), and with the “plume device surmounted on top” (‘828, ‘357)
and without (‘836, ‘025). 35
34. In re Homestead, Inc., Ser. No. 75/183,278 (T.T.A.B., Apr. 4, 2000).
35. See, e.g., U.S. Trademark Reg. No. 3,818,357, Description of Mark.
Vol. 105 TMR
1421
186,828
(1924)
1,031,836
(1976)
1,038,025
(1976)
1,236,602
(1983)
1,731,429
(1992)
1,986,822,
(1996)
2,138,566
(1998)
2,112,374
(1997)
2,187,189
(1998)
3,028,381
(2005)
3,059,066
(2006)
3,530,940
(2008)
3,572,216
(2009)
3,724,862
(2009)
3,818,357
(2010)
3,851,648
(2010)
4,438,754
(2013)
Drawings with U.S. Registration No. noted below each,
with year of registration.
Additionally, Hershey owns numerous U.S. registrations for
marks depicting the wrapped and/or unwrapped candy
configurations, which it frequently displays on bags of candies to
reinforce the iconic design as a source indicator. Included among
these registrations are representations of the two-dimensional
outline of the candy (‘374), a three-dimensional rendering of the
candy (‘216), and several depictions of candies grouped together,
some that fancifully accentuate the plume (‘940, ‘862), some that
show the original design (‘357, ‘648, ‘940) and others that depict
expansions of the product line, such as a striped wrapper (‘862).
One registration even depicts a rendering of a candy in crosssection comprising a solid core surrounded by a swirled shell
(‘429).
By using renderings of the wrapped and/or unwrapped candy
configuration as marks on bulk packaging and point of sale
displays, Hershey reinforces the iconic design with every potential
encounter with consumers, essentially serving the same purpose as
look-for advertising. The ‘602 registration—a representation of the
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product configuration with associated words—ties the product
shape to the HERSHEY’S and KISSES marks.
But what makes the product configuration of HERSHEY’S
KISSES entitled to trade dress protection? At least one feature of
the Hershey product—the flat bottom that permits dropping the
candy onto a flat surface, which is better suited for automation and
scalability than an embossed bottom—arguably provides a
functional advantage that may have led to commercial success over
Wilbur’s BUDS candies. 36 Hershey’s product configuration
registrations do not depict the underside of the candy; however,
they all depict the pointy top that distinguishes them from the
curly top of Wilbur’s BUDS candies or on chocolate chips produced
by Nestlé or Ghiradelli.
Do HERSHEY’S KISSES candies have a pointy top because of
a contrived manufacturing technique that is more complex than
that forming a curly top, thereby supporting non-functionality? 37
Or, as suggested in a Petition to Cancel the ‘822 and ‘737
registrations, is the overall shape “nothing more than the natural
shape in which molten chocolate hardens when dropped on a flat
cooling sheet” in which “variances are a result not of the
manufacturers’ choice of shape, but rather due to the sugar content
and viscosity of the molten chocolate mixture . . . a result of
attempting to improve quality of texture and taste of the product,
not as an indicator of source?” 38 At least one of Hershey’s product
configuration registrations also recites dimensions of the candy, 39
but is the size non-functional or merely “the ideal size for a ‘nibble’
candy?” 40 The proceedings relating to HERSHEY’S KISSES candy
configuration registrations have been quickly resolved, so these
questions have been left unanswered in the courtroom. 41
And therein lies the point. A legal strategy of adopting
differentiators deliberately, protecting them early and often,
36.
“Wilbur Buds” http://dbhurley.com/wilbur-buds/.
37. Representatives for Hershey, contacted for this paper, advised that, indeed, the
shape of KISSES chocolates—with the tip pointing upward rather than drooping—is an
intentional design choice that requires extra steps in the R&D and manufacturing processes
for its products.
38. Cartwright v. Hershey Chocolate & Confectionery Corp., Cancellation No.
92047482, filed 5/8/2007, ¶ 6.
39. See, e.g., U.S. Trademark Reg. No. 1,986,822, Description of the Mark (“a conicallyshaped candy piece approximately 7/8 of an inch high as measured from the base to the
pinnacle and 15/16 of an inch in diameter as measured at the base”).
40. Cartwright v. Hershey Chocolate & Confectionery Corp., Cancellation No.
92047482, ¶ 9.
41. See, e.g., 07-cv-00483-YK (The Hershey Company et al. v. Vermont Nut Free
Chocolates, filed 3/14/2007, in the Middle District of Pennsylvania); 08-cv-1014-WTL-JMS
(The Hershey Co. et al. v. Current USA, Inc., filed July 29, 2008, in the Southern District of
Indiana); The Hershey Company et al. v. Cartwright, 07-cv-01181-CPS-CLP, filed Mar. 20,
2007, in the Eastern District of New York.
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reinforcing them with consumers, aggressively policing, and
mustering the resources borne of commercial success creates a
high barrier to entry for any newcomer. Even if a would-be
competitor raised challenges based upon functionality, the cost of
trying to knock down a well-protected product configuration is
prohibitive, especially in the face of a plethora of non-infringing
alternatives. The HERSHEY’S KISSES case study teaches the
benefit of adopting a legal strategy that reinforces differentiation
strong enough to withstand the test of time. Over the years,
competitors fall away, language and manufacturing techniques
change, and characteristics that may once have been generic can
evolve into powerful source indicators. Multiple registrations, each
targeting one or more distinctive features of the design, provide
the pickets of a proverbial fence of protection. Together, they help
sustain the commercial advantage conferred by product
differentiation and secured by trade dress protection.
B. Protecting Form and Function Separately
Most consumer products embody features that perform a
function and features that provide a pleasing form, whether in the
product configuration itself or as part of its packaging.
Automobiles have been advertised as “The Fusion of Design &
Technology” (Cadillac’s Escalade) or even “Form, Breathing Down
the Neck of Function” (Acura’s TL). Even Toto’s stylish toilets are
promoted as “Performing Art.”
But the legal regimes for protecting design innovations
separate form from function. A product can enjoy utility patent
protection for its functional attributes. By contrast, original and
non-functional ornamentation of a product is the purview of design
patents, while trade dress protection is reserved for those nonfunctional features that link a product to its source in the minds of
consumers. Utility and design patents entitle their owners to
exclusive use of the patented subject matter for twenty and fifteen
years, respectively, following which the subject invention or design
is free for all to use. Trade dress protection—which does not
provide an absolute right to exclude competitors, but protects
against a competitor’s use that is likely to cause confusion as to
source or origin—can last as long as consumers continue to
associate a product’s design with a particular source. With a
thoughtful strategy, beginning with initial product conception and
continuing through post-launch marketing and promotional
strategies, concurrent and complimentary protections of these
functional and aesthetic features can help a product achieve iconic
status.
The following design stories illustrate the tension between
form and function when embodied in a single product. They also
illustrate the benefits of unique design elements—whether subtle
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modifications of prior offerings or breakthrough designs—that can
establish powerful design differentiation.
1. ZIPPO Lighters
Long ago, a man named George Blaisdell watched a friend use
an Austrian cigarette lighter. Though it worked well, he noticed
that its appearance was utilitarian. Blaisdell was inspired to
refashion the Austrian lighter in 1932, and Zippo Manufacturing
Company was born. Like the EAMES Lounge Chair, the iconic
ZIPPO lighter stands for the time-tested competitive advantage of
strategic design differentiation.
Though utility patents were issued to Blaisdell long ago in
1936 and 1950, the fundamental design of the Zippo lighter
remains basically the same to this day. The first of these utility
patents was U.S. Patent No. 2,032,695 (excerpt shown below). It
claimed exclusive rights to a pocket lighter having utilitarian
features arranged in such a way that the lighter has no external
latch mechanism. The second utility patent was U.S. Patent No.
2,517,191, which claimed exclusive rights to a flint-receiving tube
component that was intended for use in the lighter. Building on
these exclusive rights, which enabled Zippo to be the unrivaled
market leader, Zippo successfully secured trademark protection for
the now-famous external appearance of its lighter configuration in
2002, many years after the 1967 expiration of the second utility
patent.
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Fig. 1 of U.S. Patent No. 2,032,695
The trademark registration describes the lighter configuration
as “having slightly rounded edges and corners, and a curvature in
the shape of a slight arc in the top of the lighter.” 42 Zippo asserted
this configuration had become distinctive because of its long use
and public recognition.
Registration of the lighter configuration was initially refused
by the Examining Attorney on the ground that the cigarette lighter
configuration is de jure functional and therefore unprotectable. On
appeal, the Trademark Trial and Appeal Board (the “Board”)
acknowledged that, “while the rounded edges give the lighter a
modern, streamlined design, they also make the lighter easier to
hold and less likely to tear the inside of a pocket.” In this regard,
“such features provide utilitarian advantages which should remain
available to others in the trade so that they may compete
effectively.” 43 Nevertheless, the Board ultimately reversed the
refusal of registration for the following reasons:
• Zippo’s utility patents showed a lighter with square corners
and edges and straight lines (as opposed to rounded edges
and corners and curved lines), and the patent claims
focused on the lighter’s internal mechanism (as opposed to
the lighter’s shape), thus not attributing functionality to the
lighter’s shape or claiming its features.
• None of Zippo’s literature touted the lighter’s shape as a
utilitarian advantage.
• Because Zippo showed the availability to its competitors of
alternative designs, trademark protection would not have
an anti-competitive effect.
42. U.S. Reg. No. 2,606,241.
43. In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999).
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The Zippo lighter design had acquired distinctiveness
(brand identity). 44
Zippo was thus awarded Registration No. 2,606,241 in 2002,
which will remain in force indefinitely, subject to Zippo’s filing of
affidavits of its continued use of the mark at the end of each
successive ten-year period following the date of registration.
By integrating a subtle feature in the form of “slightly rounded
edges and corners, and a curvature in the shape of a slight arc” at
the top of the lighter and protecting that feature, Zippo gained a
long-lasting commercial advantage. Whether created as a design
whim or part of a premeditated plan to achieve design
differentiation, the resulting design has profited Zippo for many
years. Like the EAMES Lounge Chair, it has formed a bond with
consumers for sustained brand equity.
•
2. HONEYWELL Thermostat
Honeywell’s iconic dome-shaped thermostat—designed by
Henry Dreyfuss and introduced in 1953 as the T-86 “Round”
thermostat—is found in many of our homes and offices. Although
its initial trademark application for the appearance of the round
thermostat, filed in 1968, was rejected, Honeywell succeeded when
it reapplied in 1986.
The second application, too, was initially rejected. On appeal,
Honeywell argued that market circumstances had changed and
urged the Board to find the rounded thermostat design nonfunctional. Before making such a finding, the Board considered (1)
whether a utility patent disclosed utilitarian advantages of the
design, (2) whether advertising materials touted any such
advantages, (3) whether alternative designs would be unavailable
to competitors, and (4) whether the design resulted from
comparatively cheap manufacturing methods, thus providing a
utilitarian advantage.
44. Id.
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Honeywell had been awarded a design patent for the
thermostat’s cover and at least one utility patent for its inner
workings. Honeywell claimed an ornamental design for a control
instrument as shown in U.S. Patent No. D176,657. In contrast, the
utility patent protected a thermostatic controller having an
actuating means arranged to successively discontinue the
actuation of a second and then a first control means, etc.—as
detailed further in U.S. Patent No. 2,394,920 (excerpt shown).
Fig. 4 of U.S. Patent
No. 2,394,920
First page of U.S. Patent
No. D176,657
In its decision granting federal trademark protection, the
Board found the design not to be functional, based at least on the
following findings: Honeywell’s literature did not tout the rounded
design as a utilitarian advantage, but rather emphasized the
decorative quality of the thermostat’s cover; Honeywell’s utility
patents did not propose any utilitarian value of the rounded shape
of the thermostat’s cover; during the years between the first and
second applications, it became apparent that alternative designs
were available to competitors; and Honeywell’s cover design was
neither simpler nor cheaper to manufacture, thus trademark
protection for the rounded cover design would not have an anticompetitive effect. The Board also found that Honeywell’s cover
design had acquired distinctiveness. 45
Thus, Honeywell was ultimately awarded Registration No.
1,622,108 in 1990 for the design of “a thermostat cover that is
circular and rounded in shape,” which remains in force today. By
affirmatively creating distance between form and function and
45. In re Honeywell Inc., 8 U.S.P.Q.2d 1600 (T.T.A.B. 1988).
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protecting them separately using appropriate intellectual property
regimes, Honeywell secured sustainable and long-term protection
for the differentiating cover design. Over time, Honeywell’s
thermostat gained the status of a design icon alongside the Zippo
lighter, KISSES chocolates, and the EAMES Lounge Chair.
C. Elevating Function Over Form
By retelling several design stories—really, cautionary tales—
we are reminded of lost opportunities for sustained differentiation.
The benefits of long-lasting trade dress protection can be forfeited
when function is elevated over form. Thus, the true potential of
product differentiation cannot be achieved.
1. Bose 901 Speakers
Like Honeywell, Zippo, and Herman Miller, Bose Corporation
sought trademark rights for a product configuration—in this case
for the five-sided enclosure of its “901” speakers. Bose requested a
registration for an enclosure having a substantially pentagonal
cross-section with a substantially pentagonal-shaped top and
bottom. As in the analysis of Honeywell’s trademark application
and those of Zippo and Herman Miller, the Office and appeals
court considered the question of functionality.
Fig. 1 of U.S. Patent No. 4,146,745
But despite the recognizable shape of the Bose 901 speakers,
statements made by Bose Corporation about the utility of design
features weighed in favor of functionality. Bose had also enjoyed
utility patent protection for the speaker system. In essence, the
evidence considered by the Office and appeals court was “replete
with Bose material lauding the shape of the enclosure as a
functional part of the sound system,” and the application for
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registration was ultimately refused in 1985. 46 In 1995, Bose again
attempted to register the enclosure design but was denied based
on the earlier decision.
Though Bose hoped to secure longer lasting design protection
in the form of a registered trademark, Bose did enjoy years of
protection for utilitarian features of the Bose 901 speakers. From
1979 to 1996, it maintained the protection afforded by U.S. Patent
No. 4,146,745. But assuming that the exterior shape of the fivesided configuration of the speaker enclosures was motivated
primarily by ornamentation as opposed to functionality, Bose was
not able to leverage that design differentiation into a sustained
competitive advantage fortified by trade dress rights. Although
Bose argued the same functional advantages could have been
maintained in an enclosure with a totally dissimilar exterior
configuration by wrapping the angled rear walls with an
acoustically transparent grille cloth that could conform to any
shape, the Court noted that “the shape of a speaker enclosure
which conforms to the shape of the sound matrix is an efficient and
superior design as an enclosure and, thus, de jure functional,
whether or not it contributes to the functionality of the sound
system itself.” 47
Bose is a design innovator that has, from its inception, led the
state-of-the-art
of
acoustic
technologies.
Despite
other
accomplishments, however, Bose was unable to secure a
trademark registration for its 901 speakers. Because the quest of
Bose for a trademark registration highlights the challenges
associated with securing trademark protection for product
configurations, it provides—when viewed with the benefit of
hindsight—a helpful study and cautionary tale for the
development of best practices and design differentiation
strategies.
46. In re Bose Corp., 772 F.2d 866 (Fed. Cir. 1985).
47. Id. at 873.
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2. Gibson Guitars
The true potential of an innovative design may be unrealized
unless strong protection is perfected and enforced. In contrast to
that of Hershey’s KISSES candies, the story of the Gibson LES
PAUL guitar illustrates the pitfalls of not protecting
differentiation early and often. The now-iconic “single-cutaway” 48
LES PAUL (LP) guitar, the outline of which is depicted in U.S.
Trademark Reg. No. 1,782,606 (“the LP trademark”), was first
introduced by Gibson in 1952. 49 But Gibson did not file for
trademark protection until 1987, thirty-five years later and well
after similarly shaped guitars were already on the market. 50 The
LP Trademark issued in 1993 and became “incontestable” in
1999. 51
LP Trademark Drawing for
U.S. TM Reg. No. 1,782,606
When Paul Reed Smith Guitars (“PRS”) introduced a singlecutaway design in 2000, Gibson filed a trademark and trade dress
infringement lawsuit. 52 The U.S. District Court for the Middle
District of Tennessee granted partial summary judgment on
48. The single-cutaway design has a space in the body of the guitar at the base of the
guitar’s neck on the bottom side of the neck (when held by a player) to permit a guitar
player to move his hand further down the neck (relative to a non-cutaway design) without
impediment by the body of the guitar. A “double-cutaway” design has a similar space on the
top side of the guitar. The cutaway forms what is referred to as a “horn,” depicted on the
right side of the LP Trademark drawing. Gibson Guitar Corp. v. Paul Reed Smith Guitars,
LP 423 F.3d at 544, n.3.
49. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 543 (6th Cir.
2005) (“Gibson II”).
50. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F. Supp. 2d 690, 717
(M.D. Tenn. 2004) (“Gibson I”).
51. Gibson II, 423 F.3d at 544.
52. Id. at 544.
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Gibson’s trademark infringement claim, 53 but the Sixth Circuit
Court of Appeals reversed. 54
Having conceded on summary judgment that a sophisticated
buyer would “have to be an idiot” not to know which guitar was
being purchased at the point-of-sale, 55 Gibson relied on theories of
initial-interest confusion, 56 post-sale confusion, 57 and an
amalgamation the court characterized as a “smoky-bar theory of
confusion”—confusion arising from a purchaser observing a
musician playing a PRS guitar in a smoky bar and initially
mistaking the PRS for a Gibson guitar. 58 Expressing concern that
applying the initial-interest-confusion doctrine to product shapes
would allow trademark holders to “protect not only the actual
product shapes they have trademarked, but also a ‘penumbra’ of
more or less similar shapes that would not otherwise qualify for
trademark protection,” the Sixth Circuit declined to do so. 59 The
court also found no evidence that post-sale 60 or smoky bar 61
confusion would damage Gibson in any way.
Gibson might have enjoyed a better result, however, had it
registered multiple marks covering other aspects of its iconic LP
guitar’s trade dress. Gibson’s LP Trademark covers only the twodimensional outline of the guitar, but the District Court found a
striking similarity between the PRS and Gibson guitars with
respect to “display and shape of the horn and configuration of knob
features” and “sunburst color.” 62 The Court also found the horn
shape and the “location or arrangements” of “other parts, knobs,
frets and switches” to be non-functional. 63 Registrations protecting
53. Gibson I, 311 F. Supp. 2d 690 (M.D. Tenn. 2004).
54. Gibson II, 423 F.3d 539 (6th Cir. 2005).
55. Gibson II, 423 F.3d at 549, n13.
56. Initial interest confusion arises when improper use of another’s mark creates initial
interest on the part of a consumer in a product, even if the customer realizes prior to
purchase that the product was not actually associated with the mark owner. Gibson II, 423
F.3d at 549.
57. Post-sale confusion arises when someone other than the purchaser mistakenly
believes a product is associated with the mark owner. Gibson II, 423 F.3d at 549.
58. Gibson II, 423 F.3d at 552.
59. Gibson II, 423 F.3d at 551 (expressly “not go[ing] so far as to hold that there is
never a circumstance in which it would be appropriate to apply the initial-interest-confusion
doctrine to a product-shape trademark”).
60. Because Gibson conceded “PRS guitars are not clearly inferior to Gibson guitars,”
Gibson could not show that post-sale confusion could damage its reputation in the field.
Gibson II, 423 F.3d at 552.
61. “If a budding musician sees an individual he or she admires playing a PRS guitar,
but believes it to be a Gibson guitar, the logical result would be that the budding musician
would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any
such confusion.” Gibson II, 423 F.3d at 553.
62. Gibson I, 311 F. Supp. 2d at 722.
63. Gibson I, 311 F. Supp. 2d at 720; but see Robert M. Kunstadt and Ilaria Maggioni,
Tell Tchaikovsky the News: Trade Dress Rights in Musical Instruments, 94 TMR 1271, 1289
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those features could have been used to Gibson’s advantage. Also,
had Gibson registered the LP Trademark before other competitors
entered the market with other single cutaway designs, and then
enforced its registration against those later entrants, Gibson might
have been able to strengthen its rights and potentially even
establish its iconic design as “famous.”
Gibson had another opportunity to establish trade dress
rights, this time for its iconic “Advanced Jumbo” (AJ) acoustic
guitar. But, as was the case with the Bose 901 speakers,
advertising played a role in defeating Gibson’s attempt to register
the AJ’s product configuration. Gibson touted that its AJ guitar
“not only looks more like a bell, but also rings like a bell,” that its
“more rounded upper bout produces sweeter highs while the
broader waist and wider lower bout creates more powerful lows,”
and that “this unique body shape creates a sound which is more
balanced and less ‘muddy’ than other ordinary dreadnought
acoustics.” 64 The Board, unpersuaded by Gibson’s hindsight
characterization of its advertising claims as mere puffery, noted
“the clear import of the advertisement is that the shape of the
guitar is what produces a better musical sound.” 65
Drawing for
U.S. TM App. Ser. No. 75/513342
In this instance, Gibson was either the victim of its own
advertising or of the inescapable reality that design elements
affecting the sonic quality of sound-producing goods are arguably
always de jure functional. 66 At a minimum, a designer asserting
that the design of an acoustic device is dictated purely by visual
(2004) (“had the court properly appreciated how to play a LES PAUL guitar, the court would
not have granted summary judgment for Gibson. At a minimum, the functionality of the
alleged Gibson trade dress features presents fact issues for trial.”)
64. In Re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948 (T.T.A.B. 2001).
65. Id.
66. Kunstadt, supra note 63, at 1291 (“factors of a configuration that affect timbre,
pitch or loudness of the instrument should be considered unprotectably functional”).
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aesthetics—rather than by acoustic function—should be prepared
to show that alternative designs offer exactly the same sound. 67
The Gibson AJ story (and the Bose story) remind us that
coordination among designers, IP counsel, and marketing is
critical. Not only should IP counsel help designers incorporate nonfunctional differentiators into product designs, but IP counsel can
also help coordinate a consistent marketing message and avoid
inadvertent attribution of functions to aesthetic product features.
That way, marketing departments have clear guidelines for
separately promoting form and function.
IV. ACTIONABLE STRATEGIES FOR
DESIGN DIFFERENTIATION
Because of the value-potential of strategic design
differentiation, an important objective of design and brand
managers is to produce designs that stand out in the
marketplace. 68 To deliver designs having this capability, design
and brand managers therefore seek to produce distinctive
products, promote the distinctiveness of their designs, create a
bond between consumers and those distinctive designs, and enjoy
the fruits of long-lasting intellectual property protection.
At their disposal are increasingly refined design disciplines
and sophisticated teams. The established disciplines of graphic
design, product design, and packaging design have been joined in
recent years by the emerging disciplines of interactive and
experiential design, both specifically tailored to building personal
consumer-to-product relationships. These design disciplines
increasingly team with other key disciplines associated with new
product offerings—primarily the engineering and marketing
disciplines—to form cross-functional, multidisciplinary product
development teams. 69 Design teams are thus poised to generate
the kind of design innovations that ensure differentiation, and
successful design and brand managers will channel the labors of
such teams toward design solutions that can enjoy a sustained
competitive advantage.
Principles of design thinking have helped to integrate business
considerations, such as the importance of sustained design
differentiation, into design efforts, and the team-oriented
structures of postmodern organizations provide unique
67. See also Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 993 (Fed. Cir. 2015)
(consideration of the relevant factor requires that the “purported alternative designs ‘offer
exactly the same features’ as the asserted trade dress in order to show non-functionality”)
(internal citations omitted).
68. James G. Conley et al., Inventing Brands: Opportunities at the Nexus of Semiotics
and Intellectual Property, 19 Design Mgmt. Rev. (Spring 2008).
69. Joshua L. Cohen, Integrated IP: A Key Ingredient of Successful New Product
Innovation, RatnerPrestia INSIGHT Newsletter, Winter 2014: Vol. 24, No. 1.
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opportunities to execute business-oriented design strategies. 70 To
seize these opportunities, it is vital for design managers and IP
counsel to integrate design differentiation strategies—including
global strategies—into a company’s design efforts and to do so by
integrating those strategies into their design teams and into the
processes that structure their work.
Every design process defines a social system in which design
and development work is carried out, and best practices call for
design processes that utilize cross-functional, multidisciplinary
design teams formed of individuals from key disciplines that
collaborate throughout the design effort. 71 They typically include
representatives from the design, engineering and marketing
disciplines but vary based on the nature of the design challenge. 72
Almost 80 percent of the best performing businesses use such
teams, 73 and academic programs like Lehigh University’s
Integrated Product Development program prepare students for
collaborative design work in such businesses. 74 An emerging model
for design processes formally integrates intellectual property
counsel as a team member, helping the team to develop and
execute strategies for creating, protecting and promoting strong
design differentiators. 75
The actions required to implement design differentiation
strategies should be performed at strategic junctures throughout
the design process. Whether a product design effort is considered
incremental (such as cost reductions or product improvements),
platform (next-generation products), or breakthrough (products
new to the company or the world), design processes are generally
structured in sequenced stages, the well-known STAGE-GATE
process being a five-stage, five-gate model. 76 Design differentiation
strategies are ideally built into staged processes by incorporating
predefined milestones into each stage, thus ensuring that
70. Joshua L. Cohen, Sustaining the Competitive Edge of Design Innovations: Strategies
for Protecting the Fruits of Design Thinking in Postmodern Organizations, Proceedings,
International DMI Education Conference, April 14–15, 2008, ESSEC Business School,
Cergy-Pointoise, France.
71. V. Krishnan and Karl T. Ulrich, Product Development Decisions: A Review of the
Literature, 47 Mgmt. Sci. 1-21 (2001).
72. Jonathan Cagan and Craig M. Vogel, Creating Breakthrough Products: Innovation
from Product Planning to Program Approval 138 (2002).
73. Robert G. Cooper, New Products—What Separates the Winners from the Losers and
What Drives Success, PDMA Handbook of New Product Development (2d ed. 2005).
74. T.A. Watkins et al., Learning Across Functional Silos: Lehigh University’s
Integrated Product Development Program. Education Innovation in Economics and
Business, Orlando, Florida, December 4-7, 1996.
75. Cohen, Sustaining the Competitive Edge of Design Innovations, supra note 1.
76. Cooper, supra note 73. The five stages typically include Scoping, Build Business
Case, Development, Testing and Validation, and Launch.
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appropriate actions are completed before the design process
graduates to the next stage.
When applied to today’s design challenges, an action
framework to be deployed by design and brand managers at the
outset of a new design project ideally includes: (1) deciding how the
prospective design should differ from its competition, (2) making
differentiation a specific deliverable of the design process, (3)
protecting design differentiators using proactive intellectual
property strategies, including pursuing complementary utility
and/or design patents and trademark protection, and (4) promoting
design differentiation to build brand equity. A graphic
representation of the process followed by Coca-Cola, whether
entirely premeditated or only made evident in hindsight, would
look something like this:
A. PLAN: Deciding How a Prospective Design
Should Differ from its Competition
Coca-Cola’s success begs the question “How did the resulting
bottle become so iconic?” This is asked and answered briefly at
Coca-Cola’s website. 77 But further reflection reveals a strategy.
Whether entirely premeditated or only made evident in hindsight,
77. Ted Ryan, The Story of the Coca-Cola Bottle (http://www.coca-colacompany.com/thestory-of-the-coca-cola-bottle).
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the success story of Coca-Cola’s bottle can inform the approach
used by firms seeking competitive advantage through
differentiation.
According to Coca-Cola’s official history, Coca-Cola set out to
beat imitators by helping customers “easily find the real thing at a
glance, or even by touch.” 78 To do so, Coca-Cola issued a
nationwide directive to designers asking them to develop a bottle
capable of such distinction.
This initiative commenced in 1912, when Coca-Cola first
sought to develop a “distinctive package” for its product. Harold
Hirsch, Coca-Cola’s lead attorney, was tasked with developing a
strategy for securing a special bottle design. In response, Hirsch
asked Coca-Cola’s bottlers to unite behind a distinctive design. He
asked them to look beyond their immediate expense when
converting to a new design and adopt a vision in which “Coca-Cola
will remain the National drink to the end of time,” and specifically
asked glass companies across the U.S. to develop a “bottle so
distinct that you would recognize it by feel in the dark or lying
broken on the ground.” 79 With that, the design competition ensued.
This was one of the earliest and best prototypes of what we
now call a design brief. Coca-Cola identified the key objective—
differentiation—and stated the way in which the product should
differ from its competition. 80 At the outset of today’s new design
initiatives, firms typically frame the design challenge in a carefully
crafted brief. When done right, such a brief provides a concise
statement of the objectives, parameters, and deliverables. It is
intended to ensure that all members of the design team are
aligned in their target. 81 And the brief is especially powerful when
it contemplates differentiation via the creation and protection of
intellectual property rights. 82
In choosing to purchase a prospective product offering in a
targeted product category, are consumers driven by aesthetic
appeal? Or is there a “cool” factor that consumers respond to?
Perhaps consumers will instead respond to practical
considerations, in which case functionality, cost, or quality will
make the sale. What sort of design elements will succeed in
forming the type of consumer-product relationship that promotes
brand equity? These questions should be asked and answered at
the outset of the design process.
78. Celebrating 100 Years of the Coke Bottle at the National Archives: The Coca-Cola
Company (http://www.coca-colacompany.com/coca-cola-unbottled/celebrating-100-years-ofthe-coke-bottle-at-the-national-archives).
79. Ryan, supra note 77.
80. Peter L. Phillips, Creating the Perfect Design Brief: How to Manage Design for
Strategic Advantage (2d ed. 2012).
81. Id.
82. Id.
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As it turns out, and as Coca-Cola predicted, product packaging
is a smart choice for differentiation. It is of course a first and
prominent connection to consumers. Also, packaging does not
necessarily require secondary meaning for protection as a source
identifier. And, with respect to bottles, for instance, once the
functional task of containing liquid is addressed, the appearance of
the package is infinitely malleable. But product packaging cannot
always be the differentiator. The EAMES Lounge Chair did not
come in a fancifully shaped package—it most likely arrived in a
nondescript crate.
Voice-of-the-Customer and other market research tools will
reveal the factors that drive consumer purchases in the relevant
product category. A search of patent literature—an underutilized
tool—can also inform the design team about the efforts of others to
differentiate, providing a historical and current survey of the
design field. For inspiration, designers should also consider the
elements that have differentiated successful product offerings in
the past. An interesting survey of such product offerings is found
in the work of William Lidwell and Gerry Manacsa in their book
Deconstructing Product Design. 83 It explores the meaning of “good
design” in the context of a large field of consumer products, from
the vodka bottle of ABSOLUT to the ZIPPO lighter. By considering
iconic designs and the elements that made them successful, design
teams will be inspired to incorporate similar elements—similar in
result as opposed to form or function—into their design solutions.
By deciding early in the design effort how a prospective design
solution should best differ from rival offerings and what theme the
design will communicate, design managers and the design team
can target the kind of design elements that can become powerful
differentiators. And as illustrated by the case studies above, for
example, they can select design elements that can be protected by
utility patents and those that can be separately protected by
design patents, buying precious time for the product to achieve
success and for the design to develop secondary meaning to
support trade dress and registered trademark rights. A thoughtful
and skilled approach (and some good luck in the marketplace) may
lay the foundation for the next design icon.
Whether or not this strategy was planned with conscious
forethought, Henry Dreyfuss and Honeywell benefited from the
long-term commercial advantage of a trademark registration for “a
thermostat cover that is circular and rounded in shape.” Similarly,
Eames and Herman Miller benefited from registered trademark
rights for the EAMES Lounge Chair, obtained after many years of
targeted promotional strategies to preserve its distinctiveness in
the marketplace. In contrast, Bose may not have appreciated the
83. William Lidwell and Gerry Manacsa, Deconstructing Product Design, Rockport
Publishers, 2009.
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extent to which consumers would consider ornamental design
features when buying its speakers; if it had, perhaps it could have
built a strategy to protect ornamental features of its 901 speakers.
But the plan stage of a strategy for deliberate differentiation
is best exemplified by Coca-Cola. It set out to differentiate its soda
and deliberately selected the bottle’s design as a means to do so.
Coca-Cola wanted consumers to instantly recognize (and choose)
the real thing.
B. DELIVER: Making Differentiation a
Specific Deliverable of the Design Process
And Coca-Cola delivered! Indiana’s Root Glass Company took
on the design challenge and proposed a bottle inspired by ribbed
cocoa beans, and its design was the clear winner. 84
Talented designers will hit upon great product designs. But
even making something beautiful is not enough if it is not
distinctive or capable of standing out from other products. If not
informed by what came before or exists now, even the most
talented designer cannot differentiate deliberately. And those that
produce versions, albeit more beautiful, of what already exists, do
not truly differentiate. Such endeavors disregard a basic tenet of
innovation and marketing—it’s not about fitting in; it's all about
standing out.
Working within the parameters of the design challenge, the
team should deliberately identify preferred modes of design
differentiation and then generate design concepts that will
promote that differentiation. Design differentiation is best created
with an accurate picture of the relevant state-of-the-art, which
provides a starting point for new product offerings or expansions
into new business opportunities. 85 This provides an opportunity to
screen out design concepts that lack significant uniqueness when
compared to prior or rival designs. The completion of the “deliver”
task—the premeditated infusion of design differentiators into the
design solution—should be a required deliverable early in the
design process.
By requiring design differentiation deliverables from the crossfunctional design team, the resulting design solution is vetted by
the key disciplines that created, and that will ultimately protect
and promote, the design differentiator. And by integrating those
deliverables into the design process, design differentiation becomes
an organic byproduct of well-managed design efforts.
In a typical product development process, early design
concepts (conceived in a concept generation phase) are vetted (in a
84. Ryan, supra note 77.
85. Laura A. Schoppe and Nancy Pekar, Extracting Value from Your Patent Portfolio, §
19, PDMA Handbook of New Product Development (2d ed. 2005).
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feasibility phase) before being selected from among other design
concepts for further development. Which design concept “wins”
depends on factors ranging from functional performance and cost
to beauty of form. From the perspective of IP protection, a critical
factor is the design’s ability to differentiate. Which concept stands
out from among prior and competing product offerings? And which
concept represents the greatest opportunity for strong and
sustained IP protections?
In 1916, Coca-Cola concluded that Root Glass’s cocoa beaninspired design best met its design requirement of distinctiveness.
We can all recognize it by feel in the dark or lying broken on the
ground—just try it and you’ll see. Similarly, Hershey followed a
path of differentiation in 1921, when it introduced a distinctive
“identification tag” or “plume” extending from the top of its candy
wrapper.
C. PROTECT: Protecting Design Differentiators
Using Proactive Intellectual Property Strategies
Initially, design patents covered ornamental features of CocaCola’s iconic bottle design. U.S. Design Patent No. 48,160 was
issued November 16, 1915 for an early design, to be followed later
by U.S. Design Patent No. 63,657 for the “hobble skirt” contour
bottle on December 25, 1923.
First page of U.S. Patent No. D63,657
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Coca-Cola’s trademark registrations for the bottle design
reveal a strategy like Hershey’s—as if they were working from the
same playbook. They both reinforced three-dimensional product
designs by using their respective shapes as two-dimensional
traditional marks and seeking registrations for them. Coca-Cola’s
trademark registrations cover the bottle design with (‘147) and
without (‘884) wording, in two-dimensional outline (‘197) and the
“negative image” of the outline (‘915). Still others depict the bottle
with additional elements, emphasizing the famed “Coca-Cola”
script with the bottle (‘757) or associating it with design elements
symbolizing “green initiatives” for recyclable (‘231) and plantbased, rather than petroleum-based, materials (‘081).
696,147
(1960)
1,057,884
(1977)
2,085,197
(1997)
1,867,757
(1994)
2,155,915
(1998)
4,020,231
(2008)
3,901,802
(2011)
3,939,081
(2011)
Drawings of U.S. registrations of the Coca-Cola bottle,
with registration no. noted below each,
with year of registration.
For decades, Coca-Cola has strategically integrated its contour
bottle design into all aspects of the product experience, including
areas in which the actual bottle is nowhere to be found. Images of
the iconic bottle are present on Coca-Cola’s branded paper cups for
use with fountain beverages (see below), on delivery trucks, and on
cans.
© 2015 Georgia-Pacific LLC
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Such premeditated and strategic protection of intellectual
property rights is fundamental to sustained competitive
advantage. Strategies must contemplate and anticipate the
important interplay among the elements of innovative designs, the
legal protocols available for protecting those design elements, and
the ultimate semiotic bond sought to be formed between designs
and consumers. 86 In terms of the design effort itself, successful
strategies will benefit from synergistic collaboration of intellectual
property counsel with the remainder of the cross-functional design
team, all within the framework of the staged design process.
Design managers, working in conjunction with IP counsel, can
and should develop strategies to protect the differentiating
elements of their design innovations. With such strategies, they
can achieve long-term commercial benefit throughout the lifecycle
of a product offering. And by employing principles of “value
transference”—or converting the advantages of uniqueness in the
market into enduring brand equity—design managers can leverage
the impact of successful product offerings into incremental product
modifications, line extensions, future product offerings, and even
into new markets. 87
Intellectual property protections, such as the rights conferred
by patents, trademarks, trade dress, and trade secrets, and the
strategies used to secure those protections, need to be tailored to
long-term business objectives. By recognizing design protection as
a valuable commercial asset, companies can pursue design
ownership−the enviable state of being both armed to prevent
others from using a unique design and free to use that design
without infringing the rights of others. 88 To do so, counsel sets
strategies to secure comprehensive intellectual property rights,
utilizing all available modes of design protection, 89 including
protection in countries such as those where a design will be sold or
made or licensed. Counsel also works closely with designers to
facilitate and encourage the development of protectable designs,
and cooperates with the marketing team to solidify design rights in
the marketplace.
In the context of product configurations, it can be effective to
pursue complementary and concurrent protections under both
patent and trademark law. 90 For example, utility patents can
86. Conley, Inventing Brands, supra note 68.
87. Conley, Competitive Edge, supra note 1.
88. Joshua L. Cohen, Law Meets Design: Transforming Valuable Designs into Powerful
Assets, Design Mgmt. Rev. (Spring 2006); Joshua L. Cohen, Strategies for Integrating IP
Review into New Product Development Processes, Visions Magazine, Prod. Dev. & Mgmt.
Ass’n (Sept. 2006).
89. Joshua L. Cohen, Managing Design for Market Advantage: Protecting Both Form
and Function of Innovative Designs. 15 Design Mgmt. Rev. 82 (Winter, 2004).
90. Id.
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secure protection for functional features of the product or
packaging design. To the extent functionality is attributed to
design features in a utility patent or otherwise, however, such
features may be precluded from subsequent trade dress protection
as a matter of law. Thus, counsel should either exclude features
motivated by aesthetics and ornamentation from utility patents or,
if they are not excluded, ensure absolute clarity that such features
are not in fact functional and are instead selected solely for
aesthetic appeal or ornamentality. Concurrently, design patents
can secure protection for non-functional features of the product or
packaging design, thus protecting exclusivity of the design while
secondary meaning is established for source-identifying features—
an essential requirement for trademark protection. While design
and utility patents provide a monopoly for a limited time, trade
dress protection and trademark registrations can secure longlasting protection for source-identifying design features, enabling
indefinite promotion of the product design as a differentiator.
Before a design is commercialized, intellectual property
counsel should take steps to protect the design comprehensively.
Because designs inevitably evolve between the times when they
are conceived and when they are commercialized, counsel should
compare the final design to the design protections being pursued to
confirm they align. Intellectual property counsel, as part of the
design team, can also assess the ability of proposed design
elements to differentiate and determine the potential strength of
that differentiation.
Had Bose targeted trade dress protection as a means for
protecting the 901 speakers early, it might have developed a
proactive strategy for securing that protection. In addition to its
utility patent protection for the angled speaker orientation that
provides an acoustic advantage, it could have deliberately designed
a different exterior configuration driven solely by aesthetics using
grille cloth (as it suggested others could have done). Such a
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strategy might have landed the long-lasting trade dress protection
now enjoyed by Zippo and Honeywell. While the wisdom gained by
hindsight analysis suggests particular ways in which Bose may
have expanded its design protection, it also suggests ways in which
others can proactively pursue such protection.
D. PROMOTE: Promoting Design Differentiation
to Build Brand Equity
Coca-Cola is king when it comes to promotion. The consistent
use and emphasis of the bottle, including the preservation of the
overall look and feel of the original contour glass bottle in newer
plastic and aluminum bottles, is designed to ensure continued
rights in its iconic shape.
Excerpt from photo of a billboard featured on the cover of CocaCola’s 1994 Annual Report.
The back cover featured a similar billboard having the same
image, with the caption “Quick. Name an investment.”
Building on their work as collaborating members of the design
team, designers and marketing professionals and intellectual
property counsel must coordinate their efforts to promote long
term design differentiation. This requires agreement on and
communication of a consistent and coherent message as to the
benefit of protected design elements. The goal is an established
nexus between a design element and the consumer, and a unified
effort of the design and marketing and legal disciplines is
necessary to achieve that goal.
These coordinated efforts are initiated early in the design
process and are best continued after the design process is
completed, as a product offering is commercialized, and long
thereafter. Intellectual property strategies can be especially
important in the active lifecycle and decline/exit phases that follow
the launch of a new product offering. After launch, the design team
should establish procedures for monitoring the activities of
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competitors and policing the intellectual property rights that
protect the design. During the active lifecycle phase, design
improvements and product line extensions can secure new
competitive advantages. In the decline or exit phase at the end of
the product lifecycle, companies can extract value from their
intellectual property assets. Instead of allowing them to go unused,
intellectual property assets can be harvested at this final phase by
licensing or selling them to others, by using those assets as
leverage to settle disputes with others, or by developing design
innovations that build upon heritage designs to deepen brand
identity.
Proactive promotion of design differentiation is crucial to
sustained commercial advantage. Promoting design differentiation
to consumers deepens the consumer-product bond. Herman Miller
employed bold advertising campaigns featuring “look for”
advertising for the EAMES Lounge Chair. Hershey, finding itself
in need of a way to differentiate from competitors, added the
unique plume to its packaging and embarked on a similar
campaign to educate consumers about how to identify its product.
Promoting the sources and dividends of design differentiation
internally within the company helps to ensure that a consistent
and coherent message will be communicated about design
elements in internal and ultimately in external communications
such as advertisements and company literature. It also provides a
practical vehicle by which design managers can explain to
corporate executives, clearly and effectively, just how important
design is to business success. By explaining the meaning and
benefits of design differentiation to company executives, design
managers can articulate how design contributes to business
success generally and how a particular design solution meets
specific business objectives.
The plan-deliver-protect-promote framework prompts design
teams to collaborate with IP counsel as they differentiate
deliberately. It helps all those involved in design innovation to
answer important questions and to complete defined milestones
throughout the design process. Illustrated as a linear process, this
framework for deliberate differentiation ideally follows a
sequential path:
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V. CONCLUSIONS
Competition based on design differentiation generally
promises greater profit margins and longer-lasting customer
loyalty. It almost always trumps cost competition among
commodity goods as a means for securing market share. But the
full commercial value of design innovations is realized only after
transforming those valuable designs into commercial assets, and
IP counsel is uniquely positioned to oversee this transformation.
To do so effectively, design and brand managers first must
recognize design innovations as potential assets and then execute
strategies for the protection and promotion of design
differentiators throughout the design process and beyond.
As the examples discussed above demonstrate, design teams
and their innovative creations benefit significantly from proactive
and purposeful design differentiation. Design teams can maintain
faith that their talent (and serendipity) will lead them to
successful designs, but they should also execute strategies to
maximize the ROI of their design efforts. That way, design
innovators can seize the opportunity to extend design’s first-tomarket competitive edge into robust, long-lasting commercial
assets.