Trademark 103: Should You Register 3D

By Annie Dike, Esq.

Coca-Cola’s curvy bottle. Toblerone’s triangular bar. Are those shapes, alone, trademarkable?

If your answer is yes, what features of a particular shape make it trademarkable and whether the packaging or marketing has anything to do with it. While it is a unique approach to protecting intellectual property, complete with its own hurdles, there are benefits to 3D trademarking. When it comes to trademarking your client’s brand, have you considered the shape of things?

Shape Trademarking 

“Give me a break, give me a break.…” Any particular brand come to mind with those words? That’s why it is copyrighted. While Nestle’s Kit Kat bar and its very famous “Break me off a piece” jingle is recognizable around the world, what else do many customers immediately associate with a Kit Kat? That iconic four-wafer shape. Can you patent a shape? While the answer is yes, it is uncommon. Many big name manufacturers trademark the two-dimensional logo that accompanies their brand.

Think Nike’s swoosh, McDonalds’ golden arches and the Shell Oil scallop. Few attempt to trademark the specific shape associated with their product.  In 2008, Apple did this with the iPod, trademarking the specific three-dimensional shape: a rectangular device with a square screen and circular control. Why? In addition to immediate visual product recognition, one key advantage of trademark versus patent is that while patents expire after a period of time, trademarks can be continually renewed. 3D trademarking, however, can be hard to do because shapes unique enough to trigger immediate product recognition are rare and, according to the high court in the UK, must meet a higher standard.Many big name manufacturers trademark the two-dimensional logo that accompanies their brand.
Tweet: Many big name manufacturers trademark the two-dimensional logo that accompanies their brand. https://ctt.ec/3xXk4+

A key advantage of trademark versus patent is that while patents expire after a period of time, trademarks can be renewed.
Tweet: A key advantage of trademark versus patent is that while patents expire after a period of time, trademarks can be renewed. https://ctt.ec/flOfm+

Shapes unique enough to trigger immediate trademark recognition are rare.
Tweet: Shapes unique enough to trigger immediate trademark recognition are rare. https://ctt.ec/t1JrR+

The Four-Bar Shape Battle 
Nestle and Cadbury have been fighting the four-bar shape battle for over a decade. At the heart of it lies Cadbury’s Norwegian candy bar, Kvikk Lunsj, which also features a four-wafer shape. Although Cadbury’s packaging, logo and marketing are sufficiently distinctive to avoid confusion with Nestle’s Kit Kat bar, Nestle continued to push for a trademark of the iconic shape to preserve its stronghold in the chocolate market as the singular four-bar wafer in the UK, as it had done in the U.S. The UK Court of Appeal, however, rejected Nestle’s claim for trademark protection, finding Nestle failed to show an “acquired distinctiveness.” Meaning, the consumer must, from the shape alone, perceive the goods as being Kit Kats—not that it “looks like a Kit Kat,” as Nestle’s mass consumer study showed, but, rather, that “it is a Kit Kat.”

Many commentators have criticized this ruling as setting an arbitrary higher standard for shape trademarks than the registration of two-dimensional (logo) trademarks. However, the UK court also pointed to Nestle’s packaging and marketing to show Nestle did not have the intent to market the product, visually, as a unique four-wafer bar. “Give me a break!” Nestle would say. But, when you step back and look at the package, the product name and the lettering on the Kit Kat wrapper, the court does have a point. Kit Kats are sold in an opaque wrapper. The four-bar shape is not displayed on the package nor is it alluded to by the name of the product or the text on the package. That starts to make real sense when you think of other food manufacturers that have successfully trademarked their unique shape. Think of Hershey’s and the distinctive “plume” shape of its Kisses. That foil-wrapped plume always graces the Kisses bag and, to be frank, the name “kisses” certainly conjures the idea of small, bite-sized treats. How about Tostito’s Scoops? The iconic scoop shape is always shown on the bag and the name itself, “scoops,” is an undeniable reference to the shape of the product.

Conclusion 
While there are certainly benefits to trademark registration versus patenting, 3D protection may be a higher hurdle to clear. Keeping these things in mind when helping your clients design packaging, promotional materials, and marketing campaigns that allow for 3D protection may prove invaluable down the road. Do you have any clients with a product shape so unique it’s trademarkable?

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Annie Dike, Esq.

As a former trial and litigation attorney, Annie Dike has a keen eye for expert evidentiary issues and a clear voice for practical solutions.  Annie is a published author of both fiction, non-fiction, and a comprehensive legal practitioner's guide to hourly billing published by LexisNexis. Annie graduated from the University of Alabama School of Law cum laude.  While in law school, she served as Vice President of both the Bench and Bar Legal Honor Society and the Farrah Law Society and was a member of the Alabama Trial Advocacy Competition Team as well as Lead Articles Editor of The Journal of the Legal Profession.  Ms. Dike has published articles in The Alabama Lawyer and DRI MedLaw Update and has spoken on numerous legal issues at various conferences nationwide.

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