Thursday, February 19, 2009

Article Spotlights VitaminWater Trade Dress Enforcement posted an article (link here) regarding the trade dress enforcement efforts undertaken by Energy Brands, Inc. (d/b/a Glacéau), the company behind the fruit-flavored “enhanced” water VitaminWater which was purchased by Coca-Cola in 2007 for $4.1 billion. The article describes the efforts by the company’s legal team in aggressively going after competitors that try to imitate VitaminWater's bell-shaped water bottles with their two-toned labels (pictured above).

Glacéau is currently seeking to register its VitaminWater bottle with the U.S. Patent and Trademark Office ("PTO"). Glacéau received a registration for the bottle label. However, Glacéau’s application to register the actual bottle design (filed June 24, 2008) has been preliminarily refused by the PTO on the basis that the product packaging is functional and thus incapable of serving as a source identifier and furthermore on the basis that the packaging is not inherently distinctive. The PTO is currently only willing to register the wording and design on the label (which Glacéau already has).

With Coca-Cola’s trademark legal team supporting it, I would expect a significant response to the PTO’s action by Glacéau arguing that its bottle design is not functional and that product packaging is inherently distinctive (or alternatively, Glacéau can prove acquired distinctiveness based on its strong marketing efforts to date – after all, if Coca-Cola was willing to pay $4.1 billion for the company, it must have been doing something right).

Anyone care to make any predictions on whether Glacéau will prevail? One thing I could not have ever predicted – consumers would pay good money for flavored sugar water. Isn't this just bottled Kool-Aid?


Michael E. Hall said...

Some examining attorneys, when refusing a product configuration or product packaging mark on the ground that it is not inherently distinctive, also issue the functional refusal as a matter of course.

I didn't look closely at the evidence, but the examining attorney does seem to be at least a little confused about the functionality doctrine. He wrote, "The bottle in its entirety is functional because it holds the goods; without the packaging the liquid that is applicant’s good would spill everywhere," but that, of course, does not make the bottle functional. On that view, all bottles would be functional. Merely because a product feature performs a function does not make it "functional" within the meaning of 2(e)(5).

My two cents: the functional refusal will be withdrawn and the applicant will ultimately be able to demonstrate acquired distinctiveness.

Eric said...

The shape of the bottle doesn't seem particularly distinctive to me, apart from the label.

Ryan Gile said...

I agree with your point on the functional refusal. The interesting question is whether Glacéau will be satisfied with a principal registration under Section 2(f) or will it try to push inherent distinctiveness.

Michael E. Hall said...

It will be interesting to see what, or if, Glacéau argues with respect to inherent distinctiveness. I think the examining attorney is right that the bottle is not inherently distinctive, and it may be difficult to get him off that refusal.


This was an interesting post. Can you imagine when you can mix any flavoring with simple water; take down a few vitamin pills with the water, that anyone would try to create a 'vitamin water' to start with????

I guess it's all about marketing to a bunch of idiots or individuals who want some kind of 'status' bottle - paying 'big-time' for absolutely nothing.

Trade-mark? My goodness, who would go so far as to doing that - I've been guzzling my 'flavored water' for 55 years now; taking my vitamins for 60 years, and I'm not about to be taken in by anything like this 'dress enforcement' - or any other poppy-cock........

I do enjoy your blog; it reminds me of those days when I worked for a patent and copyright attorney; amazing what people thought they could call 'original' or 'their own' - simply amazing.