January 11, 2022
Bryan Wheelock Shares IP Design Protection Strategies in Nutrition Industry Executive Magazine
Intellectual property is important to every industry, and the nutrition industry is no exception. Savvy executives are no doubt aware that patents and trade secrets protect product formulations and that trademarks protect their brand names and logos.
However, they often overlook protection for the appearance of their products and their packaging. Design patents, trade dress and copyright each protect different aspects of the appearance, and do so at a reasonable cost. This protection can be critical to combatting counterfeits and me-too brands.
Design patents can protect the novel shape, color and markings on nutritional pills, tablets, and capsules. For example, U.S. Patent No. D907760 protects the appearance of REMfresh melatonin supplements for 15 years from the date of issuance.
Design patents can also protect the appearance of the packaging for these supplements. For example, U.S. Patent No. D833,883 protects the appearance and placement of a leaf design on the package for New Chapter supplements. Design patent applications must be filed within one year of the first public disclosure of the design. It takes about 20.4 months to obtain a design patent, and the allowance rate is just over 85 percent. Design patents provide 15 years of protection from the date of issuance, providing exclusivity until the design can be registered as a trademark.
The distinctive, non-functional appearance of a product and its packaging is protected trade dress. While trade dress will be protected by the courts against another’s use of the same or similar trade dress that is likely to cause confusion, it is advisable to document and secure this protection by registering it as a trademark. Registering trade dress as a trademark makes the trade dress easier for third parties to find and avoid, and it speeds up enforcement and reduces costs as the certificate of ownership is evidence of
ownership and the exclusive right to use.
While design patents protect a design from the date of issuance, trade dress only protects a design that has become distinctive of the owner in the minds of consumers.
Reg. No. 5832336 protects the appearance of the same Refresh melatonin supplement protected by U.S. Patent No. D907760 (above). Trademark protection largely overlaps design patent protection with one important distinction: trademark protection lasts as long as the mark remains in use. Any distinctive, non-functional color, shape or designation of a product can be protected with a trademark registration.
Packaging color schemes and graphics can also be protected. Reg. No. 4816250 protects the blue color of the Beast Creature package; Reg. No. 5882812 protects the graphics on the Menta Biotics package; Reg. Nos. 6373743 and 6373744 the shape of the bottle and cap of Zarbee’s Naturals Immune Support; and Reg. No. 5,148,890 protects the blue and silver bands on Douglas Laboratories’ Eye Moisture Support.
Any distinctive, non-functional, feature of a nutritional product or its packaging can be protected with a trademark registration, and if it is something that customers recognize, it probably should be protected. Unlike design patents, which must be filed within a year of the first publication of the design, trademark applications on product and packaging features can be fi led at any time, and in fact the longer the mark has been in use, the easier it can be to register.