November–December, 2015 Vol. 105 No. 6

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

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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, Wilmington, Delaware, Associate Member, International Trademark Association.

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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-to-market 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 return-on-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 indefinitely5 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 non-functionality 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.”).

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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 stitching18 to the rooster-tail of water generated by Yamaha’s Wave Runner watercraft.19 Other examples include product configurations like the WEBER barbeque grill20 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 long-term 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.

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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 cross-section 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 conically-shaped 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 non-functional 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 non-functional. 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 First page of U.S. Patent No. 2,394,920 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 anti-competitive 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 five-sided 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 single-

cutaway 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-sale60 or smoky bar61 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 two-dimensional 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 non-functional 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/the-story-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-of-the-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 cross-functional 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 bean-inspired 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 Coca-Cola’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 plant-based, 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 long-lasting 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 Coca-

Cola’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-to-market competitive edge into robust, long-lasting commercial assets.