Paper Boy Wine as Trade Dress

A new product located in a grocery store wine section near you is called “Paper Boy,” which is a brand of wines from Paso Robles, California, where the wines are packaged and sold in “bottles” made from compressed, recycled paper. Such is the first ever wine sold in paper bottles and the bottles weigh roughly one-seventh the weight of an ordinary glass wine bottle.

Unique packaging like this is no stranger to the wine business. The following packages have been used over the years to market and sell wines to consumers:

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These alternatives packages are interesting in the way that they overlap with trademark law. Trade dress is a specific sub-category of trademark law, and it basically is a type of trademark where a party can protect certain elements of a product’s design or packaging, provided that the elements of trade dress act in a trademark way (i.e. they indicate the source of the goods).

The classic example of protectable trade dress is something like the old school Coca-Cola bottle.

coke-bottle

The wavy design is protectable trade dress, and in addition to the other trademarks and protectable IP associated with that bottle (the word COCA-COLA, the image of the word, the slogan “Enjoy,” the copyright rights of the image, and maybe even just the color red), the unique shape of that bottle is probably protectable as trade dress. An example more close to the alcohol beverage industry would be the signature red wax found on the top of a Maker’s Mark bourbon bottle.

 

 

 

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So, one might see Paper Boy and believe that packaging wine in this type of paper bottle could be protectable trade dress. Well, not so fast. One of the primary requirements to have protectable trade dress is that the trade dress must not be functional as its primary purpose. Why? Because if one can own trademark rights in trade dress, that means he or she can stop everyone else from using that trade dress. If something is primarily functional, then it would mean that one person or company can have a monopoly on a particular functional design, and that is contrary to the purpose of trademark law (table the fact that patent law might seek to promote this, however).

Nevertheless, if a company wants to protect an aspect of trade dress by registering it at the federal level, it must convince the trademark examiner that the claimed design features are not primarily functional. Thus, you never see Maker’s Mark touting the wax as being the ideal way to seal a bottle of whiskey. No, they use it to promote the brand in a cosmetic sense, and never in a functional sense.

By contrast, on Paper Boy’s website under the “About Us” section, there includes the following marketing jargon: “It’s the first 100% fully recyclable wine that is 80% lighter than glass and made with ultra-green packaging.” (Again, table the fact that it is the “bottle” that is recyclable and lighter than glass, not the wine itself) Nevertheless, if Paper Boy were to try to register as protectable trade dress the Paper Boy packaging, the examining attorney might use this language as evidence to deny the registration, arguing that even the company itself admits that the packaging is primarily functional.

The good news, however, is that companies that purport to care about the environment create and market packaging like this for the exact purpose that it is functional. I doubt these companies would deny this, and Paper Boy probably would have no problem with the next winery down the street using the same eco-friendly recycled paper wine bottles. However, once someone is on to something good, it is only natural to try to find a competitive advantage against other companies however it may come. In terms of trying to corner the market for paper wine bottles, that advantage will have to be found elsewhere.

(This posting is not to be construed as legal advice. If any of the information in this posting relates to legal issues that you are facing, you should contact an attorney.)

© All rights reserved Kevin Guidry 2014.

This entry was posted in Consumer Protection law, Copyright Law, Intellectual Property Law, Patent Law, Spirits, Spirits/Beer/Other, Trademark Law, Wine Marketing, Wine Sales/Marketing. Bookmark the permalink.

2 Responses to Paper Boy Wine as Trade Dress

  1. Kevin Guidry says:

    Well, I think that goes back to the same ornamental vs. functional distinction that exists with paper wine bottles. As long as the would-be plaintiff who is using the same type of packaging can show the judge that its package is functional, then they would prevail over the defendant (here Heineken) from trying to stop them. And in a “real world” sense, the defendant touting functionality makes it an easier question. I think the harder question is when the company has never made any statements advertising functionality, but the package would happen to have some functionality to it. For example, what if the Coke bottles were shaped that way in order to have them fit more neatly and compactly in a case (sort of like a head-to-toe layout)? That might be something where Coke doesn’t tell anybody that about the functionality, but they in fact they benefit from that functionality all day long. That would be a closer call.

  2. Jacky says:

    Hi Kevin! This post made me think of Heineken beer, and their near constant threats to put beer in square bottles, to maximize shelf space and ease of transport. At one point in the distant past, didn’t they propose a square bottle that would double as building bricks for houses? What do you see as the future of wine bottling? I never would have guessed paper. If Coke can protect their bottle shape as trade dress, would Heineken be able to protect a square shape, if they themselves propose it for functional purposes?

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