Summer camps are winding down at our house, which means the amount of Capri Sun being consumed is about to fall off precipitously until next summer. Of course, Capri Sun has the ideal packaging for camps, being all but indestructible. The packaging overcomes even the two typical nagging feelings that come with consuming a Capri Sun: (1) what exactly is in this that makes it taste so unnatural; and (2) how is it possible for them to make a package that is completely unrecyclable except directly into odd looking handbags and pencil pouches?

Capri Sun (owned by Sisi-Werke Betriebs) recently sued Faribault Foods for selling similarly shaped pouches of juice under the Walmart "Great Value" brand.

Sisi owns U.S. Registration 1,418,517 for the shape of the Capri Sun drinking pouch.

The drawing of the trademark is below:

Although the drawing is pretty bad, this particular registration is for the trade dress of the overall shape of the Capri Sun pouch.

Most people would likely be surprised to find that the Capri Sun pouch has its own registered trade dress. Although not well known, in the U.S., trade dress can be registered just like a trademark if: (1) it is not functional and (2) it is distinctive. However, the predominant issue is whether the trade dress is functional. The test for functionality is whether the trade dress is "essential to the use or purpose of the article or if it affects the cost or quality of the article."

The U.S. trademark office will also look at these four things when determining whether trade dress is functional:

the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

advertising by the applicant that touts the utilitarian advantages of the design;

facts pertaining to the availability of alternative designs; and

acts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Note that the first item refers to "utility" patents rather than design patents. This is because a feature that is claimed in a utility patent, must necessarily be functional. In the next in the list, if you gush about the usefulness of your trade dress in your advertisements, then those statements will be used again you as evidence that the trade dress is functional. You may also be required to submit evidence that there are other possible designs within the same type or category of goods. An interesting twist is that if a design "embodies a superior design feature and provides a competitive advantage to the user" it is functional." TMEP 1202.02(a)(v)(C).

Because a trademark may not protect any functional aspect of a product or packaging, the U.S. trademark office will allow use of dotted lines to indicate the functional aspects, which dotted lines effectively disclaim those features from the trade dress registration.

What makes the Capri Sun registration difficult is that it has so many dotted lines that it is difficult to tell exactly what is protected?

If the U.S. trademark office determines that the trade dress is not functional, then the trademark examiner will next determine whether the trade dress is distinctive. TMEP 1202.02(b) Here it gets tricky again because there are two types of trade dress: (1) product design; and (2) product packaging. Product packaging can be inherently distinctive (think of it as quirky, quirky packaging can readily identify a source of goods), but product design cannot because people may just think you made a weird looking widget. Sometimes it becomes difficult to tell the difference between product packaging and design. For example, the Capri Sun pouch is packaging, but it could also be argued that the pouch is part of the product since it is a beverage. In any event, product design is presumed NOT to be distinctive, so whenever you are dealing with product design you'll have to show that you have made people come to recognize the design as your product in the marketplace through your advertising, etc. (think Pepperidge Farm goldfish).

If your product packaging or design survives all those tests (which somehow Capri Sun's packaging did), then it can be registered with the trademark office.

An interesting question, which we'll discuss soon, is how does having a design patent affect trade dress registrations.

Good luck out there.