Most entrepreneurs have a general understanding that branding is at the center of their business. They are aware that branding (and the trademark protections that come with it) is what distinguishes their company and its products from others, and in many cases, such as in the fashion space and more significantly, in world of luxury goods, may be precisely the thing that entices consumers to buy a product in the first place. Having said that, many burgeoning business owners are not well-versed in the workings of trademark law and as a result, do not appreciate the value and importance of having a trademark strategy in place.

Put simply, a trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to indicate the source of a party’s goods/services and distinguish them from those of others. Over time, trademarks – whether it be a brand name or logo … or the specific use of a particular color or unique product packaging – can acquire a significant amount of goodwill and reputation and become valuable marketing and advertising tools. Incorporating trademarks into your brand development process early can provide significant advantages for your business. The following are key considerations for formulating your trademark strategy … 

1. Prioritize your most valuable trademarks 

Many businesses employ multiple trademarks across their product and service offerings. For example, you may operate your business under one name and logo, sell a variety of different products each under its own unique product names, run a series of advertising campaigns featuring brand-specific slogans, and utilize distinctive product packaging. 

Given the value that trademarks can add to a business, you might be tempted to seek trademark – and/or trade dress – registrations for every word, logo, slogan, and source-identifying product  features at play. However, obtaining and enforcing a wide array of trademark registrations, particularly across multiple classes of goods and services, can be costly. As a consequence, it typically does not make commercial sense for businesses (especially those in the early stages) to apply to register every single trademark they use in connection with their company. 

Rather, you should give priority to those trademarks which provide the greatest value. For example, business names and flagship brands are more important than slogans used as part of short-term advertising campaigns or product names that are part of limited-time offers.

It is also important to remember that trademarks can be registered any time before, during or after product launch. Therefore, it is possible to obtain trademark protection after a mark proves to be commercially successful. And still yet, it is worth remembering that in an array of jurisdictions, such as the U.S., where trademark rights are borne by actual use of a mark in commerce and not by way of a trademark registration, a brand can be amassing rights in a mark simply by using it without ever having filed or received a registration for it. 

2. Keep future business goals in mind

Your trademark strategy should recognize that your brand will develop and potentially expand over time. When filing a trademark application, it is important to consider not only the products or services that your business currently offers but also those that you can reasonably foresee offering in the future. This is particularly relevant for fashion companies, many of whose offerings morph overtime to inhabit various other product categories. Hermès, for instance, made headlines early this year when it announced that it would launch a line of cosmetics. Before that, in 2017, Gucci revealed that it was getting into the home décor business, offering up “an eclectic collection of items with which customers can dress their own spaces.” Meanwhile, this summer, New York-based Rosie Assoulin, the womenswear brand known for its “bold statements of color and silhouette,” launched a natural wine label. 

With these examples (and many, many others) in mind, it is important that when preparing to file a trademark application, a brand keep in mind that such an application must list the specific goods or services for which it is seeking protection. Once you file a trademark application with a certain list of goods and services, you cannot later amend that application to add goods or services that are broader than those included in the original application. For example, if you file a trademark application today for clothing and your company decides to develop a jewelry line next year, you cannot amend your trademark application to include jewelry. It would be necessary to file a new application to capture the additional goods.

This reality must be balanced with the fact that in order for a mark to be registered in the U.S. and for a registration to remain valid, the trademark holder must use the mark in connection with all of the goods/services identified in the application. If a registration holder ceases to make consistent use of his/her mark in connection with all of those goods/services, he/she risks losing those rights. 

3. Identify key markets

Trademark rights are country-specific. A trademark application or registration in one country does not grant you rights in another. (That means that even if you have been using your brand name in commerce consistently in one jurisdiction for years, another company very well may have rights in the same trademark in a different country if you were not using and/or did not file a trademark registration for the mark in that country early enough).

To ensure trademark availability, you should consider seeking protection not only in the countries in which you currently offer products or services, but also those in which you plan to expand in the future. Otherwise, you may find your trademark unavailable in key markets, forcing your company to launch under a different brand name and, in turn, losing any valuable pre-existing goodwill.

Again, such considerations should balance current and future markets for your goods/services against the expenses associated with building and maintaining an international trademark portfolio, and any filings should be prioritized accordingly.

4. Engage in early trademark searching

Incorporating trademark clearance searches into your brand development process at an early stage ensures that trademarks of interest are available for use and registration. A trademark search should be conducted as early as possible and before significant investments are made launching, advertising and promoting new trademarks. 

While the upfront cost of a trademark search may seem high for businesses with limited resources, it is relatively inexpensive when compared to the costs of having to rebrand once a product has already been launched or promoted, let alone the costs of defending a possible trademark infringement lawsuit.

At the same time, while it may be possible to conduct your own preliminary search of the relevant trademark database (i.e., the database in the country in which you are seeking to file an application), such simple searches typically only capture trademarks that are identical (or virtually identical) to your trademark and may not identify potentially relevant and problematic trademarks. For example, trademarks that are spelled slightly differently (e.g. LYFE and LIFE), but are identical when sounded or in meaning may not be captured by such a search. Accordingly, it is advisable to seek the assistance of an experienced trademark practitioner to conduct a trademark search.

5. Secure other key assets 

In addition to trademark availability searches, an effective trademark strategy should also consider whether corresponding key assets are available. These include domain names and social media handles, among other things that are of critical important in the modern marketplace. Securing corresponding domain names and social media handles will not only complement your brand protection strategy but will also prevent potential infringers and trademark squatters from acquiring them first.

A thoughtful trademark strategy adds value and prevents misuse of your brand by others. Keeping these considerations in mind while formulating your trademark strategy will help you to build a powerful brand that aligns with your current and future business goals.

Nora Labbancz is an associate at Smart & Biggar LLP. She provides strategic counseling and IP services to clients throughout the trademark lifecycle, including clearance, prosecution, opposition, and enforcement.

For every order that a consumer makes on Glossier’s e-commerce site or in its small network of brick-and-mortar outposts (pre-COVID, that is), the products come in a millennial pink ziplock pouch. In much the same way as the 6-year old brand’s stylized “G” logo and its catchy product names – from the cult-favored “Boy Brow” eyebrow product to its “Balm Dotcom” lip salve – have become trademark elements of the billion dollar brand, so, too, have certain aspects of its packaging. That is precisely what Glossier argued when it filed two trademark applications in the spring of 2019 for its inherently-Instagrammable packaging. 

A little over a year after Glossier filed applications for those packaging-specific trademarks, it has been issued a registration for one of them. On Tuesday, the U.S. Patent and Trademark Office (“USPTO”) handed Glossier a registration for the pink bubble wrap pouch that the venture capital-magnet has been using since October 2014 in connection with an array of cosmetics. Specifically speaking, the mark consists of a certain shade of the color pink – presumably Pantone’s 705C hue – “as applied to bags featuring lining of translucent circular air bubbles and a zipper closure.” 

The registration for the pink pouch comes after Glossier – which was born on the back of founder Emily Weiss’ popular beauty site, Into the Gloss, and has since gone on to nab a $1.2 billion valuation (as of Match 2019) – faced pushback from the trademark office, which preliminarily responded to Glossier’s application by refusing to register the mark. In a July 2019 Office Action, USPTO examining attorney Michelle Dubois stated that while she could not find any conflicting marks in the trademark office’s database of registered and pending marks that would stand in the way of the registration of Glossier’s mark, she, nonetheless, took issue with the pink pouch for a couple of key reasons. 

Functional & Non-Distinctive?

For one thing, Dubois asserted that the pink pouch was ineligible for registration because it is “a functional design for such packaging,” which is problematic, as functionality is an absolute bar to registration. (Glossier was able to overcome this aspect of the refusal by submitting a new trademark drawing, and “clarifying that the air bubbles and the packaging itself are not claimed as features of the mark,” which exclusively consists of “the claimed color pink as applied to a very particular type and configuration of product packaging.”)

More than that, Dubois argued that the mark “consists of a nondistinctive configuration of packaging for the goods,” making the ziplock pouch incapable (on its face) of identifying the source of the products at play. This was due, at least in part, to the fact that bubble wrap lining is a common feature of “goods that are going to be in transit or are going to be shipped,” per Dubois, and Glossier’s use of “the color pink … on such pouches is not unique.” 

With that in mind, Dubois preliminarily refused the mark on the basis that “consumers will not immediately consider [Glossier’s] packaging as an indicator of source.”

“Glossier’s Pink Pouch”

On the heels of the USPTO’s Office Action, counsel for Glossier filed a 252-page response in January, in which it set out to establish that the pink pouch does, in fact, serve to indicate the source of the products associated with it. The bulk of that filing centered on the brand’s assertion that its use of the color pink on its packaging has acquired distinctiveness, namely “based on five years’ use of the mark, as well as extensive evidence that when the relevant consumers see the color pink on a bubble-lined, zip-top pouch, they immediately recognize it as Glossier’s Pink Pouch.” 

To prove that, Glossier provided third-party media articles about the company that mention its use of the pink pouch. It also pointed to examples of consumer social media posts featuring the pink pouch, which Glossier says “demonstrate that many consumers already associate the Pink Pouch with [it], [while also] serving to educate even more consumers and reinforce the association between the Pink Pouch and Glossier.”

The brand asserted that the pink pouch “has been used continuously since at least as early as 2014 [by Glossier], and in 2018, the revenue generated by sales of goods [that included use of] the mark amounted to more than $100 million.” And all the while, the company says that it “has consistently promoted the Pink Pouch by featuring it on the Glossier website, in numerous marketing emails, in social media posts, and even on New York City subway ads.” 

With such an “abundance of evidence” in mind, Glossier asserts that “the color pink, as applied to bags featuring lining of translucent circular air bubbles and a zipper closure, has acquired source-indicating significance in the minds of the relevant consumers.” In other words, “when consumers see the Pink Pouch, they immediately recognize it as emanating from Glossier,” and thus, the mark should be registered. As of August 25, the USPTO agreed, issuing a registration to Glossier for the mark. 

It Makes Sense

Beyond being a clear demonstration of what brands are endeavoring to do in a branding sense in order to help set themselves apart in the minds (and wallets) of consumers in an inherently digital age, Glossier’s successful quest to earn a trademark registration for its use of the specific color pink on specific product packaging is interesting for a whole host of reasons, including what this potentially says about the role that social media can play in brand building (and showing secondary meaning). This is particularly relevant for young companies that do not have decades of continuous use of a mark and tens of millions of dollars in sales to point to, which is precisely what 125-year old Barbour, for instance, had in 2018 when it filed an application for registration with the USPTO for its famed wax jacket.

Speaking of social media, University of New Hampshire School of Law professor Alexandra J. Roberts says that it is noteworthy that Glossier’s evidence of secondary meaning included not only its own social media posts and those from paid influencers in its filing as evidence of secondary meaning, but also made use of examples of individual consumers posting photos on social media that feature the pouch. Such consumer-generated content “both reflects and contributes to the acquired distinctiveness” of the pink pouch trade dress, and overall, amounts to evidence that she says is “really strong.”

Beyond the sheer power of social media and influencer marketing, Roberts sees “Glossier’s speedy success with the registration” as reflecting the power of look-for advertising when it comes to establishing secondary meaning in the minds of consumers. “In assessing whether trade dress has acquired distinctiveness,” a registration pre-requisite for marks that are not inherently distinctive, “the USPTO and courts often want to see advertisements that highlight and play up the particular [trade dress] feature for consumers.” She says “that type of marketing does not always explicitly include language like ‘look for___ ,’ but may take the approach that points to the feature and directs consumers to pay attention to it as a source indicator.”

“That is what Glossier did by featuring the pink pouch on its website, in marketing emails, in social media posts, and in subway ads.”

Ultimately, Glossier’s process here, which has seen it “decide on packaging of a notable color and notable ‘translucent circular’ air-bubble design, identifiable at a glance, and endeavor to get it in front of as many eyes as possible, as often as possible,” as trademark attorney and former USPTO trademark examining attorney Ed Timberlake characterizes it, is right up the alley of the U.S. trademark statute … even if the mark at play is not a traditional wordmark or logo. In other words, many marks that people tend to characterize as non-traditional are actually “playing entirely traditional cognitive roles under the Lanham Act,” and that is what is going on here.

“At least as I read it, the Lanham Act [treats trademark rights] less like real estate,” or property, “and more akin to cognition.” With that in mind, “The point is not simply to make claims but to make an impression,” he says.

Timberlake states that it is likely that “an aggressive social media campaign behind a symbol less capable of distinguishing the source of goods [than Glossier’s pouch] may well have made less of an impression on consumers (potentially leading consumers to make less of a connection with applicant’s goods) and may well have had little but litigation to fall back on in an effort to carve out cognitive space.” 

Viewed in this light, he says that Glossier’s approach – which has seen it adopt a symbol, notably, colored bubble-bags, by which its goods may be distinguished from the goods of others – “seems to make a great deal of sense.” 

In 1942, the city of Paris was rife with shortages. While World War II would be over for the French within a couple of years, the wartime shortages were not winding down. In fact, for several years, the French government, faced with mounting deficiencies  and the inability to seamlessly transport goods among various cities across the country (due, in part, to “the pitiful state of ports, train tracks, roads and bridges”), had been observing a legally-established system of rationing, which saw the aggressive control of everything from bread and raw materials to gasoline and paper products. 

This meant that “there is no milk at all for ordinary people,” a reporter for the Guardian wrote at the time. “The sugar ration is about four ounces a week,” as for meat, that ration “worked out at about three ounces a week for each member of the family.” Since bones were included in that weight, the amount of food provided was less than a few ounces. For businesses, transportation services were largely limited, and the widespread deficits translated to a lack of supplies. 

For one company, a then-105-year-old, family-owned leather goods and apparel manufacturer named Hermès, one immediate impact of the enduring scarcity was its inability to acquire its usual product packaging. Neither the creamy beige and gold cardboard boxes nor the rich marigold-hued ones with a shade of bronze running along the corners that it had traditionally used to package its high-end offerings were accessible. The boxes that had “defined Hermès’ elegance” for decades were no longer within its reach. 

As the brand’s story goes, the only packaging that was available – and offered up to Hermès by its supplier – came in a vibrant orange, “the color nobody wanted.” Given the option of adopting a bright new hue for its boxes or being left without packaging for its equestrian-centric leather goods and growing businesses of handbags and ready-to-wear, which were first incorporated into the house’s offerings in the 1920s, Hermès chose the former, and “the orange Hermès box was born.”

The result is the birth of a brand-identifying color that is “iconic by accident.” That is how Hermès describes the orange hue for which its brand – and its packaging – has become known, given that “generations of boxes have followed since” it was first forced to adopt the hue. As Dana Thomas wrote decades later in her book, Deluxe, the color became the brand’s signature “almost overnight.”

The fact that the specific orange color – when used in connection with certain goods and services – is “symbolic of” a single brand, as Hermès puts it, is significant both from a branding perspective and from a legal one. Due to Hermès consistent and largely exclusive use of the “warm citrus color” on the packaging of luxury handbags, clothing, home goods, etc., the color itself – one that the brand says is “not listed with Pantone” (i.e., not part of the company’s standardized color categorization system) – serves as an indicator of source. In other words, when consumers see a box or shopping bag in that specific color, even without a brand name on it, they likely know it came from Hermès and some coveted leather good is likely inside.

In addition to being a valuable asset from a consumer perception standpoint, that level of recognition in the minds of consumers means that the particular shade acts as a trademark in much the same way as a brand name or logo. (A trademark is generally defined as any word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others, and following from the Supreme Court’s 1997 decision in Qualitex Co. v. Jacobson Products Co., that list can very well include colors).

Because of its specific and enduring use of the hue and consumers’ ability to link that color to a single brand as a result (to some extent, at least), Hermès has amassed trademark rights in the color and corresponding trademark registrations throughout the world. In the U.S., for instance, the brand maintains registrations that claim exclusive rights in the orange color in connection with its name and horse and carriage logo, as well as for the packaging of its various fragrances. 

Meanwhile, in its native France, as well as in Italy, Hermès has registrations for the color, on its own, for use on “product packaging” in connection with garments, leather goods, cosmetics and fragrances, and retail services, among other things. 

In the European Union, Hermès has not fared quite as well in terms of registrations for the color, itself, with the European Union Intellectual Property Office (“EUIPO”) refusing to register the mark in 2005 on the basis that Hermès failed to “demonstrate that the mark had acquired distinctiveness in the minds of the public as of the date of the application.” According to the EUIPO, this was partially due to the fact that “the color orange cannot be considered as an exceptionally unique and uncommon shade but as part of the basic colors [that are] used in advertising and on packaging for a wide range of consumer goods.” 

More than that, the trademark body for the 27-member bloc asserted that “consumers generally do not tend to identify the origin of products from a color per se,” and that without establishing the requisite level of secondary meaning, such a registration would “give its holder an unjustified monopoly over its competitors in the market.” 

Counsel for Hermès appealed the EUIPO’s decision, but proved unsuccessful after failing to provide a “written statement setting out the grounds of appeal,” according to the July 2005 decision from a 3-member panel for the EUIPO’s First Board of Appeal dismissing the appeal.

It would be interesting to see if, after fifteen years of significant sales, advertising, and third-party media attention, whether the EUIPO would come up with the same determination in terms of acquired distinctiveness. Given the increasing reliance by brands to double-down on color-specific marks (and registrations for those marks – from established names Christian Louboutin and Tiffany & Co. to relative newbies like Glossier) and in light of the fact that Hermès has been filing no shortage of applications across the globe for marks ranging from its name and the names of various product styles to elements of its packaging, we may not need to wait too long to find out. 

An attorney for the U.S. Patent and Trademark Office (“USPTO”) still is not getting behind Off-White’s quest to register the red zip tie that it uses on its buzzy garments and accessories as a trademark. After going back and forth with counsel for the wildly-popular streetwear brand ever since it filed an application for registration for the mark back in July 2018, a USPTO examiner has maintained her preliminary refusals to register the red zip tie mark on the basis that it is functional and not distinctive, and has a few questions for the brand. 

In a third Office Action dated May 7, USPTO examining attorney Verna Ririe stated that in order “to permit proper examination of the application, [Off-White] must submit additional information about the use of the proposed mark on the goods and the nature of the proposed mark,” and set out a number of questions for the brand. In addition to inquiring about how exactly Off-White uses the red zip tie on its products, and whether “anything is printed or imprinted on the red tag before it is provided to consumers,” Ririe wants to know how “the shape of [Off-White’s] tag differ[s] from the shape of other zip ties” in the market, and “what features [Off-White’s] tag has that differ from other zip ties.” 

(If the zip tie comes with the Off-White name on it, for instance, that would make it quite a bit easier for the brand to argue that it is different from other versions of the zip tie that are currently being offered up by others, and thus, serves as an indicator of a single source; although, at the same time, such a declaration would limit the brand’s rights in the zip tie to ones that include explicit Off-White branding, such as its name, and thus, would not extent to the much broader mark – “a zip tie with a substantially rectangular end, all in the color red” – that Off-White claims in its trademark application).

More than merely setting out the questions that she has for Off-White, Ririe withdraws her refusal on the basis that “the proposed mark is a non-distinctive color mark” (a mini win for the brand), while maintaining two refusals from her earlier Office Actions, despite Off-White’s argument against them. She has opted not to withdraw her refusal to register the zip tie mark because it is (allegedly) functional, and also because it is “a nondistinctive product design or nondistinctive features of a product design without sufficient proof of acquired distinctiveness.” 

In terms of the functionality refusal, which is an absolute bar to registration, since “functional matter cannot be protected as a trademark,” Ririe shoots down the argument that Off-White made (in response to her October 2019 Office Action) that its use of the red zip tie is “neither absolutely necessary nor indispensable to the purpose of [Off-White’s] products,” and instead, is used “solely as an indicator of source” of the goods on which it appeared (i.e., the zip tie acts as a trademark). 

Unpersuaded by that argument, Ririe claims that similar ties “are used on a variety of goods as a means of conveying information [like] price, weight, size, or providing a function, such as binding things together or security.” With that in mind, she says that “tags like those displayed in the mark drawing are purchased for the function they provide,” and thereby, upholds her refusal to register the zip tie on functionality grounds. 

Moving on, Ririe claims for a second time that the zip tie is “a nondistinctive product design … without sufficient proof of acquired distinctiveness,” meaning that it is not automatically capable of identifying the source of the product upon which it is used. She points to similar zip ties available for sale on Amazon and other sites “as additional evidence of the non-distinctive nature of the [ties].”

Counsel for Off-White previously argued that the brand’s use of the red zip tie had amassed the requisite level of secondary meaning in the minds of consumers to function as a trademark (even if it is not inherently distinctive) as a result of widespread media attention, advertising, and sales. It argued that the zip tie has become so well known that  “when consumers see [it] affixed to [Off-White’s] goods, they immediately understand the product to have originated with [Off-White].” Proof of that, according to the brand: the fact that “many consumers who purchase [Off-White products] choose to leave [the zip tie] affixed to the outside of the product, even though it could be easily removed.” 

Off-White zip tie trademark drawing

In addition to making its case for secondary meaning, Off-White took issue with an additional point in its March 2020 response to the non-distinctive configuration refusal in Ririe’s prior Office Action, arguing that the zip tie is not actually part of any of its product designs, but instead, “is more properly classified as product packaging,” which is significant, as product packaging can be inherently distinctive, thereby, removing the need to establish acquired distinctiveness (via secondary meaning). 

Ririe does not speak to that point in her letter, but presumably, will address it after receiving Off-White’s answers to her questions. In the meantime, she has maintained her rejection of the mark on non-distinctive configuration grounds. 

The latest official action from the examining attorney follows from an exchange of letters that has been underway between the USPTO and Off-White’s counsel since the wildly famous fashion brand first filed its application for registration for the zip tie in July 2018. Known for its in-demand streetwear offerings, from expensive diagonally-striped and quotation mark-flanked apparel and accessories to buzzed-about collaborations with the likes of Nike and Ikea, Off-White has been working overtime to amass a sizable collection of trademark registrations. 

Counsel for the 8-year old brand, which routinely lands atop fashion discovery site Lyst’s quarterly “hottest brands and products” rankings, has filed trademark applications for registration for everything from “Off-White” word marks for use apparel, accessories, homewares and fragrances, among other things, and its diagonal stripes mark to stylized versions of the word “OFF” and its particular use of quotation marks, the latter of which we have covered at length

The strategy is hardly an unchartered one. Given that the most established forces in fashion are, more or less, in the business of leveraging their well-known names and various logos in order to sell products and drive revenue (hence, the largely logo-dominant nature of many of their offerings), their brand names and logos are some of their most valuable assets. With that in mind, these brands – whether it be Louis Vuitton and Chanel or Nike and adidas – maintain strong trademark rights and sweeping arsenals of registrations to protect them. And in some ways, it appears as though that is exactly what Off-White is doing. 

To a large extent, since the Off-White’s apparel and accessories that make it to retail (as distinct from what it shows on the runway) are not earth-shatteringly different than other brands’ hoodies or rival companies’ sneakers, which is true for so many brands (there are only so many ways to make a t-shirt or a crossbody bag), a large part of the draw for consumers is the brand’s name, its various logos, and the goodwill that comes along with them, particularly given Off-White’s tie to Abloh, a bona fide tastemaker and fashion industry influencer, and his hordes of celebrity fans. 

In that way, his reliance of trademarks as a selling point for his products is not all that different from the models of Louis Vuitton, for instance, where he is the menswear artistic director, or other similarly-situated luxury names, and his quest to amass trademark registrations falls neatly in line with that. 

Glossier’s trademark application for registration for its use of a specific shade of pink on a bubble-wrap lined pouch in connection with the sale of cosmetics is faring pretty well before the U.S. Patent and Trademark Office. After overcoming some initial pushback from the national trademark body on the basis of functionality and distinctiveness (or better yet, the potential lack of distinctiveness), the 5-year old beauty startup’s application has gotten the go-ahead to be published for opposition, the next stage in the pre-registration process, which is relatively remarkable, in itself, given the rights at stake and the young age of the millennial-centric beauty brand. 

In the midst of the ongoing pre-registration process for Glossier’s pink pouch, the application for which was filed back in May 2019 and which asserts rights in “the claimed color pink as applied to bags featuring lining of translucent circular air bubbles and a zipper closure,” another beauty brand has taken to using a pink pouch of its own, thereby, revealing some of the potential legal squabbles that Glossier has on its hands, and also shedding light on the power of the pouch to indicate the Glossier brand (and thus, tempt others adopt similar packaging of their own).

Among its hot-selling Good Genes serum, body lotion and razor from young upstart Flamingo, Noto Botanics Agender Oil, and its Ice Ceramide Moisturizing Cream, all of which come in the latest version of its “Sunday Shares” box, a quarterly subscription offering, Sunday Riley is offering up a bubble wrap pouch in a pink hue. Save for the “Sunday Riley” name, which is emblazoned on the front, the bag – which was a standout item, according to at least one writeup of the box – looks a whole lot like Glossier’s own signature pouch, one that Glossier claims (in connection with its application for registration) that consumers “immediately recognize it as Glossier’s Pink Pouch” as a result of its “five years’ of [using] the mark.” 

On the basis of Glossier’s existing rights in its use of the specific shade of pink on “bags featuring lining of translucent circular air bubbles and a zipper closure” (as trademark rights are not amassed by registration but by using that mark in commerce and in the case of certain trade dress, by building up secondary meaning in the minds of consumers), it could very well file a trade dress infringement lawsuit against beauty rival Sunday Riley now. 

As for whether the case would be an open-and-shut win is another story. 

Decorative use?

One potential defense of trademark infringement allegations is that the allegedly infringing party’s use is not infringing because it is not using the mark in a trademark capacity. That is a critical distinction, as in order for the use of another’s trademark to be infringing, the alleged infringer must actually be using the mark … as a mark. In other words, it must be using the mark to indicate the source of (i.e., the brand responsible for) the product, which is not what is happening when a mark is used in a purely aesthetic manner.  

With that in mind, in response to a hypothetical suit, in addition to arguing that consumers are not likely to be confused as to the source of the bag given that Sunday Riley’s name is written right across it (which could prove persuasive but would arguably not rule out the chance that consumers might believe the bag – and the products associated with it – are the result of a collaboration between the two brands, although no such collab exists), counsel for Sunday Riley would almost certainly point to the fact that the brand does not only use pink bubble wrap pouches. 

Sunday Riley’s bubblewrap pouches

As it turns out, Houston, Texas-based Sunday Riley – which is currently still embroiled in a settlement with the Federal Trade Commission for allegedly engaging in a scheme to infiltrate Sephora with “fake reviews [about its products]” – has also made use of blue, yellow, and entirely clear bubble wrap pouches in connection with its sale of various cosmetics and skincare products. This arguably suggests that its use of the colors is decorative and thus, not for the purpose of indicating the source of the bags and the products inside. 

(Glossier, on the other hand, exclusively uses pink bubble wrap pouches, and by virtue of that uniformity, paired with years of use and promotion of that use, consumers have come to link the pink bags with the Glossier brand, according to Glossier, and thus, trademark rights are born). 

A Famous Color Case

Such a scenario harkens back to one in which color – and the allegedly infringing use of it – found itself at the center of a heated legal battle in 2011 when Christian Louboutin filed suit against Yves Saint Laurent. In the complaint that it filed in a New York federal court, Louboutin argued that by making and selling footwear with a red sole, YSL was infringing its federally registered trademark, which, at the time gave Louboutin exclusive rights in its use of a specific Pantone-categorized shade of red on the outsole of a shoe. (The registration has since been formally limited in scope to extend only to such use of the red sole “on footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.”). 

Counsel for YSL would ultimately argue that because color serves vital “ornamental and aesthetic functions” in the fashion industry, no brand, including Louboutin, should be able to claim exclusive rights in a color. More than that, though, YSL’s legal team would point to its pattern of selling single-color shoes with matching outsoles since the 9170s, with such shoes coming in red, purple, and blue colorways, among others. One of the implications there? That YSL’s use of color was not infringing because it was not meant to act as an indicator of source; it was used for decorative purposes.  

Such an argument would could certainly be used in the (hypothetical) case at hand in light of Sunday Riley’s adoption of a number of different colored bags, which could actually be the result of a specific (and legally-minded) attempt to avoid trademark liability while still using the Glossier-esque pink bubble wrap bag. 

Rights for a Burgeoning Brand

Looking beyond the potential for a trademark-centric back and forth between Glossier and Sunday Riley, there is another consideration worth addressing here, assuming that Sunday Riley is, in fact, seeking to benefit from Glossier’s appeal by way of its own pouch and not merely using the pink in a purely decorative manner. (Counsel for Glossier and branding experts, alike, would likely argue that the former is at play).

The fact that other brands (or at least one other brand) are making use of very-Glossier pink pouches, well may suggest that Glossier’s product packaging does serve to signify its brand in the minds of consumers, and that uses of similar pouches by others is an attempt by others to “plagiarize” the mark, which is a factor that courts consider when determining whether a mark that is not inherently distinctive has acquired distinctiveness, and thus, may be protected.

A big part of the significance here stems from the ability of a company as young as Glossier to amass such consumer recognition in an element of its branding. This is noteworthy given that most of the companies that have traditionally been successful at establishing rights in unconventional marks, such as product packaging or product configurations, themselves, have pointed to decades of consistent use of those mark, tens – if not hundreds – of millions of dollars in sales in the trademark or trade dress-bearing products/services, and sizable sums of advertising dollars specific to the trade dress.

Barbour, for instance, in seeking to register the design of its signature wax jacket, cited 40 years of use of the jacket configuration (and unsolicited media attention plus advertising expenditures spanning that period) and “sales in excess of $23 million” in the U.S., alone, for a less-than-10-year period. In granting a registration for the more than 125-year old brand, whose fans range from decades of British royalty (Queen Elizabeth, the late Princess Diana, Prince Charles, Kate Middleton, etc.) to James Bond (actor Daniel Craig wears a Barbour wax jacket in Skyfall), supermodels like Claudia Schiffer, and influencers like Alexa Chung, the U.S. Patent and Trademark Office found that evidence to be sufficient to establish secondary meaning linking the jacket design to a single source in the minds of consumers.

But a product history of 40 years and sales of more than $23 million are no small figures, and thus, set something of a high bar when it comes to establishing trade dress rights. Nonetheless, if the instance at hand – which sees a rival beauty brand producing similar packaging (potentially with the aim of benefitting from some of the sweeping demand for all things Glossier), and the status of Glossier’s application for registration – is any indication, these rights are seemingly being established by early-stage companies, which is absolutely worthy of attention and may serve to indicate what is to come for similarly-situated brands.