November 30, 2020

This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.

In early 2019, the beauty and skincare brand Glossier Inc. (the Applicant) filed two trademark applications with the United States Patent and Trademark Office (USPTO) relating to the packaging of its goods – one for its pink-lined boxes, and the other for its pink bubble wrap pouches. Both applications claim the colour pink as a feature of the mark, and were filed for cosmetics, makeup, skincare products, and related goods and services.

INITIAL REFUSAL BY THE USPTO

On July 24, 2019 and August 28, 2019, the USPTO responded to the bubble wrap trademark application and to the application for the pink-lined boxes with initial refusals.

With respect to the pink-lined box trademark application, the USPTO argued that the applied-for colour mark was not inherently distinctive. As stated by the USPTO, colour marks are never inherently distinctive and can only be registered if there is sufficient proof of acquired distinctiveness. The USPTO points the applicant to different versions of pink-branded boxes sold with beauty and cosmetic products. Given that consumers are accustomed to seeing the colour pink used on packaging for cosmetic and beauty goods, consumers are likely to believe that the pink colour is a decorative feature rather than attributable to a particular owner.

The pink bubble wrap was also initially refused by the USPTO. Citing section 2(e)(5) of the US Trademark Act, the USPTO states that the packaging appears to be a functional design. The applicant’s specimen demonstrates that the circles that appear on the packaging are a type of cushioning that is generally used as a protective feature for the goods being stored. Therefore, a central feature of the packaging has a specific utilitarian function. Further, the USPTO notes that the mark consists of a non-distinctive configuration of packaging that is not registrable without sufficient proof of acquired distinctiveness.

RECENT APPROVAL FOR REGISTRATION OF PINK BUBBLE WRAP POUCH

On August 25, 2020, Glossier gained registration of its pink pouch packaging. In its response to the Office Action, Glossier highlighted how the mark had become distinctive of the goods and services, providing several documents as evidence. A Declaration of Glossier Inc. states that the amount of revenue generated by sales of goods under the applied-for mark in 2018 amounted to more than $100 million in direct-to consumer business. Dozens of Consumer Declarations were also provided, stating that the consumer was able to “immediately recognize the color pink as applied to the Glossier packaging box and bag […] indicating that the cosmetics and skincare products originate exclusively from Glossier and not from any other source.” The evidence also highlighted images of consumers sharing photos of their the pouch, using it not only as a package for their goods, but as a pouch to carry any belonging, and often referring to it directly as the “Glossier Pink Pouch.” In addition to the declarations, numerous beauty and fashion publications, including RACKED, Who What Wear, and Allure, have published articles on the popularity of Glossier’s pink pouch. With this evidence, Glossier was able to prove that the mark had become distinctive of the goods and services through the applicant's substantially exclusive and continuous use of the mark in commerce.

Similar evidence was provided in the Response to the Office Action for the pink-lined box. The pink-lined box application was published for opposition on September 29, 2020, and there do not currently appear to be any proceeding documents recorded with the USPTO.

WHAT’S NEXT?

If not opposed, it is possible that Glossier’s pink-lined box will also be approved for registration. With the increase of social media and influencer marketing, it is not surprising that brands have distinguished themselves based on the packaging of their products. The evidence and arguments provided by Glossier in support of its trademark applications demonstrate just this. Given the increasing and prevalent use of product packaging to appeal to consumers and define a brand’s image, it is likely that trademark applications such as Glossier’s will continue to be filed in the USPTO and in other jurisdictions, including in Canada.

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