The intersection of trade dress and the dupe economy has become a complex legal terrain for brand owners. As products with similar appearances flood the market, the distinction between original and imitation has become increasingly ambiguous. This ambiguity has elevated trade dress clashes in the food industry to high-profile legal matters, with recent court decisions underscoring the challenges of enforcing such protections.
Sol de Janeiro’s Brazilian Bum Bum Cream exemplifies a product with a strong visual identity - its yellow-and-white rounded jar, oversized lid, and dark gray lettering. When Costco, a major retailer, failed to secure the product, it commissioned Apollo to create a replica with a comparable look, feel, and performance. Apollo launched its Nutrius cream with packaging nearly identical to the original.
Sol de Janeiro responded with a cease-and-desist letter, asserting unregistered trade dress rights. Apollo, however, pursued legal action, arguing that the claimed trade dress was functional. The case became a pivotal test of whether packaging elements could be protected under trade dress law or if they served a utilitarian purpose.
The court’s ruling was clear. It granted Apollo’s motion for summary judgment, determining that the design elements of the Cream jar were functional. The court analyzed the packaging both individually and collectively, finding that each feature - such as the rounded bottom and oversized lid - served a practical function. The yellow color, the court noted, was not an indicator of origin but a signal of the product’s fragrance and benefits.
This decision reinforces a fundamental principle in trademark law: functionality negates protection. A design element cannot be safeguarded as trade dress if it serves a utilitarian function rather than identifying the product’s source. The court gave significant weight to the USPTO’s prior refusals to register the design as non-functional, reinforcing the idea that trade dress must be both distinctive and non-functional to qualify for protection.
For brand owners, the case highlights several key takeaways. First, the USPTO trademark overhaul record is a critical asset in litigation. Evidence of prior refusals can be a powerful defense against trade dress claims. Second, merely proving copying is insufficient to sustain a trade dress claim if the design is functional. Third, a multifaceted approach to protection - combining trademarks, design patents, copyrights, and unfair competition claims - can offer broader coverage and stronger remedies.
As the dupe economy continues to evolve, so must the strategies of brand owners. Trade dress remains a valuable tool, but it is not a universal solution. Understanding the boundary between aesthetics and function is essential for navigating trademark law and protecting intellectual property in an era where imitation is the sincerest form of flattery. Services like IP Defender track filings across national trademark databases, which can help identify potential conflicts early.