Bottom Line: “Bum Bum” Packaging Falls Flat on Trade Dress Protection

Why It Matters

The ruling underscores the strict application of the functionality doctrine, limiting brand owners’ ability to monopolize packaging that offers utilitarian benefits. It signals that courts will heavily weigh USPTO refusals when evaluating trade‑dress claims.

Key Takeaways

• Court ruled SDJ’s jar design functional, denying trade‑dress protection.
• USPTO refusal for functionality heavily influenced the court’s decision.
• Functional features included easy access, scent indication, and warehouse visibility.
• Decision reinforces that aesthetic intent cannot outweigh utilitarian purpose.
• Brands must document non‑functional distinctiveness before pursuing trade‑dress claims.

Pulse Analysis

The recent New York federal court decision highlights the enduring strength of the functionality doctrine in U.S. trade‑dress law. While Sol de Janeiro’s “Bum Bum” packaging was visually distinctive, the court found each element—rounded bottom, oversized lid, yellow‑white palette, and stylized lettering—served concrete purposes such as improving handling, signaling fragrance, and enhancing shelf visibility. Under the Lanham Act, a design that confers a competitive advantage through utility cannot be protected, even if it carries aesthetic appeal. This outcome aligns with prior precedent that functional features, not merely decorative ones, are ineligible for trade‑dress registration.

The case also illustrates how USPTO determinations can shape litigation outcomes. SDJ’s earlier trademark application was rejected on functionality grounds, and the court gave that refusal substantial evidentiary weight. Brands seeking trade‑dress protection must therefore anticipate USPTO scrutiny and be prepared to demonstrate that their designs are primarily ornamental, not utilitarian. Detailed documentation, consumer surveys focusing on perceived distinctiveness, and clear separation of functional attributes from branding cues are essential to survive a functionality challenge.

For marketers and product developers, the ruling serves as a cautionary tale about relying on packaging as a proprietary asset. As retailers like Costco prioritize shelf efficiency and product recognizability, functional design choices are inevitable. Companies should consider alternative protection strategies, such as trademarking logos, brand names, or non‑functional decorative elements, while ensuring that any claimed trade dress can survive a functionality analysis. The decision may spur a wave of re‑evaluations of existing trade‑dress portfolios, prompting firms to fortify their intellectual‑property positions before facing similar disputes.