— David Pabian, Attorney
I’m sure most of you have noticed those little egg shaped lip balms at the check out line in Target, Wal-Mart, Costco, and just about any other big store. The company that makes these, Evolution of Smooth or EOS, really hit on something big. Stores stock the product at check out lines across the country. That’s the perfect placement for these little guys as they’re a perfect little impulse buy. In just a few years, the startup has grown to compete with the titans of the lip balm industry. I’m sure the lip balm itself is pretty great, but what makes these little eggs stand out is the product configuration. EOS is clearly aware of this. They hold a few product configuration trademarks and applications for the little pod. They also hold some patents on their products. Even so, that hasn’t stopped others from joining the pod trend.
Whenever I saw a pod, I assumed they were EOS until I recently saw those competitor pods. That’s what got me to check on the pod trademarks. Next, why isn’t EOS enforcing their rights? Well, they only have one pod registration on the the Principal Register. The others are all either applications or registered on the Supplemental Register. So those others aren’t doing EOS much good right now from an enforcement perspective. And the one on the Principal Register only registered about a year ago. That hasn’t given EOS much time to use it.
It is now well-established that you can own a trademark on your product configuration. However there are a couple of fairly important limitations. Perhaps the most important limitation is that features and designs that are functional are not protected by trademark. For that, you generally head into the patent world.
In determining functionality, an examining attorney or court will take into consideration a number of factors. These include whether you hold a utility patent on the design, any advertising that promotes the utility of design, whether other designs are readily available for competitors, and whether the design provides some other non-reputational advantage such as simplicity or low cost resulting from the design.
The registration on the Principal Register claims the configuration above. It states: ” The mark consists of a three-dimensional configuration of the packaging for the goods. The configuration is comprised of an ovoid with an indented portion on one side at the midpoint of the circumference.”
Enforcing a configuration mark is much more difficult than enforcing most other trademarks. Each of the pods I’ve seen is somewhat unique, doing something slightly different. I’ve noticed that there are two aspects of the EOS pod that the competing pods tend to avoid. First, competitors avoid the pure egg shape (I know, eggs don’t have flat spots on the bottom). For example:
Variations on a theme, right? Each container is somewhat pod-ish, but not quite the egg used by EOS. The blue and purple products are quite probably ovoids, but have other geometric or design features that may pull them just far enough away from the EOS trademark.
What else do you notice? None of them have that little indented portion. That’s a prominent part of the trademark. It actually takes up the majority of the description. Now, I would argue the indent is the most functional part of the whole thing. It allows you to easily twist the cap off rather than struggle with it like a pickle jar. However, just to be safe, these other brands may decide to avoid that particular portion in the hopes of avoiding an infringement suit or to strengthen their argument in the event that one occurs.
For its part, EOS is probably well aware that enforcing a configuration mark is difficult and the scope of protection is generally narrow. It also may be a bit worried about keeping its trademark. A trademark registration adds a lot of weight to a cease and desist letter. EOS probably doesn’t want to risk losing the registration on a functionality argument and may be content with selective enforcement to preserve a narrow niche.
EOS is also branching out. It now has normal stick lip balm, along with lotions, and shaving cream. All come in unique product packages, of course. Pod lip balm may well be a fad. After all, it’s a fairly bulky container to carry around. Now that EOS has made it as a company and brand, it can ride some of that success into a more diversified portfolio. Additional product offerings take some pressure off of the pods and allow for a different, perhaps more selective, enforcement strategy. If you’re a one-trick pony, you’re probably a little more likely to react when another pony does your trick.