Like many new parents, my wife and I own a Boppy® infant support pillow. Examining the packaging, I noticed an excellent example of “look-for advertising:”
Typically, look-for advertising is part of a campaign to build consumer recognition of a product design to a level where it can support a claim of “acquired distinctiveness,” that is, the design tells consumers the product comes from a distinct source. One exception to this process is that a functional product configuration is not distinct and can never acquire distinctiveness – functional features can only be protected by patents, if they meet the requirements for patent eligibility. We’ve written extensively about these issues here, here, and here.
So, is the “Boppy Shape” functional, that is, unable to acquire distincitiveness? This expired patent suggests the answer might be “yes,” describing the invention, a support pillow, as follows:
It is generally circular but discontinuous where tapered ends meet, defining a well in the center.
The patent drawings also show the “Boppy Shape” as a preferred embodiment of the invention:
This evidence doesn’t end the inquiry, but it’s strong evidence that the “Boppy Shape” is functional. The Trademark Manual of Examining Procedure describes patent evidence as follows:
It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely.
However, even if the “Boppy Shape” itself is functional and not protectable as a trademark, nothing stops Boppy from registering the phrase “Look for the Boppy Shape!” as a trademark, as these registrations show, here, here, and here, or the two-dimensional representation of the shape, here, and doing so is a good move by Boppy regardless of the whether the shape itself can ultimately also be registered.
One reason Boppy might want to do this is because with patent expiration comes generic competition. And that’s fine – if all this talk about trademark and patent law gives you a headache, you can save a few bucks buying generic ibuprofen instead of brand name Advil – just don’t call it Advil®.
Where we as trademark professionals see generics violating that rule all the time (and counterfeits) is on e-commerce platforms like ebay and Alibaba. Just take a look at these snips from the search results for “Boppy Pillow” on these two websites:
The listings above are not for Boppy brand pillows. Instead they appear to be generic support pillows, perhaps fairly produced given the expiration of the patent (Boppy owns other patents for other elements of its pillows and other products, which were not examined for this post). But what’s not fair, and what is actually likely infringement, is use of the “Boppy” trademarks to sell generic support pillows.
Based on my review of its product packaging and trademark registrations, Boppy has done an admirable job raising its trademark portfolio. Now the question is, is it time for a pillow fight?