Kiana Robinson is a J.D. Candidate, 2021 at NYU School of Law.
In the beauty and fashion world, color trends regularly come and go, and as soon as one color becomes “in,” it’s already on its way “out.” This has not been the case however for one color, aptly named for its particular appeal to one generation, Millennial Pink. The pastel pink color’s popularity catapulted in 2017 extending beyond the beauty and fashion world to interior design and technology products, and almost three years later the color’s momentum doesn’t appear to be slowing down any time soon. Perhaps that’s why the popular beauty brand Glossier made the decision to use the color for all of its product packaging and why the company now seeks to successfully trademark the color as applied to that packaging. For those unfamiliar with Glossier, the brand appeals to millennials who have been inundated with commercials featuring popular brands by largely utilizing social media to market makeup, skincare and more. Highlighting the social media accounts of their consumers has helped the brand gain recognition for its pink packaging with users uploading photos and filming unboxing videos to show more than just the Glossier products, but the packaging they arrive in. It makes sense then that when Glossier’s attempt to trademark the signature pink packaging last spring, specifically a bubble-wrap millennial pink zip pouch (pictured below), was denied by the U.S. Patent and Trademark Office (USPTO), they filed a 252 page response to show how brand recognition is changing for consumers, and perhaps it’s time the USPTO acknowledge that change.
The USPTO’s trademark refusal was based on two factors that Glossier failed to satisfy to warrant trademark protection. The first factor was one of functionality under which the USPTO found the air bubble packaging to serve the function of protecting goods during shipment and Glossier failed to establish the design as purely aesthetic. The second factor for refusal concerned the nondistinctive configuration of product packaging that would not be registerable unless Glossier could prove the mark had acquired distinctiveness. Glossier’s response addressed these factors by amending the mark’s description to only include the color pink and by entering a Section 2(f) claim of acquired distinctiveness. Before diving into why Glossier thinks the color pink has acquired distinctiveness, it’s important to understand why acquired distinctiveness is necessary for trademark protection and what considerations should be made for finding acquired distinctiveness.
For a trademark to be registerable it must readily convey to a consumer the origin of the trademark’s source of goods, in other words, a consumer will see the mark and be able to identify who owns the mark and the mark’s associated products, thus making the mark distinctive. If a trademark does not readily convey this information to a consumer the trademark must have acquired distinctiveness that can be proven based on the following factors: the length and exclusivity of the mark’s use, the type, expense and amount of advertising of the mark, and efforts to associate the mark with the source of goods such as unsolicited media coverage and consumer studies. Registration of a color for trademark protection typically includes an analysis of these acquired distinctiveness factors, but no single factor is dispositive, so it’s never an easy guess as to what evidence may or may not tip in favor of registration.
Glossier’s response can be divided into two arguments. The first argument states that the issue of functionality is resolved because the company amended the mark’s description to no longer include the air bubble packaging itself as a feature of the mark, only the specific color pink “as applied to a very particular type and configuration of product packaging.” In support of this argument, Glossier contends that the USPTO’s initial refusal did not rule the color pink alone to be functional and the color does not serve any utilitarian, functional, or competitive advantage when applied to the “specific configuration of bubble-lined zip-top pouches.” Glossier then goes further to show that if approved, registration of the pink color of the packaging would not hinder competition because there would be “numerous other color options for parties to use on bubble-lined packaging for cosmetic products,” and the color pink on packaging has no particular value or advantage. Whether or not the USPTO accepts this argument is debatable, but Glossier should have a greater likelihood of success after removing the air bubble packaging from the mark’s description and only asking for registration of the color pink.
Assuming Glossier is able to convince the USPTO the color pink is not functional, their second argument hinges on a showing of acquired distinctiveness. Glossier begins by stating the five years of use of the mark and that there is extensive evidence that relevant consumers immediately recognize the color pink on a bubble-lined zip top pouch as Glossier’s Pink Pouch. While evidence of consumer recognition may not be dispositive under the acquired distinctiveness analysis, Glossier may have a better chance of getting trademark protection if evidence of advertising expenditures, unsolicited media coverage and consumer “studies” are significant. Glossier provides examples of advertising on its website, NYC subway ads, and social media posts, but does not detail exactly how much was spent on such advertising. The novelty of social media makes it difficult to assess whether the USPTO will find such evidence compelling because whether or not a post was paid for is not readily discernable, and one part of the appeal for advertising through social media is that it can cost significantly less than running a television ad or print ad. Glossier then provides numerous examples of unsolicited media coverage including articles by popular fashion and beauty websites directly referencing the pink pouches which is likely to tip in their favor. Lastly, Glossier includes third-party social media posts as evidence that consumers already associate the Pink Pouch with Glossier when uploading photos and comments that highlight the pink packaging.
Should the USPTO consider social media posts as evidence of consumer association with the pink pouch and the Glossier brand, there may be a stronger argument for supporting registration. However, there are other beauty brands that also use Millennial Pink in their product packaging, such as Sephora and Kylie Cosmetics, and the USPTO may find that the interest in avoiding any hinderance of competition outweighs Glossier’s desire to claim the color pink. It remains unclear whether Glossier will succeed in getting the trademark registration, but even without it, it appears that Glossier’s consumers will continue to recognize the pink pouch as Glossier’s product packaging.