Chanel aims to register bottle shape No. 5 as a trademark
Some 100 years after its first release, Chanel is seeking to register the bottle shape of its No. 5 perfume as a trademark in the United States – and is facing some preliminary pushback (unsurprisingly). Following the filing of an application to the U.S. Patent and Trademark Office late last year for a trademark that consists of “a rectangular-shaped container with beveled sides, a thinner neck and on top a horizontal rectangular faceted shape” for use on “cosmetics; perfumes and perfumery”, a trade mark office examining lawyer refused to register the mark, stating that the mark applied for is not inherently distinctive because “the shape of the perfume bottle and the bottle cap is a basic shape that is common in the fields of cosmetics, perfumes, [and] perfumery.”
Specifically, USPTO examining attorney Sabrina Tomlinson said in a non-final Bureau action on August 15 that registration of the blank bottle design is denied (for now) because that “the mark consists of a non-distinctive configuration of packaging for goods which is not registrable on the principal register without sufficient evidence of acquired distinctiveness”. Tomlinson asserted in the Bureau action that the bottle is “a common rectangular-shaped container with beveled sides intended to be filled with perfume”, citing examples of “large, well-known retailers”, such as Macy’s, Sephora and Ulta, which carry “many comparable and well-known that use the same rectangular-shaped container with beveled sides as the base of the perfume bottle”.
“Shape is a common or basic shape that is not unique or unusual in cosmetics, fragrances, perfumery and eau de parfum,” according to Tomlinson, who notes that “although shape simple rectangular shape of a perfume bottle is relatively ubiquitous for perfume bottle shapes, the beveled sides of applicant’s configuration do not establish distinctiveness because it is a mere refinement of a commonly adopted and well known for perfume bottles which is regularly regarded by the public as the standard shape for perfume bottles.”
She further claims that the brand is “unable to create a commercial impression because [Chanel] has no distinctive accompanying words with the rectangular-shaped perfume bottle”, and therefore, “without additional and specific evidence of acquired distinctiveness, the configuration mark applied for must be refused registration”.
Since “the entirety of the mark applied for must be analyzed”, Tomlinson turns his attention to the “horizontal rectangular faceted bottle stopper”, which Chanel claims as part of the mark. While the Chanel bottle stopper is “faceted like a gemstone, like the bottle stoppers of Tory Burch, Versace, Kayali and Tiffany & Co.”, it is still “a mere refinement of a stopper horizontal, rectangular commonly adopted and well-known bottle stopper shape for perfume bottles which is regularly regarded by the public as a standard shape for perfume bottle caps or stoppers.As such, Tomlinson argues that in the absence of precise proof of acquired distinctive character, the upper part of the configuration mark applied for must also be refused registration.
In this context (and given that this is a non-final action), Tomlinson states that Chanel can respond by providing evidence of acquired distinctiveness in the form of “verified statements of long-term use, advertising and sales expenses, sample advertising, consumer affidavits and statements, and customer surveys.(It also asks Chanel to provide additional brand information, including (but not limited to) “a written explanation and any evidence indicating whether there are alternative designs available for the feature(s) incorporated into the mark applied for, and whether such alternative designs are equally effective and/or competitive.”
Proving the secondary meaning shouldn’t be difficult for Chanel in some ways, as it has always used the bottle in its latest form since 2012. More fundamentally, Chanel No. 5 itself is considered one of the most famous and tops in the world. – selling fragrances,” according to the FT, “paving the way for the house’s broader fragrance and beauty division, which now accounts for around a third of the house’s $12.27 billion [in] annual revenue.” At the same time, the famous fashion brand advertised the fragrance extensively – including packaging – through advertising campaigns. To put its No. 5-specific ad spend in perspective, Chanel reportedly spent around $17 million for a commercial and print ad for Chanel No. 5 starring Brad Pitt in 2012 and reportedly paid up to £18 million on a two-minute ad for the perfume starring Nicole Kidman in 2004.
While “few fragrances – or objects, for that matter – carry as much symbolism as Chanel No 5”, Vivienne Becker wrote for the FT last year, a place where the brand could potentially face trouble. is whether consumers associate the shape of the bottle, alone, with a single source. After all, Chanel does not appear to be using the bottle alone, that is, without other forms of Chanel branding, such as the Chanel word mark, the No. 5 mark, or its interlocking “C” logo. This is unlikely to be a problem now, as Chanel and other brands were able to register the shape of their perfume bottles without any other branding elements.
Chanel, for its part, claims a registration in the United States for its cylindrical Chance perfume bottle – without any other brand elements, and Beaute Prestige International maintains a registration for the shape of a Narciso Rodriguez perfume bottle, qu he describes as “a fragrance with a distinctive design”. bottle that includes a unitary combination of a colored interior and a T-shaped top of the same color, to create the impression of a bottle within a bottle” – to name just a few examples. (These records are distinct from – and potentially much broader than – the records that Saint Laurent, for example, amassed for its Opium perfume bottle, in which the mark is described as “the configuration of a distinctive glass perfume bottle colored, and the atomizer and its cap”, including the use of the words “OPIUM” and “YVES SAINT LAURENT”.
The existence of USPTO registrations – which Chanel will almost certainly amass for its No. 5 bottle (to which it already owns the rights) – does not mean, however, that these blank bottle marks could not be criticized in case the brand tries to assert its trademark against an alleged infringer, who might argue (in an attempt to escape liability for infringement) that the trademark does not actually enjoy such extensive rights, because it exclusively uses the bottle bearing its name, which makes it so that consumers do not attach the shape of the bottle, on its own, to a single source.
Chanel’s application for registration of bottle shape No. 5 comes as the company is also seeking registration for number 5 for use on cosmetics as part of a broader trend of brands apparently seeking to bolster their rights to – or better yet, their registrations for – some of their most famous source flags.