Patent Attorney and Founder
I’m working on manufacturing a product to sell in the U.S. and want to replicate the packaging box from a brand, The Branding. The question is about patents related to packaging designs. I’ve had trouble finding anything similar for this style of box. It’s a simple chipboard box, but its shape, style, and how it’s glued together make it semi-unique. We reverse-engineered the packaging, unfolded the box, and recreated the die cuts so it looks exactly the same. I had my attorney review it, and he doesn’t think it’s patentable since it’s a pretty basic design. However, I’d like to do a more in-depth search to be sure before starting production. Where do I even begin? This company has thousands of patents for different products, and I’m not sure how to navigate that.
In my mind, this feels like something you might see with an Apple product, but I’m not sure. I also realize this could be a patent and trade dress issue, so I’m curious about both sides. The bulletproof answer here would be to hire a patent attorney and get a freedom-to-operate determination (FTO). Have you checked the patents that are already issued, or even those that are pending? It’s important to know if you’re stepping on the toes of current or future rights holders.
If you know who makes the product, you could search for specific terms related to it. In this case, I think it’s a design patent rather than a utility one. You’d need to focus on design elements and shapes. Doing a thorough search is essential. If you find any patents related to it, you could break down the claims and compare the elements. But that’s time-consuming and costly, so if you’re tight on resources, you might want to find some extra funding for this. If you go ahead and make the box exactly or even very similar to someone else’s, and they have the resources to enforce their rights, you could end up facing a cease-and-desist letter or even liability for damages. So, don’t risk it unless you’re sure there’s no infringement. If needed, tweak your box design a little to make it different.
I’ve been through the whole box-manufacturing process myself: designing custom boxes, die cutting, creating custom dies to stamp the boxes, and cutting the paper from large sheets. My advice? Just make the design a bit different—small changes can go a long way. People often ask if it needs to be 25% or 50% different. There’s no exact answer, but the goal is to avoid directly copying the box. That gives you a stronger defense if the company ever comes after you.
You’re on the right track with your understanding of trade dress and design patents. The key is whether the company has a design patent on the box or if it’s protected by trade dress registration. Trade dress protects the overall look and feel of a product, without focusing on its utility. Big companies, like Apple, are known for filing both design patents and trade dress trademarks. The big difference is that trade dress protection can be more flexible, while design patents apply to a final, fixed form.
For scaling, if you just made the box larger, that could still be considered infringement if it maintains the same overall appearance. You’d need to change some of the dimensions so the final product looks different. The “ordinary observer” test comes into play here. Would an average customer see both boxes and think they’re the same? If they would, that could lead to confusion, which is exactly what you want to avoid.
The flip side is, if someone sees your box, would they think it came from Apple or another well-known brand? That’s where trade dress issues arise. If your packaging could be confused with theirs, you might face legal challenges.