eos Files Trademark Application for Popular Lip Balm Oval - Is It Functional?

Have you seen the eos oval lip balm at your local retailer? Chances are you have. The popular lip balm is seen below.

eos Products, LLC filed a federal trademark application for the oval case of the balm on April 25th. According to eos's description, "[t]he mark consists of a three-dimensional configuration comprised of half an ovoid, with an indented portion on the lower portion of one arc thereof, with another half ovoid that is smaller in size on top, with the ovoids divided by threading" (see below).

Is it possible to obtain trademark registration for the way a product looks? It sure is, except that functional matter cannot be protected as a trademark. See TMEP 1202.02(a)(iii)(A), 15 U.S.C. §§1052(e)(5) and (f), 1064(3), 1091(c), and 1115(b). 

Why not? Because patent law protects the way a product works, not trademark law. The U.S. Supreme Court explained this reasoning in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time...

How does one determine whether a product feature or design is functional? Generally four factors are considered:

1. the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
2. advertising by the applicant that touts the utilitarian advantages of the design;
3. facts pertaining to the availability of alternative designs; and
4. facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

See TMEP 1202.02(a)(v);  In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341 (C.C.P.A. 1982).

If an applicant holds a utility patent for the design it seeks to protect as a trademark, advertises the utilitarian advantages of the design (i.e. easier to hold), alternate ways to design the relevant product are not generally available, and the product is designed in that manner because it is cheaper or simple, the product feature is functional and cannot be protected as a trademark.

Is the eos lip balm product design functional? Is an oval the easiest and cheapest way to design lip balm packaging? Does it make it easier to hold? Are alternative designs for lip balm packages readily available? We'll have to wait a couple months to see what the examining attorney at the Trademark Offices thinks about this configuration.