October 4, 2022

Volume XII, Number 277

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October 03, 2022

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Trademarking: Capri Sun Says “Respect the Pouch”

You remember the pouch.  Everyone does.  It’s iconic: that shiny metallic pouch, the little wrapped, razor-tipped straw that’s glued to it.  You rip the straw off, unwrap it, then punch it through the designated straw hole while holding a thumb over the other end of the straw.  Everyone knows to do that.  But how do we know to do that?  Do you remember your first drink pouch lesson?  More importantly, do you even remember what a Capri Sun tastes like?  Probably not.  But you do remember the pouch.  That’s precisely Capri Sun’s point.  Its internationally trademarked pouch is “indicative of a Capri Sun drink.”  So, when competing juice drink makers began packaging their drinks in the well-known metallic straw-punch pouch, Capri Sun filed suit, claiming trademark infringement and sending a strong message to its competitors: “Respect the pouch.”

Now, you may find this a little silly─trademarking the pouch.  It’s just a silvery drink container.  Surely it’s not technical enough to stand alone as the only pouch on the juice aisle?  But, many of the things we easily recognize and use every day are somewhat like this: simple, seemingly silly, but worth millions because they instantly remind us of a specific brand.  Think about it.  While not every copy machine is a Xerox, when you need a copy made, what do you often say?  “Xerox this for me.”  While not all quick-drying mega glues that come in a little silver tube with a red cap are Super Glue, that’s what you call them.  While not all blankets with arm holes are. . . well, I won’t get into the Snuggie again, but you see what I’m talking about.  If you open the fridge and see a Sunny D bottle, a Pepsi can, or a silvery drink pouch, you might say, “I’ll have the Capri Sun.”  Its value is not in its highly technical function but, rather, in our instant recognition as it being the reigning brand. 

Sadly, though, Capri Sun has not been successful.  In 2014, Capri Sun sought to obtain a cease and desist order against two beverage companies for the alleged infringement of its iconic-shaped trademarked pouch.  The actions backfired, however, when the shape mark was—not once, but twice—declared invalid by two Dutch courts.  The interesting analysis here was the review of the “technical necessity” of the various features of the competing pouch: its rectangular shape, the welded seams at the top and sides of the pouch, the rounding at the bottom (called the "belly" by parties), the tapered ends toward the bottom, and the reflective material.  The two Dutch courts found that these qualities did not infringe on Capri Sun’s trademark because they were necessary to achieving economy of the manufacturing process and user-friendliness while ensuring a water-tight pouch with a maximized shelf-life.  Sorry, Capri; it’s just the unfortunate truth.  In order for a stand-up, straw-punch drink pouch to be durable, it’s just going to look like a Capri Sun, out of sheer necessity.  It’s not like making the cap of your own silver-tubed “Uber Glue” red to try to trick users into thinking it is the one and only Super Glue.  The red isn’t necessary.  The cap could be any color.  This is an example of a “slavish imitation.” 

Capri Sun hasn’t given up though.  It recently filed suit in the U.S. against a Minneapolis drink company, Faribault Foods, for selling and distributing knock-off pouch drinks, including those sold in Wal-Mart’s Great Value line.  It will be interesting to see how a court in the U.S. views the alleged “technical necessities” of Faribault’s competing pouch. Proving technical necessity versus slavish imitation requires skill and an intuitive knowledge of the product, its design, the manufacturing process, and its use and recognition by the end consumer. Capri Sun’s repeated bulldog-like defense of its trademark is proof that intellectual property goes well beyond a simple brand name. 

© Copyright 2002-2022 IMS Consulting & Expert Services, All Rights Reserved.National Law Review, Volume V, Number 238
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