Deliberate Differentiation – Strategic Role of IP in Making, Protecting Iconic Designs

Written by: Joshua L. Cohen

This article first appeared in the July 31, 2018 edition of the Legal Intelligencer.

Having just marked the centennial of the iconic Coke bottle, the time is ripe to reflect on Coca-Cola’s achievement in brand identity. With its unique design, the Coke bottle stood out among other colas and helped consumers to find—and bond with—the real thing. But analysis of the Coke bottle’s history reveals even more than a grand marketing success. It also presents an ideal case study in deliberate differentiation and the important interplay of intellectual property and product design strategies.

Though it began over a hundred years ago, the Coke bottle story illustrates strategies still used today to differentiate products deliberately. It also reminds us that intellectual property counsel can do more than merely protect design innovations after they are completed. We can (and should) play an early and active role in the design process itself, working shoulder-to-shoulder with the design team. In addition to our traditional role as protector, intellectual property counsel adds great value when guiding the forces that create unique and iconic designs, helping companies plan for and purposefully deliver differentiation, and then helping them to protect and promote it.

Coca-Cola deliberately set out to beat imitators through design differentiation. To help consumers “easily find the real thing at a glance, or even by touch,” Coca-Cola issued a nationwide directive in 1912, asking designers to develop a “distinctive package” for its cola product.

Though differentiation through packaging design was likely sparked by marketing management, it was Harold Hirsch, Coca-Cola’s lead attorney, who was tasked with developing a strategy for adopting a special bottle design. Hirsch was up to this task—he motivated Coca-Cola’s bottlers to unite behind a distinctive design and a vision in which “Coca-Cola will remain the National drink to the end of time.” And, most significantly, he asked glass companies across the United States to develop a “bottle so distinct that you would recognize it by feel in the dark or lying broken on the ground.”

Indiana’s Root Glass Co. took on this design challenge and proposed a bottle design inspired by ribbed cocoa beans. In 1916, Coca-Cola selected Root Glass’s cocoa bean-inspired design; apparently, it best met its design requirement of distinctiveness. We can all recognize it by feel in the dark or lying broken on the ground—just try it and you’ll see.

To sustain the commercial advantage conferred by its new design differentiator, Coca-Cola secured intellectual property protections. Initially, design patents protected ornamental features of the Coke bottle design. U.S. Design Patent No. 48,160 was issued in 1915 for an early design, followed later by U.S. Design Patent No. 63,657 for the “hobble skirt” contour bottle in 1923.

Coca-Cola also secured trademark registrations for the Coke bottle design, covering the bottle design with and without wording, in two-dimensional outline, and the “negative image” of the outline. Other trademark registrations depict the bottle with additional elements, emphasizing the famed “Coca-Cola” script with the bottle or associating it with design elements symbolizing “green initiatives” for recyclable and plant-based, rather than petroleum-based, materials.

And for decades, Coca-Cola has strategically promoted its contour bottle design. Images of the iconic bottle are present on Coca-Cola’s branded paper cups for use with fountain beverages, on delivery trucks, on cans, and everywhere.

Strategic Differentiation

The Coke bottle story reveals an actionable strategy for purposeful differentiation. It ideally includes planning for how a prospective product should differ from its competition, delivering differentiation as a part of the design process, protecting differentiators proactively with intellectual property rights—including complementary utility or design patent and trademark protections, and promoting design differentiation to build brand equity.

Plan—Coca-Cola challenged glass companies across the United States to develop a bottle distinguishable “by feel in the dark” or “broken on the ground.” This was one of the earliest and best prototypes of what we now call a design brief. Coca-Cola identified the key objective—differentiation—and planned how the product should differ from the competition. As it turns out, Coca-Cola’s focus on product packaging was a smart choice for differentiation. Not only is it a first and prominent connection to consumers, but packaging does not necessarily require secondary meaning for protection as a source identifier.

By planning early in the design effort how a prospective design should best differ from rival offerings, design teams are guided toward design elements that are suited to become powerful differentiators and worthy of protection by utility or design patents, buying precious time for the product to achieve success and for the design to develop secondary meaning to support trade dress and registered trademark rights.

Deliver—In a typical product development process, early design concepts are vetted before being selected from among other design concepts for further development. Which design concept “wins” depends on factors ranging from functional performance and cost to beauty of form. From the perspective of IP protection, one critical factor in selecting a design concept is that design’s ability to differentiate. Which design concept stands out from among prior and competing product offerings? And which design concept represents the greatest opportunity for strong and sustained IP rights?  Intellectual property counsel is poised. to facilitate strategic selection of design differentiators.

Protect—By protecting the Coke bottle design with design patents and trademarks, Coca-Cola elevated its market differentiator from a first-to-market advantage to a long-lasting and sustained commercial advantage. Even after 100 years, Coca-Cola can exclude its rivals from adopting bottle designs similar enough to deceive consumers.

Comprehensive protection often includes a cocktail of complementary intellectual property rights. Most consumer products embody features that perform a function and features that provide a pleasing form, whether in the product configuration itself or as part of its packaging. Automobiles, for example, have long embodied and bragged on the marriage of form and function; for example, “The Fusion of Design & Technology” (Cadillac’s Escalade) and “Form, Breathing Down the Neck of Function” (Acura’s TL).

There is, however, tension between form and function when embodied in a single product—form and function must be protected separately. On one hand, utility patents and trade secrets can protect technology innovations and slow the activities of competitors—at least until they find a way to act outside the scope of the patents or until technological advances render the innovations obsolete. Design patents provide a limited monopoly to the ornamental qualities of product offerings. And trade dress and trademark rights protect nonfunctional source identifiers.

But functional elements of a design are not eligible for trademark protection, and a utility patent or advertising touting utilitarian advantages of a design feature are considered evidence of functionality. For this reason, a thoughtful IP strategy should accompany a deliberate design process to ensure that the line between form and function is not inadvertently blurred to the detriment of long-term protection. What could be considered the “holy grail” of IP protection, trade dress is capable of enduring indefinitely to protect non-functional and distinctive design elements that serve as source identifiers.

Promote—Coca-cola’s consistent promotion of the Coke bottle, including the preservation of the overall look and feel of the original contour glass bottle in newer plastic and aluminum bottles, is designed to ensure continued rights in its iconic shape. Design and marketing professionals must coordinate with intellectual property counsel to promote long term design differentiation, maintaining a consistent and coherent message as to the benefit of protected design elements. As we know, Coca-cola is king when it comes to promotion.

This plan-deliver-protect-promote framework prompts design teams to collaborate with IP counsel as they differentiate deliberately. It helps all those involved in design innovation to answer important questions and to complete defined milestones throughout the design process.

Differentiation by Design

Coca-Cola is by no means the only example of deliberate differentiation. Because product design has evolved from an esoteric discipline appreciated by a select few to a business imperative discussed in the boardroom, there are numerous case studies of time-tested designs that illustrate design differentiation at work in the marketplace.

Hershey’s Kisses candies illustrate a deliberate differentiation strategy dating back to 1921. Over the years, Hershey has employed look-for advertising, registered its product configuration, and strategically used and registered two-dimensional marks to reinforce consumer recognition of its three-dimensional product shape. To introduce a prominent differentiator, Hershey extended an “identification tag” or “plume” from the top of its wrapper in 1921 and reminded consumers that “The genuine Hershey Kisses Contain the Identification Tag ‘Hershey’s’.” Hershey’s trademark registrations reveal a strategy like Coca-Cola’s—aimed to reinforce differentiation—as if they were working from the same playbook.

Other examples of product differentiation span the alphabet from the distinctive Absolut vodka bottle to the lighters of Zippo. They inspire today’s design managers to adopt deliberate and protectable differentiation. Working in conjunction with IP counsel, they can and should execute strategies—such as by following the plan-deliver-protect-promote framework—that will differentiate and protect their product offerings. That’s what Coca-Cola did in creating, protecting and promoting its bottle design, now universally recognized as a powerful source identifier (even in the dark).