Functionality of Trade Dress Negates Protectability

By Wei Wei Jeang

The War of Brazilian Creams

A recent New York federal court ruling is creating ripples in the beauty industry, where the maker of the iconic BRAZILIAN BUM BUM CREAM, Sol de Janeiro USA Inc (SDJ), was told that its cannot enforce its trademark rights. The decision came down to a determination that the product packaging is functional and therefore not protectable as trade dress.

In 2021, Costco asked Apollo Healthcare to develop a "dupe" by copying the BRAZILIAN BUM BUM CREAM — right down to using "the exact same jar." The resulting product was the NUTRIUS® Brazilian Body Butter Cream packaged in a rounded white jar with a yellow lid. In comparison, SDJ's packaging is a rounded orange jar with a white lid. SDJ sent Apollo a demand letter asserting that the BRAZILIAN BUM BUM CREAM packaging constituted distinctive trade dress. Apollo responded by filing a declaratory judgment action seeking a ruling that SDJ's packaging was functional and therefore unenforceable as a trade dress. SDJ counterclaimed, alleging that Apollo and Costco infringed its trade dress and trademark rights. The Apollo parties moved for summary judgment.

On March 17, 2026, Southern District of New York Judge George B. Daniels sided with Apollo, granting summary judgment and dismissing SDJ's trade dress infringement counterclaim entirely.

Trade Dress and Functionality

Trade dress refers to the overall visual appearance of a product or its packaging that identifies the source of the goods. Like a trademark, protectable trade dress must be distinctive and non-functional. A famous example of protectable trade dress is the Coca-Cola bottles with their dinstinctive shape and surface configuration.

The court explained that a plaintiff asserting rights in unregistered trade dress bears the burden of proving that the design is non-functional. The court observed that functional features may only be protected through patent law and cannot be monopolized indefinitely through trademark rights. The court's analysis examined each element of SDJ's jar and found all of them functional — individually and collectively.

The Jar Shape and Lid. SDJ argued the shape of the jar and lid was chosen for purely aesthetic reasons, but the court was persuaded by expert testimony presented by Apollo. Apollo was able to convince the judge that the jar's rounded base made it easier for users to scoop the thick cream and increased its durability during shipping and storage. The oversized lid allowed users with cream on their hands to grip and properly close the container more easily. Because those features improved usability and product performance, the court concluded that the jar body and lid shape are functional design features.

The court also noted that the jar's shape was derived from a stock container offered by a third-party vendor rather than a new design tailored for SDJ's cream. This is a significant detail relied on by the judge, since design elements drawn from the public domain are generally considered functional because granting exclusive rights over them would harm competition. The USPTO had also previously refused similar SDJ packaging applications on functionality grounds, further undermining its position.

The Color Scheme. The yellow-and-white color-blocking design fared no better. The court found that SDJ used different colors across its product line to communicate different fragrance and benefits. For example, the yellow packaging corresponded with a particular scent and a “visibly firming” formulation. Therefore, SDJ's color scheme has a functional purpose that rendered it outside of trade dress protection.

The Lettering. The court also thought the capitalized dark-gray lettering on the lid was functional, as contrasting, capitalized text enhances readability and visibility. Courts have previously treated such design choices as functional because they improve visibility and consumer comprehension. Accordingly, the typography and arrangement of text on the lid also served utilitarian purposes.

Overall design. Finally, the court concluded that the overall packaging was merely the aggregation of individual functional elements. When considered together, they functioned to facilitate and enhance the consumer's use of the cream and communicated product attributes. Because each element of the jar design improved the container’s operation, the sum total of the combined design is also not protectable trade dress.

The Takeaway

This case carries important lessons for any company investing in distinctive product packaging and branding:

Trade dress protection has real limits. Packaging features that improve usability, communicate product information, or are derived from standard stock components are unlikely to qualify for trade dress protection — no matter how distinctive they may seem.

Copying is not automatically infringement. Even a competitor who openly sets out to create a dupe cannot be stopped by trade dress law if the features being copied are functional. Because the dupe-driven beauty market, in particular, operates in this gray zone every day,

trade dress registration is especially worthwhile. Had SDJ was able to secure a federal trade dress registration, the burden of proving functionality would have shifted to Apollo. Unregistered trade dress claims are harder to win and easier to attack.

Document your creative process. Evidence of aesthetic intent can help — but as this case shows, it is not enough on its own. Courts look at what a design feature does, not just why it was created.

The Bottom Line

Building a strong, protectable brand goes far beyond having a beautiful product. At Fulton Jeang PLLC, our award-winning IP attorneys help companies develop comprehensive brand protection strategies — from trademark and trade dress clearance to registration and enforcement. Whether you are launching a new product line or defending your brand against copycats, we are here to help. Contact us at info@fultonjeang.com or visit fultonjeang.com.

Fulton Jeang PLLC is recognized as one of the Best Law Firms in Dallas by Best Lawyers and is featured in the Chambers USA Texas IP Spotlight.