Written by Amanda Greenspon, Catherine Rifai, and Nicole Nigri.
When Sol de Janeiro’s Brazilian Bum Bum Cream hit the market, the world took notice, which meant copycats were quick to follow. Even the retail giant Costco asked its longtime supplier, Apollo Health and Beauty Care, whether it could create a body cream similar to Sol de Janeiro’s wildly popular product. Costco was not shy about its intentions. Internal communications described the project as a “dupe,” and Apollo later reported that it had secured “the exact same jar” used by Sol de Janeiro.
Looking at these products side by side, the resemblance is evident. Sol de Janeiro asserted that Costco and Apollo Health committed trade dress infringement, and many brand owners were confident of their success. Instead, the U.S. District Court for the Southern District of New York held that key elements of Sol de Janeiro’s Brazilian Bum Bum Cream packaging were functional and therefore not protectable as trade dress.
Yes, Sol de Janeiro lost its trade dress claim.
Brand owners often believe that strong evidence of intentional copying of a product and packaging will establish infringement. This decision reminds us that even strong evidence of copying may not be enough if the features being copied serve a practical purpose. Copying is only relevant if the feature being copied is legally protectable in the first place.
The case also arrives amid growing attention to retailer private-label products and lookalike goods. Costco is no stranger to intellectual property disputes involving products alleged to resemble market-leading brands. In recent years, Costco has faced claims involving Kirkland golf balls accused of infringing Titleist patents, Kirkland golf clubs accused of infringing TaylorMade patents, and apparel that Lululemon alleges copies the look and feel of several of its signature products. While those cases involve different forms of intellectual property protection, they reflect a broader trend showing that as retailers increasingly offer lower-cost alternatives to premium products, courts are being asked to determine where legitimate competition ends and infringement begins.
The Dispute
Sol de Janeiro asserted unregistered trade dress rights in the packaging for its popular Brazilian Bum Bum Cream product. The claimed trade dress included several elements that consumers readily recognized, including:
- A rounded jar with no writing on the body;
- A large, overhanging lid;
- A yellow-and-white color scheme; and
- The product name displayed prominently on the lid.
Critically, Sol de Janeiro did not design the jar itself. The founder selected a stock jar from a third-party supplier at a cosmetics trade show – packaging that was available to any company in the industry without exclusivity.
Apollo and Costco launched a competing product, NUTRIUS® Brazilian Body Butter Cream, using packaging that shared many of those same characteristics.
Sol de Janeiro pointed to evidence suggesting that the competing product was intentionally designed to emulate the look and feel of the original. But the court ultimately concluded that the packaging features Sol de Janeiro sought to protect were functional and therefore not entitled to trade dress protection.
Why Sol de Janeiro Lost
Trade dress protection does not extend to functional product features. A feature is considered functional if it is essential to the product’s use or purpose, or if it affects the product’s cost or quality. Functional features are generally free for competitors to copy.
Here, the court found that several of the packaging features Sol de Janeiro sought to protect served practical purposes. Namely:
- The rounded bottom of the jar made it easier to scoop out product and improved structural strength;
- The oversized lid was easier for consumers to grip, open, and close;
- The color system communicated product characteristics across Sol de Janeiro’s product line; and
- Certain labeling elements improved readability and conveyed product information.
Because these features affected the quality or usability of the packaging, the court concluded they were functional and not entitled to trade dress protection.
Just as importantly, the court found that Sol de Janeiro’s color scheme served a functional role. Across Sol de Janeiro’s product line, packaging colors communicate information about fragrance and product benefits. For example, the yellow packaging used for Brazilian Bum Bum Cream identifies both a specific fragrance profile and a “visibly firming” benefit. Because the colors help consumers identify product characteristics, the court concluded they serve a functional purpose rather than acting solely as source identifiers.
Another fact that proved significant was the origin of the packaging itself. The third-party packaging supplier’s stock jar already featured the rounded bottom and oversized hanging lid before it was used by Sol de Janeiro. Those pre-existing elements became central to Sol de Janeiro’s trade dress claim. While the use of stock packaging does not automatically defeat trade dress rights, it can make it more difficult to argue that consumers view those features as uniquely identifying a single brand. Further, the evidence that it was available to third parties in the same market without exclusivity undermined the argument that it operated as an indicator of source for Sol de Janeiro.
Most importantly, evidence that Costco and Apollo intended to create a “dupe” did not save the claim. Trademark law generally permits competitors to copy functional product features. Once the court determined the features were functional, evidence of copying became largely irrelevant.
The decision also highlights the importance of maintaining consistency across trademark prosecution, enforcement efforts, and litigation strategy. During the litigation, the parties pointed to Sol de Janeiro’s own trademark filings for similar packaging used on other products in its portfolio, including USPTO refusals based on functionality. Those filings ultimately became part of the broader functionality debate before the court.
In short, packaging features can be attractive, distinctive, and heavily associated with a brand while still being deemed functional and therefore ineligible for trade dress protection.
What Brand Owners Should Take Away
The Bum Bum Cream decision offers several practical lessons for consumer brands, including:
- Evidence of copying is not enough. Even clear evidence that a competitor set out to create a “dupe” may not support a trade dress claim if the copied features are functional.
- Be cautious about relying exclusively on packaging shape. Packaging configurations that improve usability or performance can be difficult to protect through trademark law alone.
- Stock packaging presents challenges. If a package design originates from a supplier catalog or consists largely of commonly available components, establishing exclusive trade dress rights may be more difficult.
- Product-line color coding can be a double-edged sword. Using colors to communicate fragrance, flavor, formulation, or product benefits can be effective marketing – but it may also support a later argument that the colors serve a functional purpose.
- Adopt a layered intellectual property strategy. Depending on the product and industry, registered trademarks, design patents, copyrights, and unfair competition claims may provide stronger protection against lookalike products than unregistered trade dress alone.
As retailers and online sellers continue to market lower-cost “dupes” of successful products, brand owners should evaluate whether the features consumers recognize most are actually protected – and whether trade dress is the right tool for the job.
