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  • Subject matter that is merely a decorative feature generally does not identify and distinguish applicant's goods and, thus, does not function as a trademark.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Also, subject matter that is merely a decorative feature generally does not identify and distinguish applicant's goods and, thus, does not function as a trademark.
  • A display of descriptive, generic or otherwise unregistrable matter is not registrable on the Principal Register unless the stylization of the words or the accompanying design features of the asserted mark create an impression on purchasers separate and apart from the impression made by the words themselves, or unless it can be shown by evidence that the particular display which applicant uses has acquired distinctiveness.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • In other words, a display of descriptive, generic or otherwise unregistrable matter is not registrable on the Principal Register unless the stylization of the words or the accompanying design features of the asserted mark create an impression on purchasers separate and apart from the impression made by the words themselves, or unless it can be shown by evidence that the particular display which applicant uses has acquired distinctiveness. See, for example, In re Benetton Group S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998)(green background tag for clothing); In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (parallelogram used as background design for applicant's housemark, the words ANTON/BAUER); and In re Miller Brewing Company, 226 USPQ 666, 668 (TTAB 1985)(display of "Lite" for beer held registrable on the basis of acquired distinctiveness).
  • If the background or other design elements of the mark are inherently distinctive, the mark may be registered without evidence of acquired distinctiveness.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • If the background or other design elements of the mark are inherently distinctive, the mark may be registered without evidence of acquired distinctiveness.
  • Factors such as whether a particular design is a common or basic shape or design, whether it is unique or unusual in its field, and whether it has an original, distinctive, and peculiar appearance are considered when determining whether a design is inherently distinctive.
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • In determining whether a design is inherently distinctive, our primary reviewing court has considered such factors as whether a particular design is a common or basic shape or design, whether it is unique or unusual in its field, and whether it has an "original, distinctive, and peculiar appearance." Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) and In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960).
  • The question of inherent distinctiveness may not be properly before the Board when the application was initially filed with a claim of acquired distinctiveness.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • As to the question of inherent distinctiveness, as noted above, we believe that this issue is not properly before us because this application was initially filed with a claim of acquired distinctiveness under Section 2(f). Nevertheless, we offer the following observations on this issue.
  • The fact an applicant's mark/design is the only one of its kind does not necessarily make the mark/design inherently distinctive.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • First, while it may be true that applicant's particular color scheme may be argued to be "unique" or novel to the extent that no other company uses this precise design, the fact that applicant's design may be said to be the one and only of its kind does not necessarily mean that it is inherently distinctive. See In re E S Robbins Corp., 30 USPQ2d 1540, 1542-3 (TTAB 1992).
  • A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods. See, e.g., Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 64 USPQ2d 1321, 1326 (10th Cir. 2002) (rebuttable presumption that the mark is inherently distinctive); and Equine Technologies Inc. v. Equitechnology, Inc., 68 F.3d 542, 36 USPQ2d 1659, 1661 (1st Cir. 1995) (holder of the mark entitled to presumption that its registered trademark is inherently distinctive). See also McCarthy, supra at §11:43 (4th ed. 2006) (noting that "The vast majority of courts have interpreted this section [7(b)] to mean that plaintiff in litigation is entitled to a strong prima facie presumption that its registered mark is either not 'merely descriptive' or if descriptive, that secondary meaning is presumed, which amounts to the same thing.")
  • Mere trade dress in the nature of product packaging can be inherently distinctive.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • At the outset, we note that there is no issue that the box design is not distinctive, for two reasons. First, while mere trade dress in the nature of product packaging can be inherently distinctive, trade dress in the nature of a product configuration cannot be, and because applicant claims the box is a good in trade, i.e., a product, rather than mere packaging, its design is registrable, if at all, only on a showing of acquired distinctiveness. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000). Second, by seeking registration under Section 2(f), applicant has conceded lack of inherent distinctiveness and must prove acquired distinctiveness.
  • Ordinary geometric shapes such as circles, ovals, squares, stars, etc., are generally regarded as nondistinctive and protectable only upon proof of acquired distinctiveness.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • However, ordinary geometric shapes such as circles, ovals, squares, stars, etc., are generally regarded as nondistinctive and protectable only upon proof of acquired distinctiveness. In re Anton/Bauer, supra.
  • A product configuration is not inherently distinctive, and (if non-functional) may be registered on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f).
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • A product configuration is not inherently distinctive, and (if non-functional) may be registered on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f). See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • FOOTNOTE 2 "Initially applicant claimed that the configuration was inherently distinctive; however, during the prosecution of this application the Supreme Court held that a product configuration could not be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000). Applicant has not pursued this argument in the appeal and, accordingly, the question of inherent distinctiveness is not before us in this appeal."
  • An owner's incontesable registration on the Principal Register of one mark does not require a finding that the owners contested mark is inherently distinctive.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Finally, the fact that applicant owns an incontestable registration on the Principal Register of the mark DIAL A MATTRESS does not mandate a finding in the present case that the 1-888-M-A-T-R-E-S-S mark is inherently distinctive. DIAL A MATTRESS and 1-888- M-A-T-R-E-S-S clearly are different marks.
  • Trade dress, including color, is registrable if it is not de jure functional and if it is distinctive, either inherently so or by virtue of acquired distinctiveness.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • Trade dress, including color, is registrable if it is not de jure functional and if it is distinctive, either inherently so or by virtue of acquired distinctiveness. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 23 USPQ2d 1081 (1992) and Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 115 S.Ct. 1426 (1995).
  • Case Finding: Geographic name deemed inherently distinctive as a certification mark indicating geographic origin as it inherently identifies the geographic source of the product.
    • Thus, we consider DARJEELING inherently distinctive as a certification mark indicating geographic origin as it inherently identifies the geographic source of the tea. Generally, greater protection is afforded to more distinctive marks. See Worthington Foods Inc. v. Kellogg Co. 732 F.Supp. 1417, 14 USPQ2d 1577, 1607 (S.D. Ohio 1990) ("The inherent nature of the plaintiff's mark is relevant since the more distinctive the mark, the more likely it is that a consumer, with a general recollection of the plaintiff's mark, will draw a connection between the two parties when seeing the defendant's mark.")
      • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
  • Case Finding: The word LITE for cheese was not registerable because there is nothing unusual or different in the formation of the lettering that would make them distinctive
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • We compare the distinctiveness of the presentation herein with earlier cases where this question has been considered. For example, the Board held that the display of the generic word "Lite" for cheese was not registrable because "there is nothing unusual or even different in the formation of the letters" which would make them distinctive. See In re Pollio Dairy Products Corp., 8 USPQ2d 2012 (TTAB 1988).
  • The features of a display may not necessarily overcome the inherent incapacity of the literal terms to serve as a source indicator unless the features inherently serve to distinguish the mark in its entirety, or it has been shown by competent evidence that what is sought to be registered does in fact function as a trademark.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • In each of these reported cases, the features of the display could not overcome the inherent incapacity of the literal terms to serve as a source indicator.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • On the other hand, on occasion, the features of the display are of such a nature that they inherently serve to distinguish the mark in its entirety, or it has been shown by competent evidence that what is sought to be registered does in fact function as a trademark to identify and distinguish applicant's goods in commerce.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • These composites contain presentations of the wording that are so inventive, striking, unique or distinctive in character as to make the composite registrable, or there is evidence that the particular display of unregistrable matter has become distinctive.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • It should be remembered, however, that the inherent distinctiveness being asserted in cases of this nature is almost always in connection with the specific display of the descriptive or generic words, not the descriptive or generic words themselves, and if there is acquired distinctiveness or secondary meaning being claimed, that showing pertains to the specific display or design aspect of the asserted mark and not in the words themselves. See, for example, In re K-T Zoe Furniture, 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994)(" … only the script design of the words [The Sofa & Chair Company] was shown to have acquired secondary meaning").
  • Case Finding: The generic name BUNDT was not registerable because it lacked a distinctive display.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Similarly, the style of lettering used in the generic name "bundt" was held not to be a distinctive display. See In re Northland Aluminum Products, Inc., supra.
  • Case Finding: The generic term MICROWAVE TURNTABLE, presented in plain block lettering with MICROWAVE in smaller letters appearing over the left-hand side of the word TURNTABLE, was not registrable on the Supplemental Register.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Likewise, when the generic term "MICROWAVE TURNTABLE" was presented in plain block lettering with "MICROWAVE" in smaller letters appearing over the left-hand side of the word "TURNTABLE," the resulting composite was held not to be registrable on the Supplemental Register. In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984).
  • Case Finding: Despite the slightly slanted letters and the capitalized letters "C" and "A," the descriptive term COURIAIRE was found not to be sufficiently distinctive to create a separate commercial impression.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Despite the slightly slanted letters and the capitalized letters "C" and "A," the descriptive term "COURIAIRE" was found not to be sufficiently distinctive to create a separate commercial impression. See In re Couriaire Express International, Inc., 222 USPQ 365 (TTAB 1984).
  • Case Finding: The generic term BODY SOAP shown in ordinary and undistinguished typeface not registrable on the Supplemental Register.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • This Board found the generic term "BODY SOAP" shown in ordinary and undistinguished typeface not registrable on the Supplemental Register. In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983).
  • Case Finding: When an earlier applicant had filled in the portions of some of the letters in the descriptive term "designers/fabric," this particular display was found not to be sufficiently distinctive to create a separate commercial impression.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • When an earlier applicant had filled in the portions of some of the letters in the descriptive term "designers/fabric," this particular display was found not to be sufficiently distinctive to create a separate commercial impression. In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984).
  • Case Finding: Where the goods were described as made of microdenier, even the interlocking letters "o" and "d" and the fine font making up the letters were deemed not to create a commercial impression separate and apart from the descriptive term MICRODENIER.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Where the goods were described as made of microdenier, even the interlocking letters "o" and "d" and the fine font making up the letters were deemed not to create a commercial impression separate and apart from the descriptive term MICRODENIER. See In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994).
  • Case Finding: A display of the generic term "24 K Gold" for jewelry was found not to be registrable.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Finally, a display of the generic term "24 K Gold" for jewelry was found not to be registrable. See In re Project Five, Inc., 209 USPQ 423 (TTAB 1980).
  • Case Finding: given the play on the "fun" aspects of applicant's food products, the distinctive display of MUFFUNS for muffins was held registrable on the Principal Register.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • For example, given the play on the "fun" aspects of applicant's food products, the distinctive display of MUFFUNS for muffins was held registrable on the Principal Register. See In re Grand Metro. Foodservice, 30 USPQ2d 1974 (TTAB 1994).
  • Case Finding: A distinctive display of THE PIPE was held registrable for smokers' pipes.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Similarly, a distinctive display of THE PIPE was held registrable for smokers' pipes. See In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).
  • An inherently distinctive mark is one which is by its very nature distinctive or unique enough to create a commercial impression as an indication of origin.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Moreover, an inherently distinctive mark is one which is "by its very nature distinctive or unique enough to create a commercial impression as an indication of origin...." In re Raytheon Co., 202 USPQ 317 (TTAB 1979).
  • As stated in the Trademark Manual for Examining Procedure, "[a] small, neat and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas the larger rendition of the same matter emblazoned across the front of a garment (or tote bag, or the like) may be likely to be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases." TMEP §1202.03(a).
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • As stated in the Trademark Manual for Examining Procedure, "[a] small, neat and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas the larger rendition of the same matter emblazoned across the front of a garment (or tote bag, or the like) may be likely to be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases." TMEP §1202.03(a).
  • As to third-party registrations, each case must be decided on its own set of facts and the existence of registrations for other designs does not entitle applicant to registration of the designs sought to be registered here.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • As to the third-party registrations, each case must be decided on its own set of facts and the existence of registrations for other designs does not entitle applicant to registration of the designs sought to be registered here. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); and In re Inter State Oil Co., Inc., 219 USPQ 1229 (TTAB 1983).
  • Case Finding: The TTAB does not find applicant's designs which span two pockets in a mirror image to be "neat and discrete," but rather more in the category of matter that is "emblazoned" across the garment.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Moreover, we do not find applicant's designs which span two pockets in a mirror image to be "neat and discrete," but rather more in the category of matter that is "emblazoned" across the garment.
  • First, there is no per se rule that a "neat and discrete" design is inherently distinctive.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • First, there is no per se rule that a "neat and discrete" design is inherently distinctive.
  • Fourteen registrations issued on the Principal Register and seventeen issued on the Supplemental Register or registered under Section 2(f) provides little insight other than to indicate that pocketstitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • In any event, the record includes fourteen registrations issued on the Principal Register and seventeen issued on the Supplemental Register or registered under Section 2(f). Such a record provides little insight other than to indicate that pocketstitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.
  • In determining whether a design is inherently distinctive, one must consider"whether it is a ‘common' basic shape or design, whether it is unique or unusual in a particular field, or]whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • In determining whether a design is inherently distinctive, we must consider "whether it [is] a ‘common' basic shape or design, whether it [is] unique or unusual in a particular field, [or] whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods." Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977). See also Tone Brothers Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994); and In re Glaxo Group Ltd., 53 USPQ2d 1920, 1922 (TTAB 2000) ("In cases involving the alleged inherent distinctiveness of trade dress, the Board has in the past looked to Seabrook.").
  • Inasmuch as pocket stitching is a commonly-adopted and well known form of ornamentation"for jeans, a mere refinement cannot be inherently distinctive. However, such stitching is capable of acquiring distinctiveness and the record shows the extent to which some purveyors of jeans tout their stitching and assert it as a source identifier.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Inasmuch as pocket stitching is a "commonly-adopted and well known form of ornamentation" for jeans, a "mere refinement" cannot be inherently distinctive. However, such stitching is capable of acquiring distinctiveness and the record shows the extent to which some purveyors of jeans tout their stitching and assert it as a source identifier.
  • The TTAB must consider the size, location and dominance of the designs in determining the commercial impression of designs.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Further, we must consider the size, location and dominance of the designs in determining the commercial impression of designs. In re Dimitri's Inc., 9 USPQ2d 1666, 1667 (TTAB 1988).
  • Where a mark may be merely descriptive of one or more items of goods in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • We begin by noting that, while the refusals are directed to all of the goods, the examining attorney and applicant have restricted their arguments to applicant's jeans listed in the identification of goods in each application. Therefore, we make our determination based on applicant's jeans and note that we need not address the other goods. Cf. In re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB 1988) (it is well settled that where a mark may be merely descriptive of one or more items of goods in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought).
  • While the design may in fact be unique, i.e., it is the only such design being used, it also must possess an original, distinctive and peculiar appearance.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • While the design may in fact be unique, i.e., it is the only such design being used, it also must possess an "original, distinctive and peculiar appearance." In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960).
  • Excerpts referring to use of the alleged mark outside the U.S. are not probative of the impact of the alleged mark on purchasers and potential purchasers in the U.S.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Moreover, four excerpts refer to use of the alleged mark outside the United States and, thus, these excerpts are not probative of the impact of the alleged mark on purchasers and potential purchasers in the United States.
  • Because the subject matter sought to be registered is a product design, it is not inherently distinctive, and it is registrable only with a showing of acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Because the subject matter sought to be registered is a product design, it is not inherently distinctive, and it is registrable only with a showing of acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1067 (2000).
  • Inherent distinctiveness can be considered where applicant seeks to register trade dress in the nature of product packaging; but not if it seeks to register trade dress in the nature of a product configuration.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Where, as here, applicant seeks to register trade dress in the nature of product packaging, the question of inherent distinctiveness can be considered. In contrast, this question does not arise where an applicant seeks to register trade dress in the nature of a product configuration. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) [Trade dress in the nature of a product configuration cannot be inherently distinctive].
  • If the mark comprises product packaging trade dress for goods or services, generally no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimens with an amendment to allege use or a statement of use
    • In re Primo Water Corporation, Serial No. 78684820 (TTAB 2008)
      • Prior to applicant's responding to the first Office action, the Examining Attorney issued a second Office action in which she withdrew the refusal that the mark is a nondistinctive configuration.3 FOOTNOTE 3 "The Examining Attorney did not provide a reason for withdrawing this ground of refusal. Presumably she did so because the application is based on an intention to use the mark, rather than on actual use, and she believed that whether or not this ground of refusal was appropriate could not be adequately determined until applicant submitted specimens of use of its mark with the filing of an amendment to allege use or statement of use. See TMEP §1202.02(e) (If the mark comprises product packaging trade dress for goods or services, generally no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimens with an amendment to allege use or a statement of use)."
  • The Court in the past has looked to whether it was a common basic shape or design, whether it was unique or unusual in a particular field, or whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • In determining whether the alleged mark is inherently distinctive, we look to the predecessor to our primary reviewing court for guidance. "The Court in the past has looked to whether it was a "common" basic shape or design, whether it was unique or unusual in a particular field, [or] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods[.]" Seabrook Foods, Inc. v. Bar-Well Foods, Inc., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977).
  • Consumers may more readily perceive closed containers as trademarks for the goods contained therein because closed containers presumably are suitable for display on store shelves or in other ways in which the container can aid the consumer in choosing between competing products.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • We do note, however, that unlike applicant's alleged mark, all but one of the marks in the third-party registrations are configurations of closed, rather than open, containers. As noted previously, consumers may more readily perceive closed containers as trademarks for the goods contained therein because closed containers presumably are suitable for display on store shelves or in other ways in which the container can aid the consumer in choosing between competing products. There is no indication whether applicant's open container for beer would be similarly displayed in a restaurant or bar, among other containers for beer. A consumer of beer in a restaurant or bar may very well not be presented with the container until after the beer has been ordered.
  • There is no per se rule that an open container cannot be inherently distinctive for the goods served or contained therein.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • It is important to point out that the mere fact the beer glass in the alleged mark is an open, rather than closed, container does not render the alleged mark not inherently distinctive. In other words, there is no per se rule that an open container cannot be inherently distinctive for the goods served or contained therein. For example, the "classic glass Coca-Cola bottle" referenced in Wal-Mart, would be no less source indicating when served as an open container to a restaurant patron than when pulled as a closed container from a refrigerated display or store shelf by a consumer. However, closed containers, because they are closed, presumably are suitable for display on store shelves or in other ways in which the container can aid the consumer in choosing between competing products. See Wal-Mart, 54 USPQ2d at 1068 ("a garish form of packaging (such as Tide's squat, brightly decorated plastic bottles for its liquid laundry detergent) may attract an otherwise indifferent consumer's attention on a crowded store shelf"). Thus, consumers may more readily perceive such containers as trademarks for the goods contained therein.
In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011) In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010) In re Right-On Co., Ltd., Serial Nos. 79014936, 79014939, and 79015094 (TTAB 2008) In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007) In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002) In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001) In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000) In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999) Grand Total
Sally Beauty Co. v. Beautyco Inc., 304 F.3d 964, 64 USPQ2d 1321 (10th Cir. 2002) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 1
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 5
In re Glaxo Group Ltd., 53 USPQ2d 1920 (TTAB 2000) 1
In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) 1
Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
Equine Technologies Inc. v. Equitechnology Inc., 68 F.3d 542, 36 USPQ2d 1659 (1st Cir. 1995) 1
In re Grand Metro. Foodservice, 30 USPQ2d 1974 (TTAB 1994) 1
In re Guilford Mills Inc., 33 USPQ2d 1042 (TTAB 1994) 1
In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994) 1
Tone Brothers Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321 (Fed. Cir. 1994) 1
In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992) 1
Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 112 S.Ct. 2753, 23 USPQ2d 1081 (1992) 1
Worthington Foods Inc. v. Kellogg Co. 732 F.Supp. 1417, 14 USPQ2d 1577 (S.D. Ohio 1990) 1
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) 1
In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1988) 1
In re Pollio Dairy Products Corp., 8 USPQ2d 2012 (TTAB 1988) 1
In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) 1
In re Miller Brewing Company, 226 USPQ 666 (TTAB 1985) 1
In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) 1
In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984) 1
In re Couriaire Express International Inc., 222 USPQ 365 (TTAB 1984) 1
In re S.D. Fabrics Inc., 223 USPQ 54 (TTAB 1984) 1
In re Cosmetic Factory Inc., 220 USPQ 1103 (TTAB 1983) 1
In re Inter State Oil Co., Inc., 219 USPQ 1229 (TTAB 1983) 1
In re Project Five Inc., 209 USPQ 423 (TTAB 1980) 1
In re Raytheon Co., 202 USPQ 317 (TTAB 1979) 1
In re Venturi Inc., 197 USPQ 714 (TTAB 1977) 1
Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977) 3
In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (CCPA 1960) 2
Grand Total 1 2 9 1 1 3 14 1 2 3 37
No Statutes Listed.