Distinctiveness and Product Packaging Trade Dress

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USPTO TMEP › Chapter 1200 - Substantive Examination of Applications › TMEP § 1202.02(b)(ii)

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Text

Product packaging trade dress may be

inherently distinctive.

Wal-Mart Stores, Inc. v. Samara

Bros.

, 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068 (2000) ("The

attribution of inherent distinctiveness to certain . . . product packaging

derives from the fact that the very purpose of . . . encasing [a product] in

a distinctive packaging, is most often to identify the source of the

product").

Therefore, in applications seeking

registration of marks comprising product packaging, the examining attorney

must assess inherent distinctiveness. If it is lacking, registration must be

refused on the Principal Register on the ground that the proposed mark is

nondistinctive trade dress under Trademark Act §§1, 2, and 45,

15 U.S.C. §§1051

1052

1127

, for trademark applications, or under §§1, 2,

3, and 45,

U.S.C. §§1051

1052

1053

1127

, for service mark applications.

Wal-Mart Stores, Inc. v. Samara

Bros.

, the U.S. Supreme Court discussed the distinction

between the trade dress at issue in

Two Pesos, Inc. v. Taco Cabana,

Inc.

, 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product

design trade dress (designs for children’s clothing) considered in

Wal-Mart:

Two Pesos

unquestionably establishes the legal

principle that trade dress can be inherently distinctive, but it does

not establish that

product-design

trade dress can be.

Two Pesos

is inapposite to our holding here

because the trade dress at issue, the decor of a restaurant, seems to us

not to constitute product design. It was either product packaging –

which, as we have discussed, normally

taken by the

consumer to indicate origin – or else some

tertium

quid that is akin to product packaging . . . .

529 U.S. at 215, 54 USPQ2d at 1069 (citation

omitted).

The examining attorney should be mindful of

the U.S. Supreme Court’s admonishment that where there are close cases,

trade dress should be classified as product design for which secondary

meaning is always required.

. at 215, 54 USPQ2d at

1070

consumer to indicate origin – or else some

tertium

quid that is akin to product packaging . . . .

529 U.S. at 215, 54 USPQ2d at 1069 (citation

omitted).

The examining attorney should be mindful of

the U.S. Supreme Court’s admonishment that where there are close cases,

trade dress should be classified as product design for which secondary

meaning is always required.

. at 215, 54 USPQ2d at

1070.

"[A] mark is inherently distinctive if ‘[its]

intrinsic nature serves to identify a particular source.’"

Id.

at 210, 54 USPQ2d at 1068 (citing

Two

Pesos, Inc.

, 505 U.S. at 768, 23 USPQ2d at 1083). The test for

determining inherent distinctiveness set forth in

Seabrook Foods,

Inc. v. Bar-Well Foods, Ltd.

, 568 F.2d 1342, 1344, 196 USPQ

289, 291 (C.C.P.A. 1977), although not applicable to product design trade

dress, is still viable in the examination of product packaging trade dress.

The examining attorney should consider the following

Seabrook

factors – whether the proposed mark is:

(1) a "common" basic shape or design;

(2) unique or unusual in a particular

field;

(3) 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; or

(4) capable of creating a commercial

impression distinct from the accompanying words.

Id.

;

see

e.g.

In re Chippendales USA,

Inc.

, 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)

(stating that an abbreviated tuxedo costume consisting of wrist cuffs and a

bowtie collar without a shirt "constitute[d] ‘trade dress’ because it was

part of the ‘packaging’" for exotic dancing services);

Tone Bros.,

Inc. v. Sysco Corp.

, 28 F.3d 1192, 1205-07, 31 USPQ2d 1321,

1330-32 (Fed. Cir

;

see

e.g.

In re Chippendales USA,

Inc.

, 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)

(stating that an abbreviated tuxedo costume consisting of wrist cuffs and a

bowtie collar without a shirt "constitute[d] ‘trade dress’ because it was

part of the ‘packaging’" for exotic dancing services);

Tone Bros.,

Inc. v. Sysco Corp.

, 28 F.3d 1192, 1205-07, 31 USPQ2d 1321,

1330-32 (Fed. Cir. 1994) (citing

Seabrook

, 568 F.2d at

1344, 196 USPQ at 291) (reversing lower court’s summary judgment decision

that the shape and appearance of the spice container at issue was not

inherently distinctive);

In re Odd Sox LLC

, 2019 USPQ2d

370879, at *9 (TTAB 2019) (finding rectangular sock packaging that displayed

socks side-by-side to be a common shape in the socks industry that was not

unique or unusual in the field of socks, and "a mere refinement of the

attributes of the existing packaging in the record" that did not create a

separate impression from wording on the packaging) (quoting

In re

Chevron Intell. Prop. Grp. LLC

, 96 USPQ2d 2026, 2029 (TTAB 2010));

In re Frankish Enters.

Ltd

., 113 USPQ2d 1964,

1973 (TTAB 2015)

(finding three-dimensional monster truck design, used in

connection with monster truck exhibition services, to be analogous to

product packaging for the services and unique in the monster truck field);

In re Mars,

Inc

., 105 USPQ2d 1859,

1869-71 (TTAB 2013)

(finding packaging configuration for pet food, resembling

many cans used in the pet food field, to be a common basic shape, even

though it was inverted, and a mere refinement of existing trade dress within

the field);

In re Chevron Intell. Prop. Grp

to be analogous to

product packaging for the services and unique in the monster truck field);

In re Mars,

Inc

., 105 USPQ2d 1859,

1869-71 (TTAB 2013)

(finding packaging configuration for pet food, resembling

many cans used in the pet food field, to be a common basic shape, even

though it was inverted, and a mere refinement of existing trade dress within

the field);

In re Chevron Intell. Prop. Grp. LLC,

USPQ2d at 2029 (holding "‘three-dimensional, six-sided beveled shape’ [pole

spanner design used to promote services] was a mere refinement of a commonly

used form of a gasoline pump ornamentation rather than an inherently

distinctive service mark for automobile service station services.");

In re Brouwerij

Bosteels

, 96 USPQ2d 1414,

1421-22 (TTAB 2010)

(holding that product packaging trade dress in the nature of

a beer glass and stand with wording and scrollwork would be perceived as a

mere refinement of a commonly known glass and stand rather than an

inherently distinctive indicator of source for the goods);

In re

File

, 48 USPQ2d 1363,

1367 (TTAB 1998)

(stating that novel tubular lights used in connection with

bowling alley services would be perceived by customers as "simply a

refinement of the commonplace decorative or ornamental lighting . . . and

would not be inherently regarded as a source indicator.");

In re J. Kinderman &

Sons Inc.

, 46 USPQ2d 1253,

1255 (TTAB 1998)

("while the designs [of packaging for electric lights for

Christmas trees that] applicant seeks to register may be unique in the sense

that we have no evidence that anyone else is using designs which are

identical to them, they are nonetheless not inherently distinctive.");

In re Hudson News

Co.,

39 USPQ2d 1915,

1923 (TTAB 1996)

, aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("[f]or the

‘blue motif’ of a retail store to be registrable on the Principal Register

without resort to Section 2(f), the trade dress would have to be immediately

recognizable as a distinctive way of identifying the source of the store

services.");

Yankee Candle Co

inherently distinctive.");

In re Hudson News

Co.,

39 USPQ2d 1915,

1923 (TTAB 1996)

, aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("[f]or the

‘blue motif’ of a retail store to be registrable on the Principal Register

without resort to Section 2(f), the trade dress would have to be immediately

recognizable as a distinctive way of identifying the source of the store

services.");

Yankee Candle Co. v. Bridgewater Candle Co.

259 F.3d 25, 42-45, 59 USPQ2d 1720, 1730-32 (1st Cir. 2001) (finding trade

dress for common elements of candle labels to be nondistinctive product

packaging for which insufficient evidence of acquired distinctiveness had

been shown).

Any one of the

Seabrook

factors, by itself, may be determinative as to whether the mark is

inherently distinctive.

See Chippendales

, 622 F.3d at

1355, 96 USPQ2d at 1687;

Chevron

, 96 USPQ2d at 2028.

Where the proposed product packaging trade

dress is not inherently distinctive, based on the analysis of the

Seabrook

factors and supporting evidence, and

acquired distinctiveness has not been established, registration must be

refused.

Chippendales

, 622 F.3d at 1351-52, 96 USPQ2d at

1684. The examining attorney must establish a prima facie case that the

product packaging is not inherently distinctive.

. at

1350, 96 USPQ2d at 1684. To meet this burden, the examining attorney must,

at a minimum, set forth a "‘reasonable predicate’ for [the] position of no

inherent distinctiveness," for example, by introducing evidence regarding

the first

Seabrook

factor that competitors use similar

basic shapes and designs.

In re Pacer Tech.

, 338 F.3d

1348, 1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (finding evidence of

design patents showing other adhesive container cap designs sufficient to

establish prima facie case that applicant’s adhesive container cap was not

inherently distinctive). The USPTO is an agency of limited resources, and as

such, it cannot be expected to shoulder the burden of conducting market

research.

Id.

For applications based on §1(b),

15 U.S.C

29, 1632 (Fed. Cir. 2003) (finding evidence of

design patents showing other adhesive container cap designs sufficient to

establish prima facie case that applicant’s adhesive container cap was not

inherently distinctive). The USPTO is an agency of limited resources, and as

such, it cannot be expected to shoulder the burden of conducting market

research.

Id.

For applications based on §1(b),

15 U.S.C. §1051(b)

, unless the

drawing, the description of the mark, and the examining attorney’s search

results are dispositive of the lack of distinctiveness without the need to

consider a specimen, applications for product packaging trade dress

generally will not be refused registration on the ground of

nondistinctiveness until the applicant has filed an allegation of use.

See

TMEP

§1202.02(d)

. For §44 and §66(a) applications, for

which no allegation of use is required, a nondistinctiveness refusal may be

issued, if appropriate, based on a review of the drawing, the description of

the mark, and any evidence obtained from the examining attorney’s search

results.

See

TMEP

§1202.02(e)

Regardless of the basis for filing, if a

proposed product packaging mark is inherently distinctive, it may be

registered on the Principal Register.

See

In re Procter & Gamble

., 105 USPQ2d 1119, 1123,

1126 (TTAB 2012)

(holding the overall shape of a container with a cap, and the

shape of the cap by itself, inherently distinctive for mouthwash);

In re Creative Beauty

Innovations, Inc

., 56 USPQ2d 1203,

1208 (TTAB 2000)

(holding bottle configuration inherently distinctive);

In re Fre-Mar Indus., Inc.

, 158 USPQ 364, 367 (TTAB

1968) ("[A]lthough the particular shape is a commonplace one for

flashlights, it is nevertheless so unique and arbitrary as a container in

the tire repair field that it may be inherently distinctive and, therefore,

by reason of its shape alone, serve to identify applicant’s goods and

distinguish them from like goods of others.");

In re Int'l Playtex

Corp

-Mar Indus., Inc.

, 158 USPQ 364, 367 (TTAB

1968) ("[A]lthough the particular shape is a commonplace one for

flashlights, it is nevertheless so unique and arbitrary as a container in

the tire repair field that it may be inherently distinctive and, therefore,

by reason of its shape alone, serve to identify applicant’s goods and

distinguish them from like goods of others.");

In re Int'l Playtex

Corp.

, 153 USPQ 377, 378

(TTAB 1967) (holding container configuration having the appearance of an

ice cream cone inherently distinctive packaging for baby pants).

If a proposed product packaging mark is

not

inherently distinctive, the mark may be

registered on either the Principal Register under §2(f), upon proof that the

mark has acquired distinctiveness or secondary meaning, or on the

Supplemental Register. Distinctiveness or secondary meaning is acquired when

the public views the primary significance of the product packaging as

identifying the source of the product rather than the product itself.

Wal-Mart

, 529 U.S. at 211, 54 USPQ2d at 1068. Whether

five years’ use is sufficient depends on the degree to which the mark’s

elements are unique or common in the field. This is determined by comparing

the specific features comprising the mark with the evidence of competitors’

use of similar features for the identified goods or services. The more

unique or unusual the features, the more likely that five years’ use may

suffice, but the more common or basic the features, the less likely that

five years’ use would suffice. See

TMEP

§1212

regarding claiming acquired distinctiveness

and

§1212.05

regarding claiming five years of use as

proof of distinctiveness.

In certain cases, the applicant’s evidence was

found sufficient to support a claim of acquired distinctiveness.

See

In re World’s Finest Chocolate, Inc.

, 474 F.2d 1012,

1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design held to identify

applicant’s candy bars and distinguish them from those of others);

Ex parte Haig & Haig Ltd.

, 118 USPQ 229, 230

(Comm’r Pats

se as

proof of distinctiveness.

In certain cases, the applicant’s evidence was

found sufficient to support a claim of acquired distinctiveness.

See

In re World’s Finest Chocolate, Inc.

, 474 F.2d 1012,

1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design held to identify

applicant’s candy bars and distinguish them from those of others);

Ex parte Haig & Haig Ltd.

, 118 USPQ 229, 230

(Comm’r Pats. 1958) ("[The decree] recited that because of the original,

distinctive and peculiar appearance of the ‘Pinched Decanter’ the brand of

whiskey in such bottles had come to be known and recognized by the public,

by dealers and by consumers; and that the whiskey contained in such bottles

had come to be identified with the ‘Pinched Decanter’ in the minds of the

public generally.").

See

TMEP §§1212-1212.10

regarding acquired distinctiveness and

§§815

816.05

regarding the Supplemental Register.

"[T]he lesser the degree of distinctiveness,

the heavier the burden to prove trade dress in the nature of product

packaging has acquired distinctiveness."

In re Brouwerij

Bosteels

, 96 USPQ2d 1414, 1424 (TTAB 2010) (citing

Yamaha Int’l Corp. v. Hoshino Gakki Co.

, 840 F.2d

1572, 1580, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). Where such trade dress

had a lesser degree of distinctiveness, the applicant’s evidence was found,

in certain cases, to be insufficient to support a claim of acquired

distinctiveness.

See

e.g.

In re Palacio Del Rio, Inc

veness."

In re Brouwerij

Bosteels

, 96 USPQ2d 1414, 1424 (TTAB 2010) (citing

Yamaha Int’l Corp. v. Hoshino Gakki Co.

, 840 F.2d

1572, 1580, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). Where such trade dress

had a lesser degree of distinctiveness, the applicant’s evidence was found,

in certain cases, to be insufficient to support a claim of acquired

distinctiveness.

See

e.g.

In re Palacio Del Rio, Inc.

2023 USPQ2d 630, at *10-13 (TTAB 2023) (holding evidence of acquired

distinctiveness insufficient for common modular building designs of a hotel

where the evidence comprised four identical "cookie cutter" customer

declarations, a declaration of applicant’s vice-president regarding use in

commerce since 1968 when the hotel opened in San Antonio,

advertising/promotion figures seeming insubstantial when viewed in

connection with the length of use, sales figures provided without industry

context, 17 local newspaper or industry trade journal articles and a website

discussing the building of the hotel for the HemisFair 1968 Word’s Fair in

San Antonio and no "look for" advertising or promotional materials or

mention of the hotel’s proposed trade dress as indicators of source of the

applied-for hotel services);

In re Brouwerij Bosteels

, 96

USPQ2d at 1424 (holding evidence of acquired distinctiveness insufficient

for a common "Half-Yard" type of beer glass and stand where the evidence

comprised use for at least 25 years, ownership of a prior registration for a

similar but not legally-equivalent mark, two third-party websites indicating

the beer glass is "eye-catching" or "unique," and no advertising or sales

figures or "look for" advertising or promotional materials);

In re

Usher, S.A

tiveness insufficient

for a common "Half-Yard" type of beer glass and stand where the evidence

comprised use for at least 25 years, ownership of a prior registration for a

similar but not legally-equivalent mark, two third-party websites indicating

the beer glass is "eye-catching" or "unique," and no advertising or sales

figures or "look for" advertising or promotional materials);

In re

Usher, S.A.

, 219 USPQ 920, 921 (TTAB 1983) (holding evidence

of acquired distinctiveness insufficient for a simple flat- rectangular

product packaging for two side-by-side round mint candies where the evidence

comprised a single declaration from applicant’s CEO specifying a few years

use in commerce, limited sales figures, unclear advertising figures, and no

"look for" advertising or promotional materials).

In certain cases, product packaging may be

incapable of functioning as an indicator of source. "[T]rade dress that

cannot serve as an indicator of source is generic and unprotectable."

Sunrise Jewelry Mfg. Corp. v. Fred S.A.

, 175 F.3d

1322, 1326, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999). For example, packaging

that is common or basic in an industry or that is a mere refinement of

packaging commonly used on the relevant goods will not be perceived as

indicating source and is not registrable on the Principal Register under

§2(f) or on the Supplemental Register.

See

In re Odd Sox LLC

, 2019 USPQ2d 370879, at *6 (holding

that the same standard used to determine whether product design trade dress

was generic "applies equally to product packaging" trade dress);

Stuart Spector Designs, Ltd. v. Fender Musical Instruments

Corp.

, 94 USPQ2d 1549, 1555 (TTAB 2009) (noting that a product

design may be deemed incapable where it is, "at a minimum, so common in the

industry that it cannot be said to identify a particular source.");