Under §1(a)(1) of the Trademark Act, 15 U.S.C. §1051(a)(1), a trademark or service mark application based on use in commerce must be filed by the owner of the mark. A §1(a) application must include a verified statement that the applicant believes the applicant is the owner of the mark sought to be registered. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1). An application that is not filed by the owner is void. See TMEP §1201.02(b).
A trademark or service mark application under §1(b) or §44 of the Act, 15 U.S.C. §§1051(b), 1126, must be filed by a party who has a bona fide intention to use the mark in commerce as of the application filing date and include a verified statement to that effect. 15 U.S.C §§1051(b)(1), (b)(3)(B), 1126(d)(2), (e); 37 C.F.R. §2.33(b)(2). When the person designated as the applicant is not the person with a bona fide intention to use the mark in commerce, the application is void. See TMEP §§1008, 1201.02(b).
In a §1(b) application, before the mark can be registered, the applicant must file an amendment to allege use under 15 U.S.C. §1051(c) (see TMEP §§1104-1104.11) or a statement of use under 15 U.S.C. §1051(d) (see TMEP §§1109-1109.18) which states that the applicant is the owner of the mark. 15 U.S.C. §1051(b); 37 C.F.R. §§2.76(b)(1)(i), 2.88(b)(1)(i). See TMEP §1104.10(b)(i) regarding ownership issues for an amendment to allege use and §1109.10 regarding ownership issues for a statement of use.
In a §44 application, the applicant must be the owner of the foreign application or registration on which the U.S. application is based as of the filing date of the U.S. application. See TMEP §1005.
An application under §66(a) of the Trademark Act (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), must be filed by the holder of the international registration. 15 U.S.C. §1141e(a); 37 C.F.R. §7.25. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1141(f)(a); 37 C.F.R. §2.33(e)(1). The verified statement in a §66(a) application for a trademark or service mark is part of the international registration on file at the International Bureau of the World Intellectual Property Organization (IB). The IB will have established that the international registration includes this verified statement before it sends the request for extension of protection to the U.S. Patent and Trademark Office (USPTO). See TMEP §804.05. The request for extension of protection remains part of the international registration, and ownership is determined by the IB. See TMEP §501.07 regarding assignment of §66(a) applications.
The provisions discussed above also apply to collective and certification marks with the caveat that the owner of such marks does not use the mark or have a bona fide intention to do so, but rather exercises control over its use by members/authorized users or has a bona fide intention, and is entitled, to exercise such control over the use by members/authorized users. See 15 U.S.C. §§1053, 1054; TMEP §§1303.02(a), 1304.03(a), 1306.01(a).
In an application under §1 of the Trademark Act, 15 U.S.C §1051, an applicant may base its claim of ownership of a mark on:
Where the mark is used by a related company, the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark. See 15 U.S.C §1055. The owner is the only proper party to apply for registration. See 15 U.S.C. §1051(a); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017) (finding that a mere licensee cannot rely on licensor's use to prove priority). See TMEP §§1201.03–1201.03(e) for additional information about use by related companies.
The examining attorney should accept the applicant’s statement regarding ownership of the mark unless it is clearly contradicted by information in the record. In re L. A. Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630, 1634 (TTAB 2003) .
The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark. Moreover, where the application states that use of the mark is by a related company or companies, the examining attorney should not require any explanation of how the applicant controls such use.
The provisions discussed above also apply to collective and certification marks, except that, by definition, collective and certification marks are not used by the owner of the mark, but rather the marks are used by its members/authorized users under the control of the owner. See 15 U.S.C. §§1053, 1054; TMEP §§1303.02(a), 1304.03(a), 1306.01(a). In addition, an application for registration of a collective mark must specify the nature of the applicant’s control over use of the mark. 37 C.F.R. §2.44(a)(4)(i)(A); TMEP §1303.01(a)(i)(A).
See TMEP §1201.04 for information about when an examining attorney should issue an inquiry or refusal with respect to ownership.
The applicant may be any person or entity capable of suing and being sued in a court of law. See TMEP §§803-803.03(k) for the appropriate format for identifying the applicant and setting forth the relevant legal entity.
An application must be filed by the party who is the owner of (or has a bona fide intention to use in commerce) the mark on the application filing date. See TMEP §1201. When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. 37 C.F.R §2.7(d); TMEP §803.06.
If the application was filed by the party who is the owner or has a bona fide intention to use the mark in commerce, but there was a mistake in the manner in which the applicant’s name was set forth in the application, this may be corrected. 37 C.F.R §2.7(d); TMEP §803.06. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
Trademark Act Section 1(a) applications. An application based on use in commerce under 15 U.S.C. §1051(a) must be filed by the party who owns the mark on the application filing date. 15 U.S.C §1051(a)(1). If the applicant does not own the mark on the application filing date, the application is void. 37 C.F.R. §2.71(d); Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017); Fuji Med. Instruments Mfg. Co. v. Am. Crocodile Int’l Grp., Inc., 2021 USPQ2d 831, at *25 (TTAB 2021) (citing Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988)); Conolty v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014); see Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *2 (TTAB 2020).
See TMEP §1104.10(b)(i) regarding ownership issues for an amendment to allege use and §1109.10 regarding ownership issues for a statement of use.
If the record indicates that the applicant is not the owner of the mark, the examining attorney should refuse registration on that ground. The statutory basis for this refusal is §1 of the Trademark Act, 15 U.S.C. §1051, and, where related company issues are relevant, §§5 and 45 of the Act, 15 U.S.C. §§1055, 1127. The examining attorney should not have the filing date cancelled or refund the application filing fee.
Trademark Act Section 1(b) and/or 44 applications. In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C. §§1051(b), 1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(1), (b)(3)(B), 1126(d)(2), (e); 37 C.F.R §2.33(b)(2). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *9-10 (TTAB 2020); Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *4-5 (TTAB 2019); Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) (holding a §1(b) filed by an individual to be void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband), aff’d, 232 F.3d 907 (Fed. Cir. 2000); see also M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). However, the examining attorney will not inquire into the bona fides, or good faith, of an applicant’s asserted intention to use a mark in commerce during ex parte examination, unless there is evidence in the record clearly indicating that the applicant does not have a bona fide intention to use the mark in commerce. See TMEP §1101.
See TMEP §1201 regarding ownership of a §66(a) application.
If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendment. U.S. Pioneer Elec. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974). However, the application may not be amended to designate another entity as the applicant. 37 C.F.R. §2.71(d); TMEP §803.06. An application filed in the name of the wrong party is void and cannot be corrected by amendment. 37 C.F.R. §2.71(d); see Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) ; In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).
Correctable Errors. The following are examples of correctable errors in identifying the applicant:
Example: Inconsistency Between Owner Section and Entity Section of TEAS Form. If the information in the "owner section" of a TEAS application form is inconsistent with the information in the "entity section" of the form, the inconsistency can be corrected, for example, if an individual is identified as the owner and a corporation is listed as the entity, the application may be amended to indicate the proper applicant name/entity.
Signature of Verification by Different Entity Does Not Create Inconsistency. In view of the broad definition of a "person properly authorized to sign on behalf of the [applicant]" in 37 C.F.R. §2.193(e)(1) (see TMEP §611.03(a)), if the person signing an application refers to a different entity, the USPTO will presume that the person signing is an authorized signatory who meets the requirements of 37 C.F.R. §2.193(e)(1), and will not issue an inquiry regarding the inconsistency or question the signatory’s authority to sign. If the applicant later requests correction to identify the party who signed the verification as the owner, the USPTO will not allow the amendment. For example, if the application is filed in the name of "John Jones, individual U.S. citizen," the verification is signed by "John Jones, President of ABC Corporation," and the applicant later proposes to amend the application to show ABC Corporation as the owner, the USPTO will not allow the amendment, because there was no inconsistency in the original application as to the owner name/entity.
Example 1: If the applicant is identified as ABC Company, a Delaware partnership, and the true owner is ABC LLC, a Delaware limited liability company, the application may be amended to correct the applicant’s name and entity if the applicant states on the record that "ABC Company, a Delaware partnership, did not exist as a legal entity on the application filing date."
Example 2: If an applicant is identified as "ABC Corporation, formerly known as XYZ, Inc.," and the correct entity is "XYZ, Inc.," the applicant’s name may be amended to "XYZ, Inc." as long as "ABC Corporation, formerly known as XYZ, Inc." was not a different existing legal entity. Cf. Custom Computer Serv. Inc. v. Paychex Prop. Inc., 337 F.3d 1334, 1337, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (holding that the term "mistake," within the context of the rule regarding the misidentification of the person in whose name an extension of time to file an opposition was requested, means a mistake in the form of the potential opposer's name or its entity type and does not encompass the recitation of a different existing legal entity that is not in privity with the party that should have been named).
To correct an obvious mistake of this nature, a verification or declaration is not normally necessary.
Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:
An operating division that is not a legal entity that can sue and be sued does not have standing to own a mark or to file an application to register a mark. The application must be filed in the name of the company of which the division is a part. In re Cambridge Digital Sys., 1 USPQ2d 1659, 1660 n.1 (TTAB 1986) . An operating division’s use is considered to be use by the applicant and not use by a related company; therefore, reference to related-company use is permissible but not necessary.
See TMEP Chapter 500 regarding changes of ownership and changes of name subsequent to filing an application for registration, and TMEP §§502.02–502.02(b) regarding the procedure for requesting that a certificate of registration be issued in the name of an assignee or in an applicant’s new name.
Section 5 of the Trademark Act, 15 U.S.C. §1055, states, in part, as follows:
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.
Section 45 of the Act, 15 U.S.C. §1127, defines "related company" as follows:
The term "related company" means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
Thus, §5 of the Act permits applicants to rely on use of the mark by related companies. Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *3 (TTAB 2020) (quoting Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1421 (TTAB 2016)). Either a natural person or a juristic person may be a related company. See 15 U.S.C. §1127.
"The essence of related-company use is the control exercised over the nature and quality of the goods or services on or in connection with which the mark is used. When a mark is used by a related company, use of the mark inures to the benefit of the [party] who controls the nature and quality of the goods or services." Sock It To Me, Inc., 2020 USPQ2d 10611, at *3 (quoting Noble House Home Furnishings, 118 USPQ2d at 1421). This party, who controls the nature and quality of the goods or services, is the owner of the mark and, therefore, the only party who may apply to register the mark. See Smith Int’l. Inc. v. Olin Corp., 209 USPQ 1033, 1044-45 (TTAB 1981) .
Reliance on related-company use requires, inter alia, that the related company use the mark in connection with the same goods or services recited in the application. In re Admark, Inc., 214 USPQ 302, 303 (TTAB 1982) (finding that related-company use was not at issue where the applicant sought registration of a mark for advertising-agency services and the purported related company used the mark for retail-store services).
A related company is different from a successor in interest who is in privity with the predecessor in interest for purposes of determining the right to register. See Wells Cargo, Inc. v. Wells Cargo, Inc., 197 USPQ 569, 570 (TTAB 1977) , aff’d,606 F.2d 961, 203 USPQ 564 (C.C.P.A. 1979).
See TMEP §1201.03(b) regarding wholly owned related companies, §1201.03(c) regarding corporations with common stockholders, directors, or officers, §1201.03(d) regarding sister corporations, and §1201.03(e) regarding license and franchise situations.
The USPTO does not require an application to specify if the applied-for mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act. Moreover, where the application states that use of the mark is by a related company or companies, the USPTO does not require an explanation of how the applicant controls the use of the mark.
Additionally, the USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or has a bona fide intention to use the mark in commerce. See TMEP §1201.04. In such cases, the USPTO may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate for the purpose of showing that the use by related companies inures to the benefit of the applicant and does not affect the validity of the mark. 37 C.F.R. §2.38(b).
Frequently, related companies comprise parent and wholly owned subsidiary corporations. Either a parent corporation or a subsidiary corporation may be the proper applicant, depending on the facts concerning ownership of the mark. The USPTO will consider the filing of the application in the name of either the parent or the subsidiary to be the expression of the intention of the parties as to ownership in accord with the arrangements between them. However, once the application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not permit an amendment of the applicant’s name to specify the other party as the owner. The applicant’s name can be changed only by assignment.
Furthermore, once an application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not consider documents (e.g., statements of use under 15 U.S.C. §1051(d) or affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 ) filed in the name of the other party to have been filed by the owner. See In re Media Cent. IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002) (holding §8 affidavit filed in the name of a subsidiary and predecessor in interest of the current owner unacceptable); In re ACE III Commc'ns, Inc., 62 USPQ2d 1049 (Dir USPTO 2001) (holding §8 affidavit unacceptable where the owner of the registration was a corporation, and the affidavit was filed in the name of an individual who asserted that she was the owner of the corporation).
Either an individual or a juristic entity may own a mark that is used by a wholly owned related company. In re Hand, 231 USPQ 487 (TTAB 1986) .
Corporations are not "related companies" within the meaning of §5 of the Trademark Act, 15 U.S.C. §1055, merely because they have the same stockholders, directors, or officers, or because they occupy the same premises. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1243 (TTAB 2007) (holding that the fact that both the applicant corporation and the corporate user of the mark have the same president and controlling stockholder, and share the same premises, does not make them related companies); In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) ( holding statement that both the applicant corporation and the corporate user of the mark have the same principal stockholder and officer insufficient to show that the user is a related company).
If an individual applicant is not the sole owner of the corporation that is using the mark, the question of whether the corporation is a "related company" depends on whether the applicant maintains control over the nature and quality of the goods or services such that use of the mark inures to the applicant’s benefit. A formal written licensing agreement between the parties is not necessary, nor is its existence sufficient to establish ownership rights. The critical question is whether the applicant sufficiently controls the nature and quality of the goods or services with which the mark is used. See Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981) (holding that the applicant, an individual, exercised sufficient control over the nature and quality of the goods sold under the mark by the licensee that the license agreement vested ownership of the mark in the applicant).
Similarly, where an individual applicant is not the sole owner of the corporation that is using the mark, the fact that the individual applicant is a stockholder, director, or officer in the corporation is insufficient in itself to establish that the corporation is a related company. The question depends on whether the applicant maintains control over the nature and quality of the goods or services.
See TMEP §1201.03(b) regarding use by wholly owned related companies.
The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one sister corporation is not considered to inure to the benefit of the other, unless the applicant sister corporation exercises appropriate control over the nature and quality of the goods or services on or in connection with which the mark is used. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1242 (TTAB 2007) ; In re Pharmacia Inc., 2 USPQ2d 1883, 1884 (TTAB 1987) ; Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 475 (TTAB 1982) .
See TMEP §1201.03(b) regarding use by wholly owned related companies.
The USPTO accepts applications by parties who claim to be owners of marks through use by controlled licensees, pursuant to a contract or agreement. Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981).
A controlled licensing agreement may be recognized whether oral or in writing. In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) (citing Basic Inc. v. Rex, 167 USPQ 696, 697 (TTAB 1970)); see Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *3-4 (TTAB 2020) (citing Woodstock’s Enters. Inc. (Cal.) v. Woodstock’s Enters. Inc. (Or.), 43 USPQ2d 1440, 1447 (TTAB 1997); Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1396 (TTAB 1994)) ("Even if there is no formal written agreement, a license can be implied.").
If the application indicates that use of the mark is pursuant to a license or franchise agreement, and the record contains nothing that contradicts the assertion of ownership by the applicant (i.e., the licensor or franchisor), the examining attorney will not inquire about the relationship between the applicant and the related company (i.e., the licensee or franchisee).
Ownership rights in a trademark or service mark may be acquired and maintained through the use of the mark by a controlled licensee even when the only use of the mark has been made, and is being made, by the licensee. Turner v. HMH Publ'g Co., 380 F.2d 224, 229, 154 USPQ 330, 334 (5th Cir. 1967), cert. denied, 389 U.S. 1006, 156 USPQ 720 (1967); Cent. Fid. Banks, Inc. v. First Bankers Corp. of Fla., 225 USPQ 438, 440 (TTAB 1984) (holding that use of the mark by petitioner’s affiliated banks considered to inure to the benefit of petitioner bank holding company, even though the bank holding company could not legally render banking services and, thus, could not use the mark). However, a mere licensee cannot rely on use of the mark by the licensor, whether through the license or otherwise, to establish priority. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).
Joint applicants enjoy rights of ownership to the same extent as any other "person" who has a proprietary interest in a mark. Therefore, joint applicants may license others to use a mark and, by exercising sufficient control and supervision of the nature and quality of the goods or services to which the mark is applied, the joint applicants/licensors may claim the benefits of the use by the related company/licensee. In re Diamond Walnut Growers, Inc. & Sunsweet Growers Inc., 204 USPQ 507, 510 (TTAB 1979) .
Stores that are operating under franchise agreements from another party are considered "related companies" of that party, and use of the mark by the franchisee/store inures to the benefit of the franchisor. Mr. Rooter Corp. v. Morris, 188 USPQ 392, 394 (E.D. La. 1975); Southland Corp. v. Schubert, 297 F. Supp. 477, 160 USPQ 375, 381 (C.D. Cal. 1968).
In all franchise and license situations, the key to ownership is the nature and extent of the control by the applicant over the nature and quality of the goods or services with which the mark is used. See Sock It To Me, 2020 USPQ2d 10611, at *4 (quoting In re Jos. Bancroft & Sons, 120 USPQ 329, 330-31 (TTAB 1961)). Control over all of the related company’s affairs is not required. See Sock It To Me, 2020 USPQ2d 10611, at *4 (citing 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §18:58 (5th ed. Nov. 2019 update)). However, a trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark. See Hurricane Fence Co. v. A-1 Hurricane Fence Co., 468 F. Supp. 975, 986; 208 USPQ 314, 325 (S.D. Ala. 1979).
In general, where the application states that a mark is used by a licensee or franchisee, the USPTO does not require an explanation of how the applicant controls the use.
The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or has a bona fide intention to use the mark in commerce.
The examining attorney should inquire about another party if the record specifically states that another party is the owner of the mark, or if the record specifically identifies the applicant in a manner that contradicts the claim of ownership, for example, as a licensee. In these circumstances, registration should be refused under §1 of the Trademark Act, on the ground that the applicant is not the owner of the mark. Similarly, when the record indicates that the applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer, the examining attorney should require the applicant to establish its ownership rights in the United States in accordance with TMEP §1201.06(a).
Where the specimen of use indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. See TMEP §1201.06(b). Also, where the application states that use of the mark is by related companies, an explanation of how the applicant controls use of the mark by the related companies is not required. See TMEP §1201.03(a).
An applicant’s claim of ownership of a mark may be based on the applicant’s own use of the mark, even though there is also use by a related company. The applicant is the owner by virtue of the applicant’s own use, and the application does not have to refer to use by a related company.
An applicant may claim ownership of a mark when the mark is applied on the applicant’s instruction. For example, if the applicant contracts with another party to have goods produced for the applicant and instructs the party to place the mark on the goods, that is considered the equivalent of the applicant itself placing the mark on its own goods and reference to related-company use is not necessary.
A distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of Am. Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark.
If the applicant merely distributes or imports goods for the owner of the mark, registration must be refused under §1 of the Trademark Act, except in the following situations:
See Fuji Med. Instruments Mfg. Co. v. Am. Crocodile Int’l Grp., Inc., 2021 USPQ2d 831, at *24 (TTAB 2021); In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987).
The Board has also found that a mere licensee cannot rely on the licensor’s use to prove priority. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).
Where a specimen indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. If, however, information in the record clearly contradicts the applicant’s verified claim of ownership (e.g., a statement in the record that the mark is owned by the foreign manufacturer and that the applicant is only an importer or distributor), then registration must be refused under §1, 15 U.S.C. §1051, unless registration in the United States by the applicant is supported by the applicant’s submission of one of the documents listed in TMEP §1201.06(a).
For a mark that would otherwise be subject to a refusal under §2(a) because it falsely suggests a connection with a designation of a U.S. government agency, instrumentality, or program, such as names, acronyms, titles, terms, and symbols, but the record demonstrates that the applicant has some affiliation with the agency or program, the examining attorney must issue an information request under 37 C.F.R. §2.61(b) requiring further information as to ownership of the designation and authorization to register. If it appears that the applicant lacks authorization to register the designation in the mark, the examining attorney may refuse to register under §1 of the Trademark Act because the applicant is not the owner of the governmental designation in the mark. The mark may also be refused under §2(a) for false suggestion of a connection and under §§1 and 45 when such marks are the subject of statutory protection. See TMEP §1203.03(b)(ii) for refusals under false association for Government Agencies and Instrumentalities, TMEP §1205.01 for information about statutorily protected matter, and Appendix C for a non-exhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities.
Disclaiming the name of, or acronym for, the U.S. government agency or instrumentality to which the mark refers generally will not overcome the refusal under §§1 and 45. See TMEP §1213.03(a) regarding unregistrable components of marks.
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), requires that the examining attorney refuse registration when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. In general, registration of confusingly similar marks to separate legal entities is barred by §2(d). See TMEP §§1207–1207.01(d)(xi). However, the Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company. The Court stated that:
The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark "WELLASTRATE." In other words, is the public likely to believe that the source of the product is Wella U.S. rather than the German company or the Wella organization.
In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986); cf. In re Wacker Neuson SE,97 USPQ2d 1408 (TTAB 2010) (finding that the record made clear that the parties were related and that the goods and services were provided by the applicant).
The Wella Court remanded the case to the Board for consideration of the likelihood of confusion issue. In ruling on that issue, the Board concluded that there was no likelihood of confusion, stating as follows:
[A] determination must be made as to whether there exists a likelihood of confusion as to source, that is, whether purchasers would believe that particular goods or services emanate from a single source, when in fact those goods or services emanate from more than a single source. Clearly, the Court views the concept of "source" as encompassing more than "legal entity." Thus, in this case, we are required to determine whether Wella A.G. and Wella U.S. are the same source or different sources . . . .
The existence of a related company relationship between Wella U.S. and Wella A.G. is not, in itself, a basis for finding that any "WELLA" product emanating from either of the two companies emanates from the same source. Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. "Control" and "source" are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various "WELLA" trademarks, the two entities are in fact separate sources. Wella A.G. has made of record a declaration of the executive vice president of Wella U.S., which declaration states that Wella A.G. owns substantially all the outstanding stock of Wella U.S. and "thus controls the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks." While the declaration contains no details of how this control is exercised, the declaration is sufficient, absent contradictory evidence in the record, to establish that control over the use of all the "WELLA" trademarks in the United States resides in a single source.
In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (emphasis in original), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).
Therefore, in some limited circumstances, the close relationship between related companies will obviate any likelihood of confusion in the public mind because the related companies constitute a single source. See TMEP §§1201.07(b)-1201.07(b)(iv) for further information.
First, it is important to note that analysis under Wella is not triggered until an applicant affirmatively asserts that a §2(d) refusal is inappropriate because the applicant and the registrant, though separate legal entities, constitute a single source, or the applicant raises an equivalent argument. Examining attorneys should issue §2(d) refusals in any case where an analysis of the marks and the goods or services of the respective parties indicates a bar to registration under §2(d). The examining attorney should not attempt to analyze the relationship between an applicant and registrant until an applicant, in some form, relies on the nature of the relationship to obviate a refusal under §2(d).
Once an applicant has made this assertion, the question is whether the specific relationship is such that the two entities constitute a "single source," so that there is no likelihood of confusion. The following guidelines may assist the examining attorney in resolving questions of likelihood of confusion when the marks are owned by related companies and the applicant asserts unity of control. (In many of these situations, the applicant may choose to attempt to overcome the §2(d) refusal by submitting a consent agreement or other conventional evidence to establish no likelihood of confusion. See TMEP §1207.01(d). Another way to overcome a §2(d) refusal is to assign all relevant registrations to the same party.)
If the applicant or the applicant’s attorney represents that either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply to an individual who owns all the stock of a corporation, and to a corporation and a wholly owned subsidiary or a subsidiary of a wholly owned subsidiary. In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence.
Either Applicant or Registrant Owns Substantially All of the Other Entity. In Wella, the applicant provided a declaration stating that the applicant owned substantially all of the stock of the registrant and that the applicant thus controlled the activities of the registrant, including the selection, adoption, and use of trademarks. In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) , rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988). The Board concluded that this declaration alone, absent contradictory evidence, established unity of control, a single source, and no likelihood of confusion. Id. Therefore, if either the applicant or the registrant owns substantially all of the other entity and asserts control over the activities of the other entity, including its trademarks, and there is no contradictory evidence, the examining attorney should conclude that unity of control is present, that the entities constitute a single source, and that there is no likelihood of confusion under §2(d). In such a case, the applicant should generally provide these assertions in the form of an affidavit or declaration under 37 C.F.R. §2.20.
Joint Ownership. The examining attorney may also accept an applicant’s assertion of unity of control when the applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and the applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership, if there is no contradictory evidence.
If neither the applicant nor the registrant owns all or substantially all of the other entity, and USPTO records do not show their joint ownership of the application or cited registration (see TMEP §1201.07(b)(ii)), the applicant bears a more substantial burden to establish that unity of control is present. For instance, if both the applicant and the registrant are wholly owned by a third common parent, the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source. See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987) ; Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982) . Likewise, where an applicant and registrant have certain stockholders, directors, or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). The applicant’s evidence or explanation should generally be supported by an affidavit or a declaration under 37 C.F.R. §2.20.
In contrast to those circumstances where the relationship between the parties may support a presumption of unity of control or at least afford an applicant the opportunity to demonstrate unity of control, some relationships, by their very nature, contradict any claim that unity of control is present. For instance, if the relationship between the parties is that of licensor and licensee, unity of control will ordinarily not be present. The licensing relationship suggests ownership in one party and control by that one party over only the use of a specific mark or marks, but not over the operations or activities of the licensee generally. Thus, there is no unity of control and no basis for concluding that the two parties form a single source. Precisely because unity of control is absent, a licensing agreement is necessary. The licensing agreement enables the licensor/owner to control specific activities to protect its interests as the sole source or sponsor of the goods or services provided under the mark. Therefore, in these situations, it is most unlikely that an applicant could establish unity of control to overcome a §2(d) refusal.
In an application under §1 of the Trademark Act, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing the specimens and any other evidence of record showing how the designation is used in the marketplace. See In re Maugus Mfg., Inc., 2021 USPQ2d 1100, at *6 (TTAB 2021) (citing In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)); In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)).
"[A] proposed trademark is registrable only if it functions as an identifier of the source of the applicant's goods or services." In re Maugus Mfg., Inc., 2021 USPQ2d 1100, at *6 (quoting In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019)). Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. DeVivo v. Ortiz, 2020 USPQ2d 10153, at *7 (TTAB 2020) (quoting In re Ill. Bronze Powder & Paint Co., 188 USPQ 459, 462 (TTAB 1975)); see In re Maugus Mfg., Inc., 2021 USPQ2d 1100, at *7 (citing In re Water Gremlin Co., 635 F.2d 841, 843-44, 208 USPQ 89, 90 (C.C.P.A. 1980); In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992)). As the Court of Customs and Patent Appeals observed in In re Standard Oil Company, 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):
The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.
Sections 1 and 2 of the Act, 15 U.S.C. §§1051, 1052, require that the subject matter presented for registration be a "trademark." Section 45 of the Act, 15 U.S.C. §1127, defines that term as follows:
The term "trademark" includes any word, name, symbol, or device, or any combination thereof–
- (1) used by a person, or
- (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Thus, §§1, 2, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1127, provide the statutory basis for refusal to register on the Principal Register subject matter that, due to its inherent nature or the manner in which it is used, does not function as a mark to identify and distinguish the applicant’s goods. The statutory basis for refusal of registration on the Supplemental Register of matter that does not function as a trademark is §§23(c) and 45 of the Act, 15 U.S.C. §§1091(c), 1127.
When the examining attorney refuses registration on the ground that the subject matter is not used as a trademark, the examining attorney must explain the specific reason for the conclusion that the subject matter is not used as a trademark. See TMEP §§1202.01–1202.19 for a discussion of situations in which it may be appropriate, depending on the circumstances, for the examining attorney to refuse registration on the ground that the proposed mark does not function as a trademark, e.g., TMEP §1202.01 (trade names), §1202.02(a)–(a)(viii) (functionality), §§1202.03–1202.03(g) (ornamentation), §1202.04 (informational matter), §§1202.05–1202.05(i) (color marks), §§1202.06–1202.06(c) (goods in trade), §§1202.07–1202.07(b) (columns or sections of publications), §1202.08–1202.08(f) (title of single creative work), §§1202.09–1202.09(b) (names of artists and authors), §§1202.11 (background designs and shapes), §1202.12 (varietal and cultivar names), §1202.16 (model or grade designations), §1202.17 (universal symbols), §1202.18 (hashtags), and §1202.19 (repeating patterns).
The presence of the "TM" or "SM" symbol next to the mark on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); TMEP §1301.02; see In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984); In re Minnetonka, Inc., 212 USPQ 772, 779 n.12 (TTAB 1981).
The issue of whether a designation functions as a mark usually is tied to the use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally, no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
In an application under §44 or §66(a) of the Act, 15 U.S.C. §§1126, 1141f(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a failure to function refusal where the mark on its face, as shown on the drawing and described in the description, reflects a failure to function. See In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (TTAB 2020) (holding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).
See TMEP §§1301.02–1301.02(f) regarding use of subject matter as a service mark; §§1302-1305 regarding use of subject matter as a collective mark; and §§1306-1306.06(c) regarding use of subject matter as a certification mark.
The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks and service marks by definition. While a trademark is used to identify and distinguish the trademark owner’s goods from those manufactured or sold by others and to indicate the source of the goods, "trade name" and "commercial name" are defined in §45 of the Act, 15 U.S.C. §1127, as follows:
The terms "trade name" and "commercial name" mean any name used by a person to identify his or her business or vocation.
The Trademark Act does not provide for registration of trade names. See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) ("[T]here was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks.").
If the examining attorney determines that matter for which registration is requested is merely a trade name, registration must be refused both on the Principal Register and on the Supplemental Register. The statutory basis for refusal of trademark registration on the ground that the matter is used merely as a trade name is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
A designation may function as both a trade name and a trademark or service mark. See In re Walker Process Equip. Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff’g 102 USPQ 443 (Comm’r Pats. 1954).
If subject matter presented for registration in an application is a trade name or part of a trade name, the examining attorney must determine whether it is also used as a trademark or service mark, by examining the specimen and other evidence of record in the application file. See In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994) (holding that DIAMOND HILL FARMS, as used on containers for goods, is a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others).
Whether matter that is a trade name (or a portion thereof) also performs the function of a trademark depends on the manner of its use and the probable impact of the use on customers. See In re Supply Guys, Inc., 86 USPQ2d 1488, 1491 (TTAB 2008) (finding that the use of trade name in "Ship From" section of Federal Express label where it serves as a return address does not demonstrate trademark use as the term appears where customers would look for the name of the party shipping the package); In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 168 (TTAB 1976) ("It is our opinion that the foregoing material reflects use by applicant of the notation ‘UNCLAIMED SALVAGE & FREIGHT CO.’ merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308 (TTAB 1960) ("‘LYTLE’ is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression.").
The presence of an entity designator in a name sought to be registered and the proximity of an address are both factors to be considered in determining whether a proposed mark is merely a trade name. In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) ("[T]he mark "UNIVAR" independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship."); see also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) ("That the invoices . . . plainly show . . . service mark use is apparent from the fact that, not only do the words ‘BookCrafters, Inc.’ appear in larger letters and a different style of print than the address, but they are accompanied by a design feature (the circularly enclosed ends of two books).").
A determination of whether matter serves solely as a trade name rather than as a mark requires consideration of the way the mark is used, as evidenced by the specimen(s). Therefore, no refusal on that ground will be issued in an intent-to-use application under §1(b) until the applicant has submitted specimen(s) of use in conjunction with an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d).
Trade dress constitutes a "symbol" or "device" within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209-10, 54 USPQ2d 1065, 1065-66 (2000). Trade dress originally included only the packaging or "dressing" of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the "total image and overall appearance" of a product, or the totality of the elements, and "may include features such as size, shape, color or color combinations, texture, graphics." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992).
Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the "dressing" of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product. Wal-Mart, 529 U.S. at 205, 54 USPQ2d at 1065 (design of children’s outfits constituted product design); Two Pesos, 505 U.S. at 763, 23 USPQ2d at 1081 (interior of a restaurant was akin to product packaging); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (color alone would be protectible); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (flavor was analogous to product design and may be protectible unless it is functional). However, this is not an exhaustive list, because "almost anything at all that is capable of carrying meaning" may be used as a "symbol" or "device" and constitute trade dress that identifies the source or origin of a product. Qualitex, 514 U.S. at 162, 34 USPQ2d at 1162. When it is difficult to determine whether the proposed mark is product packaging or product design, such "ambiguous" trade dress is treated as product design. Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1066. Trade dress marks may be used in connection with goods and services.
In some cases, the nature of a potential trade dress mark may not be readily apparent. A determination of whether the mark constitutes trade dress must be informed by the application content, including the drawing, the description of the mark, the identification of goods or services, and the specimen, if any. If it remains unclear whether the proposed mark constitutes trade dress, the examining attorney may call or email the applicant to clarify the nature of the mark, or issue an Office action requiring information regarding the nature of the mark, as well as any other necessary clarifications, such as a clear drawing and an accurate description of the mark. 37 C.F.R. §2.61(b). The applicant’s response would then confirm whether the proposed mark is trade dress.
When an applicant applies to register a product design, product packaging, color, or other trade dress for goods or services, the examining attorney must separately consider two substantive issues: (1) functionality; and (2) distinctiveness. See TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-05 (2001); Two Pesos, 505 U.S. at 775, 23 USPQ2d at 1086; In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1343, 213 USPQ 9, 17 (C.C.P.A. 1982) . See TMEP §§1202.02(a)–(a)(viii) regarding functionality and §§1202.02(b)–(b)(ii) and §§1212–1212.10 regarding distinctiveness. In many cases, a refusal of registration may be necessary on both grounds. In any application where a product design is refused because it is functional, registration must also be refused on the ground that the proposed mark is nondistinctive because product design is never inherently distinctive. However, since product packaging may be inherently distinctive, in an application where product packaging is refused as functional, registration should also be refused on the ground that the proposed mark is nondistinctive. Even if it is ultimately determined that the product packaging is not functional, the alternative basis for refusal may stand.
If a proposed trade dress mark is ultimately determined to be functional, claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant and registration will be refused. TrafFix , 532 U.S. at 33, 58 USPQ2d at 1007.
With respect to the functionality and distinctiveness issues in the specific context of color as a mark, see TMEP §1202.05(a) and (b).
In general terms, trade dress is functional, and cannot serve as a trademark, if a feature of that trade dress is "essential to the use or purpose of the article or if it affects the cost or quality of the article." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982).
Before October 30, 1998, there was no specific statutory reference to functionality as a ground for refusal, and functionality refusals were thus issued as failure-to-function refusals under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of functional matter:
These amendments codified case law and the longstanding USPTO practice of refusing registration of functional matter.
The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining a proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995):
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. Sections 154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.
Thus, even when the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated. Id.
Functional matter cannot be protected as a trademark. 15 U.S.C. §§1052(e)(5), (f), 1064(3), 1091(c), 1115(b). A feature is functional as a matter of law if it is "essential to the use or purpose of the article or if it affects the cost or quality of the article." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982).
While some courts had developed a definition of functionality that focused solely on "competitive need" – thus finding a particular product feature functional only if competitors needed to copy that design to compete effectively – the Supreme Court held that this "was incorrect as a comprehensive definition" of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition – that is, it is essential to the use or purpose of the product or affects its cost or quality – then the feature is functional, regardless of the availability to competitors of other alternatives. Id.; see also Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) ("Rather, we conclude that the [TrafFix] Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available" (footnote omitted).)
However, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need, although not determinative, remains a significant consideration in functionality determinations. Valu Eng’g, Inc., 278 F.3d at 1278, 61 USPQ2d at 1428.
The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. See TrafFix, 532 U.S. at 29-33, 58 USPQ2d at 1005-07; In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *18-19 (TTAB 2020) (quoting In re Honeywell, Inc., 187 USPQ 576, 578 (TTAB 1975)); see also In re Controls Corp. of Am., 46 USPQ2d 1308, 1312 (TTAB 1998) (rejecting applicant’s claim that "registration on the Supplemental Register of a de jure functional configuration is permissible if the design is ‘capable’ of distinguishing applicant’s goods"). Thus, if an applicant responds to a functionality refusal under §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5), by submitting an amendment seeking registration on the Supplemental Register that is not made in the alternative, such an amendment does not introduce a new issue warranting a nonfinal Office action. See TMEP §714.05(a)(i). Instead, the functionality refusal must be maintained and made final, if appropriate, under §23(c) and §45 of the Act, 15 U.S.C. §§1091(c), 1127, as that is the statutory authority governing a functionality refusal on the Supplemental Register. Additionally, for functionality refusals, the associated nondistinctiveness refusal must be withdrawn. See In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) .
See TMEP §§1202.02(a)(v)–(a)(v)(D) regarding evidentiary considerations pertaining to functionality refusals.
Prior to 2002, the USPTO used the terms "de facto" and "de jure" in assessing whether "subject matter" (usually a product feature or the configuration of the goods) presented for registration was functional. This distinction originated with the Court of Customs and Patent Appeals’ decision in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982) , which was discussed by the Federal Circuit in Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002):
Our decisions distinguish de facto functional features, which may be entitled to trademark protection, from de jure functional features, which are not. ‘In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid.’ In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). De facto functionality does not necessarily defeat registrability. Morton-Norwich, 671 F.2d at 1337, 213 USPQ at 13 (A design that is de facto functional, i.e., ‘functional’ in the lay sense . . . may be legally recognized as an indication of source.’). De jure functionality means that the product has a particular shape ‘because it works better in this shape.’ Smith, 734 F.2d at 1484, 222 USPQ at 3.
However, in three Supreme Court decisions involving functionality – TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000), and Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) – the Court did not use the "de facto/de jure" distinction. Nor were these terms used when the Trademark Act was amended to expressly prohibit registration of matter that is "functional." Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality.
De facto functionality is not a ground for refusal. In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1282 (TTAB 2000) ; In re Parkway Mach. Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999) .
The examining attorney must establish a prima facie case that the proposed trade dress mark sought to be registered is functional to make and maintain the §2(e)(5) functionality refusal. See In re Becton, Dickinson & Co., 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) (citing In re Teledyne Indus., Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982)); Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 629 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). To do so, the examining attorney must not only examine the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), but also conduct independent research to obtain evidentiary support for the refusal. In applications where there is reason to believe that the proposed mark may be functional, but the evidence is lacking to issue the §2(e)(5) refusal in the first Office action, a request for information pursuant to 37 C.F.R. §2.61(b) must be issued to obtain information from the applicant so that an informed decision about the validity of the functionality refusal can be made.
The burden then shifts to the applicant to present "competent evidence" to rebut the examining attorney’s prima facie case of functionality. See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376 (citing In re Teledyne Indus., Inc., 696 F.2d at 971, 217 USPQ at 11); Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d at 1025, 224 USPQ at 629; In re R.M. Smith, Inc., 734 F.2d at 1484, 222 USPQ at 3. The competent evidence standard requires proof by a preponderance of the evidence. In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376–77 (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1579, 6 USPQ2d 1001, 1006-07 (Fed. Cir. 1988)).
The functionality determination is a question of fact, and depends on the totality of the evidence presented in each particular case. In re Becton, Dickinson & Co., 675 F.3d at 1372, 102 USPQ2d at 1375 (citing In re Bose Corp., 476 F.3d 1331, 1334, 81 USPQ2d 1748, 1751 (Fed. Cir. 2007); Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340, 213 USPQ 9, 15 (C.C.P.A. 1982)); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *5 (TTAB 2020). While there is no set amount of evidence that an examining attorney must present to establish a prima facie case of functionality, it is clear that there must be evidentiary support for the refusal in the record. See, e.g., In re Morton-Norwich Prods., Inc., 671 F.2d 1332,at 1342, 213 USPQ 9, at 16-17 (admonishing both the examining attorney and the Board for failing to support the functionality determination with even "one iota of evidence").
If the design sought to be registered as a mark is the subject of a utility patent that discloses the feature’s utilitarian advantages, the applicant bears an especially "heavy burden of showing that the feature is not functional" and " overcoming the strong evidentiary inference of functionality." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30, 58 USPQ2d 1001, 1005 (2001); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *5; In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1979-80 (TTAB 2009); see TMEP §1202.02(a)(v)(A).
A determination of functionality normally involves consideration of one or more of the following factors, commonly known as the " Morton-Norwich factors":
In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (citing Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002)); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982) .
Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case. In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989) . Therefore, in an application for a trade dress mark, when there is reason to believe that the proposed mark may be functional, the examining attorney must perform a search for evidence to support the Morton-Norwich factors. In applications where there is reason to believe that the proposed mark may be functional, the first Office action must include a request for information under 37 C.F.R. §2.61(b), requiring the applicant to provide information necessary to permit an informed determination concerning the functionality of the proposed mark. See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding that registration was properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). Such a request should be issued for most product design marks.
Accordingly, the examining attorney’s request for information should pertain to the Morton-Norwich factors and: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the features sought to be registered make the product easier or cheaper to manufacture. The examining attorney should examine the specimen(s) for information relevant to the Morton-Norwich factors, and conduct independent research of applicant’s and competitors’ websites, industry practice and standards, and legal databases such as LexisNexis®. The examining attorney may also consult USPTO patent records.
It is not necessary to consider all the Morton-Norwich factors in every case. The United States Supreme Court held that "[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001, 1006 (2001); see also In re Becton, Dickinson & Co., 675 F.3d at 1376, 102 USPQ2d at 1378 (stating that "since the patent and advertising evidence established functionality, the Board did not need to analyze whether alternative designs exist[ed]"); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *17 (TTAB 2020) ("Having found the applied-for mark [was] functional under Inwood, TrafFix, and their progeny without reliance upon the other factors discussed in Morton-Norwich, and because ‘there [was] no requirement that all of the categories of evidence identified in Morton-Norwich appear in every case in order to’ find functionality, . . .[the Board did] not address the evidence in those other categories." (internal citation omitted)); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1499-1500 (TTAB 2017) (holding the mark as a whole primarily functional because the overall appearance of applicant’s engine configuration was essential to the use or purpose of the engine and affect[ed] its quality and the totality of the record showed the functional features outweighed the decorative and non-functional aspects); In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1434 (TTAB 2016) (finding that the first two Morton-Norwich factors established that applicant’s applied-for mark is functional, before considering the remaining factors). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Eng'g, Inc., 278 F.3d at 1276, 61 USPQ2d at 1427 ("once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs"); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (holding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which impart[ed] a flavor of peppermint, [could] improve the effectiveness of sublingual nitroglycerin spray); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming the functionality refusal of "a round disk head on a sprayer nozzle" where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (holding orange flavor for pharmaceuticals to be functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (finding that since there was no utility patent, and no evidence that applicant’s guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).
Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue is strong evidence that the features claimed are functional and can be sufficient in itself to support a functionality refusal. E.g., TrafFix, 532 U.S. at 33, 58 USPQ2d at 1005 ("A utility patent is strong evidence that the features therein claimed are functional."); Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1519 (TTAB 2017) ("The issue is whether anything in the patent, its specification, or statements made in prosecution disclose the functionality of the marks. Here, they clearly do."); In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) ("[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue ‘affects the . . . quality of the device,’ is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence under TrafFix."). See TMEP §1202.02(a)(v)(A) regarding utility and design patents.
It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress. Morton-Norwich, 671 F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional. See 15 U.S.C. §1052(e)(5); Teledyne, 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes helpful to analyze the design from the standpoint of its various features. See Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functional); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *15 (TTAB 2019) (holding the entire product configuration functional based on the functional role of different components); In re Change Wind Corp., 123 USPQ2d 1453, 1456-61 (TTAB 2017) (holding product configuration functional based on the functional role of the components claimed in applicant’s drawing of the mark).
Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result. See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376 (citing Textron, Inc. v. U.S. Int’l Trade Comm'n, 753 F.2d 1019, 1026-27, 224 USPQ 625, 630 (Fed. Cir. 1985)); In re Vico Prods. Mfg. Co., 229 USPQ 364, 368 (TTAB 1985) .
In the limited circumstances where a proposed trade dress mark is not functional overall, but contains insignificant elements that are functional, the examining attorney must issue a requirement for an amended drawing and allow applicant to remove or delete the functional elements from the drawing or depict them in broken or dotted lines to indicate that they are not features of the mark. See TMEP §1202.02(c)(i) regarding drawings in trade dress applications.
The question of whether a product feature is "functional" should not be confused with whether that product feature performs a "function" (i.e., it is de facto functional) or "fails to function" as a trademark. See TMEP §1202.02(a)(iii)(B) regarding de facto functionality. Usually, most objects perform a function, for example, a bottle holds liquid and a lamp provides light. However, only certain configurations that allow an object to work better are functional under §2(e)(5). As the Morton-Norwich court noted, "it is the 'utilitarian' design of a 'utilitarian' object with which we are concerned." 671 F.2d at 1338, 213 USPQ at 14. Similarly, a product feature that is deemed not functional under §2(e)(5) may lack distinctiveness such that it fails to function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C §§1051, 1052, 1127. See TMEP §§1202.02(b)–(b)(ii) for distinctiveness of trade dress.
Utility Patents
Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.
In TrafFix Devices, Inc. v. Marketing. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001), the United States Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:
A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.
See In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (utility patent supported finding that closure cap for blood-collection tubes was functional); In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (shape of loudspeaker system enclosure held functional per patent disclosure containing evidence of functionality); McGowen Precision Barrels, LLC v. Proof Rsch., Inc., 2021 USPQ2d 559, at *40-41 (TTAB 2021) (utility patent disclosed functional rifle barrel design that resulted from barrel manufacturing process); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *10-11 (TTAB 2020) (utility patents disclosed functional role of perimeter cut-outs or slots in applicant’s circular saw blade configuration); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *9-10 (TTAB 2019) (utility patent disclosed functional umbrella canopy design); In re Change Wind Corp., 123 USPQ2d 1453, 1459-60 (TTAB 2017) (utility patent disclosed functional role of components claimed in configuration of wind turbines); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (patent evidence supported bicycle wheel configuration was functional); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (patent claims did not support finding spray nozzle head to be functional).
The Court in TrafFix went on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.
532 U.S. at 33-34, 58 USPQ2d at 1007 (citation omitted).
Therefore, when presented with facts similar to those in TrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility patent. In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006). Where functionality appears to be an issue, in the first Office action, the examining attorney must issue a request for information under 37 C.F.R §2.61(b), requiring the applicant to provide copies of any active, pending, or expired patent(s), and any pending or abandoned patent application(s). See also Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002) ("We agree with the Board that an abandoned patent application should be considered under the first Morton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.").
It is not necessary that the utility patent be owned by the applicant; a third-party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered. See In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *5 (citing In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046 n.22 (TTAB 2013); In re Mars, Inc., 105 USPQ2d 1859, 1861 (TTAB 2013); In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997)); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1834-35 (TTAB 2013); In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990). In addition, a third-party patent may include other evidence directly related to the functionality of a proposed mark. In In re Pohl-Boskamp GmbH & Co., the applicant sought to register the flavor of peppermint for use in connection with pharmaceutical preparations of nitroglycerin in the form of a lingual spray. 106 USPQ2d at 1043. The examining attorney made of record a third-party patent that described the results of two studies demonstrating that peppermint oil had therapeutic properties in the applicant’s field of goods. Id. at 1046-48. Therefore, the examining attorney may also consult patent databases, including the USPTO’s patent records, to see if utility patents owned by applicant’s competitors disclose the functional advantages of the product design that the applicant seeks to register.
It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. But the specification and/or drawings in the patent may also provide strong evidence, even if the feature is not explicitly claimed as part of the invention. See, e.g., In re Becton, Dickinson and Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (there is no requirement "that a patent claim the exact configuration for which trademark protection is sought in order to undermine an applicant's assertion that an applied-for mark is not de jure functional. Indeed, . . . statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality."); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *9-10 ("the Court in [TrafFix] explained that statements in a patent can show that another party’s particular design is functional because it is similar in shape to similar functional features disclosed in the patent"). In contrast, if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (noting that where a manufacturer sought to protect arbitrary, incidental, or ornamental features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality would not be established if the manufacturer could prove that those aspects did not serve a purpose within the terms of the utility patent); Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1206 (TTAB 2018) (finding that utility patent did not show that the six-diode design of vehicle lights was essential to their use or purpose); In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1980-82 (TTAB 2009) (finding that where the patent’s language and a detailed comparison between the identified features of the patent drawing with the visible features of the trademark drawing established that the patent claims involved components neither shown nor described in the trademark design, the utility patent did not support a holding of functionality). Where a utility patent claims more than what is sought to be registered, this fact does not establish the nonfunctionality of the product design, if the patent shows that the feature claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages. Cf. TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006-07 (nothing in the applied-for dual-spring traffic sign design pointed to arbitrary features).
The examining attorney should consider both the numbered claims and the disclosures in the written description, drawings, and abstract of the patent. See McGowen Precision Barrels, LLC v. Proof Rsch., Inc., 2021 USPQ2d 559, at *40 (citing In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377; In re Howard Leight Indus., LLC, 80 USPQ2d at 1511). The Board has found functionality based on both the claims and/or disclosures. See In re OEP Enters., Inc., 2019 USPQ2d 309323, at *10; Leight, 80 USPQ2d at 1510-11. In In re Howard Leight Industries, LLC, the Board rejected the applicant’s argument that the examining attorney erred in looking to the claims made in applicant’s patent, noting that the Supreme Court in TrafFix repeatedly referred to a patent’s claims as evidence of functionality. 80 USPQ2d at 1510-11. The examining attorney should also consider other evidence described in a patent that is relevant to the functionality of the mark at issue. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1046-47; see also In re Becton, Dickinson & Co., 675 F. 3d at 1375, 102 USPQ2d at 1377 ("[S]tatements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality."); In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1431-32 (TTAB 2016) (indicating that evidence of functionality in a patent was not limited to language in the claims themselves).
Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 ("These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design."); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) .
The fact that the proposed mark is not the subject of a utility patent does not establish that a feature of the proposed mark is nonfunctional. TrafFix, 532 U.S. at 32, 35, 58 USPQ2d at 1006-07; In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3 (TTAB 2001) .
Design Patents
Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171. A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination. See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377; In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *6-7; In re Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997); In re Am. Nat’l Can Co., 41 USPQ2d 1841, 1843 (TTAB 1997); see also In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1432-33 (TTAB 2016) ("[a]bsent identity between the design patent and proposed mark, . . . , 'similar' design patents lack sufficient evidentiary value" to overcome other evidence showing that the proposed mark was functional, especially in view of a utility patent that disclosed the utilitarian advantages of the claimed feature (quoting In re Becton, Dickinson & Co., 675 F. 3d at 1375, 102 USPQ2d at 1377 )).
The applicant’s own advertising touting the utilitarian aspects of its product design or product packaging is often strong evidence supporting a functionality refusal. In re OEP Enters., Inc., 2019 USPQ2d 309323, at *11 (TTAB 2019) (citing Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1502 (TTAB 2017)); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1836 (TTAB 2013) (citing In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012); Kistner Concrete Prods., Inc. v. Contech Arch Techs., Inc., 97 USPQ2d 1912 (TTAB 2011); Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701 (TTAB 2010); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001); In re Visual Commc’ns Co., 51 USPQ2d 1141 (TTAB 1999); In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997); In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993); In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).
An applicant will often assert that statements in its promotional materials touting the utilitarian advantages of the product feature are mere "puffery" and, thus, entitled to little weight in the functionality analysis. However, where the advertising statements clearly emphasize specific utilitarian features of the design claimed as a mark, the Board will reject such assertions of "puffing." See e.g., In re OEP Enters., Inc., 2019 USPQ2d 309323, at *12; In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001); Goodyear Tire & Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1716-17 (TTAB 1998) ; In re Bio-Medicus Inc., 31 USPQ2d 1254, 1260 (TTAB 1993); Witco, 14 USPQ2d at 1559-61 (TTAB 1989).
In Gibson Guitar, the Board found the design of a guitar body to be functional, noting that applicant’s literature clearly indicated that the shape of applicant’s guitar produced a better musical sound. 61 USPQ2d at 1951. Applicant’s advertisements stated that "[t]his unique body shape creates a sound which is much more balanced and less ‘muddy’ than other ordinary dreadnought acoustics." Id.
Where functionality appears to be an issue, in the first Office action, the examining attorney must require the applicant under 37 C.F.R. §2.61(b) to provide any available advertising, promotional, or explanatory material concerning the goods or services, particularly any material specifically related to the features embodied in the proposed mark. The examining attorney should also examine the specimen(s), and check to see if the applicant has a website on which the product is advertised or described.
In addition, the examining attorney may check the websites of applicant’s competitors for evidence of functionality. See In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *14 (TTAB 2020) (citing In re Becton, Dickinson & Co., 675 F.3d at 1376, 102 USPQ2d at 1378); In re Van Valkenburgh, 97 USPQ2d 1757, 1762-63 (TTAB 2011) ; Gibson Guitar, 61 USPQ2d at 1951. Industry and trade publications and computer databases may also be consulted to determine whether others offer similar designs and features or have written about the applicant’s design and its functional features or characteristics. See In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *11-14. In Gibson Guitar, the record included an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant’s configuration, touting the acoustical advantages of the shape of the guitar. 61 USPQ2d at 1951.
An applicant attempting to rebut a prima facie case of functionality will often submit evidence of alternative designs to demonstrate that there is no "competitive need" in the industry for the applicant’s particular product design. See TMEP §1202.02(a)(iii)(A). In order to be probative, the alternative design evidence must pertain to the same category of goods as the applicant’s goods. See, e.g., In re Zippo Mfg. Co., 50 USPQ2d 1852, 1854 (TTAB 1999) ; In re EBSCO Indus. Inc., 41 USPQ2d 1917, 1920 (TTAB 1997) .
However, in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the United States Supreme Court clearly indicated that if the record shows that a design is essential to the use or purpose of a product, or if it affects the cost or quality of the product, it is unnecessary to consider whether there is a competitive need for the product feature. The Court explained:
[W]e have said "in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Expanding upon the meaning of this phrase, we have observed that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is "whether the particular product configuration is a competitive necessity." . . . This was incorrect as a comprehensive definition. As explained in Qualitex and Inwood a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device . . . Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.
* * *
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.
TrafFix, 532 U.S. at 32-34, 58 USPQ2d at 1006-07 (emphasis added) (citations and additional internal quotations omitted); see also In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) ("[I]f functionality is found based on other considerations, there is ‘no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.’") (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)).
Nonetheless, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need generally remains an important factor in a functionality determination. See Valu Eng'g, Inc., 278 F.3d at 1277, 61 USPQ2d at 1428 ("[I]n determining ‘functionality,’ the Board must assess the effect registration of a mark would have on competition.").
Accordingly, the examining attorney must issue a request for information under 37 C.F.R. §2.61(b) about alternative designs in the initial Office action, i.e., inquire whether alternative designs are available for the feature embodied in the proposed mark and whether the alternatives are more costly to produce.
Where the evidence indicates that the applicant’s configuration is the best or one of a few superior designs available, this evidence will strongly support a finding of functionality. See, e.g., In re OEP Enters., Inc., 2019 USPQ2d 309323, at *14-15 (TTAB 2019) (noting that applicant made no showing that either lower canopies of cutouts, no material at all, and other types of air transmissible materials worked equally as well as the lower mesh canopy in the patented umbrella design, which supported the Board’s determination that the proposed umbrella design was functional); In re Dietrich, 91 USPQ2d 1622, 1636 (TTAB 2009) ("[T]he question is not whether there are alternative designs that perform the same basic function but whether the available designs work ‘equally well.’") (quoting Valu Eng’g, 278 F.3d at 1276, 61 USPQ2d at 1427)); In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (concluding that, since the record showed that orange flavor was one of the most popular flavors for medicine, it could not be said that there were true or significant number of alternatives); In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001) (finding that applicant had not shown there were alternative guitar shapes that could produce the same sound as applicant’s configuration, and noting that the record contained an advertisement obtained from the website of a competitor, whose guitar appeared to be identical in shape to applicant’s configuration, which stated that the shape of the guitar produced a better sound).
A configuration of a product or its packaging that embodies a superior design feature and provides a competitive advantage to the user is functional. In N.V. Organon, 79 USPQ2d at 1648-49, the Board found that by masking the unpleasant taste of the medicinal ingredients in pharmaceuticals, "flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of ‘an orange flavor’ as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition."
Functionality may be established by a single competitively significant application in the recited identification of goods, even if there is no anticompetitive effect in other areas of use, since competitors in that single area could be adversely affected. Valu Eng'g, 278 F.3d at 1278, 61 USPQ2d at 1428 ("[I]f the Board identifies any competitively significant single use in the recited identification of goods for which the mark as a whole is functional, the Board should deny registration.").
If evidence shows the existence of a number of functionally equivalent alternative designs that work "equally well," such that competitors do not need applicant’s design to compete effectively, this factor may not support functionality. Dietrich, 91 USPQ2d at 1636 (citing Valu Eng'g, 278 F.3d at 1276, 61 USPQ2d at 1427). However, once deemed functional under other Morton-Norwich factors, the claimed trade dress cannot be registered merely because there are functionally equivalent alternative designs. Valu Eng'g, 278 F.3d at 1276, 61 USPQ2d at 1427 (citing TrafFix, 532 U.S. at 33-34, 58 USPQ2d at 1007). Existence of comparable alternative designs does not transform a functional design into a nonfunctional design. Id.
"'[A] product feature is functional if it is essential ... to the use or purpose of the [product] or if it affects the cost or quality of the [product].'" TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (emphasis added) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982) (citing Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 140 USPQ 524, 528 (1964); Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 122, 39 USPQ 296, 300 (1938)). Therefore, a showing that a product design or product packaging results from a comparatively simple or inexpensive method of manufacture will support a finding that the claimed trade dress is functional.
In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney must still issue a requirement under 37 C.F.R. §2.61(b) for information as to whether the proposed design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. See, e.g., TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006; In re Virshup, 42 USPQ2d 1403, 1407 (TTAB 1997) . Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials. See M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced installation costs supported finding that applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs were functional).
While evidence showing that a product feature results from a comparatively simple or inexpensive method of manufacture supports a determination that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, fails to establish that the configuration is not functional. In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) ("Even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patents, a superior quality wheel."); In re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006) . Designs that work better or serve a more useful purpose may, indeed, be more expensive and difficult to produce.
"Aesthetic functionality" refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, in Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531, 1533, 32 USPQ2d 1120, 1122, 1124 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), the Federal Circuit affirmed the Board’s determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages, i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.
The concept of "aesthetic functionality" (as opposed to "utilitarian functionality") has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality in In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 399-401 (C.C.P.A. 1982) , the Supreme Court later referred to aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). The confusion regarding aesthetic functionality stems in part from widespread misuse of the term "aesthetic functionality" in cases involving ornamentation issues, with some courts having mistakenly expanded the category of "functional" marks to include matter that is solely ornamental, essentially on the theory that such matter serves an "aesthetic function" or "ornamentation function." It is this incorrect use of the term "aesthetic functionality" in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a case involving features of toy dolls, that the Board had improperly "intermingled the concepts of utilitarian functionality and what has been termed ‘aesthetic functionality;’" and rejecting the concept of aesthetic functionality where it is used as a substitute for "the more traditional source identification principles of trademark law," such as the ornamentation and functionality doctrines).
Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to "aesthetic functionality," because the doctrine of "functionality" is inapplicable to such cases. The proper refusal is that the matter is ornamental and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See TMEP §§1202.03-1202.03(g) regarding ornamentation.
The Supreme Court’s use of the term "aesthetic functionality" in the TrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and, thus, should remain in the public domain. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense).
In M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) , the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:
This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant’s patent application, as well as statements touting the superiority of applicant’s design in applicant’s promotional literature, and statements that applicant’s design results in reduced costs of installation. On the other hand, there is no question that applicant’s roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.
Citing extensively from the TrafFix, Qualitex, and Brunswick cases, the Board concluded that the product designs were functional for a combination of utilitarian and aesthetic reasons. Id. at 1097.
Note that this type of functionality determination – while employed in connection with a normally "aesthetic" feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and, thus, should remain in the public domain. In In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784 (TTAB 2013) , for example, the record included evidence reflecting that, in the floral industry, color has significance and communicates particular messages (e.g., elegance, bereavement, Halloween), which extend to floral packaging. The Board found, therefore, that the examining attorney had demonstrated a competitive need for others in the industry to use black in connection with floral arrangements and packaging therefor and concluded that the proposed mark was functional under §2(e)(5). This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.
Generally speaking, examining attorneys should exercise caution in the use of the term "aesthetic functionality," in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2, and 45 of the Trademark Act, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term "aesthetic functionality" may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in the Florists’ Transworld Delivery, M-5 Steel, and Brunswick cases discussed above – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as "utilitarian" in nature. Any such use of the term "aesthetic functionality" should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of "aesthetic functionality" to mean ornamentation.
See TMEP §§1202.05 and 1202.05(b) for additional discussion and case references regarding the functionality issue in connection with color marks.
Although rare in the context of service mark applications, examining attorneys are not foreclosed from refusing registration based on functionality. In Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1793 (TTAB 2006) , the Board held that a two-dimensional design of a marine heat exchanger (commonly known as a "keel cooler"), was not functional for "manufacture of marine heat exchangers to the order and specification of others." It found "a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself . . . and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services;" and stated that "[t]he inquiry regarding functionality may need to be decidedly different" in cases involving a service mark.
The record showed that the keel cooler depicted in the proposed mark was "identical, or nearly so" to the depiction of a keel cooler in applicant’s expired patent; that opposer and at least one other party had been marketing keel coolers very similar to the proposed mark; and that the design sought to be registered appeared in applicant’s catalog of pre-manufactured keel coolers. Id. at 1786. The Board framed the question at issue as "whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item," and stated that:
[W]e must balance against opposer’s argument for the extension of existing case law on functionality [to] what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix [Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001)] test for functionality (a three-dimensional product design is functional if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product") to the product that results from purchasing the services, or whether the test should be adapted and focused on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.
Id. at 1794.
The Board held that opposer had failed to justify an extension of existing law to cover the circumstances of this case, but stated that its decision "does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension." Duramax, 80 USPQ2d at 1794.
In addition to product design and product packaging, the functionality doctrine has been applied to other non-traditional proposed marks, such as sound, color, and flavor, and the same Morton-Norwich analysis, discussed above, applies to these marks. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 USPQ2d 1120, 1123 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (finding the color black for outboard motors functional because it provided competitive advantages such as ease of coordination with a variety of boat colors and reduction in the apparent size of the engines); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (finding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers in order to communicate a desired sentiment or occasion such as elegance, bereavement, or Halloween); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (affirming the refusal to register an alarm sound emitted by personal security alarms in the normal course of operation without showing of acquired distinctiveness); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that coated abrasive manufacturers have a competitive need to use various shades of purple, including applicant’s shade, and that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing."); In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (finding the flavor orange functional for pharmaceuticals where the evidence showed the flavor served to mask the otherwise unpleasant taste of the medicine flavor); see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense); TMEP §§1202.02(a)(vi) and 1202.05(b) (regarding aesthetic functionality and color marks).
Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent. For example, an application to register scent for an air freshener or an application to register the sound of a ring tone for downloadable ring tones must be refused as functional, as the proposed marks are essential to the use or purpose of the goods. Cf. Vertex, 89 USPQ2d at 1703 (finding that the "ability of applicant’s [security alarms] to emit a loud, pulsing sound is essential to their use or purpose" because the evidence showed that use of a loud sound as an alarm is important and that alternating sound pulses and silence is a "more effective way to use sound as an alarm than is a steady sound").
Regardless of whether a proposed trade dress mark is refused as functional under §2(e)(5), the examining attorney must also examine the mark for distinctiveness. Trade dress that is not inherently distinctive and that has not acquired distinctiveness under §2(f) must be refused registration. The statutory basis for the refusal of registration on the Principal Register on the ground that the trade dress is nondistinctive is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademark applications, or §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service mark applications.
In Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme Court distinguished between two types of trade dress – product design and product packaging. If the trade dress falls within the category of product "design," it can never be inherently distinctive. Id. at 212, 54 USPQ at 1068 ("It seems to us that design, like color, is not inherently distinctive."). Moreover, the Court held that in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, "courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning." Id. at 215, 54 USPQ2d at 1070; see In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006). (Note: If the trade dress is functional, it cannot be registered despite acquired distinctiveness. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001)).
A claim of acquired distinctiveness under §2(f) will not overcome a functionality refusal, but may overcome a nondistinctiveness refusal. For example, if the examining attorney issues a refusal on the basis that a product packaging mark is functional and, in the alternative, is nondistinctive, and the applicant asserts acquired distinctiveness in response, the examining attorney must maintain the previously issued functionality refusal, if appropriate, and determine whether the applicant’s evidence would be sufficient to overcome the nondistinctiveness refusal, if the functionality refusal is ultimately reversed.
If the examining attorney fails to separately address the sufficiency of the applicant’s evidence of acquired distinctiveness, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness, if the mark is ultimately found not to be functional. See In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009) (holding that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f), if it were ultimately found to be nonfunctional). See TMEP §§1209.02(a)(ii) and 1212.02(i) regarding assertion of acquired distinctiveness in response to an Office action and claiming acquired distinctiveness with respect to incapable matter.
A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f) of the Trademark Act. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-16, 54 USPQ2d 1065, 1069-70 (2000). Therefore, as a matter of law, product design cannot be considered inherently distinctive and cannot be registered without a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069. The United States Supreme Court noted that product design almost invariably serves purposes other than source identification, and that "[c]onsumers are aware . . . that, almost invariably, even the most unusual of product designs -- such as a cocktail shaker shaped like a penguin -- is intended not to identify the source, but to render the product itself more useful or appealing." Id.
In applications seeking registration of marks comprising product design, the examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive unless the applicant claims that the mark has acquired distinctiveness under §2(f) and provides sufficient evidence to show that the mark has acquired distinctiveness. The ground for the refusal is that the proposed mark consists of nondistinctive product design, and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127. Because product design cannot be inherently distinctive as a matter of law, per Wal-Mart, if the applicant has not claimed acquired distinctiveness, supporting evidence for the refusal is unnecessary. 529 U.S. at 213-16, 54 USPQ2d at 1069-70. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). See TMEP §§815–816.05 regarding the Supplemental Register, §§1202.02(a)–(a)(viii) regarding functionality, §§1202.02(b)–(b)(ii) regarding distinctiveness, and §§1212–1212.10 regarding acquired distinctiveness. A refusal on the ground that the entire proposed mark is not inherently distinctive generally is not appropriate if the mark includes additional distinctive matter beyond just the product design, such as words and/or images. In such situations, the applicant may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements.
For applications based on §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the examining attorney must issue the nondistinctiveness refusal for a product design mark even if the applicant has not filed an allegation of use. See TMEP §1202.02(d) regarding trade dress in intent-to-use applications. For applications based on §44 or §66(a), even though the applicant does not need to show use in commerce, the same standards regarding product design apply and the examining attorney must issue the nondistinctiveness refusal, assuming acquired distinctiveness has not been established. See TMEP §1010 regarding §44 applications and TMEP §1212.08 regarding distinctiveness in §44 or §66(a) applications.
In distinguishing between product packaging and product design trade dress, Wal-Mart instructs that, in "close cases," courts should classify the trade dress as product design and, thus, require proof of secondary meaning. 529 U.S. at 215, 54 USPQ2d at 1070. In addition, product design can consist of design features that are incorporated in the product and need not implicate the entire product. See id. at 207, 213, 54 USPQ2d at 1066, 1069 (holding a "cocktail shaker shaped like a penguin" is product design, as is "a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like"); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006) (holding the mark to be product design trade dress where the mark was for clothing and consisted of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas located on each side of the label with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device).
Applicants face a heavy burden in establishing distinctiveness in an application to register trade dress. See In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *38 (TTAB 2022); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *19 (TTAB 2020); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1504 (TTAB 2017); In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1986 (TTAB 2009); In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283-84 (TTAB 2000); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *16 (TTAB 2019); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) ("secondary meaning in a product configuration case will generally not be easy to establish"). A mere statement of five years’ use is generally not sufficient. See, e.g., In re Ennco Display Sys. Inc., 56 USPQ2d at 1284, 1286 (noting the statutory language regarding acquired distinctiveness "is permissive, and the weight to be accorded [evidence of five years of substantially exclusive use] depends on the facts and circumstances of the particular case," and finding evidence of seven to seventeen years of use insufficient to support a claim of acquired distinctiveness). Generalized sales and advertising figures by themselves will usually be insufficient proof of secondary meaning where the promotional material does not use the design alone but instead with other marks. See In re Soccer Sport Supply Co., 507 F.2d 1400, 1403, 184 USPQ 345, 348 (C.C.P.A. 1975) (advertising displaying the design at issue along with word marks lacked the "nexus" that would tie together use of the design and the public’s perception of the design as an indicator of source); In re Mogen David Wine Corp., 372 F.2d 539, 542, 152 USPQ 593, 595 (C.C.P.A. 1967) (where a container design appeared with a word mark, any alleged association of the design with the company "was predicated upon the impression imparted by the [word] mark . . . rather than by any distinctive characteristic of the container per se."); Grote Indus. Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1213 (TTAB 2018) (where advertising prominently used word mark, consumers were more likely to associate the word mark rather than the design with the source of the goods), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022). "[I]n the context of product design marks, it is imperative that the evidence of acquired distinctiveness 'relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.'" In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *39 (quoting In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017)); see In re SnoWizard, Inc., 129 USPQ2d 1001, 1004-5 (TTAB 2018) (citing Wal-Mart Stores Inc. v. Samara Bros., 529 U.S. at 211-13, 54 USPQ2d at 1068-69).
A product design may become generic and thus incapable of functioning as an indicator of source because it is basic or common in an industry or is a mere refinement of a product design commonly used for the relevant goods. In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *5-6 (noting that a design may be deemed incapable of registration where "it is so common in the industry that it cannot be said to identify a particular source" (citing Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009))). These common or basic shapes are not registrable on the Principal Register under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register under §23(c), 15 U.S.C. §1091(c).
For these incapable product designs, registration on the Principal Register must be refused on the ground that the proposed mark fails to function as a mark, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The ground for refusal on the Supplemental Register is that the mark is incapable of functioning as a mark under §§23(c) and 45. See 15 U.S.C. §§1091(c), 1127. A two-step generic inquiry should be applied to product design trade dress under these refusals to determine: (1) "the genus of the goods or services at issue," and (2) "whether the consuming public primarily regards the matter sought to be registered as a category or type of trade dress for the genus of goods or services." In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *6 (citing In re Odd Sox LLC, 2019 USPQ2d 370879, at *6 (TTAB 2019)). See TMEP §1209.01(c)(i) for more information regarding the two-step test for determining whether a proposed mark is generic and the evidence needed to support such refusal.
See TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.
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 §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127, for trademark applications, or under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, 1127, for service mark applications.
In Wal-Mart Stores, Inc. v. Samara Bros., the United States 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 is 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 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. Id. 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:
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. 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. LLC, 96 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. v. Bridgewater Candle Co., LLC, 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. Id. 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) of the Act, 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 Co., 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., 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. 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.
In certain cases, the applicant’s evidence was found insufficient to support a claim of acquired distinctiveness. See In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983) (holding that the configuration of a package for mint candies was not functional but the package design was not shown to possess secondary meaning); see also Brouwerij Bosteels, 96 USPQ2d at 1424 (holding evidence of acquired distinctiveness for product packaging trade dress in the nature of a beer glass and stand was insufficient).
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."); see also Nora Beverages Inc. v. Perrier Grp. of Am. Inc., 269 F.3d 114, 120, 60 USPQ2d 1038, 1041 (2d Cir. 2001) (affirming the district court’s holding that the water bottle manufactured and sold by Nora was generic because "it was used, with minor variations, throughout the entire market of similar products"); Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 583-84, 27 USP2d 1189, 1193 (2d Cir. 1993) ("[W]here it is the custom of an industry to package products in a particular manner, a trade dress in that style would be generic and therefore not inherently distinctive.").
The ground for refusal on the Principal Register is that the proposed mark fails to function as a mark under §§1, 2, and 45 of the Act for trademarks, and under §§1, 2, 3, and 45 of the Act for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The ground for refusal on the Supplemental Register is that the mark is incapable of functioning as a mark under §§23(c) and 45 of the Act, 15 U.S.C. §§1091(c), 1127. A two-step generic inquiry should be applied to product packaging trade dress under these refusals to determine: (1) "the genus of goods or services at issue," and (2) "whether the consuming public primarily regards the matter sought to be registered as a category or type of trade dress for the genus of goods or services." In re Odd Sox LLC, 2019 USPQ2d 370879, at *6 (citing Sunrise Jewelry Mfg. Corp., 175 F.3d at 1326-27, 50 USPQ2d at 1536; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)). See TMEP §1209.01(c)(i) for more information regarding the two-step test for determining whether a mark is generic and the evidence needed to support such refusal.
See TMEP §815.04 regarding refusal of incapable matter and TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.
Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) nondistinctive and incapable; (4) nondistinctive and capable; (5) inherently distinctive; or (6) a combination of these factors. To ensure proper examination, the drawing and description of such a mark must accurately depict the mark the applicant intends to register. For example, both the drawing and the description of the mark must clearly indicate those portions that are claimed as part of the mark and those that are not.
If the drawing does not meet the requirements of 37 C.F.R. §2.52, the examining attorney must require the applicant to submit a substitute drawing and a substitute description of the mark. The examining attorney may require the applicant to provide additional information, such as pictures of the goods, samples, or other relevant materials pursuant to 37 C.F.R. §2.61(b), to assist in assessing the accuracy and completeness of the drawing and in crafting a comprehensive description of the mark.
Drawings of three-dimensional product design and product packaging trade dress marks may not contain elements that are not part of the mark (i.e., matter that is functional or incapable of trademark significance). If the mark comprises only a portion of product design or product packaging, solid lines must be used on the drawing to show the elements of the product design or product packaging that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portions that are not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *2 (TTAB 2019) (citing Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1488 (TTAB 2017)) (finding drawing of umbrella design trade dress had no broken lines and therefore was claiming all features of the umbrella, including the mesh lower canopy of a double canopy umbrella); see In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (affirming the functionality of a circular-shaped container for the goods and the requirement for an amended drawing to either delete the representation of the container from the drawing or show it in dotted lines); TMEP §807.08.
Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are generally excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion) analysis. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006) .
In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible - or if dotted lines would result in an unclear depiction of the mark, the applicant may use solid lines. However, the applicant must insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods, as appropriate.
Usually, a drawing of a trade dress mark is depicted in a three-dimensional manner that gives the appearance of height, width, and depth to the mark. Generally, the drawing shows an illustrated rendering of the product design or product packaging, but a photograph of the product design or product packaging is also acceptable. Drawings consisting of either illustrated renderings or photographs of the proposed trade dress will both be subject to the same drawing requirements and must fairly represent the mark (e.g., the drawing shows matter not claimed as part of the mark in broken or dotted lines and it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses).
If the nature of the mark remains unclear from the record, an examining attorney may clarify whether the mark is three-dimensional trade dress by calling or emailing the applicant, or issuing an Office action containing requirements about the nature of the mark under 37 C.F.R. §2.61(b), for a clear drawing, or for a revised description. Where appropriate, any relevant trade-dress-related refusals (e.g., mark is functional, mark is not inherently distinctive) may also be included in the Office action.
In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature and the record is unclear, the examining attorney may suggest that the applicant clarify that the mark is two-dimensional in the mark description. See TMEP §808.02. If the mark is two-dimensional in nature, the mark should not be characterized as three-dimensional (e.g., that the mark "appears three-dimensional").
If the applicant is required to submit an amended drawing, the mark description must also be amended accordingly. See TMEP §1202.02(c)(ii) regarding description requirements for trade dress marks.
Functional elements of a trade dress mark are never capable of acquiring trademark significance and are unregistrable, much like informational matter. 15 U.S.C. §1052(e)(5); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). Therefore, to show that they are not part of the mark, functional elements must be depicted in broken or dotted lines on the drawing to show the position or placement of the claimed portion of the mark. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) . A requirement to amend the drawing to depict functional matter in broken or dotted lines is permitted and generally does not constitute material alteration of the mark, regardless of the filing basis. See TMEP §807.14(a). Such an amendment is permissible even in an application under §66(a) because it is not considered an amendment to the mark itself, but rather a change in the manner in which the mark is depicted on the drawing, in order to comply with United States drawing requirements, where functional elements are not considered part of the mark. See TMEP §807.14 regarding material alteration and TMEP §§1904.02(j)-(k) regarding drawings in §66(a) applications.
A functionality refusal must issue in cases where the trade dress mark is overall functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5). When a trade dress mark is not overall functional, but contains minor or insignificant elements that are functional, the examining attorney must require an amended drawing showing the functional elements in broken or dotted lines rather than in solid lines. See 37 C.F.R. §2.52(b)(4); Water Gremlin, 635 F.2d at 844, 208 USPQ at 91; Famous Foods, 217 USPQ at 177. The Office action must explain that, because the mark includes functional elements, an amended drawing is required showing the functional elements in broken or dotted lines, and a corresponding amended mark description is required indicating the functional elements depicted in broken or dotted lines are not claimed as part of the mark. The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. See TMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations and TMEP §1202.02(c)(ii) regarding descriptions of trade dress marks.
Functional matter cannot be disclaimed. See Water Gremlin, 635 F.2d at 844, 208 USPQ at 91 ("The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order."); Famous Foods, 217 USPQ at 177 (stating that functional "[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines"). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole and allows the applicant to maintain rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, elements that are functional, or intended to show position or placement only, must be shown in broken or dotted lines on the drawing. See TMEP §1202.02(c)(iii) regarding disclaiming unregistrable portions of trade dress marks.
Nonfunctional elements of a product design or product packaging trade dress mark that are inherently distinctive, that have acquired distinctiveness, or that are capable but for which acquired distinctiveness has not yet been established, may appear in solid lines on the drawing as part of the mark. Nonfunctional, nondistinctive elements that are capable of trademark significance but for which acquired distinctiveness has not been established must be disclaimed. A disclaimer is appropriate because, while these elements are not source indicators, they may still remain part of the mark. See 15 U.S.C. §§1051 -1052, 1056(a), 1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable.
Occasionally, a trade dress mark may include elements that are nonfunctional, yet incapable of trademark significance, such as a common or basic shape of a product itself or the packaging in which a product is sold. These elements must be depicted in broken or dotted lines on the drawing because such elements cannot be considered part of the mark. Cf. Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines). Usually, amendments of drawings to depict incapable elements in broken or dotted lines do not materially alter the mark because the incapable elements are, by definition, not source indicating. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) . Therefore, the examining attorney must issue a requirement for an amended drawing that depicts the incapable elements in broken or dotted lines, and a corresponding amended mark description to reflect that the incapable elements shown in broken or dotted lines are not claimed as part of the mark. See 37 C.F.R. §2.52(b)(4). The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable.
See TMEP §807.14 regarding material alteration, TMEP §1202.02(c)(ii) regarding descriptions of trade dress marks, TMEP §1011.03 regarding amendment of marks in §44 applications, and TMEP §§1904.02(j)-(k) regarding amendment of marks in §66(a) applications.
For trade dress marks in §44 and §66(a) applications, an amendment of the drawing to depict functional or incapable matter in broken or dotted lines is permitted and generally not a material alteration of the mark. See TMEP §§807.08 and 1904.02(k). Although the mark in a §44 or §66(a) application cannot be amended, a change in the manner in which the mark is depicted may be permitted, in order to comply with the United States drawing requirements. See TMEP §1011.03 regarding amendment of marks in §44 applications and §1904.02(j)-(k) regarding amendment of marks in §66(a) applications. For instance, since functional matter is not considered source indicating and is never part of the mark, displaying it in broken or dotted lines shows placement of the functional matter in relation to the registrable portions of the mark.
Similarly, in §44 or §66(a) applications, amendments to delete extraneous matter from photographs, or amendments of drawings from photographs to illustrated renderings showing elements of the mark in dotted or broken lines, will be accepted and will not be considered a material alteration of the mark.
An application for a trade dress mark must include an accurate description of the mark. See 37 C.F.R. §2.37. If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description must adequately describe the mark, with unnecessary matter kept to a minimum. The description must clearly indicate that the mark is "three-dimensional" and constitutes "product design" or "configuration" of the goods themselves or product "packaging" or a "container" in which the goods are sold, or that the trade dress is for services offered (e.g., interior of a restaurant, exterior of a retail establishment, or point-of-sale-display such as a costume used in connection with the services).
If applicable, the description must specify which elements on the drawing constitute the mark and are claimed as part of the mark and which are not. The description of the mark must make clear what any broken or dotted lines represent and include a statement that the matter shown in broken or dotted lines is not claimed as part of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §§808-808.03(f). This information must be included in the description. Statements only in a response to an Office action or elsewhere in the record are insufficient. The description must also avoid use of disclaimer-type language, such as "no claim is made to the …," because of the different legal significance of using broken lines versus submitting a disclaimer. See TMEP §1202.02(c)(iii) regarding disclaimers of unregistrable elements of trade dress marks.
In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature, an applicant may clarify that the mark is two-dimensional in the mark description. See TMEP §808.02. If the mark is two-dimensional in nature, the applicant should not characterize the mark as three-dimensional (e.g., that the mark "appears three-dimensional").
During the prosecution of a trade dress application, if the applicant is required to submit an amended drawing (e.g., showing broken or dotted lines to depict functional matter, to indicate nondistinctive and incapable matter, or to depict matter otherwise not claimed as part of the mark), the examining attorney must also require a corresponding amended description.
Examples of acceptable language for this purpose are: "The broken lines depicting [describe elements] indicate placement of the mark on the goods and are not part of the mark" or "The dotted lines outlining [the goods] are intended to show the position of the mark on the goods and are not part of the mark."
For example, for the mark below,
an appropriate description (and color claim) of the mark could read:
The colors white, blue, light blue, and silver are claimed as a feature of the mark. The mark consists of the color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border, a light blue curving band, and three light blue droplets. The dotted lines outlining the container and its cap indicate placement of the mark on the goods and are not part of the mark.
For the mark below,
an appropriate description (and color claim) of the mark would read:
The color red is claimed as a feature of the mark. The mark consists of a single transverse red stripe applied adjacent to one end of the three-dimensional elongated packaging for the goods. The dotted outline of the packaging is intended to show the position of the mark and is not part of the mark.
And for the mark below,
an appropriate description of the mark would read:
The mark consists of a three-dimensional configuration of a stringed musical instrument body. The neck, peghead, and other instrument parts shown in broken lines serve to show positioning of the mark and form no part of the mark.
The examining attorney must ensure that the description statement has been entered into the Trademark database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817.
See TMEP §§1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.
A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. TMEP §1213. The applicant maintains rights in the disclaimed matter only as part of its mark. Thus, except in the rare case when a trade dress mark is unitary, unregistrable elements must be either depicted in broken or dotted lines on the drawing or disclaimed, as appropriate. Specifically, elements that are functional or otherwise incapable of trademark significance must be depicted in broken or dotted lines on the drawing. Elements that are nonfunctional but capable of acquiring trademark significance, but for which acquired distinctiveness has not been established, must be disclaimed. See TMEP §§1202.02(c)(iii)(A)–(B) regarding functional and nondistinctive matter that cannot be disclaimed.
Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), "trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression." Although each element is combined with others to form one composite mark, each element retains its separate commercial impression such that the mark as a whole is typically not unitary. Therefore, when a mark contains a combination of trade dress and word/design elements, each element should be examined separately for distinctiveness, except in the rare instance where it is shown that the mark as a whole is unitary. If only one element is inherently distinctive, this is not enough to transform the entire mark into an inherently distinctive, unitary mark. See TMEP §§1213.05-1213.05(h) regarding unitary marks.
Since functional elements of a trade dress mark are unregistrable as a matter of law and cannot form part of the mark, a disclaimer is not an appropriate means of addressing functional matter in a trade dress mark. See In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) ("The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order."); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (stating that functional "[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines"). Instead, if the mark is not overall functional, an amendment of the drawing must be required to depict any minor or insignificant functional elements in broken or dotted lines. Id.; see TMEP §1202.02(c)(i). However, if the mark is overall functional, registration must be refused under §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5).
Sometimes, a trade dress mark, as a whole, is registrable but contains elements that are nondistinctive but capable. See TMEP §1202.02(c)(i)(B). In this situation, if acquired distinctiveness has not been established, the capable elements must be disclaimed because, while they are not source indicators, they are still part of the mark. See 15 U.S.C §§1051-1052, 1056(a), 1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable. However, where the nondistinctive elements are incapable of acquiring distinctiveness, for example, common or basic shapes of product design or product packaging, such elements are not part of the mark and, therefore, must be depicted in broken or dotted lines rather than disclaimed. See 37 C.F.R. §2.52(b)(4); cf. Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines).
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f), TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter, and TMEP §§1213.03–1213.03(d) regarding disclaimers of unregistrable components of marks. See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.").
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(b)(2). See TMEP §807.10. To accurately reflect the exact nature of the mark, the mark description must state that the mark is three-dimensional in nature. This three-dimensional feature of the mark must be shown in the supporting specimens of use, in order for the drawing to comprise a substantially exact representation of the mark as actually used. Conversely, a specimen depicting a three-dimensional representation of a mark would not be acceptable to show use for a mark that is described or depicted as a two-dimensional mark. If the applicant believes it cannot adequately display its mark in a single rendition, it may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark. 37 C.F.R. §2.146(a)(5).
Distinctiveness and Product Design
A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212, 54 USPQ2d 1065, 1068 (2000); In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); TMEP §1202.02(b)(i). See TMEP §§1202.02(b) and 1202.02(b)(i) regarding distinctiveness of product design trade dress. Therefore, if the mark is comprised of a product design, the examining attorney will refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act. 15 U.S.C. §§1051, 1052, and 1127. The examining attorney must make this refusal even in an intent-to-use application under 15 U.S.C. §1051(b) for which no allegation of use has been filed.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-75, 23 USPQ2d 1081, 1085-86 (1992). See TMEP §§1202.02(b) and 1202.02(b)(ii) regarding distinctiveness of product packaging trade dress. This usually requires consideration of the context in which the mark is used and the impression it would make on purchasers. Generally, no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application under 15 U.S.C. §1051(b) until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d). However, if appropriate, the examining attorney has discretion to issue this refusal before a specimen is submitted. See In re Mars, Inc., 105 USPQ2d 1859 (TTAB 2013) .
Functionality
To determine whether a proposed product design or product packaging trade dress mark is functional, the examining attorney must consider how the asserted mark is used. Generally, in a §1(b) application, the examining attorney will not issue a refusal on the ground that the mark is functional until the applicant has filed an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d).
In a §1(b) application for which no specimen has been submitted, if the examining attorney’s research indicates that a refusal based on functionality or nondistinctive trade dress will be made, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the functional nature of the mark is clearly apparent from the drawing, description of the mark, and research conducted by the examining attorney, without the need to await consideration of the specimen, a refusal based on functionality or nondistinctive trade dress may issue prior to the filing of the allegation of use. See In re Mars, Inc., 105 USPQ2d 1859.
Distinctiveness and Product Design
A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-213, 54 USPQ2d 1065, 1068-1069 (2000); In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); TMEP §1202.02(b)(i). See TMEP §§1202.02(b) and 1202.02(b)(i) regarding distinctiveness of product design trade dress. Therefore, if the proposed mark is comprised of a product design, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act. 15 U.S.C. §§1051, 1052, and 1127.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-75, 23 USPQ2d 1081, 1085-86 (1992). See TMEP §§1202.02(b) and 1202.02(b)(ii) regarding distinctiveness of product packaging trade dress. Because a specimen of use is not required prior to registration in these cases, it is appropriate for the examining attorney to issue the refusal where the mark on its face, as shown on the drawing and described in the description of the mark, reflects a lack of distinctiveness. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application despite the lack of a specimen).
Functionality
If the application itself (i.e., the drawing, the description of the mark, and identification of goods/services) and/or the evidence uncovered during an independent search support that the proposed mark is functional, the examining attorney must issue a refusal of registration on the Principal Register under §2(e)(5). See TMEP §§1202.02(a)–1202.02(a)(viii) regarding functionality.
Trade dress includes the three-dimensional design or configuration of the product itself. In such cases, the drawing usually depicts the item listed in the identification of goods (e.g., the drawing shows a three-dimensional design of a guitar and the goods are "guitars"). However, sometimes the identification of goods/services in a product-design application includes different or unrelated products or services that are, on their face, inconsistent with the product design depicted on the drawing (e.g., the drawing shows a three-dimensional design of a guitar and the identification includes "drums and pianos" or "retail music stores"). This presents an issue of "inconsistent goods." In rare cases, slight variations are acceptable if the products have a "consistent overall look" such that the changes do not alter the distinctive characteristics and the trade dress conveys a "single and continuing" commercial impression. Cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quoting Rose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998), rev’d on other grounds sub nom. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (stating that trade dress protection for a series or line of products or packaging depends on them having a consistent overall look and remanding for proper application of the standard); The Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 766, 29 USPQ2d 1047, 1050 (S.D.N.Y. 1993) (setting forth the "consistent overall look" standard and applying it to a claim of protection for a line of packaging trade dress). For example, the drawing of a three-dimensional design of a guitar might reasonably reflect the consistent overall look of both guitars and ukuleles, which can share a very similar shape and appearance.
Section 1(a) Applications: Where the identification of goods/services, the description of the mark, or other evidence of record indicate that not all of the goods/services in the identification are represented in the three-dimensional mark depicted on the drawing, the examining attorney must refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services. The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127 for trademarks and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.
The examining attorney must specify the inconsistent goods/services subject to refusal and request evidence and/or additional specimens to substantiate use of the mark in connection with the inconsistent goods/services. 37 C.F.R. §2.61(b). The applicant may overcome the refusal by providing (1) additional specimens showing the inconsistent goods in the shape of the design depicted on the drawing or (2) sufficient evidence that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. The applicant may also delete the inconsistent goods/services.
The examining attorney must also examine the drawing and the specimen to determine whether the specific three-dimensional product design mark depicted on the drawing is a substantially exact representation of the mark shown on the specimen. TMEP §807.12(a).
Section 1(b) Applications: In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that the applicant may not be able to show proper trademark use of the product design mark for the inconsistent goods/services, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This advisory is given strictly as a courtesy. If information regarding the possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration after submission of the use allegation. When the record indicates that the product design would not be perceived as a mark for the inconsistent goods/services, the examining attorney may make the failure to function as a mark refusal prior to the filing of the allegation of use.
When an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), is submitted in connection with a §1(b) application, the examining attorney should follow the procedures discussed above for product-design trade dress in §1(a) applications.
Section 44 and Section 66(a) Applications: A specimen is not required in a §44 or §66(a) application to show use of the proposed mark in commerce in connection with the identified goods/services. However, since these applications are otherwise examined under the same standards as applications under §1, it is appropriate for the examining attorney to refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services where the drawing, the description of the mark, the identification of goods/services, or other evidence indicates that the identification includes goods/services that are, on their face, inconsistent with the specific three-dimensional product design depicted on the drawing (e.g., a three-dimensional toy car product design for "toy boats"). The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application). The examining attorney must also request evidence to substantiate that the proposed mark could function as a source indicator in connection with the inconsistent goods/services.37 C.F.R. §2.61(b). This is not a requirement for specimens. To overcome the refusal, the applicant must provide evidence showing that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. Absent such a showing, the identification of goods/services must be amended to delete the inconsistent goods/services.
The three-dimensional packaging or wrapping in which a product is sold also constitutes trade dress. While a product-design drawing typically depicts the shape or configuration of the product listed in the identification of goods, product packaging can be in any shape or form that serves as packaging for the listed goods. For example, if the drawing depicts a three-dimensional computer mouse, the description of the mark states that the trade dress is product packaging, and the identified goods are "cosmetics and hair brushes," it is conceivable that the goods could be sold in packaging shaped like a computer mouse, and it does not mean that the goods themselves must be in the shape of a computer mouse. However, where the drawing depicts a three-dimensional computer mouse, the description of the mark states that the trade dress is product design or configuration, the identified goods are "cosmetics and hair brushes," and the goods are not in the shape of a computer mouse, this presents a potential issue of "inconsistent goods." See TMEP §1202.02(f)(i).
In most cases, the specific three-dimensional product packaging depicted on the drawing houses the product being sold (e.g., the drawing shows a three-dimensional bottle and the goods are "wine"). However, in rare cases, the identification of goods may include products (or services) that appear, on their face, to be inconsistent with the type of packaging design depicted on the drawing (e.g., a drawing showing a three-dimensional bottle design for "automobiles" or other "inconsistent goods" that are not likely to be sold in bottles). In such cases, where the drawing, the description of the mark, the specimen, or any other evidence of record does not support that the three-dimensional product packaging depicted on the drawing would serve as packaging for the goods, the applicant must provide sufficient evidence that the proposed trade dress serves as the actual shape of the packaging for the inconsistent goods or has a "consistent overall look" across all the goods listed in the identification. Cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quoting Rose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998) , rev’d on other grounds sub nom. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (stating that trade dress protection for a series or line of products or packaging depends on them having a consistent overall look and remanding for proper application of the standard); The Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 766, 29 USPQ2d 1047, 1050 (S.D.N.Y. 1993) (setting forth the "consistent overall look" standard and applying it to a claim of protection for a line of packaging trade dress). In this situation, the same analysis, refusal, and requirements that apply to product design also apply to product packaging. See TMEP §1202.02(f)(i).
Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
For a mark for services, if the applied-for matter would be perceived only as decoration or ornamentation when used in connection with the identified services, a refusal as nondistinctive trade dress must issue under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127. See TMEP §§1202.02 and 1202.02(b)-1202.02(b)(ii) regarding trade dress and TMEP §§1301.02–1301.02(f) regarding matter that does not function as a service mark.
Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark. In re Paramount Pictures Corp., 213 USPQ 1111, 1114 (TTAB 1982).
With regard to registrability, ornamental matter may be categorized along a continuum ranging from ornamental matter that is registrable on the Principal Register, to purely ornamental matter that is incapable of trademark significance and unregistrable under any circumstances, as follows:
The examining attorney should consider the following factors to determine whether ornamental matter can be registered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. These factors are discussed in the following sections.
The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register.
The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, "smiley face," or the phrase "Have a Nice Day") are normally not perceived as marks. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) ("The phrase 'I LOVE YOU' conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace.").
The examining attorney must also consider the size, location, and dominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function. In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) ; In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013) (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). 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 a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may 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. Moreover, the size of the mark on clothing is only one consideration in determining the registrability of a mark. In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1689.
In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field, as opposed to a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods that would be viewed by the public as a dress or ornamentation for the goods. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04 (TTAB 2018) ("The ornamental nature of the proposed mark [I LOVE YOU] is corroborated by the third-party use of that phrase on bracelets and other jewelry demonstrating that consumers are accustomed to seeing similar, ornamental displays of I LOVE YOU on bracelets and other jewelry from different sources."); In re General Tire & Rubber Co., 404 F.2d 1396, 1398, 160 USPQ 415, 417 (C.C.P.A. 1969) (affirming the ornamentation refusal of a mark comprising three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire; mark was a refinement of the practice, which consumers were familiar with, of whitewalls as decoration on tires); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 941-42 (TTAB 1985) (finding that stripe design applied to sides of sport shoes was mere refinement of the common and well-known form of ornamentation in the field of sports shoes).
Even if a proposed mark is not inherently distinctive, it may be registered on the Principal Register if it has become distinctive of the applicant’s goods in commerce. See TMEP §1202.03(d). The practices of the trade may be relevant in assessing the applicant’s burden of proving that the proposed mark has become distinctive. Typically, more evidence is required if the proposed mark is a type of ornamental matter used so frequently in the relevant industry that consumers would be less apt to discern a source-indicating significance from its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288, 292-99 (TTAB 1969) (extensive evidence of record supported that cornflower design was recognized as a trademark for coffee percolators, culinary vessels, and utensils). Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (affirming refusal to register design of morning glories and leaves for tableware, the Board noting that the design "has not been shown to be other than another decorative pattern without trademark significance . . . .").
If the applicant cannot show that the proposed mark has acquired distinctiveness, the mark in an application under §1 or §44 of the Trademark Act may be registered on the Supplemental Register if it is capable of distinguishing the applicant’s goods or services. 15 U.S.C. §1091. The practices of the trade may be relevant in determining whether a proposed mark is capable of distinguishing the goods or services. If the practices of the trade suggest that certain matter performs the function of a trademark by signifying to purchasers and prospective purchasers the goods of a particular entity and distinguishing them from the goods of others, the matter is assumed to be capable of distinguishing the applicant’s goods and, therefore, may be registered on the Supplemental Register. See In re Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 410 (C.C.P.A. 1961) (holding that repeating pattern of green lines, used to cover the entire back surface of safety paper products (e.g., checks), was registrable on the Supplemental Register for safety paper products, where the record showed that it had long been the practice in the industry to use distinctive overall surface designs to indicate origin of the products).
To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act; (2) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration under §44(e) or §66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under §8 or §71 has been accepted; (3) non-ornamental use of the mark in commerce on other goods or services; or (4) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services. Ownership of an intent-to-use application for which no allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d), has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of secondary source, the matter is registrable on the Principal Register.
In In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982) , the Board held that MORK & MINDY was registrable for decals because the applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services, and found that the primary significance of the term MORK & MINDY to a prospective purchaser of decals was to indicate the television series and the principal characters of the television series. The Board held that the case was controlled by its decision in In re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized "O" design registrable for T-shirts, where applicant had previously registered the "O" design for skis), in which that Board had stated:
It is a matter of common knowledge that T-shirts are "ornamented" with various insignia . . . or … various sayings such as "Swallow Your Leader." In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, "Swallow Your Leader" probably would not be considered as an indication of source.
Id. at 182.
In Paramount, the Board stated that "[t]he ‘ornamentation’ of a T-shirt can be of a special nature which is [sic] inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source." 213 USPQ at 1112. Applying the test set forth in Olin, the Board found that "the paired names ‘MORK & MINDY’, while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized ‘O’ in Olin." Id. at 1113. The Board noted that "while purchasers may be accustomed to seeing characters’ names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters’ names and images used as trademarks to indicate source of origin." Id. at 1114.
See also In re Watkins Glen Int’l, Inc., 227 USPQ 727, 729 (TTAB 1985) (reversing the refusal and finding stylized checkered flag design registrable for patches and clothing items, where applicant had previously registered WATKINS GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services); In re Expo ‘74, 189 USPQ 48, 50 (TTAB 1975) (reversing the refusal and holding EXPO ‘74 registrable for handkerchiefs and T-shirts, since applicant, organizer of the 1974 World’s Fair, had previously registered EXPO ‘74 for other goods and services).
A series of ornamental uses of the proposed mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (affirming the refusal to register ASTRO GODS and design for T-shirts, despite applicant’s ornamental use of the proposed mark on other goods and appearance of applicant’s trade name "Astro Gods Inc." on the T-shirt as part of a copyright notice).
As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f), 15 U.S.C. §1052(f), if it becomes distinctive of the applicant’s goods in commerce. See TMEP §§1212–1212.10 regarding acquired distinctiveness.
Generally, evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).
Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the mark, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d).
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application for a mark comprising pocket-stitching design for clothing).
The following cases show the various ways in which ornamental matter was found not to function as a mark.
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) ("The phrase ‘I LOVE YOU’ conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace."); D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1716 (TTAB 2016) (finding that customers purchase products with the phrase I ♥ DC specifically because they are ornamented with the phrase in an informational manner and that, given the phrase’s "significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label"); In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013) (finding that proposed mark NO MORE RINOS! conveys a political slogan devoid of source-identifying significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (SUMO, as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps, serves merely as an ornamental feature of applicant's goods); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts."); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance).
See also TMEP §1202.04 regarding informational matter.
See In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, for men’s ribbed socks held merely ornamental absent convincing evidence that the purchasing public recognized the design as a trademark); In re Sunburst Prods., Inc.,51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).
See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).
In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark: In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to have acquired distinctiveness, where evidence showed extensive use on packaging and in advertising in a manner calculated to draw the attention of prospective purchasers to the design and for them to look at the design as a badge of origin); Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee percolators, culinary vessels, and utensils found to have acquired distinctiveness, where evidence showed extensive and prominent use of the design in advertising, use of the design on pins and aprons worn by sales promotion representatives in the course of their duties, and surveys and statements of purchasers indicating that they recognized the design as indicating origin in applicant).
Merely informational matter fails to function as a mark to indicate source and thus is not registrable because consumers would perceive such matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others. See, e.g., In re Brunetti, 2022 USPQ2d 764, at *1-4 (TTAB 2022) (FUCK for various carrying cases; jewelry; sports and other carrying bags; and various retail, marketing, and advertising services for such consumer goods), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023); In re Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (GOD BLESS THE USA for accent pillows, decorative centerpieces of wood, and decorative non-textile wall hangings); D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710 (TTAB 2016) (I ♥ DC for bags, clothing, plush toys); In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (AOP for wine); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE for clothing); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTRUM for illuminated pushbutton switches); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY for automobiles); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design for weatherstripping and paper products); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (FRAGILE for labels and bumper stickers).
Matter may be merely informational and fail to function as a source indicator for various reasons, including one or more of the following:
Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020) (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019). Furthermore, the presence of the "TM" or "SM" symbol on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1461.
The critical inquiry in determining whether matter functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public. In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2 (Fed. Cir. 2022) ("In analyzing whether a proposed mark functions as a source identifier, the Board focuses on consumer perception." (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020))); Univ . of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Greenwood, 2020 USPQ2d 11439, at *2); In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229)); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting that the critical inquiry in determining whether a mark functions as a trademark is the "commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase)"); In re Remington Prods., Inc., 3 USPQ2d at 1715.
If there are no limitations on the goods or services in the application, the relevant consuming public comprises all potential purchasers of the goods or services. In re Team Jesus LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5 (TTAB 2019)); see Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *3).
Additionally, designs that would be perceived as the equivalent of a word generally are not legally distinguishable from the word. In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020) (citing Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 331, 137 USPQ 881, 883 (C.C.P.A. 1963); In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983)) (finding LOVE with a depiction of the Texas flag or a map of TEXAS was well-recognized as the wording TEXAS LOVE or LOVE TEXAS and would only be perceived by consumers as conveying the same widely recognized sentiment of showing pride and love for Texas). In informational matter cases, the form in which the term appears is "much less significant than the impression it conveys." Id. at *5 (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716; In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986)). Furthermore, the Trademark Trial and Appeal Board has held that an accurate pictorial representation of a word can be informational and incapable of identifying the source of an applicant’s goods. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *5-6 (TTAB 2019) (holding an accurate pictorial representation of a crab simply informed prospective consumers that applicant’s product was crabmeat and reinforced the informational nature of the wording surrounding the image).
If a proposed mark is merely informational, an examining attorney must issue a failure-to-function refusal. If registration is sought on the Principal Register, the statutory basis for this refusal is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051 –1052, 1127, for trademarks, and §§1, 2, 3, and 45, 15 U.S.C. §§1051 –1053, 1127, for service marks. If registration is sought on the Supplemental Register, the statutory basis is §§23 and 45, 15 U.S.C. §§1091, 1127. In this case, an applicant cannot overcome the failure-to-function refusal on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). See TMEP §1202.04(d) regarding amending to the Supplemental Register or claiming §2(f) in response to a merely informational failure-to-function refusal.
If a proposed mark contains registrable matter, an examining attorney must require a disclaimer of the merely informational matter, unless the mark is unitary. See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a), 1213.05. Merely informational matter may be deleted from the drawing if: (1) the deletion does not result in material alteration of the mark and does not change the mark’s overall commercial impression; (2) the matter to be deleted is separable from the other elements; and (3) the mark contains other registrable source-indicating matter. See TMEP §§807.14–807.14(a).
In support of the refusal or disclaimer requirement, the examining attorney must explain the basis for the refusal and provide evidence showing that the matter would not be perceived as a trademark or service mark that indicates a particular source of goods or services. This support may include evidence of decorative or informational use by applicant or other manufacturers with goods or services of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services. See, e.g., In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (noting that "the record includes many examples of third-party uses for goods that are the same as or similar to Applicant's identified goods" such that "[i]t is clear from how the term is used by multiple third parties that TEXAS LOVE merely conveys a well-recognized concept or sentiment, specifically love for or from Texas; the term does not identify the source of Applicant's goods"); In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (noting "the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources . . . ‘does not create the commercial impression of a source indicator’"; rather the "evidence as a whole shows that TEAM JESUS is a commonplace message of Christian affiliation"); In re Wal-Mart Stores, Inc., 129 USPQ2d at 1153-56 (noting third-party usage in several industries, such as in connection with products offered for sale and titles and texts of media and news articles, of the phrase INVESTING IN AMERICAN JOBS showed the public would perceive the phrase to "function not as a mark but instead as a merely informational expression of support for Amercian workers"); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that "the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"); In re Eagle Crest, Inc., 96 USPQ2d at 1230 (noting that, because consumers would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE "displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant"); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding WHY PAY MORE! to be a common advertising slogan across a wide variety of goods and services and thus it failed to function as a service mark for supermarket services, relying on specimens that showed use of the slogan in phrases such as "Why pay more for groceries?" and "More meat for less. Why Pay More?").
However, evidence of third-party use does not need to show use of the proposed mark with goods or services to be probative of consumer perception. In re DePorter, 129 USPQ2d at 1302 (finding social media tweets and posts probative to show widespread non-trademark use of #MAGICNUMBER108 to identify affiliation with the Chicago Cubs’ baseball team and their 2016 World Series win 108 years after their last one). As the critical focus of the refusal or disclaimer requirement is consumer perception, any evidence demonstrating widespread use of the matter in question is relevant to determining whether consumers would perceive the matter as a mark. In re DePorter, 129 USPQ2d at 1302 (citing TMEP §1202.04(b)).
Although the failure-to-function refusal is typically a specimen-based refusal, a refusal must be issued, regardless of the filing basis, if the evidence supports a determination that a proposed mark is merely informational and thus would not be perceived as an indicator of source. See TMEP §1202; In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (finding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting the propriety of and affirming a failure-to-function ornamentation refusal in a §66(a) application).
For an application where use has been alleged, registration must be refused even if the specimen of record shows technically acceptable evidence of use. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (quoting D.C. One Wholesaler, Inc., 120 USPQ2d at 1716) (finding the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, did "not create the commercial impression of a source indicator, even when displayed on a hangtag or label").
See TMEP §1202 regarding use of subject matter as a trademark, §1202.04(d) regarding response options to a merely informational failure-to-function refusal, and §1301.02(a) regarding informational matter that does not function as a service mark.
Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark. This matter is not registrable because consumers would perceive it as imparting its ordinary meaning and not as serving to identify and distinguish the applicant’s goods or services from those of others and to indicate their source. See, e.g., In re Bos. Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA "so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark"); In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) (holding GUARANTEED STARTING for servicing of motor vehicles to facilitate cold-weather operation "does no more than inform the public with reasonable accuracy what is being offered" and is not a service mark); In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *1, *9 (TTAB 2019) (holding ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED and the same mark with the additional wording FROM NORTH AMERICA, which both included a design of an accurate pictorial representation of a crab, for crabmeat merely informational and not source identifying because they "just convey[ed] information about the identified crabmeat"); In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *18 (TTAB 2019) (holding SCOOP for ice cream and frozen confections merely informational and not source identifying "because, at most, it merely informs purchasers of the serving size of the goods"); In re TracFone Wireless, Inc., 2019 USPQ2d 222983 (TTAB 2019) (holding UNLIMITED CARRYOVER for telecommunications services merely informational and not source identifying because the phrase "simply provides information about the services" and applicant’s manner of use underscored and illustrated that meaning); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) ("Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable."); In re T.S. Designs, Inc., 95 USPQ2d 1669, 1671 (TTAB 2010) (finding CLOTHING FACTS to be informational matter and not a source identifier based on the likely consumer perception of the phrase as used on a clothing label reminiscent of the "Nutrition Facts" label for food products); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (finding SPECTRUM for illuminated pushbutton switches merely informational and not source identifying because the mark was used in a manner that merely informed potential purchasers of the multiple color feature of the goods); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (finding FRAGILE for labels and bumper stickers merely informational and devoid of any source-identifying function because the term merely informed consumers of the fragility of the item to which the labels and stickers were attached).
Any evidence demonstrating that the public perception of the matter is merely to convey general information about the goods or services supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, social-media pages, product fact sheets, and other promotional materials) showing the wording listed with other features of the goods/services, showing the wording being used in a manner that does not stand out from other informational text, or showing the same or similar wording commonly used in business or by other providers of similar goods or services to impart the same kind of general information.
Matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, would not be perceived as indicating source and thus is not registrable. In re Team Jesus, LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020)). Consumers understand such widely used, commonplace messages as conveying "the ordinary concept or sentiment normally associated with [the message], rather than serving any source-indicating function." Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *33-34 (TTAB 2021). The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services. E.g., In re Greenwood, 2020 USPQ2d 11439, at *2-3 (TTAB 2020) (citing In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 (TTAB 2018)); In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019) (quoting In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019); see also In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460 (TTAB 1998) (holding DRIVE SAFELY not to function as a mark when used in connection with automobiles and structural parts therefor because it would be perceived merely as an everyday, commonplace safety admonition); In re Manco, 24 USPQ2d 1938, 1942 (TTAB 1992) (holding THINK GREEN for products advertised to be recyclable and to promote energy conservation not to function as a mark because it merely conveys a message of environmental awareness or ecological consciousness); cf. In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (I LOVE YOU, appearing on bracelets, would be seen as a term of endearment rather than a source-identifying trademark).
Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *6; In re DePorter, 129 USPQ2d at 1299. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others. For example, the proposed mark ONCE A MARINE, ALWAYS A MARINE, for clothing, was found not to function as a mark because the evidence showed that it was a common motto used by, and in support of, the U.S. Marines. In re Eagle Crest, Inc., 96 USPQ2d at 1232. Similarly, the proposed mark NO MORE RINOS!, for various goods, including bumper stickers, signs, and t-shirts, was found not to function as a mark because the evidence showed that consumers were accustomed to seeing this well-known political slogan on these types of goods from a variety of different sources. In re Hulting, 107 USPQ2d at 1179. Additionally, the proposed mark TEAM JESUS for clothing and religious educational and entertainment services was held not to function as a mark because the evidence showed that due to the nature and ubiquity of the phrase, including on apparel from many sources, consumers would perceive the wording merely as a well-recognized message of Christian affiliation. In re Team Jesus LLC, 2020 USPQ2d 11489, at *1, *3-6. Lastly, the proposed mark FUCK, for various carrying cases, jewelry, sports and other carrying bags, and various retail, marketing, and advertising services for such consumer goods, was held not to function as a mark because substantial dictionary, third-party use on the same and other consumer and household goods, and other internet evidence showed ubiquitous use of the word in its ordinary meaning, the applicant stated "that he intend[ed] to use FUCK as the word is commonly understood," and consumers would merely perceive the term as such. In re Brunetti, 2022 USPQ2d 764, at *39, *43-44 (TTAB 2022), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023).
Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (noting that the informational significance of I ♥ DC was "reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things"); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (finding PROUDLY MADE IN THE USA informational in nature; the addition of "Proudly" before the common phrase "Made in USA" merely added "further information about the state of mind of the manufacturer and/or its employees in connection with the production of the goods"); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that "[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.").
Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, Internet search results lists if sufficient surrounding text is included, social-media pages, product fact sheets, and other promotional materials) showing the applicant’s manner of use and the manner of use by third parties. See, e.g., In re Wal-Mart Stores, Inc., 129 USPQ2d at 1153 (finding that INVESTING IN AMERICAN JOBS failed to function as a mark for various retail, grocery, and convenience store services and promoting public awareness of goods made or assembled by American workers, because third-party product sales webpages and media/news articles showed "third parties in several industries commonly use the phrase . . . to convey the same general idea (supporting American jobs)" that applicant did); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (finding that I ♥ DC failed to function as a mark for clothing items, because the evidence showed the wording had "been widely used, over a long period of time and by a large number of merchandisers as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.").
The size, location, dominance, and significance of the wording as it is used in connection with the goods or services should also be considered to determine if any of these elements further support the perception of the wording merely as an informational message rather than as indicating the source of goods or services. In re Hulting, 107 USPQ2d at 1179 (comparing In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013)). For example, evidence of use of the wording as adornment, by either the applicant or third parties, may support a determination that a proposed mark does not convey the commercial impression of a trademark that identifies a single source. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6; In re Hulting, 107 USPQ2d at 1179-80; see also D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that the marketplace is inundated with products featuring the wording "as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"). In addition, use of the matter in a less prominent manner than other clear source identifiers may also support the conclusion that the matter will be perceived as merely conveying an informational message. Cf. In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288 (C.C.P.A. 1954) (finding that the phrase "Consistently Superior," which appeared less prominently than appellant’s trade name, was "merely an adjunct thereto, operating in the shadow thereof, to indicate to purchasers that appellant’s goods are always superior in quality" and was "merely a statement of fact which should be available to anyone who feels that his products are, in fact or belief, consistently superior, and wishes to so advise the public").
Some proposed marks comprise direct quotations, passages, or citations from religious texts, such as the Bible, Quran, Torah, or Diamond Sutra. These quotations, passages, or citations are often used by the providers of goods or services, and by consumers, to communicate affiliation with, support for, or endorsement of, the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing religious references used in this manner in the marketplace, they are unlikely to perceive the matter as indicating source and instead would perceive it merely as conveying an informational message of religious affiliation, endorsement, or support for the messages in the texts. See In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).
When a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, it fails to function as a mark. Thus, if the proposed mark consists, in its entirety, of this type of matter, the examining attorney must issue a failure-to-function refusal on the ground that it merely conveys an informational message of religious affiliation, endorsement, or support for the ideals or concepts conveyed in the religious text. If the quotation, passage, or citation is part of a proposed mark that also contains registrable elements, the examining attorney must require a disclaimer of the quotation, passage, or citation, if otherwise appropriate. See TMEP §§1202.04, 1213, 1213.02.
Given the many different translations of religious texts, it is possible that a quotation or passage from one English version of a religious text will be slightly different from the same quotation or passage in a different English translation of the same religious text. However, for purposes of the examining attorney’s determination, it is sufficient that the quotation or passage appears in any version of the relevant religious text.
To support a refusal or disclaimer requirement on this ground, the evidence must establish that the applied-for mark comprises a quotation, passage, or citation taken from a religious text and that consumers would perceive it as merely conveying affiliation with, affinity for, or endorsement of, the religious message. Evidence may include applicant’s own specimens, advertising, or website, showing how the applicant uses the wording in connection with the identified goods or services, as well as the advertising or packaging of other providers of the same or similar goods or services. Any evidence showing that the use of religious matter in connection with the identified goods or services is typical of use by marketplace participants to proclaim support for, affiliation or affinity with, or endorsement of, the message may support this refusal. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016). While the refusal or disclaimer may apply regardless of whether the identified goods or services themselves are religious in nature, the fact that the proposed mark is applied to religious goods or services may lend further support to the refusal or disclaimer requirement.
Sometimes a quotation or passage from a religious text has become part of common, everyday language. If the evidence shows that the average consumer would be unlikely to perceive the wording as conveying information about the applicant’s religious affiliation or endorsement without additional context, the examining attorney should not issue a failure-to-function refusal based on the wording being from a religious text. Instead, the examining attorney should consider whether the wording fails to function because it conveys a widely used message. See TMEP §1202.04(b). The following examples illustrate this point:
If the matter comprising the proposed mark is religious in nature but is not a quotation, passage, or citation from a religious text, the examining attorney should not refuse registration based on the matter being derived from a religious text. Instead, the examining attorney should consider whether it is merely informational because it conveys a widely used religious message. See TMEP §1202.04(b).
An applicant may respond to a merely informational failure-to-function refusal by submitting evidence demonstrating that the matter is perceived as indicating a single source for the identified goods or services. See In re Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (reversing the refusal to register QUALITY THROUGH CRAFTSMANSHIP for radio equipment, holding that the wording functioned as a mark because applicant extensively advertised the slogan, using it in the manner of a trademark on the goods, and the examiner failed to show others using the wording). But see In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8-9 (TTAB 2019) (three form declarations from customer/industry representatives found insufficient to show customer perception as this was "a rather small number" and it was not clear that the declarants reflected the perceptions of most relevant purchasers of applicant’s crabmeat).
The amount and nature of evidence that may be sufficient to establish that the matter would be perceived as source indicator rather than merely informational is determined on a case-by-case basis. The more generalized or commonplace and widely used the matter is, the more likely it would be perceived as merely informational and the less likely it would be perceived as indicating the source of the relevant goods/services. See Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *34 (TTAB 2021) (citing In re DePorter, 129 USPQ2d 1298, 1304-05 (TTAB 2019)); In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (quoting In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)).
Claims of long-time use or substantial sales and advertising generally do not prove recognition of the matter as a mark and will not obviate the failure-to-function refusal. See In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Wakefern Food, Corp., 222 USPQ 76, 79 (TTAB 1984); see also In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *9 ("claims about [a]pplicant's sales figures and ‘confidential’ advertising expenditures are not supported by documentary evidence, or put into context in the relevant market, and, in any event, that type of information is more directed to the question of acquired distinctiveness rather than capability").
Similarly, submission of an otherwise acceptable specimen bearing the proposed mark, such as a hang tag or label, will not obviate the refusal because the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (holding the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, did "not create the commercial impression of a source indicator, even when displayed on a hangtag or label") (quoting D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)). If the evidence shows that the public would not perceive the proposed mark as serving to indicate the source of the identified goods or services, it does not function as a mark and may not be registered regardless of the manner of use depicted on the specimens or the filing basis on which applicant relies. The examining attorney should not suggest that a substitute specimen be submitted or that the application be amended to an intent-to-use filing basis.
Furthermore, an applicant cannot overcome a failure-to-function refusal issued on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8; see In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019). Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of claims of acquired distinctiveness or the register on which registration is sought. See In re Bos. Beer Co., 198 F.3d 1370, 1373-74, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA "is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark" and was incapable of acquiring distinctiveness under section 2(f)); In re Helena Rubinstein, Inc., 410 F.2d 438, 441-42, 161 USPQ 606, 608-09 (C.C.P.A. 1969) (holding PASTEURIZED for face cream so highly descriptive that it failed to function as a source identifier, noting that a proposed mark "cannot properly be registered as a trademark, even on the Supplemental Register, unless it is intended primarily to indicate origin of the goods and is of such a nature that the ordinary purchaser would be likely to consider that it indicated such origin"); D.C. One Wholesaler, Inc., 120 USPQ2d at 1710 (granting petition to cancel a registration on the Supplemental Register because the mark failed to function as a trademark); In re Remington Prods., Inc., 3 USPQ2d at 1715 (affirming a failure-to-function refusal and denying a claim of acquired distinctiveness for PROUDLY MADE IN THE USA for electric shavers and parts, noting that applicant’s "substantial sales and advertising of its product . . . does not provide recognition by the public of the subject slogan as a trademark").
See TMEP §714.05(a)(i) regarding amendment to the Supplemental Register or submission of a claim of acquired distinctiveness and §1212.02(i) regarding §2(f) claims as to incapable matter.
Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads held to be a protectible trademark where the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning). Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.
The registrability of a color mark depends on the manner in which the proposed mark is used. Owens-Corning, 774 F.2d at 1120, 227 USPQ at 419. A color(s) takes on the characteristics of the object or surface to which it is applied, and the commercial impression of a color will change accordingly. See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) ("a word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances").
Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000). See TMEP §1202.05(a) and cases cited therein. However, the Court of Appeals for the Federal Circuit, in In re Forney Industries, Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020), stated a limited exception where a multiple-color mark may be inherently distinctive when used on product packaging, depending on the character of the color design. See also TMEP §1202.02(b)(ii).
Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. Owens-Corning, 774 F.2d at 1124, 227 USPQ at 422; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) , aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("blue motif" used in retail stores would likely be perceived by prospective purchasers as "nothing more than interior decoration" that "could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation."). However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. The United States Supreme Court has held that color alone may, sometimes, meet the basic legal requirements for a trademark. When it does, there is no rule that prevents color from serving as a mark. Qualitex, 514 U.S. at 161, 34 USPQ2d at 1162. If a color is not functional and is shown to have acquired distinctiveness on or in connection with the applicant’s goods or services, it is registrable as a mark.
Functional color marks are not registrable. See TMEP §1202.05(b) and cases cited therein.
Color marks normally are not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); In re Dimarzio, Inc., 2021 USPQ2d 1191, at *6 (TTAB 2021); In re Hodgdon Powder Co., 119 USPQ2d 1254, 1255 (TTAB 2016). Single color marks are never inherently distinctive and can only be registered upon a showing of acquired distinctiveness. Dimarzio, 2021 USPQ2d at *6. A multiple-color mark may be inherently distinctive when used on product packaging, depending on the character of the color design. In re Forney Industries, Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020); see also TMEP §1202.02(b)(ii).
Generally, the examining attorney must refuse to register a color mark on the Principal Register, unless the applicant establishes that the proposed mark has acquired distinctiveness under §2(f). The examining attorney must issue this refusal in color mark applications where acquired distinctiveness has not been shown, regardless of the filing basis of the application. The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
If the proposed color mark is not functional, it may be registrable on the Principal Register if it is shown to have acquired distinctiveness under §2(f). See In re Hodgdon Powder Co., 119 USPQ2d at 1255-59. If it is not distinctive, it is registrable only on the Supplemental Register. See In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) ("blue motif" applied to retail store services not registrable on Principal Register without resort to Section 2(f)), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145 (TTAB 1990) (the color green, as uniformly applied to medical instruments, not barred from registration on the basis of functionality; however, evidence failed to establish the color had become distinctive of the goods); In re Deere & Co., 7 USPQ2d 1401, 1403-04 (TTAB 1988) (the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence established the colors had become distinctive of the goods).
The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding applied-for mark consisting of the color pink, as uniformly applied to fibrous glass residential insulation, had acquired distinctiveness); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1028 (TTAB 2017) (holding applied-for mark consisting of "the color yellow appearing as the predominant uniform background color on product packaging" for cereal had not acquired distinctiveness); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (holding applied-for mark consisting of "any orange text appearing on a green background," for cigarettes had not acquired distinctiveness); In re Benetton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998) (holding applied-for mark consisting of a green rectangular background design for clothing and footwear had not acquired distinctiveness); In re Am. Home Prods. Corp., 226 USPQ 327 (TTAB 1985) (holding applied-for mark consisting of tri-colored, three-dimensional, circular-shaped design for analgesic and muscle relaxant tablets had acquired distinctiveness); In re Star Pharms., Inc., 225 USPQ 209 (TTAB 1985) (holding applied-for mark consisting of two-colored drug capsules and multi-colored seeds or granules contained therein for methyltestosterone had acquired distinctiveness). A mere statement of long use is not sufficient. Benetton, 48 USPQ2d at 1216-17 (despite long use, record devoid of any evidence that the green rectangular background design has been used, promoted, or advertised as a mark). The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.
As noted above, the commercial impression of a color may change depending on the object to which it is applied. Therefore, evidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects, but not for other objects. See Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-63 ("The imaginary word ‘Suntost,’ or the words ‘Suntost Marmalade,’ on a jar of orange jam immediately would signal a brand or a product ‘source’; the jam’s orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods -- i.e., ‘to indicate’ their ‘source’").
A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66, 34 USPQ2d 1161, 1164 (1995); Brunswick Corp. v. Brit. Seagull Ltd., 35 F.3d 1527, 1530, 32 USPQ2d 1120, 1121-22 (Fed. Cir. 1994); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Brunswick, 35 F.3d 1527, 32 USPQ2d 1120 (holding the color black functional for outboard motors because, while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Integra Biosciences Corp., 2022 USPQ2d 93, at *40-41 (TTAB 2022) (holding five different pastel colors for disposable pipette tips in colored rack inserts were functional as they were part of applicant’s color coding scheme to ensure that customers used the proper size pipette tips on the respective pipettes); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (holding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers to communicate a desired sentiment or occasion, such as elegance, bereavement, or Halloween); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-47 TTAB 2007 (holding a deep purple shade functional for coated abrasives, because opposer had established a prima facie case that coated abrasive manufacturers had a competitive need to be able to use various shades of purple, including applicant’s shade, and that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding"); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (holding the color pink functional for surgical wound dressings because the actual color of the goods closely resemble[d] Caucasian human skin); In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996) (holding the colors yellow and orange functional for public telephones and telephone booths, because they are more visible in the event of an emergency under all lighting conditions); In re Howard S. Leight & Assocs., 39 USPQ2d 1058 (TTAB 1996) (holding the color coral functional for earplugs, because they are more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process. See also In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional); Kasco Corp. v. S. Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade).
The doctrine of "aesthetic functionality" may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely "utilitarian" in nature, nevertheless dictate that the color remain in the public domain. Brunswick, 35 F.3d at 1533, 32 USPQ2d at 1124; In re Florists’ Transworld Delivery Inc., 106 USPQ2d at 1787-88; see TMEP §1202.02(a)(vi); see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (U.S. Supreme Court discussed aesthetic functionality, distinguishing Qualitex, 514 U.S. 159, 34 USPQ2d 1161, as a case where "[a]esthetic functionality was the central question").
As with all trademarks and service marks, a color mark may contain only those elements that make a separable commercial impression. See TMEP §807.12(d). Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. See TMEP §1202.11 regarding background designs and shapes.
The commercial impression of a color may change depending on the object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). Granting an application for registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application. Cf. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or "phantom" element unregistrable because it would "encompass too many combinations and permutations to make a thorough and effective search possible" and, therefore, would not provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (hologram of varying shapes, sizes, content, and positions used on trading cards constitutes more than one "device," as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application. TMEP §807.01.
All marks, other than sound and scent marks, require a drawing. TMEP §807. An application for a color mark that is filed without a drawing will be denied a filing date. 37 C.F.R. §2.21(a)(3). Similarly, an application for a color mark with a proposed drawing page that states "no drawing," or sets forth only a written description of the mark, will be denied a filing date. The drawing provides notice of the nature of the mark sought to be registered. Only marks that are not capable of representation in a drawing, such as sound or scent marks, are excluded from the requirement for a drawing. Color marks are visual and should be depicted in color drawings, accompanied by: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement naming the color(s) and describing where the color(s) appear and how they are used on the mark. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and 808–808.03(f) for description of the mark.
In most cases, the proposed color mark drawing will consist of a representation of the product or product package. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods. 37 C.F.R. §2.51. A depiction of the object on which the color is used is needed to meet this requirement.
The object depicted on the drawing should appear in broken or dotted lines. The broken or dotted lines inform the viewer where and how color is used on the product or product package, while at the same time making it clear that the shape of the product, or the shape of the product package, is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. In the absence of a broken-line drawing, the USPTO will assume that the proposed mark is a composite mark consisting of the product shape, or the product package shape, in a particular color.
Color used on multiple goods
If the proposed color mark is used on multiple goods, the drawing required will depend on the nature of the goods. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods. 37 C.F.R. §2.51. A drawing consisting of a depiction of only one of the goods will be accepted if the goods, or the portions of the goods on which the color appears, are similar in form and function so that a depiction of only one of the goods is still a substantially exact representation of the mark as used on all of the goods. For example, if the mark is the color purple used on refrigerators and freezers, a drawing of a purple freezer shown in broken lines (with a description of the mark claiming the color purple and indicating that it is used on the freezer) would be sufficient. Or, if the mark is the color pink used on the handles of rakes, shovels, and hoes, a drawing of any of those items depicted in dotted lines (with a description of the mark claiming the color pink and stating that the handle is pink) would be sufficient. Or, if the mark consists of product packaging for various food items that is always blue with a pink circle, a drawing of any one of the packages shown in dotted lines (with a description of the mark claiming the colors blue and pink and describing the location of the colors on the packaging) would be sufficient.
If the proposed color mark is used on multiple goods that are dissimilar or unrelated, or if color is used in different ways on different goods, so that a depiction of one of the goods is not a substantially exact representation of the mark as used on all of the goods (e.g., the color purple used on microscopes and vending machines), a separate application must be submitted for each item.
Color used on liquids or powders
Sometimes a color mark consists of color(s) used on liquids or powders. For example, the mark might consist of fuchsia body oil or red, white, and blue granular washing machine detergent. In these cases, the nature of the drawing will depend on the manner of use of the liquid or powder. If the liquid or powder is visible through the product package, the drawing should consist of the shape of the product package shown in broken or dotted lines, with the description of the mark identifying the color(s) of the liquid or powder.
It is difficult to anticipate all of the issues that may arise when examining a proposed color mark for services because there are a myriad of ways that color can be used in connection with services. However, the following general guidelines will be used to determine the sufficiency of drawings in these cases:
Because color marks are comprised solely of the color as applied to the product or product package, in the manner depicted on the drawing and explained in the description of the mark, amending the color of the proposed mark will always change the commercial impression of the mark. Thus, the amendment of any color in a color mark is a prohibited material alteration. Similarly, the amendment of the color mark to show the same color on a different object is also, generally, a material alteration, e.g., an amendment of a drawing of a blue hammer to a blue saw is a material alteration.
Sometimes, a product or advertisement for a service will include both color and words or a design. For example, the surface of a toaster might be green, with the letters "ABC" and a design displayed on the toaster. In this situation, the applicant must decide whether to seek registration for the color green used on toasters, the letters "ABC" with or without the design, the design alone, or some combination of these elements. If applicant only seeks registration for the use of the color, no word or design elements should appear on the drawing.
The drawing of a proposed color mark must be supplemented with: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear(s) and how they are used on the mark. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and 808–808.03(f) for description of the mark.
The description of the mark must be clear and specific, use ordinary language, and identify the mark as consisting of the particular color as applied to the goods or services. If the color is applied only to a portion of the goods, the description must indicate the specific portion. Similarly, if the mark includes gradations of color, the description should so indicate. If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, "maroon," "turquoise," "navy blue," "reddish orange." This is required even if the applicant also describes the color using a commercial coloring system.
The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing filed with the original application. 37 C.F.R. §2.72. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001). Cf. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). See TMEP §§807.14–807.14(f) regarding material alteration.
The description of a color mark must be limited to a single mark, because only one mark can be registered in a single application. See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443 (TTAB 2002) . See TMEP §§807.01 regarding drawing must be limited to a single mark and 1202.05(c) regarding color as a separable element.
An application under §1 of the Trademark Act must be supported by a specimen that shows use of the proposed mark depicted on the drawing. Therefore, an applicant who applies to register a color mark must submit a specimen showing use of the color, either with a §1(a) application or with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ), in a §1(b) application. If a black-and-white specimen is submitted, the examining attorney will require a substitute specimen displaying the proposed color mark. See TMEP §904.02(c)(ii).
See TMEP §§904.03–904.07(b) regarding trademark specimens and 1301.04–1301.04(d) regarding service mark specimens.
Although the applicant in In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001), argued that it applied for the color blue per se as a service mark, the Court determined that the drawing controlled, such that the application was for the color blue applied to a building. Although the Court did not reach the issue of color per se as a service mark, the Court acknowledged the special evidentiary problem associated with showing acquired distinctiveness in this context. Id. at 1353, 61 USPQ2d at 1124 ("[E]vidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects (e.g., blue vehicle rental centers), but not for other objects (e.g., blue rental cars)."). Accordingly, any claim to color per se must be specific as to use and include evidence of acquired distinctiveness for each claimed use.
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); TMEP §1202.05(a). But see In re Forney Indus., Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020) (a multiple-color mark used on product packaging may be inherently distinctive, depending on the character of the color design); TMEP §§1202.02(b)(ii); 1205.05(a). Generally, the examining attorney must refuse to register a color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
The issue of whether the proposed color mark is functional requires consideration of the manner in which the mark is used. Generally, no refusal on these grounds will be issued in a §1(b) application until the applicant has submitted specimen(s) of use with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). See TMEP §§1102.01, 1202.02(d), 1202.03(e), 1202.05(b). The specimen(s) provide a better record upon which to determine the registrability of the mark. In appropriate cases, the examining attorney will bring the potential refusal to the applicant’s attention in the initial Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); TMEP §1202.05(a). But see In re Forney Indus., Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020) (a multiple-color mark used on product packaging may be inherently distinctive, depending on the character of the color design); TMEP §§1202.02(b)(ii); 1205.05(a). Generally, the examining attorney must refuse to register a proposed color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §§1202.02(e), 1202.03(e), 1202.05(b). However, a mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).
