1202.02(b)(ii)   Distinctiveness and Product Packaging Trade Dress

Product packaging may be inherently distinctive but, if not, the examining attorney must refuse registration 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, and 1127, for trademark applications, or under §§1, 2, 3, and 45, 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 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) under consideration 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 (citation omitted).

Thus, unlike product design trade dress, trade dress constituting product packaging may be inherently distinctive for goods or services and registrable on the Principal Register without a showing of acquired distinctiveness. However, 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. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)). The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977), although not applicable to product design trade dress, is still viable in the examination of product packaging trade dress. The examining attorney should consider the following Seabrook factors – whether the proposed mark is:

  • (1) a "common" basic shape or design;
  • (2) unique or unusual in a particular field;
  • (3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
  • (4) capable of creating a commercial impression distinct from the accompanying words.

Id. See also 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) (reversing lower court’s summary judgment finding that the shape and appearance of the spice container at issue was not inherently distinctive); In re Mars, Inc., 105 USPQ2d 1859, 1869-71 (TTAB 2013) (finding applicant’s 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 Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2029 (TTAB 2010) (affirming that applicant’s "‘three-dimensional, six-sided beveled shape’ [pole spanner design used to promote services] is 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) (finding 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).

For applications based on §1(b) of the Trademark 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).

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) (finding 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) (bottle configuration found 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) (container configuration having the appearance of an ice cream cone found 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. 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. In the following cases, the applicant’s evidence was found to be sufficient to support a claim of acquired distinctiveness: In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design found 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.").

The examining attorney must establish a prima facie case that the product packaging trade dress is not inherently distinctive. Chippendales, 622 F.3d at 1350, 96 USPQ2d at 1684. To meet this burden, the examining attorney must at a minimum, set forth a "‘reasonable predicate’ for its position of no inherent distinctiveness," for example, by introducing evidence 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.

See TMEP §§1212-1212.10 regarding acquired distinctiveness and 815- 816.05 regarding the Supplemental Register. In In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983), the evidence of secondary meaning was insufficient (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 (evidence of acquired distinctiveness for product packaging trade dress in the nature of a beer glass and stand was insufficient).