1202.02(b)    Distinctiveness of Trade Dress

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.

1202.02(b)(i)    Distinctiveness and Product Design Trade Dress

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.

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

Product packaging trade dress may be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068 (2000) ("The attribution of inherent distinctiveness to certain . . . product packaging derives from the fact that the very purpose of . . . encasing [a product] in a distinctive packaging, is most often to identify the source of the product").

Therefore, in applications seeking registration of marks comprising product packaging, the examining attorney must assess inherent distinctiveness. If it is lacking, registration must be refused on the Principal Register on the ground that the proposed mark is nondistinctive trade dress under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127, for trademark applications, or under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, 1127, for service mark applications.

In Wal-Mart Stores, Inc. v. Samara Bros., the U.S. Supreme Court discussed the distinction between the trade dress at issue in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product design trade dress (designs for children’s clothing) considered in Wal-Mart:

Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, but it does not establish that product-design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging – which, as we have discussed, normally 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 U.S. Supreme Court’s admonishment that where there are close cases, trade dress should be classified as product design for which secondary meaning is always required. 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:

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

Id.; see, e.g., In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (stating that an abbreviated tuxedo costume consisting of wrist cuffs and a bowtie collar without a shirt "constitute[d] ‘trade dress’ because it was part of the ‘packaging’" for exotic dancing services); Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1205-07, 31 USPQ2d 1321, 1330-32 (Fed. Cir. 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., 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), 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.

"[T]he lesser the degree of distinctiveness, the heavier the burden to prove trade dress in the nature of product packaging has acquired distinctiveness." In re Brouwerij Bosteels, 96 USPQ2d 1414, 1424 (TTAB 2010) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). Where such trade dress had a lesser degree of distinctiveness, the applicant’s evidence was found, in certain cases, to be insufficient to support a claim of acquired distinctiveness. See e.g., In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *10-13 (TTAB 2023) (holding evidence of acquired distinctiveness insufficient for common modular building designs of a hotel where the evidence comprised four identical "cookie cutter" customer declarations, a declaration of applicant’s vice-president regarding use in commerce since 1968 when the hotel opened in San Antonio, advertising/promotion figures seeming insubstantial when viewed in connection with the length of use, sales figures provided without industry context, 17 local newspaper or industry trade journal articles and a website discussing the building of the hotel for the HemisFair 1968 Word’s Fair in San Antonio and no "look for" advertising or promotional materials or mention of the hotel’s proposed trade dress as indicators of source of the applied-for hotel services); In re Brouwerij Bosteels, 96 USPQ2d at 1424 (holding evidence of acquired distinctiveness insufficient for a common "Half-Yard" type of beer glass and stand where the evidence comprised use for at least 25 years, ownership of a prior registration for a similar but not legally-equivalent mark, two third-party websites indicating the beer glass is "eye-catching" or "unique," and no advertising or sales figures or "look for" advertising or promotional materials); In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983) (holding evidence of acquired distinctiveness insufficient for a simple flat- rectangular product packaging for two side-by-side round mint candies where the evidence comprised a single declaration from applicant’s CEO specifying a few years use in commerce, limited sales figures, unclear advertising figures, and no "look for" advertising or promotional materials).

In certain cases, product packaging may be incapable of functioning as an indicator of source. "[T]rade dress that cannot serve as an indicator of source is generic and unprotectable." Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1326, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999). For example, packaging that is common or basic in an industry or that is a mere refinement of packaging commonly used on the relevant goods will not be perceived as indicating source and is not registrable on the Principal Register under §2(f) or on the Supplemental Register. See In re Odd Sox LLC, 2019 USPQ2d 370879, at *6 (holding that the same standard used to determine whether product design trade dress was generic "applies equally to product packaging" trade dress); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) (noting that a product design may be deemed incapable where it is, "at a minimum, so common in the industry that it cannot be said to identify a particular source."); 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 for trademarks, and under §§1, 2, 3, and 45 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, 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. See also TMEP §1301.02(c) regarding three-dimensional trade dress for service marks.