Trademark Board Finds Product Packaging Not Inherently Distinctive
Trademark Board Cancels ANNAPOLIS TOURS


Trademark Board Finds Product Packaging Not Inherently Distinctive

Timothy J. Lockhart

The U.S. Trademark Trial and Appeal Board (TTAB) recently decided a trade dress case that illustrates important differences between the registerability of product packaging as a trademark and the registerability of product design. In this case, In re Book to Bed, Inc., Serial No. 85262093 (June 21, 2013), the applicant sought to register this product packagingpackaging as a trademark for use with children’s and infant’s pajamas, nightgowns, and other sleepwear. The applicant described its mark as “packaging for sleepwear that consists of a transparent bag enclosing a book positioned behind matching sleepwear so that the cover of the book remains partially visible from the front of the packaging, together with a ribbon positioned directly above the book and sleepwear tying the neck of the bag.”

The Examining Attorney assigned by the U.S. Patent and Trademark Office initially refused to register the mark on the grounds that this product packaging is not inherently distinctive and therefore requires proof of secondary meaning to be registerable. Although the Examining Attorney drew this requirement to the attention of Book to Bed, Inc., the applicant did not submit any evidence of secondary meaning. Accordingly, the Examining Attorney issued a final refusal, and the applicant appealed to the TTAB.

The TTAB began its analysis by noting that the U.S. Supreme Court has held that registerable trade dress “includes product packaging and product design” and that “distinctiveness is a prerequisite for registration of a trade dress” (citing Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205 (2000)). The TTAB stated that “classification of trade dress as either product packaging or product design is typically an important consideration” because “[a] product configuration or design can never be inherently distinctive and proof of secondary meaning is necessary in order to obtain a registration,” whereas “trade dress that is deemed to be product packaging may be inherently distinctive” and therefore registerable without such proof (citing Wal-Mart).

Book to Bed described its mark as product packaging, arguing that the central feature of its trade dress is 

the positioning of the goods within and relative to their packaging (i.e., the books are positioned directly behind matching sleepwear so that the cover of the book remains partially visible through the front of the transparent bag, and a distinctive ribbon tying the neck of the bag is placed directly above the book and sleepwear) (emphases original)

The TTAB acknowledged that the line between product design and product packaging can be a fine one and cited the Supreme Court’s example in Wal-Mart of a classic Coca-Cola glass bottle functioning as packaging for most consumers but as the product itself for those who collect bottles. The TTAB said one teaching of Wal-Mart is that where the design-versus-packaging issue is uncertain, courts should “err on the side of caution[,] classifying ambiguous trade dress as product design, thereby requiring proof of secondary meaning.”

In evaluating whether the design of Book to Bed’s packaging is inherently distinctive, the TTAB applied the four-part test laid out in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (CCPA 1977):

  1. whether the design is a common basic shape or design;
  2. whether the design is unique or unusual in the field in which it is used;
  3. whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for the particular class of goods viewed by the public as a dress or ornamentation for the goods; or
  4. whether the design is capable of creating a commercial impression distinct from any accompanying matter, if presented together with text or other matter.

The TTAB held that the basic design of Book to Bed’s packaging—children’s gift sets containing apparel and books and wrapped in clear plastic tied with a bow—is fairly common and therefore is non-distinctive under the first three Seabrook factors even if no third party uses trade dress identical to the applicant’s. Turning to the fourth factor, the TTAB noted that the applicant’s products are branded with the trademark BOOKS TO BED and Design. The TTAB found it unlikely that the applicant’s trade dress “is capable of creating a commercial impression that is distinct from applicant’s admitted use of its BOOKS TO BED and Design mark on both the packaging, namely, on the ribbon (bow) and the ‘bellyband’ placed around the book and sleepwear, and the product.”

Accordingly, the TTAB stated that the “applicant’s trade dress is not inherently distinctive.” Given that finding and the absence of any evidence of secondary meaning, the TTAB held that Book to Bed’s trade dress is unregisterable “as either a product configuration or as product packaging, and the refusal of registration must be affirmed.”  

Trademark Board Cancels ANNAPOLIS TOURS

Timothy J. Lockhart

Finding the mark ANNAPOLIS TOURS to be descriptive of “conducting guided tours of historic districts and other areas of cities” despite the registrant’s claim of acquired distinctiveness, the U.S. Trademark Trial and Appeal Board (TTAB) has ordered cancellation of the registration for the mark. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc. dba Watermark Cruises, Cancellation No. 92050879 (July 2, 2013).

Chesapeake Marine Tours, Inc. dba Watermark Cruises (Watermark), a company based in Annapolis, Maryland, registered the mark ANNAPOLIS TOURS in 2006 based on claimed first use of the mark in 1992. Although it had to disclaim the exclusive right to use TOURS apart from the mark as a whole, Watermark was able to register the mark on the Principal Register of the U.S. Patent and Trademark Office (USPTO) by submitting a declaration under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), that the originally descriptive mark had become distinctive through at least five years of continuous and substantially exclusive use prior to the declaration. However, Watermark did not submit any other evidence of distinctiveness.

From 2005 until 2009, Watermark did business with Alcatraz Media, Inc. (Alcatraz), an online tour booking agent and reseller that operates over 2,000 “city-named” websites, including http://www.annapolistours.us. After the parties terminated their relationship, Watermark sent Alcatraz a letter demanding that Alcatraz stop using the term “Annapolis Tours,” and Alcatraz responded by petitioning the TTAB to cancel the registration for ANNAPOLIS TOURS.

Alcatraz alleged that ANNAPOLIS TOURS is generic for tours and has not acquired distinctiveness for such services. Alcatraz also alleged that Watermark committed fraud on the USPTO by falsely claiming continuous and substantially exclusive use of the mark for at least five years preceding the Section 2(f) declaration.

On the issue of genericness, the TTAB found “ambiguous” Alcatraz’s evidence “that the primary significance of ANNAPOLIS TOURS to the relevant public is guided tour services of cities, rather than a guided tour service of cities provided by [Watermark].” Thus, the TTAB concluded that Alcatraz had “failed to demonstrate by a preponderance of the evidence that [Watermark’s] registered mark ANNAPOLIS TOURS ‘as a whole’ is generic for the identified services” (citing In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141 (Fed. Cir. 1987) (no clear evidence that financial community viewed CASH MANAGEMENT ACCOUNT as a generic term for the brokerage services to which Merrill Lynch first applied that term).

The TTAB then considered whether ANNAPOLIS TOURS had acquired distinctiveness, applying the analysis set forth in The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352 (Fed. Cir. 2009):

In a Section 2(f) case, the party seeking cancellation bears the initial burden to “establish a prima facie case of no acquired distinctiveness.” To satisfy this initial burden, the party seeking cancellation must “present sufficient evidence or argument on which the board could reasonably conclude” that the party has overcome the record evidence of acquired distinctiveness—which includes everything submitted by the applicant during prosecution. The burden of producing additional evidence or argument in defense of registration only shifts to the registrant if and when the party seeking cancellation establishes a prima facie showing of invalidity. (Citations omitted.)

The TTAB agreed with Alcatraz that ANNAPOLIS TOURS is so “highly descriptive” as to require more evidence of acquired distinctiveness than Watermark’s Section 2(f) declaration. Thus, the TTAB said, under the doctrine of Cold War Museum “the burden shifts to [Watermark] to now prove acquired distinctiveness based on any ‘additional evidence or argument’ produced in this cancellation proceeding.” The TTAB found that the evidence Watermark submitted during the cancellation proceeding—low sales figures, its own promotional materials, and testimony alleging continuous use of ANNAPOLIS TOURS since 1992—was insufficient to show that the mark had acquired distinctiveness. Accordingly, the TTAB granted Alcatraz’s petition to cancel the registration.

However, the TTAB did not find that Watermark had committed fraud on the USPTO. The TTAB said that even if Watermark and its predecessor had not—as some evidence suggested—actually used ANNAPOLIS TOURS as a mark on a continuous and substantially exclusive basis for the five years prior to the Section 2(f) declaration, the Watermark officer who executed the declaration believed that her statements were true. Thus, the TTAB held that the officer did not have the requisite intent to deceive the USPTO. The TTAB concluded that, under the leading case of In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), Alcatraz had not met the “heavy burden of proof” required to show fraud on the USPTO.

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