[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board reversed a Section 2(e)(5) refusal to register the package configuration mark shown below, for “canned fish; tinned fish.” The mark is described as: “a three dimensional trade dress design of a package of the Applicant’s goods. The three dimensional product packaging is in the shape of a cylinder. The top of the product packaging is a transparent circle, represented by vertical lines, through which the product is seen. The solid portions represent opaque areas.”

The Examining Attorney contended that “the transparent portion of the packaging serves a functional and utilitarian purpose, namely, allowing consumers to view or inspect the goods.” As an alternative argument, he also refused registration on the ground that Applicant failed to prove that the applied-for mark had acquired distinctiveness under Section 2(f). Although the Board reversed the functionality refusal because the Examining Attorney was unable to make a prima facie showing that the mark is functional, the Board agreed that Applicant had not made a sufficient showing of acquired distinctiveness. Therefore, the refusal to register was ultimately affirmed. In re Interpage Int’l Inc., Serial No. 87346100 (June 6, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Functionality: The Board considers the following factors to determine whether a mark is functional:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;
(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;
(3) the availability to competitors of functionally equivalent designs; and
(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).

Here, Applicant asserted that: (1) there is no utility patent at issue; (2) there is no evidence of advertising that advocates the utilitarian advantages of the design; (3) there are many ways to package fish in transparent containers; and (4) while Applicant’s products are somewhat low-priced, there is no evidence that the choice of design is due to monetary considerations.

The Examining Attorney conceded that there was a lack of relevant utility patents and advertisements that promoted utilitarian features of the mark. Nonetheless, focusing heavily on the transparent portion of the packaging, he maintained that “the totality of the evidence shows that the applicant’s mark provides identifiable utilitarian advantages to the user (i.e. the ability to inspect the goods in low cost packaging).” As evidence, the Examining Attorney submitted website printouts that demonstrated the usefulness of clear food packaging. Reviewing the printouts, the Board was unconvinced that the mark is de jure functional. Possibly, an argument could be made that the entire design (round container with a flat base), may have functional features since it would make the containers easier to store and stack. However, the Examining Attorney did not raise this issue until his appeal brief and so the Board refused to consider it. The refusal under Section 2(e)(5) was accordingly reversed.

Acquired Distinctiveness: The Board pointed out that Applicant had a high burden to overcome to show that the proposed mark had acquired distinctiveness: “[T]he proposed product package configuration mark, on its face, does not appear to be particularly unique inasmuch as it is a cylindrically-shaped container, making it less likely to be perceived as a source indicator.” To support its claim of acquired distinctiveness, Applicant provided evidence of product sales numbers, notes taken by staff on promotional events, and photographs of the products on shelves. The Board, noting that the Examining Attorney’s submitted evidence on the usefulness of transparent food containers was more probative for lack of distinctiveness rather than functionality, found that Applicant’s evidence did not show that consumers would be inclined to view the product packaging as a source identifier. Therefore, the Board affirmed the refusal for insufficient showing of acquired distinctiveness.

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TTABlog comment: I think I’d rather not see the contents of the can.

Text Copyright Kira-Khanh McCarthy 2019.