[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Poly-America and API own competing Supplemental Registrations for trade dress consisting of different color drawstrings on plastic garbage bags. API claims the color gray (Supp. Reg. No. 4,824,072); Poly-America claims the color orange (Supp. Reg. No. 4,027,254). Each side petitioned to cancel the other’s registration. The decision involves three issues somewhat infrequently seen in Board decisions: (1) the cancellation of registrations on the Supplemental Register, (2) competing claims of genericness, and (3) the functionality of a color. Ultimately, the Board cinched the case by granting both cancellation petitions, finding both “marks” to be generic marks, and also finding the color orange to be functional for trash bag drawstrings. Poly-America, L.P. v. API Industries, Inc. and API Industries, Inc. v. Poly-America, L.P., Cancellations Nos. 92062517 and 92062601 (Feb. 19, 2020) (not precedential) (Opinion by Judge Karen Kuhlke).

Genericness: Even though the registrations are on the Supplemental Register, the same general law of genericness applies because, even if registered on the Supplemental Register, a mark “must be capable of distinguishing goods or services,” Trademark Act § 23, 15 U.S.C. § 1091, and “[g]eneric matter is incapable of identifying and distinguishing goods and services.”

The Board applied the accepted test for genericness to both registrations: “We first consider the genus of goods at issue, and second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods.”

As usual, the Board turned to the identification of goods in the registrations to determine the genus of goods for each, i.e., plastic garbage bags. From there, since there were no restrictions in the registrations, the Board concluded that the “relevant public” comprised “consumers seeking plastic trash bags,” including not only at the retail level but also at the wholesale level.

Starting with API’s registration for the color gray on drawstring trash bags, the Board aimed to determine the “relevant public’s perception” of the color mark, because that is the “primary consideration in determining whether a term is generic.” Here, although there was some trash talking about who may have been first in the marketplace to use gray drawstring bags, which the Board found “not relevant,” the Board focused on how widely used were gray drawstring bags in the industry. Relying primarily on testimony and evidence from Poly-America, the Board found that at least six companies––Reynolds (see below), Iron Hold, Ruffies, Fair Square, Glad (see below), and Poly-America––had sold trash bags with gray drawstrings.

Interestingly, there was no evidence of when these sales took place, or how widespread these sales were. But the Board found the evidence “sufficient to establish that consumers are exposed to use of the color gray in trash bag drawstrings in the same general time period such that they would not perceive it as indicating source but rather, to the extent it is perceived at all, as a category or type of trade dress for the genus plastic trash bags.” And so the Board granted Poly-America’s petition for cancellation.

API’s petition for cancellation of Poly-America’s registration for orange drawstrings followed the same basic story. The biggest difference was Poly-America’s admission that it sold its bags on a wholesale level to several entities, and then those entities re-sold the orange drawstring bags under a wide variety of different brand names. Again, since the registration was not limited to any particular trade channel, the Board held that,

when a company sells to third parties for re-sale under the third parties’ marks rather than under the manufacturer’s mark, that circumstance cripples any attempt to show that consumers uniquely associate the mark with one source, i.e., the manufacturer. Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1520 n. 48 (TTAB 2017).” (Ed. Note – Seems Poly-America should have been well versed in this holding.)

Accordingly, the Board found the orange color drawstring to be generic for trash bags.

Functionality: – To “double-bag” its decision against Poly-America, the Board also went further to find the color orange to be functional for trash bag drawstrings.

Again because the trade dress was registered on the Supplemental Register, the Board first needed to determine what law to apply. It concluded that even though the statutory basis for cancelling a mark on the Supplemental Register differs from the statutory basis for cancelling a registration on the Principal Register, the “same case law” applies, namely Inwood and Morton-Norwich.

Under Inwood, a “product design or product feature is considered to be functional in a utilitarian sense if it is (1) ‘essential to the use or purpose of the article,’ or if it (2) ‘affects the cost or quality of the article.’” The Board will then often analyze the evidence identified in Morton-Norwich, namely:

(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.

However, the “Supreme Court has made it clear that if functionality is properly established under Inwood, further inquiry into other categories of evidence listed in Morton-Norwich such as the availability of alternatives and cost information–is not necessary.” As the Board noted in this decision, the ultimate crux of the doctrine is the “preservation of competition,” i.e., not allowing one company to usurp for itself a product design or feature when those items are required in order to compete.

Before beginning its analysis, the Board first addressed what constituted the Poly-America mark, which Poly described as “the color orange,” and as API argued, was lunlimited as to “any particular shade, tone, or pantone of orange.” (Ed. Note – are the parties and the Board trying to genericide Pantone®?) But the Board held that “the drawing page controls and the only shade of the color covered by the registration is that shown in the color drawing.”

With that, the Board reviewed at some length the substantial evidence API put forth that the color orange “serves a utilitarian purpose” for trash bag drawstrings. Notably, the Board did not feel compelled to expressly go through the factors or types of evidence in Morton-Norwich. Most significantly, API offered the opinion of Steven Bleicher, who, among other things, is the author of the book Contemporary Color Theory and Use. He described in several ways what seems to be a logical conclusion: the color orange is easier to see, therefore it “would make it easier to use, to grab the bag, grab the handles of the bag, so that they would be – they would stand out against the color of the trash bag” and therefore be “functional.”

The Board agreed:

The purpose of a trash bag is to hold trash. The purpose of the drawstring on a trash bag is to close the trash bag. One purpose of a vibrant contrasting color for the drawstring is to see it more easily to grab it and close the trash bag. Orange is at least one of a few superior colors for that purpose. We find that the color orange is functional for trash bag drawstrings.

And with that, the Board granted both petitions to cancel.

Read comments and post your comment here.

TTABlog comment: The Board’s recent decision in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019) (finding the color red to be generic for saw blades) played an important role in this decision. Should this opinion have been deemed precedential?

Text Copyright John L. Strand and John L. Welch 2020.