The Board affirmed a refusal to register the three-dimensional product packaging shown below, for “pre-mixed alcoholic beverages, other than beer-based,” finding that the design is not inherently distinctive and rejecting applicant’s claim of acquired distinctiveness. The Board concluded that, compared to bottled designs on which Examining Attorney Andrew Crowder-Schaefer relied, the differences “are mere refinements of common features for alcoholic beverage bottles.” As to its Section 2(f) claim, applicant relied only on its use of the proposed mark for seven years, which the Board found insufficient to meet the applicable heavy burden of proof. In re Watermark Properties Inc., Serial No. 88578623 (November 10, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

 

The proposed mark comprises “a stylized cylinder bottle with a bottle cap which is three dimensional and symmetric. The sides of the bottle cap and bottle are concave, with a curve beginning at the bottle cap and ending at the bottom of the bottle.”

Inherent Distinctiveness: The Examining Attorney relied on bottles used as packaging for beverages sold in commerce, both alcoholic and non alcoholic, and primarily cylindrical and concave in shape. However, few of the caps for these bottles were concave like the body of the bottle.

Applicant maintained that the third-party bottles are different in shape from its bottle, and that third-party bottles for non alcoholic beverages are irrelevant because the goods are different. It pointed out that it has won awards for its bottle design. The Board, however, found no evidence that the awards related to any of the bottle features that Applicant sought to register.

The Board pointed out that “the Examining Attorney does not bear a heavy burden in establishing a prima facie case that a mark is not inherently distinctive. The Examining Attorney need only establish a ‘reasonable predicate’ to make the necessary prima facie showing.” In re Chippendales USA, Inc., 90 USPQ2d 1535, 1539-40 (TTAB 2009), aff’d, 96 USPQ2d 1681

The Board applied the ever-popular test of Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)), to determine inherent distinctiveness of the subject trade dress. Here, the evidence of record established a “reasonable predicate” for rejecting applicant’s claim of inherent distinctiveness, and thus the Examining Attorney made a prima facie case.

In fact, Applicant’ s design is fairly commonplace, and not unique in the alcoholic beverage field, as the record reveals almost 20 cylindrical alcoholic beverage bottles with concave sides that curve inward starting at the top and ending at the bottom. Rather, to the extent Applicant’s bottle design differs from the bottles upon which the Examining Attorney relies, these differences are m ere refinements of common features for alcoholic beverage bottles. Applicant’s bottle design is therefore not inherently distinctive.

The Board rejected applicant’s contention that the soft drink bottles are irrelevant. “In fact, because alcoholic beverage drinkers also must, or at least would be expected to, drink non alcoholic beverages, bottles for non alcoholic beverages are relevant , and would be expected to impact the relevant alcoholic beverage consumers’ perceptions of alcoholic beverage bottles.” The Board acknowledged that many of the third-party bottles have small caps or thin necks, but those were not enough to undermine or rebut the Examining Attorney’s prima facie case.

 

The point is that neither symmetric bottle caps, nor concave bottles curve from the bottle cap or elsewhere on the top of the bottle to the bottom are “unusual” in the field of bottles for alcoholic beverages (or soft drinks). * * *  In fact, even if Applicant is correct that its bottle is unique in the field, in the sense that there are n o other bottles exactly like it, that is not enough to establish inherent distinctiveness given the evidence of widespread third party use of highly similar bottles. In short, the Examining Attorney has established a prima facie case, which Applicant has not rebutted, that Applicant’ s bottle design is not inherently distinctive.

Acquired Distinctiveness: Because applicant’s bottle design is a mere refinement of a bottle design commonly used in the alcoholic beverage industry, applicant “has a relatively heavy burden for establishing acquired distinctiveness.”

Applicant has used its proposed mark for the last seven years but that “is not a significant amount of time given the nature of the proposed mark and how similar it is to third-party bottle designs.” It did not provide a survey or other evidence showing that consumers associate the proposed mark with applicant.Applicant. It did not provide any evidence as to its sales, customers, or advertising, nor any evidence of intentional copying or unsolicited media coverage of the bottle design. And there was no evidence that Applicant has promoted the claimed features of its bottle design as a source identifier.

In short, because Applicant’s proposed mark is so similar to a number of third party alcoholic beverage bottles, we would require significantly more and higher quality evidence than we have here to find that the proposed mark has acquired distinctiveness. In the absence of such evidence, we find that Applicant has not established its alternative claim that the proposed mark has acquired distinctiveness.

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TTABlogger comment:It seems that the Board almost never accepts mere length of time as sufficient evidence of acquired distinctiveness.

Text Copyright John L. Welch 2020.