3M Company

Trademark Trial and Appeal Board

Jun 21, 2012

No. 77701928re (T.T.A.B. Jun. 21, 2012)

Mailed: June 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 3M Company
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Request for Reconsideration

Serial No. 77701886
Serial No. 77701928
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Before Quinn, Grendel, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The Board, in a decision dated June 11, 2012, reversed
the Office’s refusal to register applicant’s proposed
marks, subject of the above-captioned applications, under
Section 2(e)(5) of the Trademark Act on the ground of
functionality, and reversed the refusal based on
applicant’s asserted failure to provide proper descriptions
of the marks. However, the Board affirmed the Office’s
refusal to register the marks on the ground that the marks
have not acquired distinctiveness and thus are not entitled
to registration under Section 2(f).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77701886 and 77701928
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Applicant has timely filed a request for
reconsideration of the Board’s affirmance of that refusal,
arguing that the Board “improperly made findings of facts
that appear to have overlooked the proper and detailed
[declaration]” submitted during prosecution and that the
Board “misapplied the appropriate authorities in
determining that applicant’s marks did not acquire
distinctiveness in the minds of consumers.” Req. for
Recon., p. 1. In the alternative, applicant requests the
Board remand the applications to the examining attorney for
consideration of a proposed amendment to the
identifications of goods to limit the field of use to “for
use in medical and healthcare fields.”
Applicant’s December 19, 2009 Response to Office Action
We turn first to applicant’s contention that the Board
did not properly construe applicant’s December 19, 2009
“Response to Office Action” as a declaration. Initially,
we reiterate that the factual assertions made in that
response were given consideration and applicant has not
been prejudiced in this regard. See Decision, p. 15 (“we
decide to accept and consider this information and
applicant’s attorney’s factual representations concerning
applicant’s advertising efforts and market share”). The
reasons for our view to not consider applicant’s December
Serial Nos. 77701886 and 77701928
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19, 2009 response to an Office action as a declaration are
explained in the original decision and need not be repeated
in this order. However, as a general matter, we further
point out that evidentiary declarations being submitted to
support arguments in a response to an Office action should
be filed separately from the response.1 A single document
containing applicant’s arguments and interspersed with
factual assertions, that purportedly are being made under
declaration based on the signer’s personal knowledge, is
inappropriate.
We also disagree with applicant’s assertion that
“[w]hile the Board did not ultimately exclude the evidence
on this [declaration versus non-declaration] basis, its
faulty procedural conclusion permeated its substantive
analysis of the evidence.” Req. for Recon., p. 4. To be
clear, the Board gave full and fair consideration to the
entire record.
Board’s Treatment of the Evidentiary Record
We now address points made by applicant in its
contention that the Board did not properly weigh or

1 Applicant’s argument that the Office’s electronic filing system
(TEAS) does not provide for a separate “declaration” submission
is not well taken. TEAS provides applicants with the ability to
attach copies of declarations and other evidentiary submissions
to the Response to an Office Action.

Serial Nos. 77701886 and 77701928
4
consider the totality of the evidence submitted in support
of applicant’s acquired distinctiveness claim.
Applicant argues that “it appears the Board treated
the applied-for marks as highly weak product designs that
were nearly incapable of functioning as source indicators
in its evaluation of whether the marks had acquired
distinctiveness.” (emphasis in original) Req. for Recon.,
p. 6. However, the Board clearly and consistently treated
the marks as configurations of containers for the
identified goods, and not as the goods themselves. This
distinction was not lost on the Board in the analysis when
weighing the evidence regarding acquired distinctiveness of
the marks.
Applicant asserts that its decision to file its
application under Section 2(f) somehow worked to its
detriment when the Board considered the evidence.
Applicant correctly notes that product packaging can be
inherently distinctive, but then goes on to argue that it
“was never given the opportunity to amend its applications
to withdraw its Section 2(f) claims because the Trademark
Office improperly took the position that the applied-for
marks were functional and as a result could never acquire
distinctiveness.” Req. for Recon., p. 8. We fail to see
the logic in this assertion. Applicant had many
Serial Nos. 77701886 and 77701928
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opportunities to argue that its mark was inherently
distinctive during the prosecution of the application,
including when it first filed the application, but it chose
not to do so. The Board has long held that when an
applicant initially seeks registration based on acquired
distinctiveness or amends its application to seek
registration based on acquired distinctiveness without
expressly reserving its right to argue in the alternative
that its mark is inherently distinctive, registration under
Section 2(f) is an admission that the mark is not
inherently distinctive. Yamaha International Corporation
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1005 (Fed. Cir. 1988); Kasco Corp. v. Southern Saw
Services, Inc., 27 USPQ2d 1501, 1506 n.7 (TTAB 1993) (“By
amending (without reservation) its application to claim
that its green wrapper had become distinctive of its saw
blades, [defendant] conceded that the green wrapper was not
inherently distinctive of its saw blades …. [W]hen
[defendant] amended its application to claim the benefits
of Section 2(f), it did not reserve its right to argue in
the alternative that its green wrapper was, from the
outset, inherently distinctive.”); see also In re Thomas
Nelson, 97 USPQ2d 1712 (TTAB 2011) and TMEP § 1212.02(c)
(7th ed. 2010). This law and practice was well settled
Serial Nos. 77701886 and 77701928
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prior to applicant’s filing of its application, and
applicant and its counsel can scarcely claim surprise about
the state of the law or that applicant was not asked by the
Office to reconsider its position for its own safety.
Based on the aforementioned precedent and the fact
that applicant has not claimed, in the alternative or
otherwise, that the marks are inherently distinctive, both
the examining attorney and the Board properly concluded
that applicant conceded that the marks are not inherently
distinctive. Under the law, any conclusion to the contrary
would have been inapposite.
Finally, applicant makes general and lengthy arguments
as to why it believes the Board did not properly weigh the
evidence in its favor and find that the marks have acquired
distinctiveness. In essence, applicant is rearguing the
record and points made in its appeal brief. The Board has
reconsidered the entire record and finds no error in the
ultimate determination that the applied-for marks have not
been shown to have acquired distinctiveness. Certain
evidentiary shortcomings are discussed in the original
decision and will not be repeated here.
Applicant’s Alternative Request to Remand Application
Applicant requests the Board remand the application to
the examining attorney to consider its proposed amendment
Serial Nos. 77701886 and 77701928
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to the identification of goods. Applicant correctly notes
that the examining attorney never raised the issue, but the
Board found the identification of goods to be “broadly
worded” such that it would include hand-sanitizing
antiseptics with moisturizers being used in various fields.
By way of the proposed amendment, applicant seeks to add
the limiting wording “for use in medical and healthcare
fields.” While we can appreciate applicant’s concern, it
has long been held that the Board is not necessarily bound
by the arguments made by the examining attorneys, but “may
rely on a different rationale.” TBMP Section 1217 (3rd ed.
rev. 2012); in particular, see authorities cited in
footnote 1.
Even if the Board were inclined to remand the
application to the examining attorney to consider the
proposed amendment (which we are not), applicant’s request
is impermissible. Trademark Rule 2.142(g) specifically
provides:
An application which has been considered and decided
on appeal will not be reopened except for the entry of
a disclaimer under section 6 of the Act of 1946 or
upon order of the Director, but a petition to the
Director to reopen an application will be considered
only upon a showing of sufficient cause for
consideration of any matter not already adjudicated.

In view thereof, applicant’s request to remand the
application is denied.
Serial Nos. 77701886 and 77701928
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Conclusion
After carefully considering applicant’s request, we
have determined that our conclusion that applicant has not
established that its marks have acquired distinctiveness is
not in error. Moreover, applicant’s request in the
alternative to amend its mark is impermissible. In view
thereof, applicant’s request for reconsideration of the
Board’s decision is denied, and the decision of May 10,
2012 stands.