AGPCH, S.A. de C.V.

Trademark Trial and Appeal Board

Apr 18, 2018

No. 87125518 (T.T.A.B. Apr. 18, 2018)

This Opinion Is Not a
Precedent of the TTAB

Mailed: April 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re AGPCH, S.A. de C.V.
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Serial No. 87125518
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John M. Murphy of Arochi Marroquin & Lindner SC
for AGPCH, S.A. de C.V.

Melissa S. Winter, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Lykos, Lynch, and Coggins,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background and Evidentiary Issues

AGPCH, S.A. de C.V. (“Applicant”) seeks registration on the Principal Register of
the product packaging mark shown below for “Mezcal” in International Class 33:
Serial No. 87125518
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The mark is described as follows: “The mark consists of the three-dimensional
configuration of the bottle in which the goods are sold. The bottle is gourd-shaped
with vertical ribs, and has a flared bottle ring with a horizontal ridge, a capsule
covering the neck and flaring down over the shoulders, and a spherical stopper.”1
The Examining Attorney refused registration under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127, on the ground that the proposed
mark constitutes nondistinctive packaging for the goods that is unregistrable on the
Principal Register absent sufficient proof of acquired distinctiveness under Section
2(f) of the Trademark Act. Applicant maintains that its proposed mark is inherently
distinctive. After the Examining Attorney made the refusal final, Applicant appealed.
Before turning to the merits, we address the Examining Attorney’s objection as to
the untimeliness of a variety of new evidence Applicant submitted for the first time
in its Appeal Brief. She objects to:
• screenshots from www.visualdictionaryonline.com showing three-dimensional
geometric shapes;

1 Application Serial No. 87125518 was filed August 3, 2016, based upon a declared intent to
use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
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• screenshots from the online version of the Merriam-Webster Dictionary (2017)
www.unabridged.merriam-webster.com showing the definitions of “basic” and
“geometric”;
• an excerpt from the North American Free Trade Agreement (“NAFTA”)
between the Governments of Canada, the United Mexican States and the
United States of America regarding tequila and mezcal;
• an excerpt from the Department of the Treasury’s Alcohol & Tobacco Tax &
Trade Bureau’s guide, The Beverage Alcohol Manual, discussing mandatory
labelling for distilled spirits;
• an excerpt from the Denominaciones de Origen’s Orgullo de Mexico and a
translation of that excerpt discussing the characteristics of tequila and mezcal;
and
• an excerpt from the book Viva ¡Tequila!—Cocktails, Cooking, and Other Agave
Adventures, discussing mezcal.
Under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d):
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
Accordingly, we sustain the Examining Attorney’s objection, and exclude the new
evidence. However, we will take judicial notice of the Merriam-Webster Dictionary
entries, the excerpt from NAFTA, and the excerpt from The Beverage Alcohol Manual
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because they consist of facts “not subject to reasonable dispute” that come from
“sources whose accuracy cannot reasonably be questioned.” Cf. Fed. R. Evid. 201(b).
See In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 n.10 (TTAB 2015). The remaining
new evidence identified by Applicant does not meet these criteria and therefore is
unsuitable for judicial notice.
II. Failure to Function as a Trademark

Section 45 of the Trademark Act defines a “trademark” in relevant part as “any
word, name, symbol, or device, or any combination thereof used by a person. . . to
identify and distinguish his or her goods . . . from those manufactured or sold by
others and to indicate the source of the goods, even if that source is unknown.”
15 U.S.C. § 1127. “The critical inquiry in determining whether a designation
functions as a mark is how the designation would be perceived by the relevant public.”
In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). “[A] mark is inherently
distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” Wal-Mart
Stores v. Samara Bros., 529 U.S. 205, 210 (2000) (quoting Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992)). Subject matter that is perceived as merely
decorative or ornamental does not identify source and thus fails to function as a mark.
A. Inherent Distinctiveness – Background
In, Wal-Mart, the Supreme Court explained that unlike product design, product
packaging may qualify as inherently distinctive. Wal-Mart, 529 U.S. at 210.
Nonetheless, “‘not every designation that is placed or used on or in connection with a
product necessarily functions . . . as a trademark for said product; not every
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designation adopted with the intention that it performs a trademark function and
even labeled as a trademark necessarily accomplishes that purpose . . . .’” In re
Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting Am. Velcro, Inc. v. Charles
Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); accord In re Bose Corp., 546
F.2d 893, 192 USPQ 213, 215 (CCPA 1976); In re Standard Oil Co., 275 F.2d 945, 125
USPQ 227, 229 (CCPA 1960). A proposed mark is inherently distinctive only “if it is
arbitrary and distinctive and if its principal function is to identify and distinguish
the source of the goods to which it is applied . . . .” See In re Soccer Sport Supply Co.,
507 F.2d 1400, 184 USPQ 345, 347 (CCPA 1975).
To assess the potential inherent distinctiveness of product packaging, we consider
the following factors set out in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977):2
• “whether the proposed mark is a ‘common’ basic shape or design;”
• “whether it [is] unique or unusual in a particular field;”
• whether it is “a commonly-adopted and well-known form of ornamentation for
a particular class of goods viewed by the public as a dress or ornamentation
for the goods” or “a mere refinement” thereof.
A particular factor may be dispositive as to the lack of inherent distinctiveness,
without the need for a showing under each factor. See In re Chippendales USA, Inc.,

2 Given the lack of wording in the mark and the absence of a specimen or other evidence of
use of the proposed mark with wording, we do not address “whether [the proposed mark is]
capable of creating a commercial impression distinct from the accompanying words.”
Seabrook Foods, 196 USPQ at 291.
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622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (in applying the Seabrook test,
holding that “[a] finding that any one of these factors is satisfied may render the mark
not inherently distinctive.”).
B. The Particular Field
As an initial matter, we define the relevant field in which to consider Applicant’s
packaging. Applicant cites In re Procter & Gamble Co., 105 USPQ2d 1119, 1125 n.12
(TTAB 2012) to argue that the relevant field in this case should be limited to “mezcal”
rather than “alcoholic beverages” or “beverages” more generally. In that case
involving trade dress for mouthwash, the Board found “the most reasonable category
that may be inferred from the market for the goods themselves” was mouthwash in
disposable containers. Id. The Board therefore deemed irrelevant bottles for perfume,
ketchup and salad dressing. Id.
The Examining Attorney clearly took a broader view of the scope of the relevant
field, although she referred to it in varying ways as “the liquor industry,” “the
alcoholic beverage industry,” and “the beverage industry as a whole.”3 Ultimately,
her brief proposes consideration of bottles of all types of alcoholic beverages as well
as other non-alcoholic beverages.4
The most reasonable category of goods to consider is not necessarily limited to the
specifically identified goods. In Chippendales, the Federal Circuit considered
inherent distinctiveness of a proposed costume mark in the “adult entertainment”

3 8 TTABVUE 3-6 (Examining Attorney’s Brief).
4 Id. at 6.
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field, and under Seabrook, compared the costume to a prior registered costume mark
for “establishments which feature food, drink and entertainment,” noting that “the
Board did not err in considering the mark to be within the relevant field of use.” Id.
at 1688. Also in Seabrook, the registration at issue (Reg. No. 819209) identified
specific frozen food items (not frozen fish) that the Court characterized as “frozen
prepared foods including a variety of frozen vegetables.” 196 USPQ at 291. The Court
looked to a mark in use for “frozen fish” as an indication that the registered mark “is
not unique in this field.” Id. See also In re Creative Beauty Innovations, Inc., 56
USPQ2d 1203, 1207 (TTAB 2000) (Board discussed bottles in the market for bath
products generally, whereas the identification of goods in the application referred to
specific products); In re Hoffman House Sauce Co., 137 USPQ 486 (TTAB 1963)
(comparing container for “meat, fowl, and fish sauces and salad dressings” to third
parties’ bottles used for “food products” generally to find no inherent distinctiveness).
This case law refutes Applicant’s contention that we must limit the relevant field to
mezcal. We therefore reject Applicant’s arguments that because tequila and mezcal
are distinct products that “taste different,” these products would not be considered
part of the same relevant field in which to assess Applicant’s bottle design.5
In this case, we find the distilled spirits market the most reasonable category of
goods for purposes of comparing packaging. Consumers tend to encounter many types
of liquors sold together in the same retail locations or through the same websites. For
example, the record includes evidence of the Liquor Barn (the name itself groups

5 6 TTABVUE 8-9 (Applicant’s Brief).
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liquors together) offering tequila, vodka, and whisky under the general menu option
for “Spirits.”6 The website of Total Wine includes a menu option for “Spirits” as a
general category, with separate menu options for the categories of “Wine” and “Beer.”7
These retailers group distilled spirits together in presenting them to consumers,
suggesting consumer exposure to various types of liquor bottles together in the retail
setting. By contrast, the record contains no evidence that all types of beverages are
sold together, and the market for beverages in general may be an overly broad
category. Because of age restrictions on the purchase of alcoholic beverages, the class
of consumers is not coextensive with that for beverages in general. Thus, we find the
most appropriate relevant market to be distilled spirits, and will consider Applicant’s
bottle shape in the field of liquor bottles generally.
C. Applying Seabrook
The Seabrook factors “‘are merely different ways to ask whether the design, shape
or combination of elements is so unique, unusual or unexpected in this market that
one can assume without proof that it will automatically be perceived by customers as
an indicator of origin.’” In re Frankish Ent., 113 USPQ2d 1964 (TTAB 2015) (quoting
J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 8:13
(4th ed. 2014)). The Examining Attorney asserts that liquor “is commonly packaged
in bottles that have an overall cylindrical shape that tapers at the top” and that the

6 TSDR February 17, 2017 Office Action at 4, 6, 8, 10 (theliquorbarn.com).
7 Id. at 15 (totalwine.com).
Serial No. 87125518
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other features of Applicant’s bottle are common in the field.8 Both the Examining
Attorney and Applicant submitted evidence of other bottle designs to provide
background on the relevant market for purposes of comparison to Applicant’s mark
. Examples of some of the liquor bottles from the record appear below.
9

8 8 TTABVUE 3 (Examining Attorney’s Brief).
9 TSDR February 17, 2017 Office Action at 4 (theliquorbarn.com) – tequila.
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10 11 12
We find that Applicant’s proposed mark cannot be considered unique or unusual
in the field, and constitutes a mere refinement of a commonly-adopted and well-
known form of ornamentation for liquor bottles. The first third-party tequila bottle
shown above, Casa Cofradia Reposado has an overall design almost identical to
Applicant’s “gourd-shaped” bottle with a spherical stopper and what Applicant
calls a “capsule” that spreads down over the neck of the bottle. The next three bottles,

10 TSDR November 26, 2013 Office Action at 7 (tastings.com) – mezcal.
11 TSDR February 17, 2017 Office Action at 2 (bleustorm.com) – vodka.
12 Id. at 7 (orchidliqueurs.com) – mango liqueur.
Serial No. 87125518
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for mezcal, vodka and liqueur, further show the prevalence of
bottles with an hourglass shape similar to that of Applicant’s bottle, and two of these
have rounded stoppers similar to Applicant’s.13 The proportions of the Mexcalia
mezcal bottle (left image above) make it appear more short and stout, while the
BleuStorm (middle image above) and the Orchid (right image above) bottles are more
elongated, but all three show that bottles with curves at the bottom and toward the
top are found in the field. Like Applicant’s bottle and the Casa Cofradia Reposado
bottle, other third-party liquor bottles in the record also have spherical stoppers,
indicating that this is not a unique or unusual feature.14 Similarly, there are third-
party bottles in the record featuring vertical ribs.15 Many of the bottles in the record,
including those shown above, contain neck rings and capsules.16 While Applicant

13 The Gaviota Anejo tequila bottle, id. at 5 (zeetequila.com) also exhibits an overall similar
design, although its trade dress more specifically creates the impression of the female form.
Nonetheless, the curves at the top and bottom of the bottle resemble Applicant’s, and the
Gaviota Anejo bottle has a spherical stopper, a bottle ring with a horizontal ridge, and a
capsule that spreads over the neck.
14 Id. at Office Action at 9 (abc.virginia.gov); id. at 10-13 (theliquorbarn.com).
15 TSDR February 17, 2017 Office Action at 3 (abc.virginia.gov); id. at 10 (theliquorbarn.com).
16 E.g., TSDR February 17, 2017 Office Action at 7 (orchidliqueurs.com); id. at 9
(abc.virginia.gov); id. at 5 (zeetequila.com). The capsules on the Illegal Mezcal bottle and the
Mezcal Joven bottle, January 13, 2017 Response to Office Action at 20-21, both appear to
have the effect of dripping wax, which is how Applicant describes its capsule, 6 TTABVUE 8-
9, and displayed on the drawing.
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correctly notes that some like the Casa Cofradia Reposado may lack a horizontal ridge
(although several bottles such as Orchid do have the horizontal ridge), and the
capsules are not flared in exactly the same way as Applicant’s, we find these
differences to be mere minimal refinements of common designs, rather than
significant differences from them. See, e.g., In re Brouwerij Bosteels, 96 USPQ2d 1414,
1421-22 (TTAB 2010) (finding that product packaging trade dress in the nature of a
beer glass and stand with wording and scrollwork would be perceived as a mere
refinement of a commonly known glass and stand rather than an inherently
distinctive indicator of source for the goods); In re File, 48 USPQ2d 1363, 1367 (TTAB
1998) (stating that novel tubular lights used in connection with bowling alley services
would be perceived by customers as “simply a refinement of the commonplace
decorative or ornamental lighting . . . and would not be inherently regarded as a
source indicator.”).
Applicant contends that the Examining Attorney has failed to meet her
evidentiary burden, but we disagree. The Examining Attorney need not show
multiple absolutely identical bottle designs in the industry. Even if Applicant
currently is the only user of this exact combination of features, this fact alone does
not imbue the design with source-indicating significance. Applicant’s design merely
combines a common bottle shape with other ordinary features in a relatively
unremarkable way. As stated in E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB
1992):
If the concept of inherent distinctiveness was defined as
meaning simply “one and only,” then one could obtain a
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registration for a design which, while “unique” in this
sense, differed only slightly from the designs of other
competing products and/or containers. There would be no
need that the applied-for design have an “original,
distinctive and peculiar appearance” ….
In In re Mars, 105 USPQ2d 1859, 1869-70 (TTAB 2013), the Board held a pet food
container not inherently distinctive despite the applicant’s argument that no other
pet food containers contained the alleged “combination of unique features.” Instead,
the Board held that the container lacked inherent distinctiveness because other
containers “share many of the same features,” and the applicant’s container
“resembles many metal cans used in the pet food field, and is almost identical to
some.” Id. at 1871. Thus, although an “applicant’s applied for design may be unique
in the sense that it is a ‘one and only,’” it is not inherently distinctive if “the record
demonstrates that said design is not unique in the sense it has an ‘original,
distinctive, and peculiar appearance.’” E S Robbins, 30 USPQ2d at 1542 (quoting In
re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960) and Ex parte Haig
& Haig Ltd., 118 USPQ 229 (Comm’r Pat. 1958)); see also In re J. Kinderman & Sons
Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) (“while the designs [of packaging for lights]
applicant seeks to register may be unique in the sense that we have no evidence that
anyone else is using designs which are identical to them, they are nonetheless not
inherently distinctive”). See In re Fantasia Distrib., Inc., 120 USPQ2d 1137,
1141 (TTAB 2016) (“Even if Applicant currently is the only user of a diamond pattern
on e-hookahs, this fact alone does not imbue the design with source-indicating
significance....”).
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Applicant relies heavily on two Board precedents involving bottle designs, Procter
& Gamble and In re Creative Beauty Innovations Inc., 56 USPQ2d 1203 (TTAB 2000),
but these cases are readily distinguishable. First, those records presented a different
landscape of third-party evidence from the relevant industry. Procter & Gamble, 105
USPQ2d at 1125 (finding design unique “[w]hen one compares this design with all
the other alternatives available in the field”); Creative Beauty, 56 USPQ2d at 1207
(“The examining attorney has not made of record any other container design that
includes both concave and convex sides.”). Second, both cases included evidence that
the applied-for designs won awards for their uniqueness and design innovation.
Procter & Gamble, 105 USPQ2d at 1124; Creative Beauty, 56 USPQ2d at 1207. Third,
in Procter & Gamble, the record also included testimony about the efforts to build
source recognition around a unique bottle design, and evidence that the design
received media recognition. Procter & Gamble, 105 USPQ2d at 1124. Similarly, the
Creative Beauty record included an article about the applicant’s “attention-getting
package” and statements from others in the industry about the unique and striking
design. Creative Beauty, 56 USPQ2d at 1207-08. In this case, Applicant submitted no
such evidence of awards or recognition, and instead relies only on its bare contention
that the design it intends to use is unique in the field. See In re File, 48 USPQ2d at
1366 (“the record is completely devoid of evidence that anyone other than applicant
regards [its proposed trade dress mark] as a service mark”).
We find that Applicant’s bottle design gives its product an attractive appearance,
and that consumers would not be predisposed to view this relatively commonplace
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decorative bottle design as source-indicating. See In re Chippendales USA, 96
USPQ2d at 1685 (citation omitted) (“the focus of the [inherent distinctiveness]
inquiry is whether or not the trade dress is of such a design that a buyer will
immediately rely on it to differentiate the product from those of competing
manufacturers; if so, it is inherently distinctive”). Ultimately, we find Applicant’s
bottle design a commonly-adopted and well-known form in the industry, and the
slight differences from third-party bottles merely refine the common design in
unremarkable ways or with other common bottle features.
Thus, under the second and third Seabrook factors, Applicant’s proposed mark is
not inherently distinctive. We therefore need not reach an analysis under the first
factor. See Chippendales USA, Inc., 96 USPQ2d at 1684.
Decision: We affirm the refusal to register under Sections 1, 2 and 45 of the
Trademark Act on the ground that Applicant’s proposed mark is not inherently
distinctive, but is nondistinctive product packaging.