Arlington Specialties, Inc.

Trademark Trial and Appeal Board

Feb 21, 2017

No. 85851833 (T.T.A.B. Feb. 21, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 21, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Arlington Specialties, Inc.
_____
Serial Nos. 85851794 and 85851833
_____

Jami A. Gekas of Foley & Lardner LLP,
for Arlington Specialties, Inc.

Thomas M. Manor, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____
Before Zervas, Wellington and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Arlington Specialties, Inc. (“Applicant”) has filed the following two applications
seeking registration on the Principal Register for trade dress marks for goods
Serial Nos. 85851794 and 85851833
- 2 -
(specified below) that can be generally characterized as kits containing personal
care items:1
1. Application Serial No. 85851794 (‘794) for the following mark:
.
The mark is described in the application as follows:
The mark consists of a three-dimensional configuration for packaging
featuring a transparent, cuboid outer box through which a soft,
structured inner pouch is visible, the inner pouch having a rounded
cuboid shape with distinctive folded and tucked corners, a zipper running
from the midpoint of one side of the pouch horizontally along the length
of the top of the pouch to the midpoint of the second side of the pouch,
and a pull tab on the zipper. The zipper and the pull tab on the zipper are
presented in broken lines and is/are not claimed as a feature of the mark.
Color is not claimed as a feature of the mark.

Applicant entered a disclaimer of “the transparent, cuboid outer box portion of
the packaging.”
2. Application Serial No. 85851833 (‘833) for the following mark:

1 Applicant is also owner of a related third application (Serial No. 85851792) that was also
subject of an appeal and consolidated with the involved appeals. However, the appeal
involving this application was dismissed as moot by the Board because the Examining
Attorney withdrew the refusal and approved that application for publication. See 23
TTABVUE in the appeal docket for that application.
Serial Nos. 85851794 and 85851833
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The mark is described in the application as follows:
The mark consists of a three-dimensional configuration for packaging
featuring a soft, structured pouch having a rounded cuboid shape with
distinctive folded and tucked corners, a zipper running from the midpoint
of one side of the pouch horizontally along the length of the top of the
pouch to the midpoint of the second side of the pouch, and a pull tab on
the zipper. The zipper and the pull tab on the zipper are presented in
broken lines and is/are not claimed as a feature of the mark. Color is not
claimed as a feature of the mark.
Both applications were filed on February 13, 2013, and are based on an
allegation of first use anywhere and in commerce on July 31, 2008, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
The identified goods in Application ‘794 are:
Kits containing an assortment of products of benefit to women, namely,
nail polish, nail polish remover wipe being pre-moistened cosmetic wipes,
emery board, lip balm, replacement backings for earrings, hair elastics,
sewing kit comprised of needle, thread and extra buttons, double-sided
tape, namely, adhesive tape for clothing and household use, stain
removing preparations for use on clothing, disposable wipes impregnated
with deodorant, pain relief medication, tampon, breath freshener, safety
pins, adhesive bandages and dental floss in International Class 3.

Application ‘833 covers the same goods as well as the following additional kits
(also in International Class 3):
Serial Nos. 85851794 and 85851833
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Kits containing an assortment of products of benefit to girls, namely,
hairspray, glitter nail polish, emery board, lip balm, hair elastics,
barrettes, facial tissues, breath freshener, replacement backings for
earrings, adhesive bandages and emergency information card.

The assigned Examining Attorney has finally refused registration of each
mark on the alternative grounds that the mark is a non-inherently distinctive
configuration of product packaging or of the goods themselves, and that the
mark has not acquired distinctiveness.2 However, in his brief, the Examining
Attorney expressly withdrew the non-distinctive product design refusal with
respect to the proposed mark in Application ‘833.3
Applicant concurrently filed appeals and requests for reconsideration of the
refusals which the Examining Attorney denied.
The appeals have been consolidated pursuant to the Board’s June 2, 2016
order4 and have been fully briefed.
Although the applied-for marks involve several common issues, we address
them individually. Indeed, we keep in mind that in spite of the appeals being
consolidated, Applicant is ultimately seeking protection on an individual basis

2 See Office Actions issued on November 28, 2014 in each application file. The Examining
Attorney also made final a requirement to withdraw a disclaimer in each application;
however, this requirement was later withdrawn (see Office Actions issued on June 22,
2015), and the disclaimers remain of record.
3 See 17 TTABVUE 4 (“Serial number 85/851833 the Non-Distinctive Configuration of
Goods Refusal is withdrawn”) and Id. at 8 (in identifying the issues on appeal, “For
application serial number 85/851833 whether Applicant’s intended mark has acquired
distinctiveness pursuant to Trademark Act Section 2(f), sufficient to overcome the Non-
distinctive Configuration of Product Packaging as Design Final Refusal.”) Unless otherwise
specified, all TTABVUE citations in this decision correlate to the docket of Application ‘794.
4 16 TTABVUE.
Serial Nos. 85851794 and 85851833
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for the two different marks and we must consider their registrability apart
from one another.
Application ‘794: Packaging Trade Dress
As noted, the Examining Attorney ultimately refused registration of the
proposed trade dress mark in Application ‘794, depicted below again, on the two
grounds: that it comprises non-distinctive packaging design and that it is non-
distinctive product design, under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§
1051-1052, 1127, to support both refusals.

Specifically, the Examining Attorney asserted in the final Office Action that the
outer clear box portion of the mark “consists of a non-distinctive configuration of
packaging for the goods” and “the small pouch portion appearing in the applied-for
mark consists of a nondistinctive product design or nondistinctive features of a
product design.”5 The Examining Attorney contends that, because the proposed
mark lacks distinctiveness, it “would not be perceived as indicia of source of the
goods.”6

5 Office action issued on November 28, 2014.
6 Id.
Serial Nos. 85851794 and 85851833
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In essence, the Examining Attorney sets forth two different refusals, each
applying to a different portion of the mark. As he explained in the final Office
Action:
In this instance the Applicant’s combination of two non-distinctive
elements, namely, a soft pouch and clear box does not serve to transform
Applicant’s goods into an inherently distinctive mark. Merely because
Applicant may be the first to combine these two elements in their product
does not render the combination a distinctive indicia of source, because
the consumer would merely see the outer box as a container to protect
and display for sale the soft pouch containing the remainder of the “kit”
goods. As previously stated, the inner pouch serves the utilitarian
purpose of being part and parcel of the goods being offered. In this
instance the consumer would perceive one or more of the literal elements
and concurrent designs, as are present in the specimens of record and
evidence present in Applicant’s response to Office action, as indicia of the
source of Applicant’s goods, not the product and/or product packaging.

Applicant, on the other hand, asserts that both the pouch and the outer box are
“unquestionably product packaging.”7 Relying on the declaration of its founder,
Applicant describes the proposed mark as follows:8
[T]he inner Minimergency Pouch is a container to hold the actual
product, namely, the various personal care items that combine to make
up a ‘personal care kit,’ while the outer clear box is merely a container
that makes packaging and display easier on retail shelves. Together, the
trade dress is similar to other types of containers which may be protected
as packaging trade dress, such as a lip balm container, a lipstick case, or
a perfume bottle, many of which may also be enclosed in a clear,
protective outer display box on store shelves.

Applicant further argues that the mark is inherently distinctive; but in the event
that it is found not to be inherently distinctive, Applicant claims it has submitted

7 13 TTABVUE 6; Applicant’s appeal brief.
8 Id. at 7-8, referencing declaration of Georgette Kaplan attached to Applicant’s April 11,
2014 response. As Ms. Kaplan explains, and evidenced throughout the prosecution,
Applicant uses “Minimergency” as one of its word marks for the identified goods. Kaplan
decl. ¶ 6.
Serial Nos. 85851794 and 85851833
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sufficient evidence demonstrating the mark has acquired distinctiveness and is thus
registrable under Section 2(f). The Examining Attorney has rejected this argument
and contends the evidence does not support a finding that the mark has acquired
distinctiveness.
Section 45 of the Trademark Act, in relevant part, defines a “trademark,” 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. A trade dress mark, including product packaging and product design,
has long been recognized as being eligible for registration so long as it is distinctive.
Section 2 of the Trademark Act, 15 U.S.C. § 1052; Wal-Mart Stores Inc. v. Samara
Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1067 (2000). “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).
In light of the Examining Attorney’s refusal to registration being based on both
product design and product packaging, and Applicant’s argument that its proposed
mark consists solely of product packaging, we must first make a determination
regarding the type of trade dress present. Making this decision is not without
ramifications for product design trade dress can never be inherently distinctive and
may only be registered upon a showing of acquired distinctiveness. Wal-Mart, 54
USPQ2d at 1068-1070. As the Supreme Court explained, "[c]onsumers are aware ...
Serial Nos. 85851794 and 85851833
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that, almost invariably, even the most unusual of product designs -- such as a
cocktail shaker shaped like a penguin -- is intended not to identify the source, but to
render the product itself more useful or appealing." Id. at 1069. On the other hand,
a mark comprising product packaging trade dress may be inherently distinctive.
("The attribution of inherent distinctiveness to certain . . . product packaging
derives from the fact that the very purpose of . . . encasing [a product] in a
distinctive packaging, is most often to identify the source of the product"). Id. at
1068. In identifying the type of trade dress present here, we keep in mind the
Court’s instruction that "courts should err on the side of caution and classify
ambiguous trade dress as product design, thereby requiring secondary meaning."
Id. at 1070; see also, In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir.
2006).
We find that the mark in Application ‘794 consists of packaging design, and not
product design. More specifically, we agree with Applicant’s characterization of its
mark as:9
the inner [pouch] is a container to hold the actual product, namely, the
various personal care items that combine to make up a “personal care
kit,” while the outer clear box is merely a container that makes packaging
and display easier on retail shelves.

[Bold and italics in original].
We do not simply rely on Applicant’s argument. Rather, our determination that
the mark qualifies as packaging, and not product design, is consistent with how the
mark is specifically described in the application, namely, as a “configuration for

9 13 TTABVUE 6.
Serial Nos. 85851794 and 85851833
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packaging featuring a transparent, cuboid outer box through which a soft,
structured inner pouch is visible,” and remains consistent with the disclaimer
pertaining to the “outer box portion of the packaging.” (Emphasis added). At no
point during the prosecution did the Examining Attorney attempt to correct this
description of the mark nor did he suggest that the description be amended to
describe the pouch as a configuration of the identified goods or product design. To
the contrary, on at least one occasion, the Examining Attorney conceded that
“Applicant’s entire mark is non-distinctive product packaging.”10 To be sure, the
goods identified in the Application are not depicted in the mark. That is, the
identified goods are “kits containing an assortment of products of benefit to women,
namely, nail polish, nail polish remover wipe … [and various other toiletry or
personal items]” and none of these goods are depicted in the mark.
Bearing in mind that Applicant has disclaimed the outer clear box portion, the
focus in Applicant’s applied-for mark is on the design of the pouch that serves as a
“container for the goods.” Nevertheless, our analysis regarding Applicant’s mark in
this decision must be based on how it will be perceived in its entirety and the fact
that it comprises packaging within packaging or, as Applicant labels it, “a double
packaging design.”11
1. Whether Applicant’s Proposed Trade Dress Is Inherently Distinctive

10 See Office Action issued on October 11, 2013 (in “Withdraw of Prior Disclaimer Statement
Requirement” section).
11 26 TTABVUE 10.
Serial Nos. 85851794 and 85851833
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We accordingly treat the mark as packaging or, more precisely, as ‘packaging
within packaging’; accordingly, we first consider Applicant’s contention that the
proposed mark is inherently distinctive. In order for it to be so, it must possess an
“intrinsic nature [that] serves to identify a particular source.’” Wal-Mart, 54
USPQ2d at 1068 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23
USPQ2d 1081, 1083 (1992)). Applicant and the Examining Attorney both
acknowledged in their briefs, as do we, that the relevant factors for determining any
inherent distinctiveness in a proposed design mark were set forth in Seabrook
Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (CCPA
1977). These factors (known as “the Seabrook factors”) involve the questions of
whether the design is:
1. a "common" basic shape or design?

2. unique or unusual in a particular field?

3. a mere refinement of 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?

4. capable of creating a commercial impression distinct from the
accompanying words?

Id. at 291.
In applying the Seabrook factors to the mark at hand and based on the record
before us, we conclude that it is not inherently distinctive. The Examining Attorney
attached printouts from numerous websites showing very similarly-designed
pouches (or bags) that can be used for housing toiletry or cosmetic goods like those
Serial Nos. 85851794 and 85851833
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described in Applicant’s kits, as well as evidence of clear boxes used in packaging.12
This evidence includes the following excerpts from various websites offering very
similar, if not identical, containers used for personal care items, such as cosmetics
or toiletry goods:

[from the www.nordstrom.com website; the “Pinch Provisions” goods are Applicant’s
goods, whereas the Longchamp, Tory Burch, Kate Spade and Trish McEvoy branded
goods are not];13

[from the www.norstrom.com website];14

12 Attached to Office actions issued on October 11, 2013, and May 6, 2015, and November
28, 2014.
13 Attached to Office action issued on October 11, 2013.
14 Id.
Serial Nos. 85851794 and 85851833
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[from the www.stephaniejohnson.com website];15

15 Id.
Serial Nos. 85851794 and 85851833
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[from Google website “shopping” search results for “original dopp kit”];16

[from the www.potterybarn.com website];17 and

16 Id.
17 Id.
Serial Nos. 85851794 and 85851833
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[from the www.polyvore.com website].18
The evidence includes bags or pouches available in smaller or “mini” sizes:

18 Id.
Serial Nos. 85851794 and 85851833
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[from the www.hudsonbleeker.com website];19

[from the www.staples.com website].20
Although Applicant disclaimed exclusive use of the clear box packaging portion
of the mark, the Examining Attorney attached evidence to show that using this type
of packaging to display products is not uncommon. For example:

[from the www.dhgate.com website, offering similar boxes to “display cosmetic,
snack, car models, etc.”];21

19 Attached to Office action issued on May 6, 2014.
20 Id.
21 Attached to Office action issued on October 11, 2013.
Serial Nos. 85851794 and 85851833
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[from Google website “images” results for search of term “clear box packaging”];22

[from the packaging manufacture “Transparent Packaging” website
(www.tpackaging.com) that touts its “expertise in designing and manufacturing
clear plastic folding cartons and boxes … suited for any product in virtually
unlimited configurations”];23

22 Attached to Office action issued on May 6, 2014.
23 Id.
Serial Nos. 85851794 and 85851833
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[from another packaging manufacturer’s website, www.hlpklearfold.com].

With respect to the first two Seabrook factors, the evidence establishes that
Applicant’s pouch design is a common shape and is hardly unique or unusual in the
field of cosmetic and toiletry bags. Indeed several of those depicted above are nearly
indistinguishable from Applicant’s pouch. One website in particular, the Stephanie
Johnson website (www.stephaniejohnson.com) allows customers to “shop by shape”
for bags and cases, including a “MINI pouch” shape that is nearly identical to
Applicant’s pouch design. This helps show that this is a recognized and common
design.
Applicant attempts to explain the features that it believes makes its trade dress
inherently distinctive:
Serial Nos. 85851794 and 85851833
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The [pouch], which is the dominant portion of the trade dress, is both
rounded and cube-like, soft yet structured, and it has distinctive and
unique folded and tucked corners. The smooth, rounded edges, tucked
and folded corners, lack of piping and placement of the zipper give the
[pouch] a clean, modern look.
We disagree with Applicant’s position that the attributes it describes are unique.
The evidence submitted by the Examining Attorney shows that there are numerous
third-party bags, or pouches, that are used for the same purpose as Applicant’s
packaging, namely to hold cosmetic and toiletry items, that have the same exact
features that Applicant asserts are distinctive. Many of the “mini Dopp kits,” shown
above, have a zipper running down the middle-top of the pouch, as well as having
smooth, rounded edges, tucked and folded corners, and lack of piping.
Applicant attempts to distinguish its packaging from the third-party use of the
same-shaped pouch by arguing:24
It is not the size per se that is distinctive, but rather the overall
appearance of a diminutive or shrunken product that catches the
attention. In the same way that a perfume bottle may catch attention by
resembling an actual flower, the Minimergency Pouch packaging—which
is a temporary container for an assortment of tiny women’s products that
are meant to be used up and discarded—intentionally resembles
something it is not, namely, a dopp kit, which is a sturdy, long-lasting
piece of travel luggage intended for men.

Applicant thus freely admits that its packaging design is intended to resemble a
“Dopp kit.”25 Although Applicant further argues that the size of the pouch or

24 13 TTABVUE 9.
25 A dopp kit is described as a “small toilet bag, made of leather, vinyl, or cloth, that is used
for storing men’s grooming tools for travel.” The name derives from a German immigrant
who invented a toiletry case. From Wikipedia (www.wikipedia.com), printout attached to
Serial Nos. 85851794 and 85851833
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packaging is not necessarily a distinctive attribute of its proposed trade dress,
Applicant makes the seemingly contradictory argument that consumers will
perceive its pouch design as a “diminutive or shrunken” version of a dopp kit. We
find this argument flawed for the very simple reason that there is no size restriction
with respect to Applicant’s proposed mark. That is, Applicant has applied for and is
seeking exclusive rights in a packaging trade dress mark, namely a pouch within a
clear plastic box, without any limitation as to the size of the packaging. As a result,
any registration of the proposed mark would not reflect that the packaging is
intended to intimate a “diminutive or shrunken” version of a dopp kit; rather,
Applicant would be conferred rights in a packaging design that could include a full-
size, dopp kit-styled bag within a clear outer box. In any event, as the above
evidence shows, dopp kits and other very-similarly designed types of toiletry or
cosmetic bags may be found in smaller sizers, including “mini Dopp kits.” For
purposes of considering whether Applicant’s proposed trade dress is distinctive, or
has acquired distinctiveness, we must assume that the packaging can include the
same size as other similarly-designed pouches, cosmetic bags, dopp kits, etc.

October 11, 2013 Office action. A photograph from this website depicts the dopp kit as
follows:
.
Serial Nos. 85851794 and 85851833
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Applicant argues strongly that the Examining Attorney’s evidence, although it
shows extensive third-party use of similarly-designed cosmetic and toiletry bags or
dopp kits, is irrelevant because the goods being depicted are sold empty and should
not be compared to Applicant’s kits, which contain a variety of cosmetic and toiletry
items. Instead, Applicant contends that the only probative examples of third-party
packaging should be for goods where cosmetic and toiletry goods are being sold
together as a kit or package. Applicant asserts that packaging for what it considers
are the same goods is visually distinguishable from its proposed trade dress. Some
examples include the following internet printouts, submitted by the Examining
Attorney, showing third-party goods advertised as kits containing “essential” or
“emergency” items in a single kit:26

26 Attached to Office Action dated October 11, 2013. The Examining Attorney did attach a
printout depicting a “Minor Incident Kit” with a Home Depot logo on the front that appears
to be identical in design to Applicant’s trade dress. However, these goods were available
through a “microsite” directed to Home Depot employees and “the manufacturer of this
product has changed its packaging following receipt of a ‘cease-and-desist’ letter sent by
[Applicant’s] attorneys.” Kaplan Declaration (paragraph 74), attached to Applicant’s
response filed April 11, 2014.
Serial Nos. 85851794 and 85851833
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Applicant, too, submitted examples of what it calls “women’s essential kits,”
including:27

With respect to the examples of cosmetic and toiletry bags or dopp kits that do
bear a strong resemblance to Applicant’s pouches, Applicant cites a Board decision
involving trade dress in explaining why it should not be considered probative in this
proceeding:
[Applicant’s pouch design] is a unique form of packaging for use in the
field of personal care kits, and … the Examining Attorney’s evidence
of cosmetic bags and “dopp” style bags sold empty is irrelevant, pursuant
to the Board’s precedential In re The Proctor & Gamble Company (“P&G”)
opinion. 105 USPQ2d 1119, 2012 WL 6064533, n.12 (TTAB 2012) (the
relevant market for determining uniqueness of a bottle and cap for
mouthwash was limited to containers for mouthwash products; designs of
bottles for containing and dispensing liquids in other fields (e.g.,
perfume, ketchup, salad dressings), as well as the configuration of goods
sold empty, which could then be filled with the type of product sold by the
applicant, were completely ‘irrelevant’ to the inquiry).
[Bold in original].28
In the case cited by Applicant, the Proctor & Gamble decision, the Board was
determining the distinctiveness of an applicant’s trade dress consisting of a

27 Attached to Kaplan Declaration (paragraphs 56-68).
28 26 TTABVUE 10-11.
Serial Nos. 85851794 and 85851833
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mouthwash bottle and, in a footnote, discussed the value of evidence showing
similarly-shaped, crystal decanters that were empty but could be filled with liquids,
including mouthwash. In re The Proctor & Gamble Co., 105 USPQ2d 1119, 1126 n.
12 (TTAB 2012). The Board ultimately did not find this evidence probative
reasoning that there should be “some showing of a substantiality of the link”
between the market for empty decanters and that for mouthwash, and “we do not
view the mere availability of empty crystal decanters … as a sufficient factual
predicate for considering such decanters here.” Id.
The evidentiary circumstances in this case are different and, in accordance with
the type of showing contemplated in the Proctor & Gamble decision, we find a
strong link between the market for Applicant’s kits containing cosmetic and toiletry
items with the market for cosmetic bags, toiletry bags or dopp kits, in spite of the
fact that the latter goods are being sold empty. As the record reveals, all of these
goods are often marketed to a female audience, particularly a younger consumer
who has an eye on fashion. The Examining Attorney’s evidence shows cosmetic and
toiletry bags, as well as certain dopp kits, are sometimes presented with a designer
motif or displayed for fashion conscious consumers. Applicant’s kits are also
regarded as fashion accessories and may be found in national retail outlets, such as
Sephora, BHLDN, Apricot Lane Boutique, Francesca’s, etc., who carry a range of
women’s fashion accessories, including cosmetic and toiletry bags sold empty.29
Bloggers who specialize in beauty and fashion products, like those mentioned by

29 See, respectively, Kaplan Declaration (paragraph 27), Exhibits 2, 3, and 7, all attached to
Applicant’s response filed on April 11, 2014.
Serial Nos. 85851794 and 85851833
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Applicant’s founder,30 are likely to discuss Applicant’s goods as well as any other
fashionable cosmetic or toiletry bag that is sold without additional cosmetic or
personal items. The more obvious and, perhaps significant link is that the cosmetic
and toiletry bags, as well as dopp kits, are specifically designed to hold most, if not
all, of the same types of goods found in Applicant’s kits. That is, Applicant’s goods
are kits containing certain cosmetic and toiletry items that are normally placed in
either cosmetic bags (e.g., “nail polish, nail polish remover wipe being pre-moistened
cosmetic wipes”) or toiletry bags and dopp kits (e.g., “emery board, lip balm … pain
relief medication, tampon, breath freshener, … adhesive bandages and dental
floss”). Put simply, the pouch portion of Applicant’s proposed mark is performing
the same purpose as a cosmetic bag or toiletry bag or dopp kit. Accordingly, the
evidence of various third-party cosmetic bags, toiletry bags, and dopp kits is
considered and relevant in our determination of whether Applicant’s proposed trade
dress is unique or distinctive.
As to the latter two Seabrook factors, involving whether the packaging design is
a mere refinement of a commonly-adopted and well-known form of ornamentation
for a particular class of goods or if it is capable of creating a commercial impression
distinct from the accompanying words, there is very little to indicate that it is
inherently distinctive. Although the record does not demonstrate that Applicant’s
mark is merely a refined version of competitor trade dress, we find no demonstrated
reason why consumers would perceive Applicant’s packaging design as anything

30 Kaplan Declaration (paragraph 42-44).
Serial Nos. 85851794 and 85851833
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other than merely a dopp kit-shaped container for cosmetic and toiletry items
within a clear plastic box packaging. The circumstances here are unlike those where
we found an Applicant’s trade dress “stands alone in the quality and quantity of its
distinctive traits which set it apart from [competitors’ trade dress].” Cf. In re
Frankish Enterprises Ltd., 113 USPQ2d 1964, 1971 (TTAB 2015) (applicant's
monster truck trade dress was “cut and molded to convey the body of a dinosaur and
adorned with other dinosaur elements, including horns, a protective shield and eyes
bordered by scales” and this made it very different from competitors). Likewise, we
find that Applicant’s packaging design is not capable of creating a distinct
commercial impression apart from the word mark placed on the packaging. Again,
in contrast to Frankish Enterprises, we do not have a situation where the design
“predominates” over the word mark. Id. Applicant’s goods are presented in the
following manner:31

We see no reason why a consumer viewing this product packaging would
perceive it as having a distinct commercial impression or would otherwise initially

31 Specimen, submitted by Applicant with the application, as filed on February 15, 2013.
Serial Nos. 85851794 and 85851833
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view the packaging as indicating the source of the goods. Rather, it is the word
mark(s) with designs and logos that “predominate” and will be, at least initially,
relied upon for identifying the source of the goods.
Ultimately, as discussed above with respect to the Seabrook factors and the
record before us, we find that Applicant’s packaging, as shown in Application ‘794,
is not inherently distinctive. Applicant’s product packaging does not possess the
necessary intrinsic nature that serves to identify a particular source. Wal-Mart, 54
USPQ2d at 1068.
2. Whether Applicant’s Proposed Trade Dress Has Acquired
Distinctiveness

We now turn to Applicant’s alternative claim that its product packaging design
has acquired distinctiveness and is thus registrable under Section 2(f). The burden
of proof is on Applicant. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988) (applicant “seeking to register
its configurations/designs under Section 2(f), [bears] the burden of establishing
acquired distinctiveness in ex parte proceedings before the PTO”); see also Van
Valkenburgh, 97 USPQ2d at 1765 (product design features registrable only with a
showing of acquired distinctiveness). As explained in In re Ennco Display Systems
Inc., 56 USPQ2d 1279, 1284 (TTAB 2000):
To establish acquired distinctiveness, applicant must show that the
primary significance of the product configurations in the minds of
consumers is not the product but the producer. Acquired distinctiveness
may be shown by direct and/or circumstantial evidence. Direct evidence
includes actual testimony, declarations or surveys of consumers as to
their state of mind. Circumstantial evidence, on the other hand, is
evidence from which consumer association might be inferred, such as
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years of use, extensive amount of sales and advertising, and any similar
evidence showing wide exposure of the mark to consumers. See 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
Sections 15:30, 15:61, 15:66 and 15:70 (4th ed. 1999).

The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of each case and particularly on the nature of
the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823,
829, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126
USPQ 381, 383 (CCPA 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB
1985). Typically, more evidence is required when a proposed mark is shown to be in
use by others. Cf., In re Bongrain Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727,
1729 (Fed. Cir. 1990) (more evidence required to establish acquired distinctiveness
for a word mark because it is so highly descriptive and purchasers are less likely to
believe that it indicates source in any one party); Alcatraz Media, Inc. v. Chesapeake
Marine Tours Inc., 107 USPQ2d 1750, 1767 (TTAB 2013); In re Seaman & Assocs.,
Inc., 1 USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221
USPQ 917, 919 (TTAB 1984).
In support of its alternative claim of acquired distinctiveness of the pouch
packaging within the clear box packaging, Applicant relies extensively on the
declaration of Georgette Kaplan, one of its founders, and the exhibits thereto.32
Some of the salient factual averments made by Ms. Kaplan include:
• Applicant has been using applied-for trade dress since 2008;

32 Attached to Applicant’s response filed on April 11, 2014 (as “Exhibit 1”).
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• At that time, “only two other companies were selling kits of items for women
… on a national scale” and Applicant was the first “to use fabric pouches as
packaging for portable care kits for women.”

• To date [of declaration, on April 10, 2014], “over one million kits have been
sold in the [applied for trade dress]” and that figure is expected to double “in
the next 12-18 months”;

• Applicant’s kits “for women and girls range in MSRP from $14 to $16.”

• Since 2008, Applicant’s revenue has increased “approximately 600%” and has
“at least double-digit growth for five years straight,” with a “significant
portion of this due to sales of [Applicant’s goods with the applied-for trade
dress”;

• Applicant’s “Pinch Provisions” website, www.pinchprovisions.com, “garners
millions of page views per year”;

• The kits are sold “in a variety of fashion colors and finishes,” but the applied-
for trade dress remains “consistent”;

• Applicant’s proposed trade dress has “remained consistent before, during,
and after [Applicant’s] rebranding process,” namely, changing its labels in
2010 and 2012, and the trade dress “enabled customers to identify our
products through the re-branding process”;

• Applicant’s kits are “an established and market-leading product,” available
for purchase “in over 3,000 retail locations including Sephora, J.Crew,
Nordstrom, The Container Store, Francesca’s Collections …” and are “also
carried in a wide range of retail channels, such as hotels, airports, museums,
hospital gift shops, salons, spas, and independent boutiques across the
country”;

• In Sephora, Applicant’s goods bearing its applied-for trade dress have been
“located in the store’s ‘Beauty-to-Go’ section near the checkout for going on
four years” (a photograph is attached as an exhibit) and this resulted in “every
single paying Sephora customer [waited] in front of or walked past”
Applicant’s kits prior to checkout;

• In J.Crew, Applicant’s goods are displayed for sale in a manner similar to
Sephora;

• Since 2013, Applicant has “received over 1,400 formal vendor applications”
and has been “approached by an additional 40 leading retail outlets” seeking
to carry Applicant’s trade dress goods;
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• Applicant’s website, www.pinchprovisions.com, “garners millions of page
views per year”;

• Applicant “has spent more than half a million dollars in advertising,
marketing, and promotion over the past three years alone,” including
attendance at trade shows as well as “promotion and distribution via retail
stores, online, in-store and through social media”;

• Applicant works with “public relations firms to promote the [goods] through
national, regional, and local media outlets, be they in print, online, or on
television”;

• Applicant’s advertising includes “ads like the following, which direct
consumers to look for [Applicant’s applied-for dress features]:

• Applicant won an industry award from Graphic Design USA magazine for its
applied-for trade dress and the trade dress has mentioned in articles on “The
Dieline” and in “Beauty Packaging” magazine;

• Applicant’s proposed trade dress has been “featured in coverage of
[Applicant’s goods] in dozens of magazines and has appeared on popular,
national television shows such as The View, The Today Show, Good Morning
America, CBS Morning, Regis and Kelly, and the Rachel Ray Show. It has
“appeared” in magazines, such as Better Home & Gardens, Good
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Housekeeping, Cosmopolitan, Marie Claire, etc., and in the New York
Times;33

• Applicant’s goods, bearing the proposed trade dress, have been featured in
social media circles, which Ms. Kaplan stated she is familiar with, whereby
presenters highlight various fashion products. This includes the presentation
of Applicant’s trade dress goods in outlets like YouTube, Twitter, and
Instagram. This includes comments indicating that “customers recognized the
product and correctly noted that the [Applicant’s goods are] available for
purchase at Francesca’s Collections, Henri Bendel, Sephora, and
Nordstrom”;34

• Applicant’s trade dress receives unsolicited attention, including customer
reviews, and has “appeared in an estimated 400 blog mentions since July
2012”;

• In 2013, Applicant, through its attorneys, has sent “a half dozen [cease-and-
desist] letters to various manufacturers and distributors of competitive
products using copycat pouch packaging, and in each instance, the recipient of
the letter stopped using the confusingly similar packaging”; and

• Applicant has initiated civil action against “infringers” of its trade dress and
“has obtained favorable settlements” resulting in discontinued use of the
packaging.

In addition to the Kaplan declaration and accompanying exhibits, Applicant
submitted the declarations, also with accompanying exhibits, of the following
individuals who have knowledge of Applicant’s goods:
• Rachel Weisse, Merchandise Assistant at BHLDN (described as an “online
retailer” with “brick-and-mortar stores” in various cities, but also as “a
wedding brand from … lifestyle retailer Anthropologie” that sells a “curated,
edited selection of gifts”);35

33 Printouts of from the magazines (Exhibit F) and a partial printout from the New York
Times (Exhibit G) were attached to the Kaplan Declaration.
34 Specifically, Ms. Kaplan references screenshot printouts (Exhibit I).
35 Attached to Applicant’s response filed on April 11, 2014 (as “Exhibit 2”).
Serial Nos. 85851794 and 85851833
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• Amanda Wulff, Corporate Buyer at Apricot Lane Boutique, a “women’s
boutique that specializes in apparel, shoes, accessories, and gifts,” with “123
current and planned … stores in 33 states”;36

• Alexzndra Louras, Associate Manager of the Merchandising Team at
Birchbox, an “online discovery platform that helps consumers explore new and
exciting beauty, fashion and lifestyle products from top brands”;37

• Doria Murphy, a freelance makeup artist, copywriter and founder/editor of
BeautyPopStop, a “makeup artistry and beauty review blog”;38

• Lisa Smith, a buyer for The Container Store, a national retail chain that
“provides storage and organization solutions”;39 and

• Liz Tharp, a Gift Buyer in 2010-2013 for Francesca’s Collections, a national
boutique retail chain featuring accessories, gifts and clothing for women.40

Each of these declarants avers to the popularity of Applicant’s goods with
consumers and the uniqueness of Applicant’s packaging. In addition, each states to
differing degrees her ability to recognize Applicant’s goods based on the packaging
design and/or the attraction of consumers to the packaging. For example, Ms.
Weisse states:
I definitely identify the shape and details of the [Applicant’s] packaging
with Pinch. The size, weight, construction, the placement of the gold
zipper. Even how it darts at the edges, too. That's what I would recognize
first, at a distance: the shape and the construction of the pouch. That's
how I would immediately know that the product is from Pinch. …
[Applicant’s] packaging stands out. Compared to other beauty emergency
kits, [Applicant’s] pouch is more current. It's much cleaner. It's pretty, it's
cute, it's very feminine. Competitor products can be kind of tacky.

Ms. Wulff avers:

36 Id., Exhibit 3.
37 Id., Exhibit 4.
38 Id., Exhibit 5.
39 Id., Exhibit 6.
40 Id., Exhibit 7.
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I would recognize [Applicant’s] pouch as originating from Applicant if it
did not have any labels or wording on it. The style, size, width and design
of the pouch would help me recognize it. The outside clear box is also very
distinctive. … The Pinch Provisions pouch and the outside clear box are
unique in the industry.

Ms. Louras states that Birchbox has presented Applicant’s kits without any
labeling, but Birchbox “knew many consumers would recognize the product even
without the outer branding, because they would recognize the pouch packaging used
by Applicant.” She also avers that “consumers frequently call out the packaging
specifically in their reviews” and “have specifically approved of the ‘cute, girlie
packaging,’ ‘cute design,’ and ‘adorable pouch.’” Ms. Murphy, a blogger, finds the
packaging “is so attractive, cute and different.” Ms. Smith states that she “cannot
recall any of the other personal essential kits being presented in a pouch and clear
outer box similar to [Applicant’s packaging].” Finally, Ms. Tharp avers that she
thinks Applicant’s packaging is “unique” because of “the combination of the pouch
and acetate box. The acetate box signals Pinch Provisions as the source of the kit
and signals that the product is, in fact, a kit. I am not aware of any other kits that
come in a clear box with a visible pouch.”
The record created by Applicant, including materials that are not specifically
mentioned above, is not insubstantial; nevertheless, we find that it does not
demonstrate that the applied-for trade dress has acquired distinctiveness. At best,
the evidence shows that consumers might recognize Applicant’s goods because the
pouches are compact or ‘cute.’ Applicant’s advertising (“When You See This Perfect
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Little Pouch”) indicates an attempt to make this association,41 and statements from
the declarants, as well as unsolicited comments from consumers, help corroborate
the significance of the size of the pouch. The problem, however, and as mentioned
previously, is that even to the extent that the size of the pouch has become a
distinctive feature, this is not an attribute of Applicant’s trade dress as it is
described in the Application (nor is size evident from the mark shown in the
drawing). And there is no evidence that the trade dress elements identified in
Applicant’s applied-for mark perform any source-identifying function.
With respect to the proposed trade dress feature involving the placement of the
pouch packaging within a clear outer box packaging, the totality of evidence does
not support a finding that this feature (which is reflected in the Application) has
acquired distinctiveness. Although a few of the declarants comment on the
‘packaging within packaging’ feature, there appears to be little if any mention of
this feature from consumers discussing Applicant’s goods or its packaging. We
acknowledge that Applicant promoted the feature in at least one advertisement
(“look for the Pinch Perfect pouch in the clear box”); however, there is insufficient
evidence to find that consumers have become accustomed to viewing Applicant’s
proposed ‘packaging within packaging’ trade dress as anything more than merely
packaging.

41 Applicant did not submit additional evidence to show the extent of this “look for”
advertising or what portion of Applicant’s advertising budget (“half a million dollars in
advertising, marketing, and promotion over the past three years”) was allocated to
advertising that highlights what Applicant believes are unique attributes of its proposed
trade dress mark. Moreover, without any basis for comparison, it is difficult to gauge the
significance, if any, that Applicant’s advertising expenditures for the last three years
should play in our determination as to the distinctiveness of the proposed trade dress.
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Application ‘794 -- Conclusion
In sum, we find that Applicant’s proposed packaging trade dress, as described
and shown in Application ‘794, is neither inherently distinctive nor has it acquired
distinctiveness. The evidence as a whole does not demonstrate that Applicant’s
packaging, as applied for, has unique features that consumers would perceive as
source-identifying. In making these conclusions, we keep in mind the near identity
of Applicant’s pouch design with that of a dopp kit and the ubiquity of third-party
cosmetic and toiletry bags with that same design. As a result, the evidentiary
burden for showing that the pouch is unique in the field of containers for cosmetics
or toiletry goods is certainly elevated.
Application ‘833: Product Packaging Trade Dress
The Examining Attorney refused registration of the proposed mark in
Application ‘833, depicted below again, on the sole ground that it comprises non-
distinctive packaging design:
.
As is evident, the configuration of Applicant’s packaging is merely the pouch and
is identical to the pouch within the outer clear box in Application ‘794. Thus, many
of the considerations and factors, already discussed, hold true with respect to this
Serial Nos. 85851794 and 85851833
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proposed trade dress. Moreover, the evidentiary record created with respect to this
application is nearly identical with no substantial difference.
Indeed, for reasons already outlined, we find that Applicant’s pouch design is
neither inherently distinctive nor has it acquired distinctiveness. Consumers
viewing this packaging configuration in the context of personal care kits containing
toiletry and cosmetic items, will perceive it as merely another dopp kit-styled bag or
container used for holding these items. There is no real distinguishing
characteristic between Applicant’s proposed trade dress and many of the third-party
goods shown in the Examining Attorney’s evidence. Applicant’s attempt to prove
that its packaging has acquired distinctiveness based on it being a “cute” or
miniaturized version of a dopp kit fails because, again, the applied-for trade dress in
Application ‘833 has no size attribute. Although there is evidence to support
Applicant’s argument that individuals are able to recognize its goods based on the
size of the packaging, the stated distinguishing attributes are not reflected in the
Application. We reiterate that, if Applicant’s proposed mark were to register,
Applicant would then be accorded exclusive rights in that packaging design,
regardless of size, and thus entitled to enforce the mark against competitors who
seek to sell any full-size, dopp kit-styled bag containing toiletry or cosmetic items.
Decision: The refusals to register Applicant’s marks, as applied for in both
Applications ‘794 and ‘833, are affirmed because the proposed marks are non-
distinctive product packaging.