Ball Corp.

Trademark Trial and Appeal Board

Mar 2, 2000

No. 75092220 (T.T.A.B. Mar. 2, 2000)

Paper No. 23
RLS/MM
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB MARCH 2, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ball Corporation
________
Application Serial No. 75/092,220
_______
Sabrina C. Stavish of Sheridan Ross PC for Ball
Corporation.
Amos Thomas Matthews, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Simms, Hairston and McLeod, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Ball Corporation (applicant), an Indiana corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the asserted mark (shown
below) for metal tops for liquid containers.1

1 Application Serial No. 75/092,220, filed April 22, 1996.
During the course of prosecution of this case, applicant filed an
amendment to allege use on March 19, 1997, claiming dates of use
since October 10, 1996.
Ser. No. 75/092,220
2
During prosecution, applicant sought to amend its mark and
the description of the mark. The proposed amended mark is
shown below.
The proposed amended description states: “The mark
consists of a circular elevated ridge on the top of a
liquid container.”
The Examining Attorney has refused to enter the
amendment to the mark, arguing that the proposed amendment
deletes features of the mark which were previously claimed
and that the new mark in effect creates a different
commercial impression from the originally claimed mark.
Ser. No. 75/092,220
3
That is to say, the Examining Attorney contends that the
circular elevated ridge is only a portion of the top of
applicant’s containers and that the amended mark is a
material alteration of the originally claimed mark,
requiring republication (if the original had been
published) in order to fairly present the mark for purposes
of opposition. Applicant, on the other hand, contends that
the amendment only seeks to disclaim rights in functional
aspects which had appeared in solid lines in the original
drawing.
With respect to this preliminary matter, we agree with
the Examining Attorney that the proposed amended mark
presents a mark with a different commercial impression from
that originally claimed -- a larger circular ridge and a
smaller more elevated circular ridge with all portions of
the metal top from the larger circular ridge being claimed.
See Trademark Rule 2.72(a) and TMEP § 807.14(a). See also
Visa International Service Association v. Life-Code
Systems, Inc., 220 USPQ 740 (TTAB 1983). Accordingly, we
must analyze the issues in this case on the basis of the
originally submitted drawing and the mark shown thereon.
We hasten to add, however, that we would reach the same
results with respect to functionality and inherent
distinctiveness were we to allow the amendment.
Ser. No. 75/092,220
4
Turning now to the main grounds of refusal, the
Examining Attorney has refused registration on the ground
that the asserted mark is de jure functional2 and on the
ground that the asserted mark, even if not de jure
functional, lacks inherent distinctiveness. Applicant and
the Examining Attorney have submitted briefs and an oral
hearing was requested. However, applicant’s attorney later
withdrew that request.
Functionality
The Examining Attorney argues that applicant’s design
is dictated by the function it performs. Referring to
applicant’s own promotional literature and various articles
made of record from the Nexis computer search system, the
Examining Attorney argues that the features of applicant’s
metal tops are functional in nature. The Examining
Attorney points to the fact that the opening in applicant’s
metal lids is larger than most so that one using
applicant’s container has a bottle-like drinking
experience. The rounded edges around the push-down top
allow consumers to open the cans without cutting their
fingers, the Examining Attorney contends. Also, the

2 After this appeal was filed, Congress amended the Lanham Act by
making functionality an explicit ground for refusal of an
application, as well as a ground for cancellation of a
registration. See Section 2(e)(5) and Pub. L. 105-330, 112 Stat.
3064 (Oct. 30, 1998).
Ser. No. 75/092,220
5
Examining Attorney argues that applicant’s goods
incorporate a cheaper method of manufacturing because the
push-down top provides cost advantages since less material
is used in making applicant’s metal tops. The Examining
Attorney relies upon the following excerpts from printed
publications in support of these arguments:
…White Cap offers a new sports cap that simply
twists open, with no cap or neck seal. And Ball-
Foster’s “Touch Top” can end touts its lip-
friendly edge.
Beverage World, March 1997
* * * * * *
A bit less challenging than the completely shaped
can, yet no less distinct, is the new Touch Top
can from Ball. According to the company’s
Fisher, Ball first introduced this throw-back to
the cone-top can at last year’s Cannex show in
Denver.
Beverage World, June 1996
* * * * * *
For Ball Container, the long-awaited Touch Top
could be the key to taking cans into the next
century. The Touch Top, scheduled to begin test
marketing this month is a different can end that
provides consumers with “a very bottle-like
experience,” says Jim Fisher, director of
marketing for Ball’s Metal Beverage Container
Group.
Beverage Industry, February 1996
* * * * * *
Yet there are some underlying commonalties [sic]
to many of the more successful new packages. One
is “gulpability” –- or the ability for the
consumer to drink beverages faster, which
presumably leads to a more frequent purchase
Ser. No. 75/092,220
6
pattern –- through a larger or more accessible
container opening. Several suppliers put their
own spin on this development…
Ball Corporation’s Metal Beverage Container Group
(Bloomfield, CO) has combined form and function
in its two latest packaging breakthroughs –- the
Touch Top bottle-like opening and the 8-ounce
SlimCan…
Beverage World, December 1994
* * * * * *
The Muncie-based manufacturer last week showed
off a new can prototype. The top of the can
rises in the center. To open, the can is pushed
open at the top…
The company says if the market goes for the idea,
the new can would be cheaper to make. That’s
because less metal would be needed (thanks to
dispensing with the pull top) and the design
means a lower quality of aluminum could be used…
Ball has been developing Touch Top for more than
a year. The design is based on a patent held by
a former employee of a company Ball acquired in
1969…
Ball says Touch Top could appeal to consumers
because liquid pours faster.
Would finger cuts occur when a Touch Top is
opened? Ball says a smooth edge would prevent
any such mishap…
GRAPHIC: PHOTO; PUSHY PRODUCT: Muncie-based
Ball Corp. is hoping its new push-top beverage
can is accepted by the sport-drink market, saying
it’s easier to use and cheaper to produce…
The Indianapolis Star, November 3, 1994
* * * * * *
Ball has moved the can opening to a slightly
raised, round crater in the center of the can
lid. Ball claims that the design gives aluminum
Ser. No. 75/092,220
7
and steel cans the “same drinking characteristics
as glass bottles” –- corporate-speak for easier
chugging. Ball says the Touch Top is also safer
than existing cans because there is a rounded lip
instead of an edge when the metal seal is pushed
inward with a fingertip. And after it is open,
the seal remains attached to the can by a small,
unscored section of the opening that acts as a
tiny hinge.
…[Ball] is marketing Touch Top as a way its
customers can differentiate their packaging from
competitors, but the design also has
manufacturing benefits. Ball estimates that it
could set up a full-scale Touch Top production
line for about $5 million, half the cost of a
line making pull-tab tops.
Ball says Touch Tops will also save money by
using less metal. If everything pans out as Ball
hopes, other can manufacturers would eventually
have to take a license.
The New York Times, October 30, 1994
* * * * * *
Unlike pull tabs, the Touch Top has a dish-like
depression from which a small cone rises. At the
top of the cone is a flat, circular tab that is
recessed slightly…
Ball’s design was spurred chiefly by desires to
cut manufacturing costs and to come up with a way
that lets products stand out.
The new top is made of just one piece of metal.
The pull tab has three.
Ball estimates it would cost 50 percent less to
build a Touch Top production line, said Ball
spokesman Scott McCarty.
Not only does the new top require less metal, but
there is no need to make the folded tab…
Bosshard said carbonated drinks are under
considerable pressure and thinks the lid might be
Ser. No. 75/092,220
8
too stiff. Others worry that they could get
their fingers stuck or cut in the can.
Ball counters that the circle is smaller than
most thumbs and that it would take some doing to
jam a thumb into the can. Even if you did, the
inside of the neck is thick and rounded. “You
can’t cut yourself,” said McCarty.
Other benefits, according to Ball, are reduced
chance of accidental opening, easier opening in
the dark and “comfortable mouth feel.” There is
no problem with vending machines as long as cans
are stacked properly, Ball officials claim.
The Indianapolis News, October 26, 1994.
The Examining Attorney has also pointed to statements
made in applicant’s own promotional literature:
This is not your father’s beverage can end.
Touch TopTM practically screams “Try me!” to
consumers looking to cool down fast with their
favorite beverage. Touch Top offers a bottle-
like drinking experience with all the benefits of
a can. Did we mention it was fun?
* * * * * *
UNIQUE
How many other beverage and food products out
there come packaged with a handy center-push end?
Touch TopTM stands out on grocery shelves. Its
cone-shaped end opens easily and hinges downward,
with absolutely no sharp edges. Touch Top
attracts attention. ‘Nuff said.
FLEXIBLE
Would you like Touch Top’s center opening larger?
Smaller? We can do that, too. It’s also no
problem to fill Touch Top cans (it requires
minimal line changes) and Touch Top even vends
easily! The only rigid thing about Touch Top is
its ability to seal the can just like SOT [Stay-
On-Tab] ends. That’s just part of the package.
Ser. No. 75/092,220
9
The Touch Top® end offers a distinct look for your
product and a fast-flowing drinking experience
for consumers.
* * * * * *
Many of the new ends feature wider can openings
for faster pour rates and promise enhanced safety
features.
Ball’s Touch Top center-push end is another way
for customers to differentiate products. The
distinctive-looking end offers consumers a
bottle-like drinking experience from a can with
no sharp edges.
(From “advantage”, Issue 1)
An article which applicant has made of record further
indicates:
It’s also easier on facial hair than the
conventional pull tab that snags a few whiskers
from time to time.
The Muncie Star, October 30, 1994
The Examining Attorney concludes that the degree of
utility in applicant’s configuration is great enough that
the design is a superior one which others need to copy.
Also, the fact that there are alternatives, according to
the Examining Attorney, does not detract from the
functional characteristics of applicant’s configuration.
Applicant, on the other hand, argues that the evidence
of record is directed to the center-push opening portion of
the can lid, which may have functional aspects such as no
sharp edges and, because it has no pull-tab, may reduce
Ser. No. 75/092,220
10
costs by cutting the material needed to open the can.
However, applicant asserts that there is no design or
utility patent covering applicant’s configuration,3 that
applicant’s advertisements and promotional literature do
not tout the utilitarian advantages of the elevated portion
of its metal lids and that the design does not result from
a cheap method of manufacturing but rather results in
additional design and manufacturing costs. Applicant’s
attorney states that the raised portion of the can lid
actually uses more metal than the typical flat lid.
Applicant also maintains that traditional flat-top can lids
are available alternatives which have been manufactured and
sold for decades and are equally efficient and less costly
to produce. Applicant relies, among other things, upon the
following article:
“Everyone is groping for something,” says Greg
Robinson, senior development engineer. “We are
in a very mature business where innovation and
differentiation is everything right now.”
“The world is getting tired of the same old
container,” says Howard Chasteen, also a senior
development engineer.

3 While applicant’s attorney has denied that there are any
patents covering applicant’s container, the material of record,
including some of which the Examining Attorney has introduced,
indicates that a patent was held by a former employee of a
company which applicant acquired. However, the Examining
Attorney has not disputed applicant’s attorney’s statement that
there is no patent covering the design sought to be registered.
Ser. No. 75/092,220
11
Chasteen has played a key role in the development
of an innovative packaging change, Ball’s new
Touch Top™ end for metal beverage cans (see
sidebar on page 14)…
Unique packaging such as shaped cans, Ball’s
Touch Top™ end and textured cans offer Ball’s
customers an opportunity to stand out on grocery
shelves. Part of Ball’s mission as a technology
leader is to continue to explore new packaging
concepts.
…An even more difficult task may be determining
whether Ball’s customers -- and consumers -— are
willing to pay for a shaped can, which at least
initially will cost a little more, says Otis
Willoughby, principal engineer.
“Most innovations carry an initial cost, whether
it’s in price, line speed or convenience,” he
says. “Are customers willing to pay for the
learning curve?”
…One example is the Touch Top end mentioned
earlier. By creating a new end that doesn’t
include a tab, Ball can eliminate the tab
process, as well as the weight of the tab,
Chasteen notes.
The Muncie Star, October 30, 1994
A configuration which is so utilitarian as to
constitute a superior design, which competitors need to
copy in order to compete effectively, is de jure functional
and unregistrable. However, the mere fact that a product
configuration has utility does not necessarily mean that
the configuration is unregistrable, because registrability
depends upon the degree of design utility. In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15 (CCPA
1982). See also In re R.M. Smith, Inc., 734 F.2d 1482, 222
Ser. No. 75/092,220
12
USPQ 1, 3 (Fed. Cir. 1984). If a product is in a
particular shape because it works better in that shape, the
configuration is considered de jure functional. Factors
which are to be considered in the determination of whether
a particular product design is superior include (1) the
existence of a utility patent that discloses utilitarian
advantages of the design, (2) advertising materials in
which the utilitarian advantages of the design are touted,
(3) the availability to competitors of alternative designs,
and (4) facts indicating that the design results from a
comparatively simple or cheap method of manufacturing a
product. See In re Morton-Norwich Products, Inc., supra.
In this case, it is clear that, not only do
applicant’s advertising materials tout some of the
utilitarian advantages of applicant’s container top, but
also other evidence of record indicates that applicant’s
design results from a comparatively simple or cheap method
of manufacture. Applicant’s design provides a larger, more
accessible opening in the container top so as to allow a
bottle-like drinking experience. This design permits one
to drink the contents of the container faster. The
circular opening in applicant’s container top is elevated
so that it is convenient to use. Moreover, the smooth and
Ser. No. 75/092,220
13
rounded edges shown around the top of applicant’s container
prevent cuts to the fingers and lips.
Despite counsel’s arguments to the contrary, there is
sufficient evidence of record (statements from applicant’s
own officers) that applicant’s container top is, in the
long run, cheaper to manufacture. The top requires less
material –- one piece of metal rather than three –- and
applicant’s design permits the manufacturer to use a lower
quality of aluminum. Also, a production line making
applicant’s containers costs about one-half of the
production line cost in making pull-tab tops.
We agree with the Examining Attorney that the fact
that a container top can be produced in other shapes does
not detract from the functional characteristics of
applicant’s can top. Applicant’s is clearly one of a few
superior designs. See In re Bose Corp., 772 F.2d 866, 227
USPQ 1, 6 (Fed. Cir. 1985) and In re Controls Corp. of
America, 46 USPQ2d 1308 (TTAB 1998). Accordingly, we
conclude that applicant’s container top design is a
superior design because it performs the function better in
this shape. It is therefore de jure functional.
For the sake of completeness, in case our decision
with respect to functionality is reversed on appeal, we
consider the question of whether, if applicant’s design
Ser. No. 75/092,220
14
were not de jure functional, it would be inherently
distinctive.
Inherent Distinctiveness
Concerning the issue of inherent distinctiveness,
applicant argues that the elevated portion of its metal lid
is adopted and promoted for its distinctive appearance.
Also, applicant’s attorney states that applicant is not
aware of similar can top designs in use by competitors, and
that applicant’s promotional literature as well as other
material of record clearly points to the container lid’s
distinguishing features. For example, applicant’s attorney
refers to the following statements made in applicant’s own
material:
Ball’s Touch Top center push end is another way
for customers to differentiate the product…
…stands out on grocery shelves…
…attracts attention…
The Touch TopTM end offers a distinct look for your
product…
Applicant’s attorney also points to the following
statements from an article about applicant:
Chasteen [one of applicant’s senior development
engineers] has played a key role in the
development of an innovative packaging change,
Ball’s new Touch TopTM end for metal beverage
cans…
The Muncie Star, Oct. 30, 1994.
Ser. No. 75/092,220
15
Applicant concludes that the asserted mark was adopted for
show and not as a useful product design.
The Examining Attorney, on the other hand, contends
that applicant’s design is only a mere refinement of a
bottle top opening.
In determining whether a design is inherently
distinctive, our primary reviewing court has considered
such factors as whether a particular design is a common or
basic shape or design, whether it is unique or unusual in
its field, and whether it has an “original, distinctive,
and peculiar appearance.” Seabrook Foods, Inc. v. Bar-Well
Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)
and In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140
(CCPA 1960).
Upon careful consideration of the material in this
record, including repeated references by applicant and
others to the “distinct” and “uniquely shaped” appearance
of applicant’s container top, it is our opinion that the
Examining Attorney has not demonstrated that applicant’s
configuration is a common basic shape or design. Rather,
in the absence of evidence to the contrary, such as
competitors’ similar container top designs, it appears that
applicant’s container top design is original, distinctive
and peculiar in appearance.
Ser. No. 75/092,220
16
Decision: The refusal of registration on the ground
of functionality is affirmed; the refusal of registration
on the ground of lack of inherent distinctiveness (if the
affirmance on the basis of functionality is reversed on
appeal) is reversed.
R. L. Simms
P. T. Hairston
L. K. McLeod
Administrative, Trademark
Judges, Trademark Trial and
Appeal Board