Foamation Inc.

Trademark Trial and Appeal Board

Sep 11, 2015

No. 85690391 (T.T.A.B. Sep. 11, 2015)

Mailed:
September 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Foamation Inc.
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Serial No. 85690391
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Lori S. Meddings and Laura M. Konkel of Michael Best & Friedrich LLP, for
Foamation Inc.

Renee Servance, Senior Attorney, Law Office 116 (Christine Cooper,
Managing Attorney).
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Before Quinn, Ritchie, and Masiello, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Foamation Inc., applicant herein (“Applicant”), seeks registration on the
Principal Register of the proposed mark shown below for “foam coasters;
insulating sleeve holders for beverage cans and bottles; foam storage
baskets,” in International Class 21; “headwear; hats; ties; ear muffs; belts,” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85690391
2
International Class 25; and “Christmas tree ornaments; flying discs; toy
bricks; balls for sports; footballs,” in International Class 28:1

The mark contains the following description:
The mark consists of the color yellow/gold and a pattern of pock
marks which are circular or oval-shaped depressions applied to
the entire surface of the goods in a manner evoking the
appearance of cheese.

The Trademark Examining Attorney who was originally assigned to
examine the application issued several refusals and requirements, which

1 Serial No. 85690391, filed on July 30, 2012 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1152(a), claiming May 1990 as the dates of first use and first use in
commerce for the goods in International Classes 21 and 28, and May 1987 as the
dates of first use and first use in commerce for the goods in International Class 25.
Ser. No. 85690391
3
were made final, and an appeal was filed on January 7, 2014. The case was
reassigned to the current Examining Attorney, who requested remand for
further examination on April 17, 2014, which was granted the same day.
After remand, the Examining Attorney issued a refusal on the ground that
the mark constitutes non-distinctive product design and constitutes the
configuration of the goods without a showing of acquired distinctiveness
pursuant to Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052,
1127.2 The Examining Attorney also issued requirements for:
1) a product configuration drawing that depicts Applicant’s mark in
the drawing to include broken or dotted lines to show the position of
the mark on goods or container, 37 CFR 2.52(b)(4);
2) an amended mark description that accurately describes the mark,
37 CFR 2.37; 2.52(b)(2) and (b)(4); and
3) an acceptable specimen of use, 37 CFR 2.63(b).

When the refusal and requirements were made final, the appeal was
resumed and Applicant filed its supplemental appeal brief. Both Applicant
and the Examining Attorney filed briefs, and Applicant filed a reply brief.
Product Design
Product design may not be registered without sufficient proof of acquired
distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros., 529 US 205, 209-210,
54 USPQ2d 1065, 1066 (2000). The Examining Attorney asserts that the
mark Applicant is attempting to register falls under this category, arguing
that what Applicant seeks to register is nondistinctive product design or

2 The Examining Attorney withdrew all prior refusals, including phantom mark
refusal under Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; multiple marks refusal
under Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127; ornamentation refusal under
Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052, 1127; and a request for information.
Ser. No. 85690391
4
nondistinctive features of product design “where the foam design shown in
the drawing creates the commercial impression that Applicant’s goods are
made of cheese.” 12 TTABVUE 4. In particular, the Examining Attorney
notes two rationales for finding the mark to constitute product design, first
that Applicant’s goods are “shaped like cheese,” and second that the mark has
the texture of cheese which “define[s] the overall configuration/shape of the
products.” 12 TTABVUE 8.
Applicant argues that the Examining Attorney misses the point on its
mark, arguing that
It is not the three-dimensional configuration of Applicant’s
products that creates the mark. It is strictly the surface color
and texture combination that creates the cheese appearance
consumer [sic] recognize and that Applicant seeks to register.
10 TTABVUE 5.

We agree with Applicant that its mark must be viewed as a mark
composed of a combination of color (yellow/gold) and texture (circular or oval
shaped depressions applied to the entire surface of the goods), as set forth in
the description thereof. The description states that this combination of color
and texture “evokes the appearance of cheese.” This refers not to the shape of
the goods, though, but to the color and texture of the surface of the goods,
regardless of the goods’ overall shape. Indeed Applicant’s specimens show
that some of its goods are shaped like cheese wedges (e.g., some of the hats
and beverage holders), while others have different overall shapes (e.g., a bow
tie, a basket, a star, a football):
Ser. No. 85690391
5

Ser. No. 85690391
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Nevertheless, it is equally clear that the color and texture form part of the
design and configuration of the product, as the texture necessarily affects, in
part, the shape of the goods and the manner in which consumers perceive the
goods. See Wal-Mart Stores, Inc. v. Samara Bros., 54 USPQ2d at 1068
(finding that “design, like color, is not inherently distinctive.”) and In re
Slokevage, 441 F3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006) (finding
product design consisted of specific features). In accordance with this
guidance and our analysis above, we find that Applicant’s mark is not
registrable without a showing of acquired distinctiveness.
Applicant, in its attempt to justify the registration of its proposed mark,
cites to a number of registrations for third-party marks, including various
Ser. No. 85690391
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texture marks, such as Louis Vuitton’s Registration No. 2263903 for the
mark shown below for various leather goods:

The registration describes the mark as follows:
The mark consists of a distinctive man-made textured pattern
utilized as a surface feature of applicant's variously configured
products. The pattern is displayed in contrasting shades of the
same color, the darker shade presented on the elevated portion
of the surface and the lighter shade serving as the background
or lower surface. The lining shown is a feature of the mark and
does not indicate specific color. No claim is made to the broken
lines which reflect the positioning of the mark. The drawing
shown in the application depicts a change purse.

As the Examining Attorney points out, this registration, as most of the
others, is registered with a Section 2(f) claim of acquired distinctiveness.3
Accordingly, this simply serves to support the Examining Attorney’s
argument that Applicant’s texture mark may be registered on the Principal
Register only with a claim of acquired distinctiveness. We agree.

3 Others are registered with either a Section 2(f) claim of acquired distinctiveness on
the Principal Register, or are registered on the Supplemental Register.
Ser. No. 85690391
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Applicant was given several opportunities to either claim acquired
distinctiveness or to amend to the Supplemental Register. It is untimely for
Applicant, on appeal, to state that “Only when the Board resolves this issue
and confirms that the applied-for design can function as a trademark can
Applicant demonstrate its distinctiveness.” 10 TTABVUE 13. It was
incumbent on Applicant to do this during the prosecution of its application.4
The Requirements
Based on our affirmance of the trade dress refusal, we find the
requirements to be apt. Trademark Rule 2.52(b)(4) provides, in relevant part:
(4) Broken lines to show placement. If necessary to
adequately depict the commercial impression of the
mark, the applicant may be required to submit a drawing that
shows the placement of the mark by surrounding the mark with
a proportionately accurate broken-line representation of the
particular goods, packaging, or advertising on which the mark
appears. … For any drawing using broken lines to indicate
placement of the mark, … the applicant must describe the mark
and explain the purpose of the broken lines.
37 C.F.R. § 2.52(b)(4) (emphasis added).

Applicant’s mark is sufficiently unconventional in nature that it was
reasonable of the Examining Attorney to require a drawing that shows the
placement of the mark on the goods (or at least on one of the goods), for the
purpose of clarifying for the USPTO and the public the nature of the mark to
be registered. The amendment of the drawing in this manner would have also

4 In this regard, Applicant also could have claimed acquired distinctiveness in the
alternative. TMEP § 1212.02(c) (2015); TBMP § 1215 (2015) (“[I]t is the applicant’s
responsibility to make clear that it is taking alternative positions.”). See, e.g., In re
Brouwerij Bosteels, 96 USPQ2d 1414, 1419 (TTAB 2010); In re Binion, 93 USPQ2d
1531, 1538 (TTAB 2009).
Ser. No. 85690391
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required a corresponding amendment to the description of the mark, as well
as a specimen that matches the drawing.
In particular, since we have found that Applicant’s mark constitutes
product trade dress, we affirm the requirements for 1) a drawing that shows
the placement of Applicant’s mark on the goods, with broken or dotted lines
to show the position of the mark on goods or container as required by 37 CFR
2.52(b)(4); 2) an amended mark description that accurately describes the
mark as applied to the goods, in accordance with 37 CFR 2.37 and 2.52(b)(2);
(b)(4); and 3) an accurate specimen of use that matches the drawing.
Hence, the requirements are all affirmed.
Decision: The refusal to register on the ground that Applicant’s mark
constitutes a nondistinctive product design that has not been shown to have
acquired distinctiveness is affirmed. The three requirements are also
affirmed, requiring: 1) a drawing that shows the placement of Applicant’s
mark on the goods, with broken or dotted lines to show the position of mark
on goods or container; 2) a corresponding amended mark description that
fully describes the mark and its position or placement on the goods; and 3) an
accurate specimen of use that matches the drawing.