Interpage International, Inc.

Trademark Trial and Appeal Board

Jun 6, 2019

87346100 (T.T.A.B. Jun. 6, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Interpage International, Inc.
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Serial No. 87346100
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Charles H. Knull of Knull PC,
for Interpage International, Inc.
Christopher M. Nunley, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Cataldo, Wellington, and Shaw,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Interpage International, Inc. (“Applicant”) seeks registration on the Principal
Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the following
package configuration mark:

Serial No. 87346100
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for “canned fish; tinned fish” in International Class 29.1 The mark is described in the
application as follows:
The mark consists of a three dimensional trade dress design of a package
of the Applicant’s goods. The three dimensional product packaging is in the
shape of a cylinder. The top of the product packaging is a transparent
circle, represented by vertical lines, through which the product is seen. The
solid portions represent opaque areas.

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), on the ground that
Applicant’s mark consists of “matter that, as a whole, is functional.” Specifically, the
Examining Attorney asserts that “the transparent portion of the packaging serves a
functional and utilitarian purpose, namely, allowing consumers to view or inspect the
goods.”2 The Examining Attorney also refused registration, in the alternative, on the
ground that if the applied-for mark is ultimately determined to capable of functioning
as a trademark, Applicant has not provided sufficient support for its claim that the
proposed mark has acquired distinctiveness, under Section 2(f) of the Act.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the appeal resumed. We reverse the refusal to register on the basis that the proposed
mark is functional, but affirm the alternative refusal on the ground that Applicant
has not made a sufficient showing to support its acquired distinctiveness claim.

1 Application Serial No. 87346100 filed February 22, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
anywhere and in commerce on December 1, 2012. Applicant amended the application to seek
registration pursuant to Section 2(f) in its March 17, 2018 response to an Office Action.
2 (Final) Office Action issued on April 9, 2018, TSDR p. 1.
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I. Functionality
Section 2(e)(5) of the Trademark Act provides that registration of a mark may be
denied if it “comprises any matter that, as a whole, is functional.” Generally, a
product or package design is considered to be functional “if it is essential to the use
or purpose of the article or if it affects the cost or quality of the article.” TrafFix
Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001)
(citations omitted); see also, In re Mars, Inc., 105 USPQ2d 1859 (TTAB 2013).
Prohibiting registration of functional designs allows for legitimate competition by
effectively preventing a monopoly to a non-reputational, or non-source-identifying,
feature of a product. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34
USPQ2d 1161, 1163-64 (1995) (describing a functional feature as on which the
“exclusive use of would put competitors at a significant non-reputation-related
disadvantage.”); In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 6 (Fed. Cir. 1985) (“If
the feature asserted to give a product distinctiveness is the best, or at least one, of a
few superior designs for its de facto purpose, it follows that competition is hindered”).
Our determination of functionality is generally guided by the analysis first applied
in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).
See Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed.
Cir. 2002); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1489 (TTAB
2017); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1513 (TTAB
2017); In re Change Wind Corp., 123 USPQ2d 1453, 1456 (TTAB 2017). Morton-
Norwich identifies the following inquiries or categories of evidence as helpful in
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determining whether a particular design is functional: (1) the existence of a utility
patent disclosing the utilitarian advantages of the design; (2) advertising materials
in which the originator of the design touts the design’s utilitarian advantages; (3) the
availability to competitors of functionally equivalent designs; and (4) facts indicating
that the design results in a comparatively simple or cheap method of manufacturing
the product. Morton-Norwich, 213 USPQ at 15-16.
Ultimately, the determination of functionality is a question of fact and depends on
the totality of the evidence presented in each particular case. E.g., Valu Eng’g, Inc.,
61 USPQ2d 1424; In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1979 (TTAB 2009).
Moreover, we keep in mind that the Examining Attorney has the burden of making a
prima facie showing that Applicant’s mark is functional. In re Becton, Dickinson &
Co., 675 F.3d 1368, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012).
With regard to the aforementioned Morton-Norwich considerations, Applicant
asserts:3
In the present case, there is no utility patent at issue. Further, no
advertising is in the record promoting the utilitarian advantages of the
design. Additionally, no facts in the record support the notion that there is
an absence of alternative designs for products and product packaging
similar to Applicant’s; indeed, there are a multitude of ways to package
fish in see-through containers. Finally, neither Applicant nor the
Examiner submitted any evidence as to the cost of Applicant’s product;
while Applicant’s products are relatively low-priced preserved fish, and
thus any packaging must also be relatively low-priced, no evidence exists
in the record to support the notion that Applicant’s design is solely the
result of monetary concerns.

3 6 TTABVUE 7.
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The Examining Attorney does not dispute Applicant’s assertions regarding the
lack of relevant utility patents or the absence of advertisements of record that
highlight a utilitarian feature in Applicant’s mark.4 Nevertheless, the Examining
Attorney contends that “the Morton-Norwich factors weigh in favor of finding the
mark functional” and that “the totality of the evidence shows that the applicant’s
mark provides identifiable utilitarian advantages to the user (i.e. the ability to
inspect the goods in low cost packaging).”5
The evidence in support of the functionality refusal is scant. Specifically, the
Examining Attorney relies heavily on a single-page printout from the Wall Street
Journal website that appears, in substantive part, as follows:6

4 8 TTABVUE 6.
5 Id. at 6-7.
6 Attached to Office Action issued on March 20, 2017.
Serial No. 87346100
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The title in this screenshot indicates that clear packaging is desirable to
consumers (“consumers love food sold in clear packaging”), but also that there are
some practical drawbacks due to light causing food degradation (“it’s a struggle for
food companies because light degrades food”). The Examining Attorney also
submitted printouts from two third-party websites showing nuts and other snacks in
clear packaging and what appears to be in transparent packaging, as well as a single
screenshot that appears to be an article titled, “10 Best Transparent & See-Through
Packaging Design Ideas for 2016” with photographs of various packaging.7

7 Id. As to article, aside from the title, the majority of the wording is illegible. We further note
that none of the packaging depicted in the article is for fish products (TSDR p. 5).
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The only other evidence submitted by the Examining Attorney consists of
printouts from four different websites showing fish products offered in see-through
packaging; a representative sample of this evidence appears as follows:8

The Examining Attorney asserts the aforementioned evidence shows that others
“utilize clear packaging to allow consumers to inspect or view the goods.”9
On this record, we cannot conclude that Applicant’s proposed package
configuration mark has a design feature that is “essential to the use or purpose” of
goods or the package design “affects the cost or quality” of the goods. Only one website
contains an explicit statement that consumers appreciate seeing food in transparent
packaging, albeit with possible food degradation consequences. The other evidence
includes only a handful of third-parties offering fish products in see-through

8 Attached to Office Action issued on December 4, 2017.
9 8 TTABVUE 4.
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packaging; however, we further note that the packaging depicted in those websites is
not at all like Applicant’s proposed mark. Indeed, to the extent that the third-party
evidence showing fish products in transparent packaging is relevant, this evidence
may be viewed as indicative of the availability to competitors of functionally
equivalent designs other than Applicant’s proposed cylindrical-shaped package
design mark.
In his brief, the Examining Attorney raises the prospect of additional functional
features within Applicant’s proposed package configuration mark:
In this instance, the applicant’s Package consists of a round container with
a flat base, vertical sides, and a clear top. As shown in the evidence of
record, it is common for packaging for food products to share similar
utilitarian features. A flat base provides a sturdy platform which allows
the Package to sit securely as placed and to be stacked for efficient shipping
and storage. Vertical sides provide rigid support for the Package and
enable the storage of goods. The round shape provides the largest possible
storage volume per surface area while using the least amount of material.
Additionally, the round shape provides additional stability and efficiency
for stacking and storage. Finally, a clear top provides consumers the ability
to view and inspect the goods while they are still inside the packaging. The
applicant only ever contested the functional refusal issued by the
examining attorney as it relates to the see-through portion of the
packaging, and has not addressed the common utilitarian advantages of
the flat base, straight sides, or circular shape of the Package.

This argument is troubling because this is the first mention by the Examining
Attorney, who had not previously identified any of these purported functional or
utilitarian features of Applicant’s proposed mark. That is, within the four Office
Actions issued, the Examining Attorney focused solely on “the transparent portion of
packaging [that] serves a functional purpose, namely, allowing consumers to view or
inspect the goods.” In any event, there is no evidence of record to support the
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assertions regarding additional putative utilitarian components in the mark. While
the additional features of Applicant’s package design mark may very well be
utilitarian and functional, this must be demonstrated by evidence of record. See In re
Mars, Inc., 105 USPQ2d 1859 (holding “three-dimensional configuration of packaging
for pet food that consists of a cylindrical, inverted pet food container” is functional
based on record that included utility patents and technical disclosures.)
In sum, a prima facie showing that Applicant’s proposed package design mark is
functional has not been made. Accordingly, the refusal under Section 2(e)(5) is
reversed.
II. Acquired Distinctiveness
We turn now to the Examining Attorney’s refusal to register Applicant’s proposed
mark on the Principal Register under Section 2(f) due to insufficient proof of acquired
distinctiveness of the proposed mark. “Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section 2(f), the statute accepts
a lack of [inherent] distinctiveness as an established fact.” Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
Applicant bears the burden of establishing acquired distinctiveness. Real Foods
Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir.
2018); Yamaha Int'l Corp., 6 USPQ2d 1006-07. “The kind and amount of evidence
necessary to establish that a mark has acquired distinctiveness in relation to goods
or services depends on the nature of the mark and the circumstances surrounding the
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use of the mark in each case.” In re Chevron Intellectual Property Grp. LLC, 96
USPQ2d 2026, 2030 (TTAB 2010).
Applicant's burden is particularly high in view of the fact that the proposed
product package configuration mark, on its face, does not appear to be particularly
unique inasmuch as it is a cylindrically-shaped container, making it less likely to be
perceived as a source indicator. See In re American Academy, 64 USPQ2d at 1753
(“However, ordinary geometric shapes such as circles, ovals, squares, stars, etc., are
generally regarded as nondistinctive and protectable only upon proof of acquired
distinctiveness.”); J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, § 7:33 (5th ed. Nov. 2018 update) (“Ordinary geometric shapes such
as circles, ovals, squares, etc., even when not used as a background for other marks,
are regarded as nondistinctive and protectable only upon proof of secondary
meaning.”) As to the transparent circle top portion of Applicant’s package design
mark, although we found the Examining Attorney’s evidence less probative for
purposes of showing functionality, the evidence of transparency in food product
containers has more relevance with respect to the distinctiveness of this feature in
that that it shows consumers are accustomed to encountering food product packaging
that is, at least in part, transparent. Furthermore, in cases of trade dress, like product
packaging design, a mere statement of five years’ use is generally not sufficient. See,
e.g., In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284, 1286 (TTAB 2000) (noting
the statutory language regarding acquired distinctiveness “is permissive, and the
weight to be accorded [evidence of five years of substantially exclusive use] depends
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on the facts and circumstances of the particular case,” and finding evidence of seven
to seventeen years of use insufficient to support a claim of acquired distinctiveness).
Given the nature of Applicant’s mark—a cylindrical container for fish that, but for
the transparent top, is much akin to the ubiquitous tuna fish cans found in grocery
stores—this is a case where certainly more evidence than Applicant’s principal
attesting to at least five years of substantially exclusive use of the package design
and conclusion that it has become distinctive.
In support of its claim that the proposed mark has acquired distinctiveness,
Applicant relies on the following evidence:
• The declaration of its president, Gregory Vernikov, who avers, inter alia:10
- The mark has “become distinctive of the services [sic] through the
applicant’s substantially exclusive and continuous use in commerce for
at least five years immediately before the date of this statement.”
- Applicant imports “160,000 products per year using the packaging that
is the mark.”
- The mark “has been prominently displayed on its promotional
materials” since 2012.
- Sales and advertising for the products using the mark have increased in
the last five years, with $200,000 in sales and $25,000 spent in
advertising in 2017.
- Applicant has advertised using the mark in various publications.
• “Notes taken by the promotional staff” regarding promotional events at
stores.11
• Photographs of individuals holding what appears to be Applicant’s goods
and the products on shelves.12

10 Attached to Applicant’s response filed on March 17, 2018.
11 Id.
12 Id.
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We agree with the Examining Attorney that the evidence, when viewed in its
entirety, does not support a finding that the applied-for mark has acquired
distinctiveness. With respect to Applicant’s sales and advertising figures, these are
fairly general and there are no examples of promotional material showing how or why
consumers would come to associate the packaging of Applicant’s fish products as a
source-identifier. Cf., Grote Indus, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197,
1213 (TTAB 2018) (where advertising prominently used word mark, consumers are
more likely to associate the word mark rather than the design with the source of the
goods); see also, In re Soccer Sport Supply Co., 507 F.2d 1400, 184 USPQ 345, 348
(CCPA 1975) (advertising displaying the design at issue along with word marks
lacked the “nexus” that would tie together use of the design and the public’s
perception of the design as an indicator of source); In re Mogen David Wine Corp., 372
F.2d 539, 152 USPQ 593, 595 (CCPA 1967) (where a container design appeared with
a word mark, any alleged association of the design with the company “was predicated
upon the impression imparted by the [word] mark … rather than by any distinctive
characteristic of the container per se.”).
We also find little, if any, probative value in the promotional staff notes or the
photographs of Applicant’s goods for purposes of showing how or why Applicant’s
proposed package design mark would become distinctive as a source-identifier for
Applicant’s goods. In other words, although this evidence may show a degree of
success at certain events or the manner in which Applicant’s goods are presented and
sold, there is no real indication that consumers be inclined to view the packaging of
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Applicant’s fish products as anything more than just packaging. Moreover, as the
Examining Attorney’s observed, the photographs of Applicant’s actual goods show
that they do not have a top that is entirely transparent but have a label covering
approximately half of the top of the container. We agree with the Examining Attorney
that this is inconsistent with the description of the mark in the application (“The top
of the product packaging is a transparent circle”). Applicant asserts that this is
irrelevant because “[t]he labeling obviously is there because the configuration is just
a configuration--just a mark--and does not give all the information a consumer needs
to make an intelligent purchase.”13 This ignores the fact, however, that a
“transparent circle” is claimed as a feature of the mark. Thus, if obscured by labelling,
this certainly makes it more difficult for consumers to see this proposed feature, as
described in the application and depicted on the drawing page, and likewise for this
feature or the entire mark to acquire distinctiveness.
Ultimately, Applicant has not made a sufficient showing that its proposed package
configuration mark has acquired distinctiveness.
Decision: The refusal to register Applicant’s mark on the functionality ground is
reversed. However, the refusal on the ground of an insufficient showing of acquired
distinctiveness claim is affirmed.

13 6 TTABVUE 13.