J. Kinderman & Sons, Inc.

Trademark Trial and Appeal Board

Feb 10, 1998

No. 74602616 (T.T.A.B. Feb. 10, 1998)

Hearing: Paper No. 15
February 4, 1997 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 2/10/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re J. Kinderman & Sons, Inc. dba
Brite Star Manufacturing Co.
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Serial Nos. 74/602,615 and 74/602,616
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Timothy D. Pecsenye and Eric Vance of Blank, Rome, Comisky &
McCauley for J. Kinderman & Sons, Inc. dba Brite Star
Manufacturing Co.
Vivian First, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On June 1, 1995 J. Kinderman & Sons, Inc. dba Brite
Star Manufacturing Co. filed applications to register the
designs shown below on the Principal Register for “Christmas
decorations, namely electric lights for trees.”
Ser No. 74/602,615 and 74/602,616
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Serial No. 74/602,615
Serial No. 74/602,616
Each drawing is lined for the colors red, green and
gold. Applicant describes the designs as follows: “The
mark consists of the configuration of a container for the
goods which is the color red. The mark further consists of
a gold band which transverses the container; a green colored
box in the upper front left corner of the container; and
eight point star designs displayed upon the container.”
(Serial No. 74/602,615); and “The mark consists of the
Ser No. 74/602,615 and 74/602,616
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configuration of a container for the goods which is the
color green. The mark further consists of a gold band which
transverses the container; a red colored box in the upper
left front corner of the container; and eight point star
designs displayed upon the container.” (Serial No.
74/602,616) In each application, applicant alleges dates of
first use and first use in commerce of November 1990.
In each case, the Trademark Examining Attorney finally
refused registration on the ground that the design sought to
be registered is ornamental, and thus does not function as a
mark to identify the source of applicant’s goods. (Sections
1, 2 and 45 of the Trademark Act)
Applicant appealed from the refusals in both
applications, asserting in essence that the designs are
inherently distinctive and do in fact indicate source or
origin of the identified goods.
Both applicant and the Examining Attorney briefed the
cases1 and were present at the oral hearing before the
Board. Because the issues involved and records in each case

1 Accompanying applicant’s brief is a copy of its product
catalog. Applicant submitted the catalog to show that it has
promoted the “recurring” eight point star design in connection
with its products. The Examining Attorney, in her brief, has
properly objected to the catalog as being untimely submitted
pursuant to Trademark Rule 2.142(d). Thus, we have given no
consideration to the catalog. Even if we had considered the
catalog, it would make no difference in the result of this appeal
since the designs sought to be registered here cover more than
recurring eight point stars. Moreover, as noted infra, applicant
has not claimed that the designs have acquired distinctiveness.
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are essentially identical, we are rendering our decision as
to both applications in a single opinion.
We note at the outset that the sole issue for
determination in this appeal is whether the designs sought
to be registered are inherently distinctive. Applicant has
not claimed that the designs have acquired distinctiveness.
As the Examining Attorney has noted, the proper test
for determining whether a design is inherently distinctive
involves consideration of such factors as whether the design
is (i) a common basic shape or design; (ii) unique or
unusual in a particular field, and (iii) a mere refinement
of a commonly-adopted and well-known form of ornamentation
for a particular class of goods viewed by the public as
dress or ornamentation for the goods. See Wiley v. American
Greetings Corp., 762 F.2d 129, 226 USPQ 101, 103 (1st Cir.
1985), citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,
568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977). Moreover, an
inherently distinctive mark is one which is “by its very
nature distinctive or unique enough to create a commercial
impression as an indication of origin. . .” In re Raytheon
Co., 202 USPQ 317 (TTAB 1979). While the design may in fact
be unique, i.e., it is the only such design being used, it
also must possess an “original, distinctive and peculiar
appearance.” In re McIlhenny Co., 278 F.2d 953, 126 USPQ
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138, 140 (CCPA 1960) quoting with approval from Ex parte
Haig & Haig, Ltd., 18 USPQ 229 230 (Asst. Comm. 1958).
It is applicant’s contention that while the individual
elements of each design sought to be registered may not be
distinctive, e.g., the gold band or a single eight point
star, applicant has combined the elements in such a manner
that each design “creates a unique commercial impression
which is inherently distinctive.” Applicant has submitted a
number of third-party registrations for designs which cover
a variety of goods. According to applicant, these
registrations “illustrate that marks such as Applicant’s are
registrable on the Principal Register without a showing of
acquired distinctiveness.” (Brief, p. 4)
The Examining Attorney, however, contends that there is
nothing unique or unusual about the designs sought to be
registered; that the designs simply resemble wrapped
Christmas presents; and that packaging which resembles
wrapped Christmas presents is common in the field of
Christmas merchandise. The Examining Attorney has supported
the refusal to register by making of record excerpts of
stories from the NEXIS data base which evidence an
association between the Christmas holiday and stars and the
colors red, green and gold. Also, the Examining Attorney
made of record copies of advertisements for merchandise from
several Christmas catalogs. Such evidence includes, in
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particular: (i) an advertisement for holiday gift labels
packaged in a red box with green Christmas tree designs;
(ii) an advertisement for fruit and candy packaged in a
green and white decorative box tied with a red ribbon; (iii)
an advertisement for fruit arranged in the shape of a red
Christmas tree on a green background; (iv) an advertisement
for chocolate candy packaged in a gold star-shaped box; and
(v) an advertisement for Christmas tree ornaments packaged
in a straw basket and tied with a red ribbon.
We are persuaded on this record that, while the designs
applicant seeks to register may be unique in the sense that
we have no evidence that anyone else is using designs which
are identical to them, they are nonetheless not inherently
distinctive. It is common knowledge that stars and the
colors red, green and gold are associated with the Christmas
holiday. The evidence submitted by the Examining Attorney
shows that stars and the colors red, green and gold appear
either separately, or in various combinations, on packaging
for Christmas merchandise. Also, the evidence shows that it
is not uncommon for Christmas merchandise to be packaged in
a manner which resembles wrapped Christmas presents. Thus,
applicant’s designs, which consist of stars and the colors
red, green and gold, and indeed resemble wrapped Christmas
presents, are a mere refinement of a form of ornamentation
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for Christmas merchandise. As such, purchasers and
prospective customers for applicant’s goods would be
unlikely to regard these designs as identifying and
distinguishing applicant’s Christmas tree lights and
indicating their source.
As to the third-party registrations, we are not privy
to the files of these registrations so we have no way of
knowing which, if any, were allowed on the basis that the
design sought to be registered was inherently distinctive.
In any event, each case must be decided on its own set of
facts and the existence of registrations for other designs
does not entitle applicant to registration of the designs
sought to be registered here. See In re Inter State Oil
Co., Inc., 219 USPQ 1229 (TTAB 1983).
Decision: The refusal to register is affirmed in each
application.
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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Ser No. 74/602,615 and 74/602,616
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