Mars, Inc.

Trademark Trial and Appeal Board

Jan 14, 2013

No. 77545810 (T.T.A.B. Jan. 14, 2013)

Mailed:
January 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mars, Inc.
________

Serial No. 77545810
_______

Cristina A. Carvalho, Jason J. Mazur, and Loni J. Sherwin
of Arent Fox LLP for Mars, Inc.

Heather Biddulph, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).

_______

Before Seeherman, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Mars, Inc. (“applicant”) filed an application (Serial
No. 77545810) to register the following configuration of
product packaging on the Principal Register for “pet food”
in International Class 31:
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Ser. No. 77545810
2

Applicant claims a bona fide intention to use the mark in
commerce pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b); and entered the following description of the
mark into the application:
The mark consists of a three-dimensional
configuration of packaging for pet food that
consists of a cylindrical, inverted pet food
container. The top of the container is rounded
with two concentric ridges that form the inner
and outer lip of the top of the container. The
bottom of the container has a wider ridged lip.
Ser. No. 77545810
3
The inverted nature of the container is claimed
as a feature of the mark.

The examining attorney finally refused registration on
the grounds that (i) the package design is functional and
therefore fails to function as a mark, Trademark Act
§ 2(e)(5), 15 U.S.C. § 1052(e)(5); and (ii) the designation
is a nondistinctive package design that is not registrable
on the Principal Register without proof of acquired
distinctiveness and applicant’s application, based on
intent-to-use, neither claims nor includes evidence of
acquired distinctiveness. Trademark Act §§ 1, 2, and 45,
15 U.S.C. §§ 1051-1052, 1127.1 We address each refusal
below.
Functionality
Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§ 1052(e)(5), provides that registration of a product or
package design may be denied if it “comprises any matter
that, as a whole, is functional.” A product feature is
functional and cannot serve as a trademark “when it is
essential to the use or purpose of the device or when it
affects the cost or quality of the device.” TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23,

1 The final Office action also included a requirement under
Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), that applicant provide
certain information to determine whether the mark is functional.
Ser. No. 77545810
4
58 USPQ2d 1001, 1006 (2001) (citations omitted). To afford
registration to functional designs would inhibit legitimate
competition by in effect granting a monopoly to a non-
reputational, or nonsource-identifying, feature of a
product. Qualitex Co. v. Jacobson Products Co., Inc., 514
U.S. 159, 34 USPQ2d 1161, 1163-64 (1995); 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”).
A determination of functionality generally involves
consideration of the following factors (known as the
Morton-Norwich factors):
1. Whether a utility patent exists that
discloses the utilitarian advantages of the
design sought to be registered;

2. Whether applicant’s advertising touts the
utilitarian advantages of the design;

3. Whether alternative designs are available
that serve the same utilitarian purpose; and

4. Whether the design results from a
comparatively simple or inexpensive method of
manufacture.

See In re Becton, Dickinson and Co., 675 F.3d 1368, 102
USPQ2d 1372, 1377 (Fed. Cir. 2012), citing In re Morton-

The examining attorney withdrew this refusal in her brief. We
therefore give it no further consideration.
Ser. No. 77545810
5
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA
1982). These factors are not exclusive, however, for
functionality “depends upon the totality of the evidence.”
Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
1422, 1424 (Fed. Cir. 2002); Brunswick Corp. v. British
Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed. Cir.
1994), cert. denied, 514 U.S. 1050 (1995).
1. Utility patents/technical disclosures.

The first Morton-Norwich factor is whether a utility
patent discloses the utilitarian advantages of the design.
“[T]he disclosure of a feature in the claims of a utility
patent constitute strong evidence of functionality,” and
“statements in a patent’s specification illuminating the
purpose served by a design may constitute equally strong
evidence of functionality.” Becton, Dickinson, 102 USPQ2d
at 1377 (citations and internal quotations omitted); accord
Kistner Concrete Products, Inc. v. Contech Arch
Technologies, Inc., 97 USPQ2d 1912, 1920 (TTAB 2011); In re
Dietrich, 91 USPQ2d 1622, 1627 (TTAB 2009). Here, we also
consider the technical information introduced into the
record by the examining attorney and applicant.
Applicant states that “its mark has not been the
subject of any design or utility patent or patent
application.” Brief at 6. However, “third-party [utility]
Ser. No. 77545810
6
patents may be relied upon as evidence; a patent is
potentially relevant if it covers the feature at issue,
regardless of the owner.” Dietrich, 91 USPQ2d at 1627,
citing In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997).
The examining attorney introduced eight third-party utility
patents and one third-party patent application into the
record. The disclosures generally pertain to the
concentric ridges set forth in the top of the proposed mark
and the flared lip at the bottom. (Applicant’s description
states in part that the “top of the container is rounded
with two concentric ridges that form the inner and outer
lip of the top of the container.”) The following
disclosures in four patents appear to be the most relevant.
1. U.S. Patent No. 5,593,063 (the “‘063 patent”)2
explains that when closed containers are thermally
processed, the contents of the containers expand resulting
in an increase in pressure in the container. The side
walls of containers are protected from distortion if a
flexible annulus – formed by the ridges on the container
surface - is used that permits the bottom to bulge outward
to increase the container volume.3 And, if a can is “hot

2 The examining attorney discusses the ‘063 patent in detail in
her brief, thus, presumably, she believes this is the strongest
reference to applicant’s asserted mark.
3 We take judicial notice that Merriam-Webster’s on-line
dictionary (http://merriam-webster.com/dictionary/annulus)
Ser. No. 77545810
7
filled,” a partial vacuum may develop in the can when
cooled which puts the side wall at risk of collapse, unless
the flexible annulus returns to its original shape. The
use of the annulus increases the contained volume of the
can and makes it possible to use thinner container
materials while remaining strong enough to heat treat and
stack cans on top of one another. Col. 4, lines 12 – 18.
Figure 4 of the patent exhibits a fragmentary section
of a can body with a concentric figure recessed inwards
toward the body of the can. It depicts can wall “2,”
peripheral channel portion “5,” deformable annulus “6,” and
central panel “7”:

defines an “annulus” as a part or structure resembling a ring.
The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also University of Notre Dame du Lac v. J. C. Gourmet Foot
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 77545810
8
The patent also discloses a stacking feature.
Specifically, as shown below in another drawing, a stacking
bead (9) is included on the bottom of the can which
cooperates with an outwardly directed flange or top (3):

See also id. col. 3, lns. 11-16.
2. U.S. Patent No. 4,522,049 (the “‘049 patent”) is
directed to an aluminum alloy food can body and a method
for making the food can body, and discloses the following
can configuration, whose bottom is substantially similar to
the can top depicted in applicant’s alleged mark:

Ser. No. 77545810
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“The food can body has a bottom end wall having a pressure
resistant profile form therein and a side wall having an
outwardly flanged open end integrally formed with the
bottom end wall.” Col. 3, lines 54 - 59. The patent
states that the invention allows for a reduction in the
amount of material needed to manufacture the can, which
results in cost savings in the manufacture of the can,
col. 9, lines 17 – 32; and explains:
While a food can design is concerned with an
internal pressure and column strength, as is the
carbonated beverage can design, the food can
design must also accommodate a negative pressure
or vacuum within the can body after it is filled,
closed and sealed. This concern for a vacuum in
many food can uses results from the processing of
the filled food cans. High internal vacuums are
used in most cans filled with food products. A
common method of food packing is to fill and seal
the container and then heat the container in a
retort, for example, for a specified time. The
pressure inside the container increases as the
filled food can is heated. A vacuum may result
as the can cools after heating which has the
effect of exerting an exterior pressure on the
can.

Col. 1, lines 53 – 68 – col. 2, lines 1 – 2.

3. U.S. Patent No. 5,823,040 (the “‘040 patent”)
discloses a method and apparatus for producing a container
end wall from a flat metal sheet through a series of
concentric beads that are formed within a center portion of
the end wall. (We take judicial notice that Merriam-
Webster’s on-line dictionary (http://merriam-
Ser. No. 77545810
10
webster.com/dictionary/bead) defines “bead” as “a
projecting rim, band or molding.”) The can end “may be
used on the top end of a two-piece container and on both
the top and bottom ends of a three-piece container.” Col.
2, lines 20 – 24. After the beads are formed, the central
portion of the disk is moved axially to form an annular
countersink. This construction permits the thickness of
the disk to be reduced, while providing for the same or
increased buckle strength, thereby significantly reducing
the overall cost of the container. Col. 1, lines 40 - 65.
4. U.S. Patent No. 6,702,538 B1 (the “‘538 B1
patent”) discloses forming a circular metal blank (or a can
end) having a periphery and a center panel in which an
annular recessed panel is subsequently formed. A goal of
the disclosed invention is to minimize warpage of the can
end and hence allow the can end to be formed from a
relatively thin sheet of metal.
Non-patent literature in the record also discloses
that annular recesses on can ends function to adjust can
pressures, support strength, and alter container capacity.
See, e.g., (i) “Statistical Quality Control in Canning
Industry” (“[d]uring the processing cycle, the contents of
the filled container, including gas in the head-space and
elsewhere, expand and generate an increased pressure within
Ser. No. 77545810
11
the can. Some release of the pressure can be accommodated
by the concentric expansion beads designed in the end(s)”);
and (ii) the “Canadian Metal Can Defects Manual” (cans
include “raised or depressed surfaces of the integral end
which provide strength or alter the container capacity.”).
(a) The Ridged or Beaded End.
The patents mentioned above disclose various benefits
that may result from an annulus formed by a ridged or
beaded container end. Specifically, during thermal
processing of closed containers, the use of an annulus
through ridging or beading of a container end allows the
container to tolerate changes in pressure. As a
consequence, the walls of the container need not be as
thick as walls on containers which do not have ridging or
beading. The annulus adjusts depending on temperature and
pressure, and provides the container with a greater volume,
thereby reducing the pressure within the container. In
addition, the beading and ridging has the benefit of
limiting or precluding warping of the end of the container,
thereby permitting the use of a thinner container end.
Applicant argues that the patents in the record “do
not demonstrate the utilitarian advantages of applicant’s
design.” In distinguishing the teachings of the ‘538 B1
patent, applicant points out that the disclosed invention
Ser. No. 77545810
12
pertains to a can end that is subsequently joined to a can
body to form a container, unlike applicant’s container
where the top (i.e., “end”) of the container is integrally-
formed with the body of the container. Applicant reasons
that the patented design is intended to provide structural
integrity to a thin can end to prevent warping after it is
attached to the body. However, with applicant’s design,
applicant asserts that “the short stature of the side walls
of Applicant’s container provides adequate structural
support.” Brief at 9. Applicant adds that its pet food
container is not vacuum-sealed, and concludes that the
utilitarian features mentioned in the ‘538 B1 patent do not
demonstrate that applicant’s mark is functional.
Applicant is correct in its assertion that the ‘538 B1
patent is directed to a can end which is to be affixed to a
can body. See col. 11, lines 8 - 15. However, other
evidence in the record suggests that ridging and beading
can also be formed in the end of a can which is integral
with the can body. An article from the Canadian Food
Inspection Agency entitled “Metal Can Defects” submitted
with the November 23, 2009 Office action (at p. 68)
discusses the following two-piece can body:
Ser. No. 77545810
13

The article refers to “panels” (defined as “[r]aised or
depressed surfaces of the integral end … [which] provide
strength or alter the container capacity”); “countersinks”
(defined as “[p]rimarily used to provide strength to the
integral end”); and “reinforcement features” (defined as a
“series of rings, ridges or parallel lines pressed into the
metal of any part of the can body or integral end.”)
(Emphasis added.) The article states, “These features
provide the metal with additional strength to withstand the
stresses of retorting and handling.” In addition, the page
from “Food Packaging Technology” accessed through “Google
books” submitted at p. 103 of the November 23, 2009 Office
action states;
All ends for processed food cans have a number of
circular beads in the centre panel area to
Ser. No. 77545810
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provide flexibility. These allow the panel to
move outwards, as internal pressure is generated
in the can during the heating cycle of the
process and so reduces the ultimate pressure
achieved in the can. During the cooling process,
this flexibility permits the centre panel to
return to its original position. (Emphasis
added.)

Further, the ‘049 patent states that the disclosed
invention is “blanked and drawn to form a cylindrical cup
having a side wall and a bottom end wall of substantially
uniform thickness.” Col 3, lines 15 – 20. A “pressure
resistant profile” is later formed on the bottom of the
cup. Col. 3, lines 55 – 56.
In light of these disclosures, we reject applicant’s
argument that the patents are distinguishable and not
relevant, and find the disclosures of the patents are
relevant to the question of the asserted functionality of
applicant’s alleged mark.
Applicant also argues that the beading and/or ridging
are not necessary for the strength of its container because
it has a short stature which provides adequate structural
support; and that its pet food containers are not vacuum-
sealed. Applicant’s proposed mark as shown in in its
drawing and described in its description, however, is not
limited to particular dimensions, material, thicknesses of
materials or type of sealing. The ridging of applicant’s
Ser. No. 77545810
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proposed mark would be necessary for strength and to
prevent warpage on cans of a certain thickness, or cans
that have applicant’s configuration and which are vacuum-
sealed. (Nothing in applicant’s design precludes vacuum-
sealing.) In addition, even if applicant’s container does
not make use of the ridges and beadings because it is not
vacuum sealed, if they are functional on third-party
containers, applicant should not be granted a registration
that would inhibit third parties from using such ridges and
beadings on containers that are vacuum sealed. We
therefore are not persuaded by applicant’s argument based
on the short stature of its container and the fact that its
container is not vacuum sealed.
(b) The Flared Bottom Lip.
We now turn to the flared, outwardly-extending lip at
the bottom of applicant’s container, which the examining
attorney maintains functions to allow for stacking
containers. The top portion of applicant’s design includes
a top exterior portion which is flush with the wall of the
container and appears to be able to sit within the wider
ridged lip of the bottom of another such can when the cans
are stacked on one another. Although applicant’s attorney
states at p. 5 of applicant’s response to the second Office
action that “[t]he ridge at the bottom of the container
Ser. No. 77545810
16
does not offer any particular benefit in terms of strength,
stability, stackability, or sealing,” the lip appears to be
sized to allow for this stacking feature.
The most pertinent disclosure in the record pertaining
to this feature4 is the disclosure in the ‘063 patent of a
can with a flared top and a container wall with a recession
at the opposing bottom. For ease of reference, Figure 4 of
the ‘063 patent is depicted again below:

As mentioned earlier in this opinion in the discussion of
this patent, the configuration disclosed in the ‘063 patent
allows the can to be stacked with a second can of the same

4 Although the can depicted in the drawing from the ‘049 patent,
the second of the four patents listed above, bears a strong
resemblance to applicant’s can, we do not consider the can of the
‘049 patent to be the most pertinent disclosure. The “flange” in
that drawing numbered “34” is intended “to enable double sealing
the open end with a suitable can end by double seaming after the
can has been filled,” col. 3, lines 35 – 37, and is not intended
for stacking purposes.
Ser. No. 77545810
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design. Although we recognize that the patented design is
for a container where the walls are recessed inward and
which has a smaller lip, while the walls of applicant’s
container do not appear to have any recession and the
container has a larger lip, the principle that having an
end that cooperates with a flared lip for stacking purposes
applies to both designs.
In response to the examining attorney’s inquiry in the
April 6, 2009 Office action, “[d]oes the ridge at the
bottom of the container offer any benefit (for example a
benefit in … stackability …)?”, applicant responded on
October 7, 2009 that “the ridge at the bottom of the
container does not offer any particular benefit in terms of
… stackability ….” Also, at p. 2 of its May 24, 2010
request for reconsideration, applicant argued that “[a]ny
utilitarian features of the design of Applicant’s container
are only incidental and serve primarily to identify to
consumers that Applicant is the source of the goods.”
Applicant also argued that if the primary purpose of the
ridges and/or beading at the top of the container were to
allow for stacking, one would expect the bottom of the can
to be formed with corresponding, interlocking mating
feature(s) to permit stacking. These arguments are
immaterial to the functionality analysis of applicant’s
Ser. No. 77545810
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particular design. First, whether applicant’s “primary”
purpose or intent in settling upon this design was source
identification is beside the point. As TrafFix makes
clear, only those features which are “merely an ornamental,
incidental, or arbitrary aspect of the device” are outside
the realm of functionality. 58 USPQ2d at 1005 (emphasis
added). Applicant does not argue that its cans cannot be
stacked, and we find these portions of the overall design
are not merely ornamental, incidental or arbitrary – their
functionality is apparent. Second, if the lip of a first
container rests on the outer ridge of the top of a second
container, any need for interlocking mating features of the
ridging vanishes. It is the wider ridged lip at the bottom
and the raised outer lip at the top that touch one another;
the ridges and/or beading at the top need not engage the
bottom of a second container. Additionally, we note that
applicant has not claimed the bottom portion of its design
as part of applicant’s asserted mark. Therefore, the
bottom of the container may have any configuration,
including one where the elements of the bottom of
applicant’s container do not require the cooperation of the
ridging and/or beading elements with any other feature of a
second can.
Ser. No. 77545810
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Finally, with regard to the inverted nature of
applicant’s design, the inverted nature of the can does not
negate any of the functional aspects of applicant’s design,
thereby rendering them non-functional.
Thus, in summary, the patents and technical literature
show the functional role of the ridges and/or beading of
applicant’s design, while the stacking benefit of the
flared lip at the bottom of applicant’s container is clear
from not only the ‘049 patent, but also from the use of a
flared lip at the bottom and the raised outer lip at the
top that would also allow the stacking of one container on
top of another.
2. Advertising.
No advertising material has been introduced into the
record. As noted above, applicant has based its
application on an intent to use, rather than use.
3. Alternative Designs.
The availability of alternative designs can, in some
cases, be relevant to show that the design sought to be
registered “preserves competition by ensuring competitors
the right to compete effectively.” Valu Engineering, 61
USPQ2d at 1428. However, the mere fact that other designs
are available does not necessarily mean that applicant's
design is not functional. Bose, 227 USPQ at 5-6.
Ser. No. 77545810
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In connection with its argument that there are many
equivalent designs for pet food containers in the
marketplace, applicant submitted samples of containers;
“[t]he containers can be circular, oval, square or
rectangular; they can be cylindrical cans, pouches, boxes
or bags.” Brief at 11. Applicant contends that “the many
examples of pet food containers in the market, which all
serve the same purpose of holding the pet food, demonstrate
that there are other designs that work just as well as
Applicant’s”; and that “there is no competitive need to
copy the claimed design features.” Id.
It appears to us, however, that not all of the pet
food containers applicant relies on – circular, oval,
square, rectangular, pouches, boxes or bags – are relevant
to this factor. It is common knowledge that canned pet
food contains wet pet food as opposed to dry pet food,
which is typically sold in bags or pouches. Also, it is
common knowledge that cans are able to prolong the shelf-
life of food products, and therefore the shelf-life of pet
food in non-can packaging may not be as long as the shelf
life of pet food in cans. In addition, the manufacturing
costs for non-circular cans may be greater than the costs
of circular cans in view of the opening mechanisms needed
for non-circular cans; pull-top openers may be required
Ser. No. 77545810
21
because such cans cannot be opened by a simple can opener
that cuts along the entire lid.
4. Simple or cheap method of manufacture.
In applicant’s October 7, 2009 response (¶ 4b),
applicant states that its container dimensions are “202 x
109”; that this can is not included on the Can
Manufacturers Institute website’s list of standard food
cans or in CMI’s Voluntary Can and End Dimension Reference
Manual; and that it is aware of no other pet food container
on the market that is the same size as its container.
Applicant argues that it could have chosen a “stock” pet
food packaging design which is “standard in the
marketplace, which would have been an easier and cheaper
alternative.” October 7, 2009 response at p. 5. It
concludes that the applied-for product packaging confers no
economic benefit on applicant.
Applicant presumes that any “stock” can is simpler or
cheaper to manufacture than a container with applicant’s
design, simply because it is a “stock” can. Applicant’s
argument says nothing about the simplicity of manufacture
or costs of manufacturing each container, but is based on
production volumes. The argument tells us nothing about
the cost of manufacture if applicant’s container becomes a
“stock” container. At most, we can conclude only that the
Ser. No. 77545810
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evidence does not show that applicant’s configuration
results in a cheaper or easier method of manufacture.
Functionality Analysis--Conclusion
As required by the statute, we must consider whether
applicant's design as a whole is functional.
15 U.S.C. § 1052(e)(5). The patents and technical
literature disclose the functional aspects of the ridges
and beads found at the top of applicant’s applied-for
design. The flared lip in applicant’s claimed mark, while
more exaggerated than the lip of the ‘063 patent, is sized
to permit stacking of containers. This product feature,
that is, the exaggerated lip, while not quite the same as
that disclosed in the ‘063 patent, does not cloak
applicant’s design with any source-identifying
characteristics. The Supreme Court in Qualitex, 34 USPQ2d
at 1165, noted that “[t]he functionality doctrine …
protects competitors against a disadvantage (unrelated to
recognition or reputation) that trademark protection might
otherwise impose, namely their inability reasonably to
replicate important non-reputation-related product
features.” Additionally, Judge Rich noted in Morton-
Norwich that “the effect on competition ‘is really the crux
of the matter,” and that a balance must be struck “between
the ‘right to copy’ and the right to protect one’s method
Ser. No. 77545810
23
of trade identification.” Morton-Norwich, 213 USPQ at 15-
16. Based on the evidence, we conclude that competitors
would need this flared lip for containers where no
modification is made to the sizing of exterior ridging at
the opposite end of the can, or where only slight
modifications to the exterior ridging exists. To afford
registration to applicant’s design would inhibit legitimate
competition by in effect granting a monopoly to what is
essentially a very basic design for an inverted can. The
refusal to register under Section 2(e)(5) is therefore
affirmed.
Inherent Distinctiveness
Although our finding that the proposed mark is
functional is a sufficient basis for affirming the refusal
of registration, in order to render a complete opinion we
turn to the second ground for refusal, namely, that
applicant’s mark is not inherently distinctive. Product
packaging may be inherently distinctive and registrable on
the Principal Register if its intrinsic nature serves to
identify a particular source. Wal-Mart Stores, Inc. v.
Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000);
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23
USPQ2d 1081 (1992). “[U]ltimately ‘the focus of the
[inherent distinctiveness] inquiry is whether or not the
Ser. No. 77545810
24
trade dress is of such a design that a buyer will
immediately rely on it to differentiate the product from
those of competing manufacturers; if so, it is inherently
distinctive.”’ In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1685 (Fed. Cir. 2010), quoting Tone
Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321
(Fed. Cir. 1994). The issue before us, then, is whether
the subject matter sought to be registered can function
independently of any words as a trademark to identify and
distinguish applicant's pet food. Seabrook Foods, Inc. v.
Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA
1977). In determining whether a design is distinctive, the
Board considers the following factors:
1. Whether the subject matter sought to be
registered is a “common” basic shape or design;

2. Whether the subject matter sought to be
registered is unique or unusual in a particular
field;

3. Whether the subject matter sought to be
registered is 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; or

4. Whether the subject matter sought to be
registered is capable of creating a commercial
impression distinct from the accompanying words.

Seabrook Foods, 196 USPQ at 291. See also Chippendales, 96
USPQ2d at 1684. The fourth factor, whether the trade dress
Ser. No. 77545810
25
is capable of creating a commercial impression distinct
from the accompanying words, is not applicable.
A. Whether applicant's container is a “common” basic
shape?

“The first Seabrook factor essentially asks whether
the trade dress is common generally: for example, does it
employ a basic shape or design such as a letter or
geometric shape?” Chippendales, 96 USPQ2d at 1687.
The Examining Attorney submitted depictions of various
cans taken from various websites to support her contention
that the subject matter sought to be registered is a
common, basic shape. The containers set forth below are
representative.
from vogel-noot.com:5 from lowsodiumcatfood.com:

from ballamericas.com:

Ser. No. 77545810
26

from ehcan.com:

from jwbasecamp.com (both):

Additionally, the examining attorney submitted
photographs of several pet food cans for different brands
that have substantially the same ridging and/or beading

5 Identified as a two-piece can.
Ser. No. 77545810
27
depicted in applicant’s design, as well as smooth sides and
a flared lip on one end.6 See, e.g.:
● “Fancy Feast” (p. 10, denial of request for
reconsideration):

● “Wellness” (p. 40 and 41, denial of request for
reconsideration):

6 According to the October 18, 2010 Office action, the
photographs were taken at PetSmart in Alexandria, Virginia.
Ser. No. 77545810
28

● “Science Diet” (p. 44, denial of request for
reconsideration):

We find that the examining attorney has established
that applicant’s mark is a common basic shape, as evidenced
by the many can configurations in the record, including
cans for pet food. Applicant’s design contains the same
ridging or beading found on one end of some cans and the
same type of flared lip on the opposite end. The
cylindrical walls of applicant’s design are smooth, as are
those of other designs. We acknowledge that applicant’s
mark does not have the recessed edge that some, but not
Ser. No. 77545810
29
all, of the third-party cans have. However, the recession
on these cans is very slight, and two of the cans, the
vogel-noot.com can and the can on the far right of the
photograph from ehcan.com, do not appear to have
recessions. The height-to-width proportions of applicant’s
design are not so unusual to render the shape “uncommon.”
Applicant argues that “[n]one [of the third party
containers] contain the combination of unique features
found in Applicant’s mark, such as the wider ridged lip
combined with the smaller size and inverted nature.” Brief
at 13. Also, applicant submitted the following photograph
to highlight differences between its container – which
appears to be metal - and other particular pet food cans:

However, the features of applicant’s design are not so
distinctive when third-party containers are inverted and
compared to applicant’s container. They share many of the
same features. Additionally, the photographs containing
applicant’s container juxtaposed with other pet food
Ser. No. 77545810
30
containers are not particularly persuasive because they
only contrast applicant’s container and one style of can.
(It also appears to us that the comparison is not apt
because the third-party cans include labels, while
applicant’s container does not.) Further, applicant’s
argument regarding the specific size of its container is
not persuasive because applicant has not claimed that its
product packaging has a particular size. Indeed, the
packaging may be of any size; there is no size limitation
stated in the description of the proposed mark.
In connection with the inverted nature of applicant’s
design, the record contains three of applicant’s
registrations for packaging designs as evidence that
inverted shapes have been registered for pet food
containers. Registration Nos. 2052069 and 2052071,
submitted as Exhibit 1 to applicant’s October 7, 2009
response, both for the mark

recite “dog food” and “cat food,” respectively. Both
registrations issued under the provisions of Section 2(f).
The very fact that these designs were registered under
Ser. No. 77545810
31
Section 2(f) shows that the marks are not inherently
distinctive. See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988). Thus, these registrations do not support
applicant’s position that its alleged mark is inherently
distinctive. The third registration, submitted by
applicant with its February 26, 2009 response, is
Registration No. 3220575 for the mark

for “pet food.” Section 2(f) was not claimed. However,
the mark which is the subject of this registration is
considerably different from the design in the present
application and, as opposed to the relatively common shape
of applicant’s proposed mark, the registered design has the
appearance of a serving cloche, which is an unusual design
for a pet food container.
Applicant also points to two third-party registrations
for marks consisting of container configurations shown in
inverted form, which have registered on the Principal
Register without a claim of acquired distinctiveness.
Ser. No. 77545810
32
Based on these registrations, applicant argues that
inverted containers (with an opening on the bottom) are
registrable. Insofar as the third-party registrations are
concerned, the Board has often noted that each case must be
decided on its own merits. The determination of
registrability of those particular marks by the examining
attorneys cannot control our decision in the case now
before us. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). (“Even if some prior
registrations had some characteristics similar to
[applicant's application], the PTO's allowance of such
prior registrations does not bind the Board or this
court.”). Further, the goods involved in the two
registrations (which include polishes, creams and pigmented
dressing for footwear and leather goods) are unrelated to
applicant’s goods and the claimed designs are substantially
different from applicant’s design and indeed, claim colors
as well. Simply because they have an inverted
configuration and are registered on the Principal Register
without a claim of acquired distinctiveness does not mean
that applicant’s mark should also be registered.
In our opinion, the shape or design remains common
even if it is inverted, as compared to other pet food
containers; the design simply has the appearance of an
Ser. No. 77545810
33
upside down container. Therefore, we find the shape of
applicant’s asserted mark to be a common basic shape, and
the inversion does not change our finding.
B. Whether applicant's design is unique or unusual in a
particular field?

The second Seabrook factor asks whether the symbol is
common in the particular field of use. Chippendales, 96
USPQ2d at 1687. The evidence reveals that applicant’s
container design resembles many metal cans used in the pet
food field, and is almost identical to some, e.g., the
“Science Diet” and the “Fancy Feast” cans, submitted by the
examining attorney with the denial of the request for
reconsideration, save for the inverted nature of
applicant’s container. As for the inversion, as noted
above, this feature of the claimed mark does not change the
common nature of the shape or design. As noted above, the
design simply has the appearance of an upside down
container.
C. Whether applicant's design is a mere refinement of a
commonly-adopted and well-known form of ornamentation
for pet food viewed by the public as a dress or
ornamentation for the goods.

The third Seabrook factor asks whether or not the mark
is a mere refinement of or variation on existing trade
dress within the relevant field of use. Id. In view of
the strong similarities applicant’s container has to other
Ser. No. 77545810
34
non-inverted pet food containers in the record, we find
that applicant’s inverted container is a mere refinement of
a commonly-adopted and well-known form of ornamentation for
pet food containers viewed by the public as a packaging
dress for the goods.
Nondistinctiveness Analysis--Conclusion
The record demonstrates that applicant’s design is not
unique in the sense it has an “original, distinctive, and
peculiar appearance.” In re McIlhenny Co., 278 F.2d 953,
126 USPQ 138, 140 (CCPA 1960), quoting with approval from
Ex parte Haig & Haig, Ltd., 118 USPQ 229, 230 (Asst. Comm.
1958). In other words, the record demonstrates that
applicant's applied-for design is not inherently
distinctive or unique. Its extended bottom lip is a minor
modification to the flanged lips identified in other cans,
the ridging or beading on its top appears in other cans,
including pet food cans, and its height to width
proportions are unremarkable given the many different sizes
and shapes of cans. The inversion of the container is not
so exceptional as to render an indistinctive container into
an inherently distinctive container. As stated in In re
E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB 1992):
If the concept of inherent distinctiveness was
defined as meaning simply “one and only,” then
one could obtain a registration for a design
Ser. No. 77545810
35
which, while “unique” in this sense, differed
only slightly from the designs of other competing
products and/or containers. There would be no
need that the applied-for design have an
“original, distinctive and peculiar
appearance” ….

Decision: The refusals to register under Trademark Act
§ 2(e)(5) and under Trademark Act §§ 1, 2 and 45 are
affirmed.