MGA Entertainment, Inc.

Trademark Trial and Appeal Board

Feb 27, 2008

No. 76596389 (T.T.A.B. Feb. 27, 2008)

Mailed: February 27, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MGA Entertainment, Inc.
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Serial No. 76596389
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Joel D. Voelzke, Law Office of Joel D. Voelzke for MGA
Entertainment, Inc.

Melvin T. Axilbund, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Hairston, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:
MGA Entertainment, Inc. seeks registration on the
Principal Register of the box design shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76596389
2
with a claim of acquired distinctiveness under Section 2(f)
of the Trademark Act, for goods identified as:
trapezoidal plastic boxes for toys, games and
playthings, namely, dolls, doll clothing, doll
accessories, playsets, children’s play cosmetics,
plush toys, toy action figures and accessories
therefore, action figure play environments,
action skill games, toy vehicles and playsets,
toy scooters, board games, card games; and
athletic protective pads, namely, arm pads, knee
pads, elbow pads and wrist pads for cycling,
skating, snowboarding and skateboarding in
International Class 16.1

The application includes the following statement: “The
mark consists of a configuration of a trapezoidal plastic
box.”
The trademark examining attorney has finally refused
registration under Sections 1, 2, and 45 of the Trademark
Act on the ground that the identified goods are not goods
in trade of applicant.2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
Before turning to the merits of the appeal, we must

1 Serial No. 76596389, filed on June 7, 2004, claiming first use
dates of May 21, 2001. We note that the Board, in a decision
mailed August 17, 2007, affirmed the refusal to register in
applicant’s companion application Serial No. 76603323.
2 During the prosecution of the application, applicant amended
the application to add goods in International Class 28. The
examining attorney made final a requirement that applicant delete
from the application the Class 28 goods. Applicant states in its
brief that it is not appealing from this requirement. Thus, we
consider the Class 28 goods to be deleted from the application.
Ser No. 76596389
3
discuss an evidentiary matter. Applicant, for the first
time with its appeal brief, submitted a copy of a third-
party registration (No. 2068191) in support of its position
that the box design is registrable. The examining
attorney, in his appeal brief, has objected to this
evidence as untimely. Trademark Rule 2.142(d) provides
that the record in an application should be complete prior
to the filing of an appeal. Additional evidence filed
after appeal normally will be given no consideration. TBMP
§1207.01 (2d ed. rev. 2004). In view of the foregoing, the
examining attorney’s objection is sustained, and the third-
party registration submitted with applicant’s appeal brief
has not been considered in reaching our determination. We
hasten to add that this third-party registration, even if
considered, would not compel a different result in this
case.
We now turn to the refusal to register on the ground
that the “trapezoidal plastic boxes for toys, games and
playthings, namely, dolls, doll clothing, doll accessories,
playsets, children’s play cosmetics, plush toys, toy action
figures and accessories therefore, action figure play
environments, action skill games, toy vehicles and
playsets, toy scooters, board games, card games; and
athletic protective pads, namely, arm pads, knee pads,
Ser No. 76596389
4
elbow pads and wrist pads for cycling, skating,
snowboarding and skateboarding” are not goods in trade.
The examining attorney maintains that “[m]aking and selling
toys is applicant’s business” (Brief at unnumbered 6), and
that the trapezoidal plastic boxes function as a means for
conveying applicant’s toys at point of sale. Further, the
examining attorney argues that there is no evidence that
applicant communicates to purchasers of its toys that the
plastic boxes have a use beyond holding the goods at point
of sale. Thus, the examining attorney argues that
purchasers would have no reason to view these plastic boxes
as having additional functions.
It is applicant’s position that the identified
trapezoidal plastic boxes for toys, games and playthings
are goods in trade. Applicant maintains that its plastic
boxes have use beyond simply holding the goods at point of
sale. Applicant argues that the plastic boxes in which the
goods are packaged “can be reused by consumers as storage
boxes for the goods, and are therefore not mere packaging
that is necessarily thrown away.” (Brief at 3). In this
regard, applicant’s counsel, Sam Khare, states in his
declaration:
Unlike traditional plastic blister packaging or
some plastic clamshell packaging, MGA’s
trapezoidal plastic boxes are reusable. They are
Ser No. 76596389
5
designed to be opened and re-closed numerous
times. The child who purchases one of MGA’s
Bratz® dolls can therefore remove the doll from
the package, play with it, and when he or she is
finished replace the doll into the package and
display the doll in an attractive trapezoidal
display box on the child’s shelf when she is not
playing with the doll. The package can therefore
function not only as the packaging in which the
consumer receives the goods, but an ongoing
display box for use by the consumer.
Furthermore, the box may be used to store
numerous accessories that our dolls are typically
sold with.

In addition, applicant submitted copies of five third-party
registrations for product configuration marks, which
according to applicant are similar in nature to its mark,
thereby demonstrating that applicant’s mark is entitled to
registration.
The Board has held that collateral products which
serve the purpose of promoting a party’s primary goods and
which have more than a mere incidental function in relation
to the primary goods may constitute goods in trade. In re
Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point
pens which are used to promote applicant’s tools, but which
possess utilitarian function and purpose, and have been
sold to applicant’s franchised dealers and transported in
commerce under mark, constitute goods in trade]; and In re
United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB
1967) [calendar which is used as advertising device to
Ser No. 76596389
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promote applicant’s plastic film, but which possesses, in
and of itself, a utilitarian function and purpose, and has
been regularly distributed in commerce for several years,
constitutes goods in trade].
On the other hand, in Ex parte Bank of America
National Trust and Savings Association, 118 USPQ 165
(Comm’r Pats. 1958), it was held that a mark was not
registrable for bank passbooks, checks and other printed
forms, where such materials were used only as necessary
tools in the performance of banking services, and the
applicant was not engaged in printing or selling forms as
commodities in trade. Further, in In re Douglas Aircraft
Co., Inc., 123 USPQ 272 (TTAB 1959), the Board held that
pamphlets, booklets, brochures, bulletins, and letterheads
which serve only to advertise, explain and publicize the
goods in which an applicant deals do not constitute goods
of such applicant. In Paramount Pictures Corp. v. White,
31 USPQ2d 1768 (TTAB 1994), the Board found that an
applicant’s purported game that was not clearly labeled as
a game and consisted merely of three photocopied pages,
stapled together without any packaging, served only to
promote applicant’s band and other products, and was not a
bona fide game but rather an advertising flier for
applicant’s band. The Board also noted that there was no
Ser No. 76596389
7
real substance or entertainment value to the purported
game, that the flier/game had been distributed primarily as
a give-away, and the record showed only one advertisement
which made reference to a game.
We note that there is no evidence that applicant is a
manufacturer of boxes or that applicant is engaged in
selling boxes as commodities in trade. With respect to
applicant’s Bratz® dolls, in particular, we are not
persuaded by applicant’s argument that because the plastic
boxes may be used to store these dolls and accessories when
they are not being played with, such boxes have additional
utility and thus constitute goods in trade. Any number of
products may be stored by consumers in their original boxes
or packaging when not being used (e.g., shoes may be stored
in their original cardboard boxes, coffee beans may be
stored in their original bags, and DVDs may be stored in
their original plastic boxes). Indeed, doll collectors
especially may choose to store their dolls in the original
boxes to keep the dolls in mint condition. However, the
mere fact that original boxes or packaging may be used to
store products does not infuse such boxes or packaging with
additional utility such that they constitute goods in
trade. Because many products are stored in the containers
in which they are sold, consumers are likely to regard the
Ser No. 76596389
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plastic boxes as nothing more than point of sale
containers, as opposed to separate goods in trade.
Further, there is no indication that the Bratz®
plastic doll boxes are specifically labeled as display
boxes for the dolls. Also, there is no evidence that
applicant advertises or promotes the plastic boxes as
display boxes for the dolls. Thus, we are not convinced on
this record that consumers recognize the plastic boxes as
such. Again, we believe consumers would view the plastic
boxes as nothing more than point of sale containers for the
Bratz® dolls.
In view of the foregoing, we are not persuaded that
the trapezoidal plastic boxes have additional utility such
that they constitute goods in trade.
Insofar as the third-party registrations relied upon
by applicant are concerned, they do not compel a different
result herein. While uniform treatment under the Trademark
Act is an administrative goal, our task in this appeal is
to determine, based on the record before us, whether
applicant’s identified goods constitute goods in trade. As
is often stated, each case must be decided on its own
merits. 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
Ser No. 76596389
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[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”].
In sum, the goods in this case, trapezoidal plastic
boxes for toys, games and playthings, are unlike the ball
point pens and calendars in Snap-On Tools and United
Merchants & Manufacturers, Inc., respectively. We agree
with the examining attorney that such goods are incidental
to applicant’s primary goods, namely, toys, games and
playthings, and are not goods in trade of applicant.
Decision: The refusal to register applicant’s box
design on the ground that the identified goods do not
constitute goods in trade is affirmed.