Oralabs, Inc.

Trademark Trial and Appeal Board

Dec 4, 1998

No. 74546699 (T.T.A.B. Dec. 4, 1998)

Paper No. 19
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 4, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Oralabs, Inc.
________
Serial No. 74/546,699
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John L. Welsh of Aquilino & Welsh, P.C. for Oralabs, Inc.
Leigh Case, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney)
_______
Before Simms, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The application filed by Oralabs, Inc. to register the
figure shown below
Ser. No. 74/546699
2
for “breath freshening drops”1 was refused registration on
the ground that the configuration is de jure functional.
The Examining Attorney also indicated that, if the
configuration is held to be not de jure functional (and
thus could be registered upon a showing of acquired
distinctiveness), the evidence submitted by applicant to
prove acquired distinctiveness is insufficient for that
purpose. Registration was finally refused, and applicant
has appealed. Applicant and the Examining Attorney filed
briefs, but no oral hearing was requested.
The issues before the Board are whether the applied-
for mark is de jure functional, and, if not, whether the
container configuration has acquired distinctiveness so
that it indicates origin of the goods in applicant.
Preliminarily, we note that applicant’s original
specimens of record show two types of uses of the applied-
for mark: (1) the representation of the design of the
bottle on the blue background of the point-of-sale display
case for the goods with a “tm” thereon, and (2) the
configuration of the container of the goods. Both

1 Application Serial No. 74/546,699, filed July 7, 1994.
Applicant claimed dates of first use and first use in commerce of
May 15, 1994. Applicant included a statement that the lining on
the drawing is a feature of the mark and is not intended to
indicate color.
Ser. No. 74/546699
3
applicant and the Examining Attorney2 have argued only the
configuration of the container aspect. Hence, we will
consider the appeal on that basis.
The factors involved in determining de jure
functionality (i.e., whether or not a particular design is
a superior one) are: (i) the existence of a utility patent
showing the functional advantage of the design; (ii)
advertising materials showing that the utilitarian
advantages have been touted by applicant; (iii) facts
tending to show an absence of alternative designs; and (iv)
facts from which it could be determined that the design is
the result of a comparatively simple or inexpensive method
of manufacture. See In re Morton-Norwich Products Inc.,
671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
The Examining Attorney argues that applicant touts the
utilitarian aspects of its mark in that the specimens
(point-of-sale display cases) show that applicant’s small
bottle holds “over 150 drops” and applicant has argued that
the bottle was designed to fit into a pocket. Thus, the
Examining Attorney asserts that the configuration allows
the product to be small in size but with substantial

2 In the first Office action (page 2) the Examining Attorney
stated that “while use of the proposed mark in (sic-on) the
packaging is ‘trademark use’, as evidenced by the specimens, such
use is not enough to overcome the apparent functionality and
nondistinctiveness of the proposed mark”.
Ser. No. 74/546699
4
capacity. Further, the Examining Attorney asserts that use
of the same or highly similar designs by competitors
indicates the lack of competitive designs; and that
applicant’s cylindrical bottle shape appears inexpensive to
manufacture, and thus constitutes a comparative advantage
necessary to competitors. Finally, the Examining Attorney
also points out that the absence of a patent or patent
application by applicant does not show applicant’s applied-
for mark is registrable.
In support of her position that the applied-for mark
is de jure functional, the Examining Attorney submitted
photographs of three breath freshener bottles “identical to
applicant’s bottle” owned by three separate entities (final
Office action, page 2).
Applicant’s position is that the applied-for mark is
not de jure functional. Applicant specifically argues the
Morton-Norwich factors, supra, that there is no patent or
patent application for this matter; that the fact that the
bottle holds 150 drops of breath freshener relates to the
size of the opening of the bottle dropper, not to the size
and/or shape of the bottle itself, and there is a lack of
evidence that applicant touts the shape of the bottle in
its advertisements; that there are numerous alternative
shapes and designs of bottles for breath fresheners
Ser. No. 74/546699
5
available to competitors (including one sold under the mark
“sweet breath” submitted with applicant’s brief)3; and that
the Examining Attorney’s statement that the bottle appears
to be inexpensive to manufacture is unsupported by
evidence, and “the manufacture of bottles has reached a
point where almost any bottle design may be easily and
inexpensively manufactured.” (Applicant’s brief, page 8.)
We should point out that the mere existence of a
function does not render a configuration unregistrable
(i.e., many containers are capable of holding liquid, a
function; but the ability to hold liquid does not render
every liquid container configuration unregistrable.) To be
considered de jure functional, it must be shown that not
only does the container have a function, but performance of
that function is enhanced by the particular configuration
that it takes. See In re Virshup, 42 USPQ2d 1403 (TTAB
1997).

3 Along with its appeal brief, applicant submitted a product
sample and the display backing of a competitor’s product, “sweet
breath” breath freshening drops. The Examining Attorney did not
object to the evidence, and in fact, treated it as being of
record. Accordingly, the Board has considered that material.
However, the Board notes that in applicant’s June 5, 1995
response to the first Office action, applicant referred to
several other such competitors’ product samples made of record in
a co-pending application. The other product samples are not of
record herein and cannot be considered. Each file must be
complete and each case must be decided on its own separate
record.
Ser. No. 74/546699
6
The Examining Attorney bears the burden of making a
prima facie showing of de jure functionality of the
applied-for mark. After considering the Examining
Attorney’s evidence and arguments regarding the Morton-
Norwich factors, supra, we find the Office has not met this
burden. The only evidence submitted by the Examining
Attorney is three photographs of similar bottles used by
three separate entities for similar goods. Apparently the
Examining Attorney presumes that this showing of
competitors’ use of similar designs alone establishes the
design confers a competitive advantage. However, this
evidence is insufficient to establish that the involved
container configuration is de jure functional, especially
in light of the following facts: (i) applicant stated it
does not own a patent or a patent application; (ii) there
is no evidence of any patents owned by third parties; (iii)
applicant’s specimens (point-of-sale display cases) do not
include “touting” of the configuration by applicant; (iv)
there is no evidence of applicant’s “touting’ the
configuration in its advertisements; and (v) there is no
evidence as to the relative price of producing containers
in various shapes for these goods.
In the case of In re R. M. Smith, Inc., 734 F.2d 1482,
222 USPQ 1 (Fed. Cir. 1984), the Court recognized that the
Ser. No. 74/546699
7
initial analysis may be of the separate features of the
involved configuration, followed by consideration of the
entire design. That is, while we must consider the
applied-for mark as a whole, it is appropriate to look at
the components of the configuration. In this case, in the
absence of any evidence to the contrary, the Board assumes
that the simple cylindrical shape of the lower portion of
applicant’s bottle is one of the best and most inexpensive
shapes for a small bottle, i.e., the cylindrical bottom
portion of the bottle is de jure functional; and that the
ribbed portion of the cap is for gripping and twisting the
cap in order to easily open same, and is likewise de jure
functional. Nonetheless, the Examining Attorney has not
provided evidence as to why the cap covering the tapered
portion of the bottle needs to be either tapered or flat
topped. That is, the Examining Attorney submitted no
evidence why the applied-for mark is a superior design of a
cap for a bottle to hold breath freshening drops. The cap
portion of the bottle is a significant aspect of the
overall configuration. Thus, considering the overall
configuration, there is nothing to indicate or prove that
the applied-for container configuration has such
superiority over other possible designs that competitors
need the freedom to copy this design in order to
Ser. No. 74/546699
8
effectively compete with applicant. The fact that a few
other entities utilize a similar shape does not establish
that the container configuration as applied for by
applicant is de jure functional.
Based on the record before us, we find that the
Examining Attorney has not made a prima facie showing of de
jure functionality of the configuration as a whole.
Turning now to the issue of acquired distinctiveness4,
we find applicant’s evidence to be inadequate to prove that
the applied-for configuration is recognized as applicant’s
trademark. In support of the claim of acquired
distinctiveness, applicant submitted the declaration of
Gary Schlatter, president of applicant, and the affidavit
of Brian Crozier, “an authorized signing officer of Cool
Drops (Canada) Inc. (“Cool Drops”), a direct competitor” of
applicant. Mr. Crozier states in his affidavit that
applicant’s bottle design is proprietary to applicant, and
that the design is distinctive. The affidavit indicates
that Mr. Crozier is located in Toronto, Canada, and is an

4 In applicant’s response to the first Office action applicant
argued that its mark is inherently distinctive. However, in
applicant’s request for reconsideration after the final Office
action, applicant asserted that its “bottle design has acquired
distinctiveness” under Section 2(f). Thus, we consider applicant
to have conceded that its applied-for mark is not inherently
distinctive and, in any event, we find that it is not inherently
distinctive.
Ser. No. 74/546699
9
employee of a competitor of applicant, which is also
located in Canada. Any use of the mark by applicant in
Canada, and acknowledgment from a competitor in Canada, is
irrelevant to the question of whether the configuration has
acquired distinctiveness in the United States. The
declaration of applicant’s president, Gary Schlatter,
includes no evidence of public recognition of the involved
bottle design. Mr. Schlatter’s statements as to the amount
of advertising dollars ($670,000 for 1993 - 1996), the
units of sales (over 42 million bottles to date), and the
dollar amount of sales (over $10 million for 1993 - 1996)
are significant numbers. However, there is no clear
indication what portion, if any, of these numbers relate
solely to the bottle design, rather than applicant’s
trademark, ICE DROPS. That is, there is no information in
the declaration specifically relating to the bottle design
as opposed to applicant’s trademark ICE DROPS, under which
applicant’s goods are sold. Moreover, this evidence does
not demonstrate that the container configuration is
recognized as a source indicator. Rather, it shows only
that applicant has, in fact, advertised, promoted and sold
its goods. See In re American National Can Co., 41 USPQ2d
1841 (TTAB 1997); and In re Semel, 189 USPQ 285 (TTAB
1975).
Ser. No. 74/546699
10
Accordingly, we find that applicant has not
established that the container configuration has acquired
distinctiveness. Moreover, the photographs of similar
bottle designs used by three competitors indicate that
applicant’s bottle design differs only slightly from some
others, thus rendering applicant’s claim of acquired
distinctiveness less convincing.5
Decision: The refusal to register the applied-for
mark as de jure functional is reversed, and the applicant’s
evidence of acquired distinctiveness is insufficient to
establish that the container configuration has become
distinctive through use in commerce.
R. L. Simms
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

5 Applicant’s request in its brief that, if the Board determines
the applied-for mark is not de jure functional, then we should
remand the application to the Examining Attorney for further
evidence on the question of acquired distinctiveness is denied.
The record must be complete prior to filing an appeal. Trademark
Rule 2.142(d). An application considered and decided on appeal
will not be reopened, except for entry of a disclaimer or upon
order of the Commissioner. Trademark Rule 2.142(g). Applicant
had ample opportunity to present its evidence of distinctiveness
before the Examining Attorney, and either had no further
evidence, or chose not to submit such evidence.