Reelex Packaging Solutions, Inc.

Trademark Trial and Appeal Board

Oct 23, 2019

87285412 (T.T.A.B. Oct. 23, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: August 14, 2019 Mailed: October 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Reelex Packaging Solutions, Inc.
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Serial Nos. 87285383 and 87285412
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David P. Gordon and Christian Mannino of Gordon & Jacobson, P.C.
for Reelex Packaging Solutions, Inc.
Suzanne Blane, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Iancu, Under Secretary of Commerce for Intellectual Property and Director of
the U.S. Patent and Trademark Office, Thurmon, Deputy Chief Administrative
Trademark Judge and Kuhlke, Administrative Trademark Judge.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Serial Nos. 87285383 and 87285412
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In these consolidated appeals,1 Reelex Packaging Solutions, Inc. (“Applicant”)
seeks registration on the Principal Register of the two box designs shown below for
“electric cables and wire” in International Class 9.2

Application Serial No. 87285383 Application Serial No. 87285412
(the ’383 trade dress) (the ’412 trade dress)

The Examining Attorney refused registration, finding Applicant’s trade dress
functional, nondistinctive, and does not function as a mark to indicate the source of
the goods identified in the applications. 15 U.S.C. §§ 1051, 1052, 1127. We affirm the
refusal to register.

1 We consolidate the appeals because they involve common issues of law and fact with similar
records. See In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1102 (TTAB 2018); In re
Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). The briefs and evidence in the two appeals
are nearly identical. Citations are to the record in Application Serial No. 87285383 unless
otherwise noted. The specific trade dress is different in each application and where it is
necessary to refer specifically to one design or the other, we do so below.
2 Application Serial No. 87285383 was filed on December 30, 2016, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as January 1, 1980.
Application Serial No. 87285412 was filed on the same day, but is based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as January 1, 2000.
Serial Nos. 87285383 and 87285412
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I. The Trade Dress
Applicant is trying to register two box designs, as shown in the drawings above.
The first design, the ’383 trade dress, includes the following description:
The mark consists of trade dress for a coil of cable or wire,
the trade dress comprising a box having six sides, four
sides being rectangular and two sides being substantially
square, the substantially square sides both having a length
of between 12 and 14 inches, the rectangular sides each
having a length of between 12 and 14 inches and a width
of between 7.5 and 9 inches and a ratio of width to length
of between 60% and 70%, one, and only one rectangular
side having a circular hole of between 0.75 and 1.00 inches
in the exact middle of the side with a tube extending
through the hole and through which the coil is dispensed
from the package, the tube having an outer end extending
beyond an outer surface of the rectangular side, and a
collar extending around the outer end of the tube on the
outer surface of the rectangular side of the package, and
one square side having a line folding assembly bisecting
the square side.3
This description defines a box with square sides and rectangular front, back, top, and
bottom, just as the image shows. Boxes within the description may range in size from
12” x 12” x 7.5” (volume = 1080 in3) to 14” x 14” x 9” (volume = 1764 in3). The trade
dress has a relatively small circular hole in the center of the front of the box with a
payout tube and collar positioned with the hole. On its website, Applicant refers to

3 Serial No. 87285383.
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this box as the REELEX I box.4 In addition, on its website it is listed for use with
smaller wire and cable, typically with coil diameters of 9-16 inches.5
The second design, the ’412 trade dress, is for the design shown on the right above.
This design includes the following description:
The mark consists of trade dress for a coil of cable or wire,
the trade dress comprising a box having six sides, four
sides being rectangular and two sides being substantially
square, the substantially square sides both having a length
of between 13 and 21 inches, the rectangular sides each
having a length of the same length of the square sides and
a width of between 57% and 72% of the size of the length,
one, and only one rectangular side having a circular hole of
4.00 inches in the exact middle of the side with a tube
extending in the hole and through which the coil is
dispensed from the package, one square side having a
tongue and a groove at an edge adjacent the rectangular
side having the circular opening, and the rectangular side
having the circular opening having a tongue and a groove
with the tongue of each respective side extending into the
groove of each respective side at a corner therebetween.6
This description defines a much wider range of box sizes, from 13” x 13” x 7.4” (volume
= 1,251 in3) to 21” x 21” x 15” (volume = 6,668 in3). That is a range of over five times
in volume. No range is given for the size of the circular hole.7 Applicant refers to this
design as the REELEX II box.8 On its website, it is listed for use with structured

4 Office Action of April 5, 2017, at 46-47. All citations to documents in the application records
contained in the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system are to
the downloadable .pdf versions of the documents. References to the briefs on appeal refer to
the Board’s TTABVUE docket system.
5 Office Action of June 29, 2018, at 19-20.
6 Serial No. 87285412.
7 ’412 Response to Office Action of October 3, 2017, at 23-24 (Frank Kotzur, Applicant’s
longtime employee “Kotzur declaration”).
8 Id. at 22.
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networking cable (e.g., Cat. 5, 6, or 7 cable), coaxial cable, and other less-flexible wire
or cable.9
II. Refusal on the Basis of Functionality
Under the statute, functional matter is unregistrable. 15 U.S.C. § 1052(e)(5) (“No
trademark by which the goods of the applicant may be distinguished from the goods
of others shall be refused registration on the principal register on account of its nature
unless it … (e) Consists of a mark which … (5) comprises any matter that, as a whole,
is functional”). Matter is 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. Marketing
Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted). “The
functionality doctrine prevents trademark law, which seeks to promote competition
by protecting a firm’s reputation, from instead inhibiting legitimate competition by
allowing a producer to control a useful product feature.” Qualitex Co. v. Jacobson
Prods. Co., 514 U.S. 159, 164-65, 115 S. Ct. 1300, 1304 (1995); see also J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:63 (5th ed.
2019).
These appeals go to the heart of the functionality doctrine, because Applicant
seeks trademark protection for two boxes used with its patented system for coiling
electric wire and cable. If these boxes provide important utilitarian advantages to
parties that wish to use the technology disclosed in the patents after the patents’
expiration dates, providing trademark protection to Applicant could, under certain

9 ’412 Office Action of June 29, 2018, at 19.
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circumstances, impair free and fair competition. Cooper Indus. v. Leatherman Tool
Grp., Inc., 532 U.S. 424, 441, 121 S. Ct. 1678, 1688 (2001) (“copying of the functional
features of an unpatented product is lawful”). In addition, if the boxes provide
utilitarian benefits for dispensing electric wire and cable generally, regardless of the
coiling method, providing trademark protection could also impair free and fair
competition.
“To support a functionality rejection in proceedings before the Board, the PTO
examining attorney must make a prima facie case of functionality, which if
established must be rebutted by ‘competent evidence.’” In re Becton, Dickinson and
Co., 675 F.3d 1368, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) (quoting In re Teledyne
Indus., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982)). As we evaluate the two box
designs at issue here, we must determine whether the designs sought to be registered,
each taken as a whole, are functional. Becton, Dickinson, 102 USPQ2d at 1376
(consideration of “whether ‘an overall design is functional should be based on the
superiority of the design as a whole, rather than on whether each design feature is
‘useful’ or ‘serves a utilitarian purpose.’’”) (quoting Textron, Inc. v. International
Trade Commission, 753 F.2d 1019, 1026 (Fed. Cir. 1985)).
The Board also uses the following factors to help determine whether a design or
feature is functional:
(1) the existence of a utility patent that discloses the utilitarian advantages of
the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the
design;
(3) facts pertaining to the availability of alternative designs; and
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(4) facts pertaining to whether the design results from a comparatively simple
or inexpensive method of manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982);
Becton, Dickinson, 102 USPQ2d at 1377 (Fed. Cir. 2012) (using the Morton-Norwich
factors). 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) (same).
Before we analyze the record under the four Morton-Norwich factors, we need to
define the use and purpose of these boxes as gleaned from the identification of goods.
If the designs are “dictated by” the functions they perform, the boxes are very likely
functional. Morton-Norwich, 671 F.2d 1342; see also In re Bose Corp., 772 F.2d 866,
227 USPQ2d 1, 6 (Fed. Cir. 1985) (“the shape of a speaker enclosure which conforms
to the shape of the sound matrix is an efficient and superior design as an enclosure”
and therefore functional); Valu Eng’g, Inc. v. Rexnord Corp., 61 USPQ2d at 1425 (a
design is functional if it “has a particular shape because it works better in [that]
shape.”).
Certain features of these boxes are clearly dictated by utilitarian concerns. The
rectangular shape of the boxes allows for stacking which is useful for shipping and
storing. The boxes can be shipped without needing additional packaging. The ’412
design, the larger of the two, includes a built-in handle to make it easier to lift and
Serial Nos. 87285383 and 87285412
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carry the box.10 These are all basic functions and thus utilitarian advantages
provided by the boxes. Applicant touts these advantages, as the image below from its
website illustrates:11

There is one general consideration worth noting before we turn to the more specific
design elements of these boxes. Applicant touts that it is a leader in the figure 8
winding business and that its box designs have been the “standard” for many years.12
These claims suggest that competitors need to use boxes of the same general size and
shape in order to meet stacking needs and shelf spacing at warehouses, distribution
centers, and retail outlets. Using nonstandard packaging would place Applicant’s

10 While not specifically recited in the description of the trade dress, because the drawing
does not depict the handle in dotted lines, it is part of the claimed trade dress. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) §§ 807.08, 1202.02(c)(i) (2018).
11 Office Action of June 29, 2018, at 23.
12 Response to Office Action of October 3, 2017, at 33, 35 (exhibits to declaration of Timothy
Copp, Applicant’s Vice President of Business Development “Copp declaration”).
Serial Nos. 87285383 and 87285412
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competitors (or competitors of Applicant’s licensees) at a substantial disadvantage,
which suggests the standard box designs at issue here are functional.
The dimensions of the boxes and the size and placement of the payout tubes and
payout holes are dictated by the amount and size of the electric wire and cable placed
in the box.13 This is particularly demonstrated by Applicant’s use of these boxes in
conjunction with wire and cable wound into a figure 8 coil using Applicant’s winding
method. Applicant’s winding “technology dates back to World War II when the
REELEX figure-eight coil was first proposed to the military as a way to lay down field
wire while still allowing an infantryman free use of both hands.”14 Applicant obtained
patents for this technology.15 The technology proved particularly useful for small
gauge wire and cable and eventually led to what Applicant calls its REELEX

13 See Response to Office Action of October 3, 2017, at 24 (“If the box is too small for the coil,
the box will bulge and either cause problems stacking, or threaten the structural integrity of
the box itself. If the box is too big for the coil, the coil could slide or rotate within the package
and cause unraveling and tangling issues. Many tangling problems in the field are caused by
too large a box.) (packaging guide, exhibit to Kotzur declaration); Office Action of June 29,
2018, at 14 (“REELEX II features a much larger payout hole to increase bending radius and
payout performance of products that are too large, stiff or sensitive to bending for REELEX
I.”) (Applicant’s website www.reelex.com).
14 Response to Office Action of October 3, 2017, at 33 (Copp declaration, exhibit A).
15 Id. See also Kotzur declaration ¶ 3 (“I have been involved in the design of packages for
figure-eight coiled cable products that are wound using [Applicant’s] proprietary and
patented coil winding technology.”) Response to Office Action of October 3, 2017, at 21; Reelex
website www.reelex.com (“REELEX is a patented method of winding cable or any cord-like
product in such a way as to result in a reel-less, self supporting coil.”); Office Action of
November 8, 2018, at 21. We note that U.S. Patent Nos. 4,367,853, 4,406,419, 4,477,033,
4,741,495 are referenced in Applicant’s advertising materials. Response to Office Action of
October 3, 2017 at 28, 35 (Copp declaration exhibit A).We make no specific findings based on
the content of these patents. The patents made of record are discussed below as part of the
analysis under the first Morton-Norwich factor.
Much of this early development was done by Applicant’s apparent predecessor, an entity
known as Windings, Inc. Our references to Applicant include such predecessors.
Serial Nos. 87285383 and 87285412
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system.16 Applicant licenses others to use its REELEX technology to wind and
package coils of cable and wire.17
When Applicant’s figure 8 winding system is used, the resulting coil has a roughly
diamond-shaped opening in the sidewall of the coil, unlike a coil wound using other
technology. The following illustration, using cut-away images, is taken from
Applicant’s website and helps show the difference:18

Applicant’s competitors have a right to use box designs that will work well with figure
8 wound coils no longer covered by patents. L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117, 25 USPQ2d 1913, 1923 (Fed. Cir. 1993) (quoting Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847, 1855 (1989)) (“Defendant
… may copy plaintiff’s goods slavishly down to the minutest detail: but he may not
represent himself as the plaintiff in their sale.”); New England Butt Co. v.
International Trade Commission, 756 F.2d 874, 225 USPQ 260 (Fed. Cir. 1985) (the
policy behind the functionality doctrine is “not the right to slavishly copy articles

16 Id.
17 Applicant also licenses its know-how, which may be substantial and offer real benefits to
its licensees. 4 TTABVUE 20. Its competitors, however, are free to use any expired patented
technology and in so doing are likely to develop their own know-how over time.
18 Office Action of April 5, 2017, 44.
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which are not protected by patent or copyright, but the need to copy those articles,
which is more properly termed the right to compete effectively”). Applicant cannot
use trademark law to inhibit potential competitors from gaining the experience and
know-how needed to make high-quality figure 8 wound coils of cable and wire.
The figure 8 wound cable and wire sold by Applicant’s licensees, as shown below,
has a diamond-shaped opening that extends from the outer edge of the coil to its open
center.19

The cable or wire is wound in a figure 8 pattern in a manner that produces little or
no twisting. The coil is unwound from its center, with the leading edge of the cable or
wire threaded through the diamond-shaped opening as in the example above.
From this basic overview of Applicant’s figure 8 winding system, it is clear that
several features are useful in a box made for a figure 8 wound coil. First, a payout
hole is useful to allow users to take advantage of the easy and twist-free dispensing
possible from a properly-wound figure 8 coil. Second, a payout tube extending from
the payout hole to the center of the coil is useful to maintain the radial opening in the
coil and to maintain the coil in alignment with the payout hole.

19 Id. at 48.
Serial Nos. 87285383 and 87285412
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Third, the payout hole should be located on one of the rectangular panels in order
to align it with the diamond-shaped radial opening in the coil. Fourth, it is useful to
position the payout hole in the front panel, to provide easy access and a more direct
path for dispensing the cable or wire. Fifth, it is useful to position the payout hole
near the horizontal center of the front panel, because the diamond-shaped opening in
the coil is near the horizontal center of the side of the coil, as shown in the comparison
of the REELEX coil and a so-called knockoff above.
Sixth, it is useful to position the payout hole near the vertical center of the front
panel for at least two utilitarian reasons. To begin with, this position leaves space for
a handle in the upper part of the front panel. The ’412 trade dress shows exactly this
configuration and the ’412 box is typically larger than the ’383, meaning a handle is
likely to be more useful with the ’412 box. Positioning a handle in the upper area of
the front panel is useful because it reduces how far a person must bend to reach the
opening and lift the box.
Another advantage to positioning the payout hole near the vertical center of the
front panel is that the circular outer surface of the coil will contact the rectangular
front panel near its vertical center. This result follows from simple geometry. A circle
that fills a square will touch the square at the center of each side. If the payout hole
is not near the vertical center of the front panel, there will be open space between the
payout hole and the outer surface of the coil. A longer payout tube may be needed,
and the fit between the outer surface of the coil and the payout hole/tube will not be
Serial Nos. 87285383 and 87285412
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as close. These may be relatively minor disadvantages, but they are easily avoided by
positioning the payout hole in the vertical center of the front panel.
A seventh useful feature is a box with larger and generally square side panels and
rectangular front, back, top and bottom panels. The figure 8 wound coils shown in the
evidence have diameters that exceed their widths.20 Applicant’s packaging guidelines
state, “The box should always fit the finished REELEX coil snugly.”21 This
requirement means the rectangular panels will be narrower (i.e., distance between
side panels) than long.
The seven useful features described above combine to define a box with at least
the following characteristics:
• square side panels and rectangular front, back, top and bottom panels,
where the rectangular panels are narrower than long;
• a payout hole positioned near the center of the front panel;
• a payout tube extending from the payout hole to the center of the coil; and
• sizing that fits the coil snugly and a hole sizing that accommodates different
sized cable and wire.
These features are all present in the ’383 and ’412 boxes and show that the designs
were dictated by the utilitarian purpose they serve. In re Morton-Norwich Prods.,
Inc., 213 USPQ at 17 (trade dress is functional if the design is dictated by the
functions it must perform). For packaging a figure 8 wound coil of cable or wire, these
boxes are “the best, or at least one, of a few superior designs.” In re Bose Corp., 227

20 Response to Office Action of October 3, 2017, at 29, 31-33.
21 Id. at 25 (Exhibit to Kotzur declaration) (emphasis in original).
Serial Nos. 87285383 and 87285412
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USPQ2d at 4. These combined features are “essential to the use or purpose of the
article or affect[] the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs.,
Inc., 456 US 844, 214 USPQ 1, 4 n.10 (1982). Though we find this analysis sufficient
to show that the boxes are functional, we will review the four Morton-Norwich factors
as well. It is not required that all four factors be proven in every case, nor do all four
factors have to weigh in favor of functionality to support a refusal. Nevertheless, in
reaching our decision, we will review all four factors. See AS Holdings, Inc. v. H & C
Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013).
A. Do Applicant’s Patents Disclose Utilitarian Advantages of the
Claimed Trade Dress?
The existence of a utility patent “is strong evidence that the features claimed
therein are functional” and “[w]here the expired patent claimed the features in
question, one who seeks to establish trade dress protection must carry the heavy
burden of showing that the feature is not functional, for instance by showing that it
is merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix, 58
USPQ2d at 1005. The utility patent need not “claim the exact configuration for which
trademark protection is sought in order to undermine an applicant’s assertion that
an applied-for mark is not” functional. Becton, Dickinson, 102 USPQ2d at 1377.
Rather, “a patent’s specification illuminating the purpose served by a design may
constitute equally strong evidence of functionality.” Id. As noted by Professor
McCarthy in his discussion of TrafFix, “… while the Court continually talked about
the evidentiary weight of what appeared in the patent claims, in fact the Court did
not restrict the evidentiary use of a utility patent to its claims. The Supreme Court
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used both disclosures in the specification and argument made in the prosecution
history as persuasive evidence of functionality.” MCCARTHY, at §7:89. Likewise,
McCarthy notes that “[i]t is proper to look to the disclosure (as distinguished from
the claims) in a utility patent as evidence of the functionality of a shape. The
Trademark Board has held that each embodiment of the invention described in a
utility patent is equally functional for purposes of trademark law.” MCCARTHY, at
7:89.1 (citing In re Bose, supra, and In re Edwards Ski Products Inc., 49 USPQ2d
2001 (TTAB 1999)).
In response to the Examining Attorney’s request for information and
documentation for any patent that has as its subject the applied-for mark or any
feature thereof, Applicant submitted five patents:22
U.S. Patent No. 5,810,272 for a Snap-On Tube and Locking
Collar for Guiding Filamentary Material Through a Wall
Panel of a Container Containing Wound Filamentary
Material;
U.S. Patent No. 6,086,012 for Combined Fiber Containers
and Payout Tube and Plastic Payout Tubes;
U.S. Patent No. 6,341,741 for Molded Fiber and Plastic
Tubes;
U.S. Patent No. 4,160,533 for a Container with Octagonal
Insert and Corner Payout; and
U.S. Patent No. 7,156,334 for a Pay-Out Tube.
Many of the patents bear directly on the “tube extending through the hole” and
“the tube having an outer end extending beyond an outer surface of the rectangular

22 Response to Office Action of September 26, 2017, at 13-62.
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[front] side, and a collar extending around the outer end of the tube on the outer
surface of the [front] rectangular side of the package,” which are part of the ’383 trade
dress and “with a tube extending in the hole,” which is part of the ’412 trade dress.
Some relevant excerpts from the patents are set forth below:
Material from the core of the coil is drawn through a feed
tube extending radially through the windings of the coil.
The coil is packaged within a container provided with a
window positioned for withdrawal of the material from the
coil. … Claim 1 … and including a feedout tube inserted in
said radial hole for feeding the inner end of the material
and having opposing sides engaging the inner surfaces of
the container, said feedout tube being aligned with said
perforated hole; 23
A payout tube assembly for unwinding filamentary
material from a wound coil of filamentary material
contained in a container having a wall panel with a hole for
mounting a push-on tube and locking collar on the
container wall panel, wherein a hollow payout tube having
an end portion extends through the hole, the end portion
including a flange extending around the periphery of the
tube and having a surface engaging the inner surface of the
wall panel surrounding the hole, and further including at
least three segmented locking protrusions extending
around the periphery of the end portion … a locking collar
for engaging the outer wall of the wall panel … This
invention relates to payout devices attached to containers
for dispensing strand-like or filamentary material from a
wound coil in the container, and more particularly to such
payout devices comprising a hollow feed tube guide (payout
tube) inserted through a hole in the wall panel of the
container and pushed into locking engagement with
locking collar so that the wall panel is retained between the
locking collar and payout tube, whereby the strand-like or
filamentary material can be withdrawn from the container
through a central hole in the payout tube and the locking
collar. … Thus, a primary object of the invention is to
provide a two-piece, push-on payout tube comprising the

23 U.S. Patent 4,160,533, Response to Office Action of September 26, 2017 at 16-17.
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payout tube and locking collar which can be snap-fastened
together on opposite sides of the wall of a container, remain
in a permanent locked position and provide a smooth
radius between the edge of the payout tube and the locking
collar to prevent a sharp bend in the filamentary material
being withdrawn from the container and through the
payout tube. … Claim 1 A payout tube assembly for
unwinding filamentary material from a wound coil of
filamentary material contained in a container having a
wall panel with a hole for mounting in said push-on tube
and locking collar on the container wall panel. Comprising:
a hollow payout tube having an end portion extending
through the hole, said end portion including a flange
extending around the periphery of the tube …;24
This invention relates to payout tubes for guiding
filamentary material through a payout hole extending from
the outer wind to the inner wind of a coil of filamentary
material wound in a Fig. 8 wind, and in particular to such
payout tubes made from corrugated fiber or plastic
material and which have an oval, diamond, elliptical or
round shape with an oversized opening to accommodate
CAT 5, CAT 6, and CAT 7 cables for kinkless unwinding
from the inner coil to the outer coil of the wound material.
… It is another object of the present invention to provide
an enlarged payout tube that engages with an enlarged
payout hole to provide payout of wound flexible material
having unusually stiff, flexible, hard, soft, prone to
tangling, large or small characteristics. It is another
feature of the payout tube of the present invention that an
enlarged payout tube provides kinkless and tangle-free
unwinding of filamentary material from a wound package.
It is a further advantage of the payout tube of the present
invention that wound flexible material having unusually
stiff, flexible, hard, soft, prone to tangling, large or small
characteristics may be unwound without tangling or
kinking. … Claim 1 A payout tube … comprising: an
entrance opening and an exit opening in coaxial and spaced
relationship with one another; the size of said entrance and
exit openings are sufficiently large to allow the filamentary
material to be withdrawn from the inside of the coil and

24 U.S. Patent 5,810,272, Response to Office Action September 26, 2018, at 18, 23, 26.
Serial Nos. 87285383 and 87285412
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through the payout tube without birdnesting or kinking;25
and
A pay-out tube adapted to be used in conjunction with a
capable container for directing cable from a winding
disposed within the container. The pay-out tube includes a
molded tube for receiving and guiding cable from the
interior of the cable container … Pay-out tubes are
commonly used in the cable industry. … Fig. 1 … Pay-out
tube 10 is basically of a two-piece construction and includes
a tube indicated generally by the number 20 and a collar
indicated generally by the numeral 12. … Turning now to
collar 12, … Disposed on surface 11a, aligned with the
minor axis 25b is a clip 13. … Turning now specifically to
clip 13, in a preferred embodiment a wire or cable clip 13 is
integrally molded into the collar 12.26
The utility of a handle (present in the ’412 trade dress) is claimed in one patent:
Claim 2 … A package as in claim 1 wherein said container
further includes a cutout portion forming a handle for
transporting the package.27
The utility of a cable catch on the outer flange of the payout tube (present in the ’383
trade dress) is disclosed in another patent.28

25 U.S. Patent 6,341,741, Response to Office Action September 26, 2018, at 49, 53.
26 U.S. Patent 7,156,334, Response to Office Action September 26, 2018, at 54, 60, 61.
27 U.S. Patent 4,160,533, Response to Office Action of September 26, 2018, at 17.
28 U.S. Patent 7,156,334 Figs 1, 6 (and accompanying description of those figures). The
description of the ’383 trade dress does not mention this feature, but it is shown on the
drawing and Applicant did not exclude any parts of the drawing from the trade dress. See
Trademark Rule 2.52(b)(4) (“The applicant must also use broken lines to show any other
matter not claimed as part of the mark.”). It is more clearly visible in the specimen of use.
Serial Nos. 87285383 and 87285412
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The 6,086,012 patent (’012) discloses and claims a version of the REELEX II box (the
’412 trade dress).29 The claims in this patent are directed to a six-sided box made from
twelve panels.30 The patent also discloses information about the purpose and
advantage of a box of the ’412 box design.31
The ’012 patent also explains that the box “is dimensioned in accordance with the
diameter of the wound coil that is to be contained therein and may be manufactured
in standard sizes to accommodate standard diameters of wound coils.”32 The patent
provides as an example, “the container 60 shown in Fig. 10A may be 9.5 inches x 13.5
inches to accommodate a 12 inch diameter coil.”33 We take the cited dimensions as
referring to the rectangular panels of the box, so that the side panels are 13.5” squares
for use with a coil having a 12” diameter. In a second patent, Applicant explains that
14 inch coils are “the nominal size for CAT5-CAT7 unshielded cables.”34 These two
patents are evidence that 12 and 14 inch diameter coils are standard sizes.

29 U.S. Patent 6,086,012 at Fig. 10B and claims 1-26. Response to Office Action of September
26, 2018, at 29-39.
30 While the number of panels required to make the six-sided box is not relevant to what is
visible to consumers as a possible indication of source, and is not included in the description
of the trade dress in the ’412 application, the resulting six sides of the box are relevant.
31 ’012 patent col. 2, ll. 8-15 (asserting that box with larger payout hole works better with
CAT 5, CAT 6 and CAT 7 cable), 19-29 (asserting that REELEX II package provides better
performance with various types of cable and wire).
32 Id. at col. 5, ll. 7-10.
33 Id.
34 U.S. Patent 6,341,741 at col. 9, ll. 13-14.
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This evidence is significant for two reasons. First, it shows that the sides of the
square panels should be about 1.5” larger than the coil diameter in order to fit well.
As we noted above, Applicant’s packaging guidelines provide, “The box should always
fit the finished REELEX coil snugly,”35 and we find that sizing the square sides of
the box about 1.5” larger than coil diameter meets this need. The coil diameter range
listed for the REELEX II system is 12-22 inches.36 The 13 – 21 inch range in the
description of the ’412 trade dress covers almost the entire product size range for this
type of box, leaving only coil diameters of 19.5” and larger outside the definition of
the trade dress.
Second, this evidence identifies two typical or common coil sizes (i.e., 12” and 14”)
and shows that both are covered by the ’412 trade dress. Given that this basic box
design is sized to fit the most common coil diameters and that the ’012 patent
identifies benefits of this basic design, we find this substantial evidence that the ’412
trade dress provides important utilitarian advantages. TrafFix, 58 USPQ2d at 1006.
This evidence shows the ’412 trade dress is a simple, basic and adequate box design
for figure 8 wound coils of cable and wire.
The coil size examples noted above are also relevant to the ’383 trade dress
because that trade dress includes boxes with square sides ranging from 12” to 14”.
Allowing 1.5” difference between the box dimensions and coil diameter, the ’383 trade
dress is suitable for coils from 10.5” to 12.5” and we note the ’012 patent identified a

35 Response to Office Action of October 3, 2017, TSDR 25 (Exhibit to Kotzur declaration)
(emphasis in original).
36 Office Action of June 29, 2018, TSDR.
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12” coil as a typical or standard size. So while the ’383 trade dress does not cover as
large a range of coil diameters as the ’412 trade dress, it does appear to include at
least one common coil size.
Overall, the disclosures and preferred embodiments in the patents reveal the
functionality of significant aspects of the designs. Much of the applied-for aspects in
the applications are referenced in the utility patents and these aspects are not
“merely an ornamental, incidental, or arbitrary aspect of the packaging.” TrafFix, 52
USPQ2d at 1005. The critical question is “the degree of utility present in the overall
design of the mark.” Becton, Dickinson, 102 USPQ2d at 1376. Here, the specific size
of the boxes and size and location of the payout holes is dictated by their function to
house and dispense electric wire and cable of specific sizes. The size and nature of the
cable dictates the size of the hole, the size of the coil dictates the dimensions of the
box, including the fact that it is square on two sides and rectangular on other panels.
Applicant’s argument that these features are ornamental and arbitrarily selected37 is
not supported by the record. All aspects are functional, and the sum of individually
functional parts does not result in a protectable mark.
B. Does Applicant’s Advertising Tout Utilitarian Advantages of the
Trade Dress?
Under this factor, we consider evidence regarding “advertising materials in which
the originator of the design touts the design’s utilitarian advantages.” Valu
Engineering v. Rexnord, 61 USPQ2d at 1426 (citing Morton-Norwich, 213 USPQ at

37 See Kotzur declaration ¶¶ 7-8, Response to Office Action of October 3, 2017, at 22.
Serial Nos. 87285383 and 87285412
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15-16). Applicant submitted evidence of advertising and the Examining Attorney
identified pages from Applicant’s website that tout the utilitarian advantages of the
REELEX system. Applicant alleges that its figure 8 winding and packaging system
provides better dispensing of the cable or wire.38 More specifically, Applicant touts
the following additional advantages for the boxes at issue here: “less waste and easy
recyclability,” “easier shipping and palletization,” “easy to stack,” “can be shipped
without external packaging,” and “simplifies storage.”39 This advertising, in short,
promotes the substantial utilitarian advantages of the boxes.
An ad submitted by Applicant shows both boxes side-by-side and states, “For over
25 years, we’ve been the number one provider of low cost, reelless packaging to the
wire and cable industry.”40 Another ad touts the flexibility and low cost of the two box
designs at issue here.41 An article Applicant submitted identifies the claimed trade
dress as “the standard package” for a wide range of wire and cable.42 Applicant also
touts the utilitarian aspect of the payout tubes “to ensure each half-twist of the figure-
eight resolves inside the coil, rather than outside. If no payout tube is used, the half-
twists can create kinks and twists in the product which can cause payout issues. …
Innovative tube designs ensure smooth payout, even in cold temperatures or when

38 Office Action of June 29, 2018, at 13-20.
39 Id. at 17.
40 Response to Office Action of October 3, 2017, at 33 (exhibit to Copp declaration) (also
referring to the “low cost of the REELEX and REELEX II packaging”).
41 Id. at 34.
42 Id. at TSDR 35.
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packaging less-flexible products.”43 This advertising is further evidence the box
designs are functional.
Applicant’s website materials include numerous references to so-called
knockoffs.44 Applicant appears to define as knockoffs all coils of cable and wire sold
by unlicensed parties in boxes similar to the ’383 or ’412 trade dress.45 While
Applicant identifies a number of allegedly inferior aspects of the winding and
dispensing of these so-called knockoffs, there is no explanation for why these products
are considered knockoffs. The samples of so-called knockoffs presented on Applicant’s
website bear third party branding, which refutes the claim that these products are
knocking off Applicant or trying to trade on Applicant’s good will.46 Stuart Spector
Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1575 (TTAB
2009) (no intent to trade on goodwill where third parties “clearly display the
manufacturer’s trademark or trade name on the” goods).
We find this advertising to be strong evidence of functionality, both for what it
directly shows (utilitarian advantages of the two box designs) and for what it reveals
about the likely consequences of issuing registrations for Applicant’s standard box
designs.

43 Office Action of June 28, 2018, at 14-15.
44 Office Action of April 5, 2017, TSDR 44-50.
45 Id. at 46-48.
46 Id. at 47.
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C. Are Equivalent Alternatives Available?
“Where the design is functional under the Inwood formulation there is no need to
proceed further to consider if there is a competitive necessity for the feature.” TrafFix
Devices, 58 USPQ2d at 1006. The TrafFix decision does not mean competitive need is
irrelevant, but rather that a design “cannot be given trade dress protection merely
because there are alternative designs available.” Valu Eng’g, 278 F.3d at 1276; see
also Becton, Dickinson, 102 USPQ2d at 1378.
The evidence discussed above shows the boxes are functional, and therefore this
factor is less critical. For sake of completeness, however, we review the evidence
Applicant submitted regarding alleged alternative designs. That evidence was
provided in a single declaration by Frank Kotzur, a long-time employee of
Applicant.47 Mr. Kotzur asserts that both box designs would work with different
shape or size payout holes. He identifies oval, elliptical, diamond and rectangular
shapes as options. For the ’412 design, Mr. Kotzur says a payout hole of 1.5” or larger
will work. But for the ’412 design, he notes that payout holes 2.5” and smaller or 6.0”
and larger are alternatives. For both boxes, Mr. Kotzur asserts that different box
shapes and aspect ratios are possible and that the payout hole could be on a different
panel or off-center.
We cannot give much weight to Mr. Kotzur’s declarations because (1) he provides
no evidence to support his speculation as to possible alternatives; (2) several of his

47 Response to Office Action of October 3, 2017, TSDR 22-24. Mr. Kotzur is a named inventor
on the patents Applicant identified and he had been an employee for 42 years when his
declarations were submitted. He submitted a very similar declaration in support of each
application.
Serial Nos. 87285383 and 87285412
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assertions are contradicted by other evidence; and, (3) as an employee of Applicant,
his declaration appears to be self-serving. On the first point, Mr. Kotzur does not
provide any performance testing showing that these alternatives would work as well
as the claimed trade dress. Nor does he provide any cost estimates for designing and
producing such non-standard designs. Without such evidence, we cannot determine
whether any of the alleged alternatives are equivalent in performance, quality or cost
to the claimed trade dress.
We also question Mr. Kotzur’s assertions because of the contradictions in his
declarations. He states, for example, that any box “large enough to house the coil”
will work, but Applicant’s own packaging guidelines say the box should fit the coil
“snugly.” He states that “many design elements—shape and aspect ratio of the
package, as well as the the [sic] shape, size, and location of the hole—which were
selected for their ornamentality and distinctiveness.” This statement is inconsistent
with the documentary evidence discussed above, which refers to utilitarian
advantages of the two boxes.
Applicant did not present any evidence of third parties using any of the alternative
designs Mr. Kotzur claims are possible. There is evidence of third parties using boxes
closer in size to the ’412 trade dress, but using a payout hole closer in size to that
identified with the ’383 trade dress.48
Applicant submitted some evidence of alternative designs used by third parties,
but these appear to be used with spools of wire rather than with figure 8 wound coils

48 Office Action of April 5, 2017, TSDR 47.
Serial Nos. 87285383 and 87285412
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or other reel less coils.49 Applicant submitted evidence showing different packaging
options it provides including shrink-wrap and hard plastic packaging.50 These are
alternatives, but they are different options with a different set of advantages and
disadvantages. For example, such designs require additional packaging for shipping
and storage. These designs may require additional equipment and may cost more
than the standard boxes at issue here. We find only similar boxes designed for use
with figure 8 wound or otherwise reel less coils are relevant alternatives to the
claimed trade dress. There is simply no evidence in the record of any such alternatives
in use.
Finally, Applicant argues that because its trade dress definitions do not cover all
sizes and shapes of boxes, its competitors have plenty of alternatives available. This
argument misses the point. The boxes at issue here are simple, basic boxes that
provide numerous utilitarian advantages for figure 8 or otherwise wound coils of cable
and wire designed for dispensing from the center of the coil. That means the boxes
are functional, and Applicant’s competitors need not look for other possible
alternative designs. Just forcing competitors to engage in the process of finding
alternatives might hinder competition. The functionality doctrine protects
Applicant’s competitors and ensures they can use the same useful box designs
Applicant has used for many years.

49 Response to Office Action of October 3, 2017, TSDR 49, 54 (both appear to show a product
with a spool in a box); 31 (ad showing spools that can be converted into figure 8 wound coils).
50 Id. at TSDR 31.
Serial Nos. 87285383 and 87285412
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D. Does the Trade Dress Result from Comparatively Simple or
Inexpensive Methods of Manufacture
There is no evidence in the record concerning the cost or complexity of
manufacturing the claimed trade dress.
E. Overall Design Is Functional
Having considered the evidence in the record, we find that the overall design of
Applicant’s trade dress is “essential to the use or purpose of the device” as used for
“electric cable and wires.” Thus, we find the packaging trade dress designs to be
functional and not registrable on that basis. We, therefore, affirm the refusal to
register under Section 2(e)(5).
III. Distinctiveness
Trade dress that is not inherently distinctive and that has not acquired
distinctiveness under Section 2(f) of the Trademark Act must be refused registration.
This is an independent ground for denying registration.
Product packaging trade dress may be inherently distinctive. Wal-Mart Stores, In.
v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). Here, Applicant has
effectively conceded that its packaging trade dress is not inherently distinctive by
arguing during prosecution solely that its trade dress has acquired distinctiveness. It
is Applicant’s burden to prove its trade dress has acquired distinctiveness. In re La.
Fish Fry Prods., Ltd., 797 F.3d 1331, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015).
To show these box designs have acquired distinctiveness, Applicant “must show
that, in the minds of the public, the primary significance of a product feature or term
is to identify the source of the product rather than the product itself.” Inwood Labs.,
Serial Nos. 87285383 and 87285412
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214 USPQ at 4 n.11; see also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1422 (Fed. Cir. 2005). The kind and amount of evidence necessary to establish
acquired distinctiveness depends on the nature of the proposed mark and the
circumstances surrounding its use. In re Steelbuilding.com, 75 USPQ2d at 1424; In
re General Mills IP Holdings II, LLC, 124 USPQ2D 1016, 1018 (TTAB 2017). We
require “more evidence … where a mark is such that purchasers seeing the matter in
relation to the offered goods would be less likely to believe that it indicates source in
any one party.” General Mills, 1245 USPQ2d at 1018. For example, it has been held
that color alone requires substantial evidence of acquired distinctiveness because
“color is usually perceived as ornamentation.” In re Owens-Corning Fiberglas Corp.,
774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985); General Mills (finding no
acquired distinctiveness for the yellow color of the regular CHEERIOS cereal box).
Courts and the Board have held that common product designs and basic packaging
require more evidence of acquired distinctiveness. For example, the Federal Circuit
found that eight years of continuous and substantially exclusive use of a pistol-grip
water nozzle was insufficient to show acquired distinctiveness. In re R.M. Smith, Inc.,
734 F.2d 1482, 1485, 222 USPQ2d 1, 3 (Fed. Cir. 1984). “One who chooses a
commonplace design for his package, or one different from competitors only in
essentially functional features, even if he is the first to do so, must expect to have to
identify himself as the source of goods by his labelling or some other device.” In re
Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (CCPA 1980); see also In re
Ennco Display Sys., Inc., 56 USPQ2d 1279, 1286 (TTAB 2000).
Serial Nos. 87285383 and 87285412
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Applicant’s two box designs are common packaging devoid of any unusual or
ornamental features. Indeed, most of the features of these boxes were dictated by the
functions the boxes perform, as noted above in our discussion of functionality. Given
the common nature of the trade dress before us, we find that only a strong showing
of acquired distinctiveness will suffice. Applicant’s evidence falls far short of
satisfying this standard.
Acquired distinctiveness may be proven through “both direct and circumstantial
evidence.” Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739,
1743 (Fed. Cir. 2018). “Direct evidence includes actual testimony, declarations or
surveys of consumers as to their state of mind. Circumstantial evidence is evidence
from which consumer association may be inferred, such as years of use, extensive
amounts of sales and advertising, and any similar evidence showing wide exposure
of the mark to consumers.” Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468,
1506 (TTAB 2017). Applicant submitted circumstantial evidence—advertising and
sales volume—and direct evidence—declarations. Both Applicant and the Examining
Attorney submitted circumstantial evidence of third-party use of similar boxes for
similar goods.
A. The Circumstantial Evidence
Applicant submitted evidence of its advertising through declarations by Timothy
Copp.51 Mr. Copp is Applicant’s Vice President of Business Development, and he

51 See, e.g. Response to Office Action of October 3, 2017 (’412 application), at 27-41; Response
to Office Action of October 3, 2017 (’383 application), at 26-40.
Serial Nos. 87285383 and 87285412
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stated that Applicant has had advertising expenses of about $2 million over 39 years
for the ’383 design and $1.1 million over 16 years for the ’412 design. Samples of this
advertising were provided with Mr. Copp’s declaration.
Trade dress is not likely to become distinctive without advertising drawing
attention to the trade dress as a source identifier. None of Applicant’s advertising did
this. Rather, the advertising evidence simply shows Applicant’s product and
highlights REELEX as the brand. Mag Instrument Inc. v. Brinkmann Corp., 96
USPQ2d 1701, 1723-24 (TTAB 2010) (perhaps most damaging to showing of acquired
distinctiveness is lack of any “look for” advertising); see also Duraco Prods. Inc. v. Joy
Plastic Enters., Ltd., 40 F.3d 1431, 32 USPQ2d 1724, 1741 (3d Cir. 1994) (advertising
expenditures “measured primarily with regard to those advertisements which
highlight the supposedly distinctive, identifying feature” of the product
configuration); Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 36 USPQ2d 1065,
1071-72 (7th Cir. 1995) (“look for” advertising encourages consumers to connect the
claimed trade dress with the particular producer); First Brands Corp. v. Fred Meyer
Inc., 809 F.2d 1378, 1 USPQ2d 1779, 1782 (9th Cir. 1987) (“advertising campaign has
not stressed the color and shape of the antifreeze jug so as to support an inference of
secondary meaning”).
Applicant’s advertising tells consumers, “Always make sure you look for the
REELEX trademark when purchasing cable.”52 This advertising promotes the

52 Office Action of April 5, 2017, at 50.
Serial Nos. 87285383 and 87285412
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REELEX trademark, not the box designs.53 Applicant’s packaging guidelines also
emphasize promotion of the REELEX trademark through the following requirement
for those packaging their goods in REELEX boxes:
As described at the beginning of this guide, all packages
containing REELEX coils must have the REELEX
trademark logo visible. The logo serves to identify to the
end user that the package is a genuine REELEX package
and will behave as such.54
In guidance for end users, Applicant even tells consumers not to rely on the box
designs to identify goods licensed by Applicant:
The REELEX trademark is required to be printed on all
packages containing REELEX technology. Every package
made on a REELEX machine should have a REELEX mark
located somewhere on the package. No logo? Think twice
about installing that cable!55
These instructions to consumers are effectively an admission that the boxes are not
distinctive and that only Applicant’s trademarks are a reliable indicator of source.
The following image is provided below the preceding passage on Applicant’s website:56

53 Response to Office Action of October 3, 2017, at 28-36.
54 Response to Office Action of October 3, 2017, at 25.
55 Office Action of April 5, 2017, at 45.
56 Id.
Serial Nos. 87285383 and 87285412
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The REELEX word mark and Applicant’s design mark are both shown on every one
of these boxes. Consumers are not likely to rely on the design of the box as a source
identifier when Applicant’s licensees prominently feature these two trademarks on
the boxes. Applicant submitted other advertising of its REELEX system, but all these
items also display the REELEX mark.57 We find the advertising of record does
nothing to show these boxes have acquired distinctiveness.
Mr. Copp’s declarations also state that Applicant’s boxes are used by over 100
licensees and that tens of millions of boxes of licensed REELEX coils have been sold.58
Sales of a branded product develop recognition and goodwill in the brand. But it does
not follow that consumers see these two boxes as brands merely because lots of boxes
have been sold. In re Serial Podcast, LLC, 126 USPQ2D 1061, 1072 (TTAB 2018)
(“Evidence of the commercial success of a product or service does not necessarily also
mean that the consuming public perceives the mark used in connection with such
products or services as primarily a source-indicator.”). As the advertising shows, the

57 Response to Office Action of October 3, 2017, at 29-34.
58 Response to Office Action of October 3, 2017, at 25.
Serial Nos. 87285383 and 87285412
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boxes have the REELEX branding on them. Boxes used by Applicant’s licensees will
also bear the licensee’s own branding. When faced with a commonly shaped box that
has prominent branding of at least two different parties (i.e., Applicant and its
licensee), we see no reason why consumers would take the extraordinary step and
conclude that the boxes themselves are also a source identifier. Such an argument
defies logic, common sense, and the precedents of the Board and its primary
reviewing court.
The Board faced a somewhat similar situation in the General Mills case, which
involved the mark shown below (used with boxes of regular CHEERIOS cereal).

General Mills submitted evidence to support its claim that the yellow color had
acquired distinctiveness. General Mills, 124 USPQ2d at 1018-19. That evidence
included unsolicited media references to the yellow color as “distinctive,” “instantly
recognizable,” and “iconic.” Id. at 1019. Survey evidence was submitted showing over
50% of those sampled associated the yellow color with the CHEERIOS product. Id. at
1020-21, 1026-27.
After considering all the evidence, the Board found General Mills had failed to
prove the yellow color had acquired distinctiveness. Id. at 1027. This conclusion was
based in part on the fact that while boxes of regular CHEERIOS were yellow, the
boxes also featured the CHEERIOS trademark. Id. at 1025 (all exposures to General
Serial Nos. 87285383 and 87285412
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Mills’ yellow trade dress “include repeated, prominent displays of the front of
Applicant’s box, with the mark CHEERIOS in bold, black letters in sharp contrast to
the yellow background, as well as an audio track on which the term CHEERIOS is
repeatedly sung or spoken”). Because the CHEERIOS trademark was prominent on
the boxes, there was little reason for consumers to rely on the yellow color of the box
as a source identifier.
This logic applies with even more force here, because Applicant has submitted so
little evidence. There is no evidence of unsolicited media references to Applicant’s
boxes as distinctive or recognizable. There is no survey evidence. Applicant’s sales
volume and advertising expenditures are much smaller than those of General Mills.
The Board in General Mills also discussed third-party use of yellow packaging. Id.
at 1022-23. There was evidence of several other cereals that used a yellow color in
their packaging, including some of the same type of cereal in a yellow box or bags. Id.
When the Board considered the evidence of third-party use together with the fact that
the well-known CHEERIOS word mark was always used with the yellow box, it found
that General Mills had not proven the yellow color had acquired distinctiveness.
In the case at hand, both Applicant and the Examining Attorney submitted
evidence of third-party use of similar boxes for similar goods.59 Applicant argues this
evidence shows that third parties have copied the trade dress and that copying is
evidence of acquired distinctiveness. We disagree. Copying is only evidence of

59 Office Action of April 5, 2017, TSDR 47 (showing several so-called knockoffs with branding
blurred out).
Serial Nos. 87285383 and 87285412
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acquired distinctiveness if it is proven that the copying was done to trade on the
goodwill of another party.
Take for example, the Board’s decision in In re Serial Podcast, LLC, 126 USPQ2D
1061, 1075-77 (TTAB 2018), which found the following mark had acquired
distinctiveness:

The Board’s conclusion was based, in large part, on copies and parodies of this mark,
many of which included the stylized elements of the mark and were clearly intended
to identify the podcast with which the mark was used. Id. These examples of copying
showed an intention by the copying parties to identify or parody the applicant’s
trademark. Such copying is evidence of acquired distinctiveness, because the copyist
had to believe the mark was distinctive or the intentional effort to identify or parody
the mark would fail.
Absent evidence of a similar intent, the alleged copying here does not prove
acquired distinctiveness. In this case, the evidence shows that third parties using
similar boxes tend to use their own trademarks on the boxes.60 These are not the
actions of parties trying to trade on Applicant’s goodwill. This evidence shows other
parties taking advantage of a useful box while applying their own branding to the
box. Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d

60 Id. at 7, 14-17, 20, 22-23, 25, 30-31, 37-38, 40.
Serial Nos. 87285383 and 87285412
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1549, 1575 (TTAB 2009) (no intent to trade on goodwill where third parties “clearly
display the manufacturer’s trademark or trade name on the” goods).
Courts and the Board have reached a similar conclusion in other cases where third
parties copied a utilitarian product design or feature. “Where the proposed mark is a
product design, the copier may be attempting to exploit a desirable product feature,
rather than seeking to confuse customers as to the source of the product.” In re Van
Valkenburgh, 97 USPQ2d 1757, 1768 (TTAB 2011) ); see also Thomas & Betts Corp.
v. Panduit Corp., 65 F.3d 654, 36 USPQ2d 1065 (7th Cir. 1995) (copying product
shape to take advantage of useful features is not evidence of acquired
distinctiveness).
The circumstantial evidence of record does not support an inference that these
boxes have acquired distinctiveness.
B. The Direct Evidence
Applicant’s distinctiveness arguments are based largely on five declarations,
which are a form of direct evidence.61 The declarations are nearly identical and
formulaic (although the use of reordered sentences may make the declarations appear
different). The declarations also all feature the following line: “I can readily
distinguish coiled cable having the applied-for trade dress from the boxes of coiled
cable that are not licensed by Reelex, unless the non-licensed boxes are improper

61 Response to Office Action of October 3, 2017, TSDR 37-41. Nearly identical declarations
were filed in support of the ’383 and ’412 applications, with the only significant difference
being the different description of the trade dress.
Serial Nos. 87285383 and 87285412
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knock-offs.”62 Reelex’s packaging guidelines require use of the REELEX trademark
on all licensed packages, so there is an easy way to “readily distinguish” licensed from
unlicensed products. The quoted statement undermines Applicant’s claim of acquired
distinctiveness.
On one hand, the declarants are stating that they can readily differentiate a
licensed product in a REELEX I or REELEX II box from products in completely
different looking boxes. That is an entirely unremarkable assertion and it tells us
nothing about whether Applicant’s boxes are distinctive. It simply means the
declarants can tell apart products in packages that look different.
But when the declarants compare licensed and unlicensed products that use the
same type of box, they cannot distinguish them. In other words, the design of the box
is not a source identifier. The design of the box is not something these declarants can
use to determine whether the goods are licensed by Applicant. These statements
refute Applicant’s claim and show that the boxes are used by both licensed and
unlicensed parties and thus, are not being used “to identify and distinguish his or her
goods … from those manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown.” 15 U.S.C. § 1127. Applicant’s own declarants
tend to show that the boxes are not distinctive.
Four of the five declarants are licensees of Applicant and, therefore, stand to
benefit if Applicant is successful here. These are presented as sophisticated,
knowledgeable declarants from different companies. Yet each declarant made exactly

62 Id.
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the same statements about the trade dress. Clearly someone other than the
declarants prepared these documents. All of these considerations undermine the
reliability of the declarations. The fifth declarant represents a large trade group. We
would be inclined to place more weight on this declaration if it had addressed
industry-wide understanding, but it is essentially identical to all the others. We find
this declaration also has little probative value.
Even if we accepted these declarations as evidence that the two boxes have
acquired distinctiveness to “those in the field of packaged electrical cabling,”63 that
would not be sufficient. The applications identify the goods as “electric cables and
wire.” There are no trade channel limits in the identification, so we must evaluate
distinctiveness from the perspective of all consumers and users of “electric cables and
wire,” and not solely from the perspective of experts in the field. In re Meyer & Wenthe,
Inc., 267 F.2d 945, 122 USPQ2d 373, 376 (CCPA 1959) (an applicant must “submit
proof that its mark is distinctive, not only to ‘experts’ in the field, but to the
purchasing public”); In re UDOR U.S.A., Inc., 89 USPQ2d 1978, 1987 (TTAB 2009);
In re Edward Ski Prods., Inc., 49 USPQ2d 2001, 2005 (TTAB 1999). Here, four of the
five declarations are from cable and wire manufacturers that use Applicant’s
technology to distribute their wire and cable to end users. There are no declarations
from retailers or end users of electrical wire and cable.

63 4 TTABVUE 19.
Serial Nos. 87285383 and 87285412
- 39 -

C. The Box Designs Are Not Distinctive
We find the evidence of record, including direct and circumstantial, does not prove
the two box designs have acquired distinctiveness. And the Applicant has effectively
conceded that its packaging trade dress is not inherently distinctive. Therefore, we
affirm the refusal to register for lack of distinctiveness. 15 U.S.C. §§1051, 1052, 1127;
In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593, 594-96 (C.C.P.A. 1967);
In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253, 1254-55 (TTAB 1998).
Decision: The refusals to register Applicant’s ’383 and ’412 box designs are
affirmed both because the designs are functional, and because they are not
distinctive.64

64 Because we affirm on two independent grounds, we do not need to reach the refusal based
on the third ground—that the designs do not function as marks to indicate the source of the
goods identified in the applications.