Ruby Mine, Inc.

Trademark Trial and Appeal Board

Apr 16, 2013

No. 85287700 (T.T.A.B. Apr. 16, 2013)

Mailed:
4/16/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ruby Mine, Inc.
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Serial No. 85287700
_______

H. Michael Brucker of H. Michael Brucker Law Corp., for
Ruby Mine, Inc.

Edward Fennessy, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Ritchie, and Masiello, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Ruby Mine, Inc. has filed an application to register
the following mark for “parlor games” in International
Class 28:
1

1
Serial No. 85287700, filed on April 6, 2011, pursuant to
Section 1(a) of the Trademark Act, 15 USC §1051(a), and claiming
September 10, 2004 as the date of first use anywhere and in
commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 85287700
2

Description: The mark consists of the configuration of a
container for game cards comprising a two-piece, clear
plastic, hollow cube having a central band where the two
pieces join and walls sufficiently thick to produce an
aesthetic prismatic effect at the wall ends as a function
of ambient light conditions.

The trademark examining attorney has refused
registration of the application on four grounds. First,
the examining attorney has refused registration under
Section 2(e)(5) of the Trademark Act of 1946, 15 U.S.C. §
1052(e)(5), on the ground that applicant’s proposed mark is
functional and thus unregistrable. Second, the examining
Serial No. 85287700
3
attorney has refused on the ground that the mark consists
of a nondistinctive configuration of the goods that does
not function as a mark under Trademark Act Sections 1, 2,
and 45, 15 U.S.C. §§1051-1052 and 1127. Third, as to the
“aesthetic prismatic effect” of applicant’s package design
the examining attorney has refused on the ground that “this
feature, as described in the mark description and depicted
in the specimen of record, is solely decorative or
ornamental in nature.” (examining atty’s stmt., at
unnumbered 22 of 26). Fourth, the examining attorney has
refused on the ground that the drawing is not acceptable.
Specifically, the examining attorney notes: “Elements of a
mark that are functional are required to be shown in broken
or dotted lines.” See Trademark Act Section 2(e)(5), 15
U.S.C. 1052(e)(5); see TMEP § 1202.02(a)-(a)(ii) (2012); 37
CFR 2.52(b)(4).” (Id. at unnumbered 23 of 26.)
Distinctiveness
We consider first the refusal based on the asserted
lack of distinctiveness of the applied-for mark. We note
that both applicant and the examining attorney agree that
the applied-for mark qualifies as “product packaging”
rather than as “product design” and thus may be shown to be
inherently distinctive without a showing of acquired
distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros.,
Serial No. 85287700
4
529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000); Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081
(1992). Indeed, applicant has not asserted that its mark
has acquired distinctiveness pursuant to Section 2(f) of
the Trademark Act, and thus if the mark is shown not to be
inherently distinctive, this refusal will result in a
finding that the applied-for mark cannot be registered.
To determine if a product is inherently distinctive,
we look at the four “Seabrook factors.” Seabrook Foods,
Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ
289, 291 (C.C.P.A. 1977). The Seabrook factors consider
whether the packaging shape is:
(1) a “common” basic shape or design;
(2) unique or unusual in a particular field;
(3) 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) capable of creating a commercial impression distinct
from the accompanying words.
Id. See also In re Chippendales USA, Inc., 622 F.3d 1346,
1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (stating that
an abbreviated tuxedo costume consisting of wrist cuffs and
a bowtie collar without a shirt “constitute[d] ‘trade
dress’ because it was part of the ‘packaging’” for exotic
dancing services); Tone Bros., Inc. v. Sysco Corp., 28 F.3d
Serial No. 85287700
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1192, 1205-07, 31 USPQ2d 1321, 1330-32 (Fed. Cir. 1994)
(citing Seabrook) (reversing lower court’s summary judgment
finding that the shape and appearance of the spice
container at issue was not inherently distinctive); Yankee
Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 42-
45, 59 USPQ2d 1720, 1730-32 (1st Cir. 2001) (finding trade
dress for common elements of candle labels was
nondistinctive product packaging for which insufficient
evidence of acquired distinctiveness was shown); In re
Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2029
(TTAB 2010) (affirming that applicant’s “‘three-
dimensional, six-sided beveled shape’ [pole spanner design
used to promote services] is a mere refinement of a
commonly used form of a gasoline pump ornamentation rather
than an inherently distinctive service mark for automobile
service station services.”); In re Brouwerij Bosteels, 96
USPQ2d 1414, 1421-22 (TTAB 2010) (finding that product
packaging trade dress in the nature of a beer glass and
stand with wording and scrollwork would be perceived as a
mere refinement of a commonly known glass and stand rather
than an inherently distinctive indicator of source for the
goods); In re File, 48 USPQ2d 1363, 1367 (TTAB 1998)
(stating that novel tubular lights used in connection with
bowling alley services would be perceived by customers as
Serial No. 85287700
6
“simply a refinement of the commonplace decorative or
ornamental lighting . . . and would not be inherently
regarded as a source indicator.”); In re J. Kinderman &
Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) (“while the
designs [of packaging for electric lights for Christmas
trees that] applicant seeks to register may be unique in
the sense that we have no evidence that anyone else is
using designs which are identical to them, they are
nonetheless not inherently distinctive.”); In re Hudson
News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff’d per
curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“[f]or the ‘blue
motif’ of a retail store to be registrable on the Principal
Register without resort to Section 2(f), the trade dress
would have to be immediately recognizable as a distinctive
way of identifying the source of the store services.”).
Here, the examining attorney has submitted evidence to
show that the applied-for mark is indeed a common design
that is, rather than being unique in the field of “parlor
games,” a mere refinement of a commonly adopted and well
Serial No. 85287700
7
known form of trade dress for such goods.
2
In particular,
the examining attorney submitted evidence of
i) cube-shaped parlor games, including specifically card
games such as those offered by applicant (although not
necessarily clear plastic); ii) clear plastic card holders
(including some cube-shaped, not necessarily for games);
iii) cube-shaped clear plastic display cases (not
necessarily for cards or games, but for example for
displaying trophy golf balls or baseballs, to show that
transparency and cube shape are common and desirable
generally); iv) general cube packaging (to show that cube
packaging is common and desirable); and finally v) examples
of clear plastic parlor games, some cube-shaped, exactly as
offered by applicant.
Examples of each of these categories include the
following:

1. Cube-shaped parlor games;

Disney’s Cars 2-Scavenger Hunt Party Game.
www.birthdayexpress.com. Attached to December 8, 2011
Office Action, p. 84.

2
Although the examining attorney made arguments regarding the
fourth Seabrook factor, we do not find it relevant, since the
drawing submitted by applicant contains no words, and therefore
there can be no commercial impression “apart from the
accompanying words.” Furthermore, although the evidence infra
shows various types of packaging, we limit our analysis to those
that fit into these four categories.
Serial No. 85287700
8

2. Clear-plastic card holders (some cube shaped);

Gartner Studios Clear Favor Box (set of 50): Clear Favor
Box Kit, 50/pk. Enjoy the perfect Clear Favor Box Kit,
50/pk for your special occasion. www.google.com. Attached
to December 8, 2011 Office Action, p.100.

Serial No. 85287700
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Paper Mart; Clear P.V.C. Boxes: Clear Favor Box with Bows.
www.papermart.com. Attached to December 8, 2011 Office
Action, p. 103.

Serial No. 85287700
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3. Cube-shaped, clear-plastic display cases;

Baseball Display Case: www.amazon.com. Attached to
December 8, 2011 Office Action, p. 37.

The Container Store: Small Ball & Puck Display Cubes.
www.containerstore.com. Attached to December 8 Office
Action, p. 119.
Serial No. 85287700
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4. General cube packaging (some also clear);

Advertisement for “crystal cube” www.alibaba.com. Attached
to May 25, 2011 Office action, p. 5.

Nooka Modern Home: “Package redesign was focused on
efficiency and modernizing ancient time-telling. Cube-
shaped boxes serve as both eye-catching in-store pieces and
functional containers.” http://dannyyirgou.com. Attached
to May 25, 2011 Office action, p.4.

Serial No. 85287700
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Intriguing Facts About Packaging Boxes: Standard storage
boxes in many cases are cube shaped. www.excelteacher.com.
Attached to May 25, 2011 Office action, p. 8.

Teach Engineering: Summary Boxed In and Wrapped Up:
“students discover that the cubical box has less surface
area than the original, and thus, a cube is a more
efficient way to package things.”
www.teachengineering.org. Attached to May 25, 2011 Office
action, p. 10.

Minimising Packaging [sic]: Many plastic milk jugs are now
cube-shaped, which lowers packaging expenses by 10 to 20
cents per jug. www.sustainbusper.com. Attached to May 25,
2011 Office action, p. 13.

5. Clear-plastic parlor games (some cube-shaped)

Chat Pack For Kids: Fun Questions. www.amazon.com. Attached
to December 8, 2011 Office Action, p.10.

Serial No. 85287700
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Party Topics Conversation Place Cards from beaucoup.
www.beau-coup.com. Attached to December 8, 2011 Office
Action, p.21.

Family Road Trip Box of Questions. www.amazon.com. Attached
to December 8, 2011 Office Action, p. 29.

Serial No. 85287700
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The Family Game night Box of questions [sic].
www.google.com. Attached to December 8, 2011 Office
Action, p. 137.

Serial No. 85287700
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We find that with this evidence, the examining
attorney has convincingly shown that a cube shape is a
common shape for packaging of games and is a mere
refinement on the ubiquitous, rectangular, box-shaped
packaging. The examining attorney has also shown that it
is considered desirable for consumers to see the inside of
the packaging, and the “clear plastic” aspect of applied-
for mark is common as well.
We find these described aspects of the applied-for
mark to be at best mere refinements of common attributes of
parlor games. The “aesthetic prismatic effect” created by
the thick walls of the container is merely incidental to
the use of transparent plastic, and is not likely to create
a commercial impression apart from the other features of
the package. We note that the description itself describes
this as occurring “as a function of ambient light
conditions.” In its brief, applicant admits that the
prismatic effect is “an unavoidable effect of the overall
design.” (appl’s brief at 21). Accordingly, it is
apparent, as both applicant and the examining attorney
agree, that the described prismatic effect occurs as a
result of the other named features of the description, upon
the implementation of certain light conditions. We
therefore find that the examining attorney has shown that
Serial No. 85287700
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the overall description of the applied-for mark is one of a
common, nondistinctive design.
Applicant has attempted to rebut this showing by
submitting a declaration from its president and founder,
Cristy Clarke, dated November 8, 2011, which states in
relevant part:
“[G]ame cards are commonly packaged in inexpensive paper
containers that fit closely around the cards” (Para 4)

“The cost of one [of applicant’s] cube is approximately 85
times the cost of a paper container and adds to the overall
weight, making shipping more expensive.” (Para. 7)

“In the more than seven years that [applicant] has been
selling its game cards in the ‘cube,’ I have not seen any
game card packaging (including that of competitors) even
remotely similar to [applicant’s] cube.” (Para. 8)

While we accept all of Ms. Clarke’s declarative
statements at face value, they do not rebut the conclusions
established by the examining attorney. Specifically,
although Ms. Clarke may not be aware of competitors or
others using similar designs, the examining attorney has
shown that some do. Furthermore, although it may be most
common for game makers to package their cards in
inexpensive, paper containers, the examining attorney has
shown that it is also common for companies to package cards
in clear and/or plastic containers, and for such containers
to be cube-shaped.
Serial No. 85287700
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As such, we find that the examining attorney has
established that the applied-for mark is not distinctive,
that applicant has not made any offer to demonstrate that
the mark has acquired distinctiveness, and that applicant
has not rebutted the evidence establishing that the mark is
not inherently distinctive.
3

Decision: The refusal to register is affirmed on the
ground that the applied-for mark is not inherently
distinctive and has not acquired distinctiveness.

3
Since we affirm on this ground, we do not find it necessary to
address the other grounds raised by the examining attorney.