The Sunrider Corp.

Trademark Trial and Appeal Board

May 2, 2005

No. 74716136 (T.T.A.B. May. 2, 2005)

Mailed:
May 2, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Sunrider Corporation, dba Sunrider International
________

Serial No. 74716136
_______

Mavis S. Gallenson and Kevin Steinman of Ladas & Parry for
The Sunrider Corporation.

Alexander L. Powers, Trademark Examining Attorney, Law
Office 105 (Thomas Howell, Managing Attorney).
_______

Before Hohein, Hairston and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

The Sunrider Corporation has applied to register, as a
mark for goods ultimately identified as "nutritional
supplements" in Class 5 and "herbal food beverages" in
Class 30, certain elements of the trade dress embodied in
the packaging for its goods. The drawing of the proposed
mark, and the description thereof, has been amended on
numerous occasions during the prosecution and examination
of the application. These changes affect the issues to be
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 74716136
2
addressed in deciding applicant's appeal. For now, so that
we may provide some framework for our discussion and
analysis, we set forth below the most recently submitted
drawing, which appears in the USPTO's TARR, X-Search and
PCTram databases.

We also set forth the most recently submitted
description of the proposed mark:
The mark consists of a configuration of a three-
stage bottle cap having a generally constant
diameter. The top section is a cap with a small
tab protruding from the side which enables the
consumer the ability to lift the cap up to access
the contents of the container. The middle
section consists of a tamper-evident, safety-tab-
seal ring with a pull-tab protrusion that allows
the consumer to remove the ring to permit the
opening of the top section of the cap. The
bottom section consists of a solid ring that
adheres to the neck of the container. Between
the top and bottom section is a small connector
which remains after the middle section or safety-
tab-seal ring has been removed and appears to be
Ser No. 74716136
3
inclusive of the middle section until such action
is taken. The dotted lines shown in the drawing
are not part of the mark but are merely intended
to show the position of the mark on the goods
packaging.

The Substantive Refusals
The above drawing and description were submitted after
applicant had filed an appeal from the examining attorney's
refusal to register the proposed mark, which presents
various issues for our consideration. In the November 18,
1998 final refusal of registration that precipitated
applicant's appeal (which hereinafter is referred to as the
"substantive final"), the examining attorney essentially
refused registration of the proposed mark under Sections 1,
2 and 45 of the Lanham Act, 15 U.S.C. §§ 1051, 1052 and
1127, on the ground that the proposed mark is functional,
and on the ground that the proposed mark is merely trade
dress having neither inherent distinctiveness nor acquired
distinctiveness. This office action did not contain any
requirements regarding the then extant drawing and
description of the mark, or discuss the question whether
the drawing showed the mark illustrated by applicant's
specimens of use. However, the examining attorney later
wrote, in his appeal brief, that his review of the record
while preparing his brief led him to conclude that
Ser No. 74716136
4
applicant's description of its proposed mark did not match
the drawing, and that the drawing did not match the
specimens. Accordingly, the examining attorney submitted
not only his brief but also a request for remand, which the
Board granted.
Before we address what occurred following remand, we
pause to note that the substantive final argued in the
alternative that applicant's proposed mark was a de jure
functional configuration or, if not, it was at least a de
facto functional configuration which was neither inherently
distinctive nor possessed of acquired distinctiveness.
However, when the examining attorney filed his brief in
response to applicant's appeal brief, he wrote as follows:
"The applicant has argued that the proposed configuration
mark is not de jure functional throughout the record. In
doing so, the applicant has stated that the proposed mark
is de facto functional. The examining attorney agrees."
Also, in the brief's conclusion, the examining attorney
asked that the refusal to register under Sections 1, 2 and
45 of the Lanham Act be affirmed, on the ground that the
proposed mark is not inherently distinctive and has not
been shown by applicant to have sufficient acquired
distinctiveness to allow for registration under Section
2(f) of the Lanham Act, 15 U.S.C. §1052(f). In short, we
Ser No. 74716136
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view the examining attorney as having withdrawn any refusal
based on "functionality."1

Requirements Made Following Remand

On remand, the examining attorney issued a non-final
office action that asserted: (1) the drawing of applicant's
proposed mark did not match the specimens of use because it
depicted the protruding tab on the middle level of the cap
of applicant's container "in a downward position," while
the specimens showed it "in an outwardly upward position";
(2) that the description of the mark was incorrect because
it referred to the entire container, rather than just the
cap, notwithstanding that applicant had previously amended
its drawing to depict the cylindrical bottle in dotted or

1 This application involves substantive refusals that were issued
prior to the amendment of the Lanham Act to include a separate
section providing for refusal of a proposed mark on the grounds
that it is functional. See Lanham Act Section 2(e)(5), 15 U.S.C.
§ 1052(e)(5). Prior to that amendment, functionality refusals
were often discussed in terms of whether a proposed mark, usually
trade dress, was de jure functional or whether it was only de
facto functional but neither inherently distinctive nor possessed
of acquired distinctiveness. De facto functionality is not an
alternative basis for a functionality refusal, it simply means
that the configuration embodied by trade dress proposed for
registration has a function. Under the parlance of prior
practice, when an examining attorney did not press a de jure
functionality refusal, the grounds for refusing de facto
functional trade dress were rooted in Lanham Act Sections 1, 2,
45. See discussions in Sections 1202.02(a)(iii)(A)-(B) of the
Trademark Manual of Examining Procedure (TMEP) (3rd ed., rev. 2).
Thus, when the examining attorney in this case withdrew the de
jure functionality refusal, he effectively restricted the
substantive refusal to Sections 1, 2, 45.

Ser No. 74716136
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broken lines, thereby indicating that the bottle was not a
part of the proposed mark; and (3) that the drawing needed
further amendment (apart from amending it to match the
specimens) because the tab on the top of the three sections
of applicant's cap, and the "outwardly upward" protrusion
on the middle section are de jure functional and have no
trademark significance. These requirements were eventually
made final (the action making them final hereinafter is
referred to as the "requirements final").
We do not view the examining attorney's statement that
certain features of the three-level cap for applicant's
container are de jure functional as being inconsistent with
his withdrawal in his brief of his prior de jure
functionality refusal as to the proposed mark in its
entirety. Likewise, when the examining attorney also
stated in the requirements final that the refusal of
registration on the ground that the proposed mark is
functional was being maintained, in our estimation, this
was only an expression of the examining attorney's view
that the proposed mark was, under then extant parlance, de
facto functional.
Applicant eventually adopted the description of the
mark that is set forth earlier in this decision as its
Ser No. 74716136
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final word on that subject.2 The examining attorney has
accepted it. Accordingly, the assertion in the
"requirements final" that the description of the proposed
mark was unacceptable is no longer an issue on appeal.
Having adopted a description of its proposed mark that
focuses on the cap for its container, applicant's
submission in response to the requirements final of a
substitute drawing which shows the bottle in solid rather
than broken lining is viewed as inadvertent error. We do
not construe applicant's actions as a deliberate attempt
to, on the one hand, adopt a description that limits its
mark to the cap and, on the other hand, submit a drawing
that claims the entire container. We conclude that
applicant, in attempting to address that portion of the
requirements final in which the examining attorney argued
that certain elements of the three-level cap were de jure
functional, focused so intently on the cap that it

2 Applicant had often argued, during prosecution of the
application, that its proposed mark was not merely the cap for
its bottle, but the entire container. In fact, following remand,
applicant's response to the examining attorney's non-final action
focusing on the drawing, description and specimens, maintained
that applicant was seeking registration of the entire container,
notwithstanding that it had earlier submitted a substitute
drawing showing the bottle portion of the container in dotted or
broken lining. Applicant's ultimate acceptance of the
description of the mark as proposed by the examining attorney
effectively abandoned that position.

Ser No. 74716136
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neglected to present the bottle in broken lining that would
match its description.3
We now address that aspect of the requirements final
that argued applicant's previous drawing did not match the
specimens of use. In essence, this is no longer an issue
in this case. First, we disagree with the examining
attorney that none of the specimens shows the protruding
tab on the middle ring of the cap extending in a downward
direction. Some of the specimens show this tab extending
in a downward direction, while others show it appearing in
an upward direction. Whether this is an optical illusion
we cannot say. However, as applicant has now submitted a
drawing which presents the tab on the top level of the cap
in broken lining, and the entire middle ring, including the
debated protruding tab thereon, in broken lining, these
aspects of the cap are not claimed as part of the mark. It
is therefore insignificant whether the specimens uniformly
show the protruding tab of the middle ring extending upward
or downward.

3 Also, it was error for applicant to submit a drawing with two
renditions of the proposed mark. See TMEP Section 807.12 (3rd
ed., rev. 2). Accordingly, if applicant should ultimately obtain
approval of its proposed mark for registration, it should submit
an amended drawing limited to one rendition of the mark, and
showing the bottle portion in broken lining, so that the drawing
will match the description.
Ser No. 74716136
9
Decision on Substantive Refusals

Having addressed the issues raised by the requirements
final, we now turn back to the issues raised by the
substantive final. We also note that the Board provided
both applicant and the examining attorney the opportunity
to file supplemental briefs, after filing of applicant's
response to the requirements final. Neither, however,
chose to file an additional brief. Accordingly, the only
briefs on the issues raised by the substantive final are
applicant's main brief and the examining attorney's
responsive brief, both filed prior to remand.
As noted earlier, because the examining attorney
withdrew the functionality refusal, the substantive issues
we must address are limited to whether applicant's three-
level cap is inherently distinctive trade dress or, if not,
whether it has acquired distinctiveness. Moreover, because
applicant has acceded to the examining attorney's
requirement that certain elements of its cap be presented
in broken lining -- in essence a requirement that applicant
disclaim exclusive rights in these elements -- we need only
consider whether the connected top and bottom levels of
applicant's cap, sans the tab that allows a consumer to
open the top, are either inherently distinctive or have
acquired distinctiveness.
Ser No. 74716136
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In In re Creative Beauty Innovations Inc., 56 USPQ2d
1203 (TTAB 2000), the Board found the configuration of a
container for "bath salts, bath powders, shower gels, body
oils, bath oils, body lotions, and creams" to be inherently
distinctive. The container -- concave on one side and
convex on the other, with a cap elongated on one side so as
to arc down over the front face of the bottle -- was found
to be unique and unusual rather than a mere refinement of a
common bath product bottle. Id. at 1207. In reaching its
decision, the Board relied on, inter alia, a Packaging
World article that termed the container an "attention-
getting package" created when the applicant therein went to
great lengths to differentiate its first branded line from
other products on the market; and the article noted that
the packaging was a gold award winner in a competition
sponsored by the National Association of Container
Distributors. Id.
The instant case is nothing like the Creative Beauty
case. Applicant, now limited to claiming the top and
bottom elements of its three-level cap, is essentially
claiming that a plain geometric shape -- a circular disk --
that forms the top of its cap for a cylindrically shaped
bottle, when coupled with the equally plain geometry of the
bottom ring that is attached to the top disk by a band so
Ser No. 74716136
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that the top cannot be lost, creates an inherently
distinctive trade dress. In Creative Beauty, the Board
held "when the design at issue is only a common geometric
shape, for example, a circle, oval, square or triangle, it
is not necessary for the examining attorney to provide
evidence that such a design is a common geometric shape"
and the applicant in such a case would have to present
evidence supporting its request for registration. Id. at
1205.
Applicant's coupling of the plain geometric shapes of
a disk and a ring is precisely the type of circumstance
contemplated by Creative Beauty. Accordingly, even if
there were no evidence in the record, we would hold that
these common geometric shapes, notwithstanding their
linkage by a band to prevent the top level of the cap being
lost, do not comprise an inherently distinctive mark. See
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed.
Cir. 2003), relying on Seabrook Foods, Inc. v. Bar-Well
Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)
(determining whether a design is inherently distinctive
involves consideration of, inter alia, whether design is a
common basic shape or unique and unusual in a field).
There is, in any event, evidence in the record that
shows that applicant's cap design would not be perceived as
Ser No. 74716136
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unique or unusual in its field. Applicant has contended
that its competitors typically package concentrated liquid
nutritional or dietary supplements in bottles that have
eye-dropper caps, rather than a cap like that of applicant.
The examining attorney, however, has put in the record (see
requirements final) photocopies of two examples of dietary
supplements that utilize three-level caps very similar to
that of applicant. Even though these products do not
appear to be liquid concentrates, they appear to be the
types of products that would be marketed in the same places
and in the same manner as applicant's identified goods.
Thus, consumers of dietary or nutritional supplements would
not be likely to perceive applicant's cap as a design on
which to rely to differentiate applicant's product from
those of competitors. See Pacer Technology, 67 USPQ2d at
1632 (design patents for cap designs similar to that of the
applicant held sufficient evidence that consumers would not
find Pacer's cap unique or unusual, even in the absence of
evidence of use of the patented designs). See also, Tone
Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321
(Fed. Cir. 1994) (trade dress is inherently distinctive
only if it is such "that a buyer will immediately rely on
it to differentiate the product from those of competing
manufacturers"). Further, although the specimens show
Ser No. 74716136
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applicant uses the container and cap shown in its drawing
for liquid concentrates, its identification of its Class 5
goods reads simply "nutritional supplements" and thus any
registration applicant would obtain would cover use of the
cap design for any nutritional supplements, be they liquid,
powder, tablets or capsules. Use of the cap design for
containers for non-liquid forms of nutritional supplements
would place applicant's products and container cap even
closer to those containers and caps put in the record by
the examining attorney.
We affirm the refusal of registration on the ground
that the claimed elements of applicant's cap design do not
comprise an inherently distinctive design, for the
examining attorney has established a prima facie case for
such refusal. See Pacer Technology, 67 USPQ2d at 1632 ("to
meet its prima facie burden, the PTO must, at a minimum,
set forth a 'reasonable predicate' for its position of no
inherent distinctiveness"). Applicant has not rebutted
that case by its mere assertion that its proposed mark is
more distinctive than trade dress registered by the USPTO
in three registrations granted to other parties. We have
not been provided with copies of those registrations, but
we have nonetheless checked USPTO records and found that
each was registered under a claim of acquired
Ser No. 74716136
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distinctiveness pursuant to Section 2(f) of the Lanham Act.
Thus, they do not in any way support applicant's claim that
its proposed mark is inherently distinctive.4 Finally, we
are not persuaded that applicant's proposed mark is
inherently distinctive by the three declarations applicant
has made of record -- one each from a consumer of
applicant's products, a distributor of applicant's
products, and from applicant's president. In large part,
each of these declarations discusses applicant's container
in its entirety, including the bottle and all elements of
the cap, for they were submitted when applicant was
maintaining its claim that its entire container was
registrable. The declarations are not particularly
probative on the question whether only certain claimed
elements of applicant's cap are registrable. Thus, we find
applicant has not rebutted the prima facie case by the
examining attorney establishing that the proposed mark is
not inherently distinctive.
Applicant argues in the alternative that its trade
dress has acquired distinctiveness and may be registered

4 Even if these registrations had been made of record and were
registrations issued on the Principal Register without resort to
Section 2(f), they would not constitute evidence that applicant's
proposed mark is distinctive. Each case must be decided on its
own record and decisions made to register other marks, on
different records are of little guidance. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Ser No. 74716136
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under Section 2(f) of the Lanham Act. On this issue, it is
applicant that bears the burden of proof. In re Hollywood
Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)
(“There is no doubt that Congress intended that the burden
of proof [under Section 2(f)] should rest upon the
applicant.”). Applicant need not conclusively establish
acquired distinctiveness, but must present a prima facie
case for registration. In re K-T Zoe Furniture Inc., 16
F.3d 390, 29 USPQ2d 1787, 1789 (Fed. Cir. 1994). Moreover,
the evidence must relate to the specific goods or services
set forth in the application and the specific mark for
which registration is sought, and the amount of evidence
that will be deemed adequate will vary depending on the
nature of the mark. See Id. and Yamaha International Corp.
v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1008
(Fed. Cir. 1988) ("the standard of proof in an opposition
under section 2(f) has always been a preponderance of the
evidence, although logically that standard becomes more
difficult to meet as the mark's descriptiveness
increases"). See also, In re Gammon Reel, Inc., 227 USPQ
729, 730 (TTAB 1985) ("In determining whether a designation
has acquired secondary meaning, we must look at the
character of the subject matter for registration and the
specific evidentiary record presented. This is clearly a
Ser No. 74716136
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subjective factual determination and the question and
character of the evidence necessary to satisfactorily prove
acquired distinctiveness will vary from case to case.").
In this case, as we have discussed, the elements of
applicant's cap that it seeks to register comprise a
circular disk (the top level of its three-level cap) and a
ring (the bottom level of the cap) connected by band.
These are not only common geometric shapes, but also
particularly suited to covering a cylindrical bottle (via
the circular disk) and ensuring that the covering is not
detached or separated from the bottle (via connection to
the retention ring). In addition, measurements taken of
one of applicant's bottles submitted as a specimen reveal
that, including its cap, the bottle is approximately three
inches long and three-quarters of an inch in diameter; and
the entire cap is only about one-half inch high and three-
quarters of an inch in diameter. In short, the container
and, more specifically, its cap, are rather diminutive.
Under these circumstances, the evidence of acquired
distinctiveness sufficient to present a prima facie case
for registration under Section 2(f), we find, ought to be
rather significant. See In re Sandberg & Sikorski Diamond
Corp., 42 USPQ2d 1544, 1548 (TTAB 1997) ("In view of the
ordinary nature of these designs and the common use of gems
Ser No. 74716136
17
in descending order of size on rings, applicant has a heavy
burden to establish that its configuration designs have
acquired distinctiveness…."). We find, however, that there
is not significant evidence of acquired distinctiveness in
this case.
Applicant's president has submitted a declaration
attesting to five years substantially exclusive and
continuous use of the proposed mark in interstate commerce,
and to growth in annual sales of products packaged in
applicant's container from 130,000 units in 1993 to
1,350,000 units in 1996. There is a second declaration
from applicant's president, as well as one each from a
distributor and a consumer; and all of these discuss the
perceived distinctiveness of applicant's container. On the
other hand, applicant conceded in its response to the first
office action of the examining attorney that it does not
advertise its products and only has brochures showing its
packaged products, which its distributors show to potential
purchasers.
While a statement of five years of continuous and
substantially exclusive use of a proposed mark may be
accepted as prima facie evidence of distinctiveness, more
evidence may be required, depending on the nature of the
design sought to be registered. In re R.M. Smith, Inc.,
Ser No. 74716136
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734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984) (Court
affirmed Board's finding of lack of acquired
distinctiveness notwithstanding eight years of continuous
and exclusive use). See also, In re Cabot Corp., 15 USPQ2d
1224 (TTAB 1990), wherein applicant claimed in each of two
applications seeking registration for the packaging for its
ear plugs, five years substantially exclusive and
continuous use. In that case, the examining attorney found
acquired distinctiveness for the package utilizing a blue
and white color scheme, as applicant utilized "look for"
advertising which highlighted the colors, but
distinctiveness was not found in the application seeking
registration of the package per se, without a claim as to
use of particular colors. In contrast, see In re EBSCO
Industries Inc., 41 USPQ2d 1917 (TTAB 1997), wherein the
Board found applicant's fishing lure design to have
acquired distinctiveness based on, inter alia, 40 years of
use.
As for applicant's sales figures and the increase in
sales over a period of years, healthy sales alone do not
prove purchaser recognition of a design proposed for
registration. See In re Bongrain International (American)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)
(growth in sales may be indicative of popularity of product
Ser No. 74716136
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itself rather than recognition of a term or design as
denoting origin) and WLWC Centers, Inc. v. Winners Corp.,
563 F.Supp. 717, 221 USPQ 701, 707 (M.D. Tenn. 1983)
(popularity in sales alone cannot establish secondary
meaning). See also, Sandberg & Sikorski, 42 USPQ2d at
1548.
Applicant, inasmuch as it does not advertise its
products, cannot rely on "look for" advertising, as could
the applicant in Cabot. See also, In re Parkway Machine
Corp., 51 USPQ2d 1201, 1205 (TTAB 1999) ("Applicant has not
promoted the asserted mark herein as a trademark and does
not mention the asserted mark in its product catalogs.").
Nor do applicant's specimen brochures used by its
distributors promote recognition of the design. See
Sandberg & Sikorski, 42 USPQ2d at 1548 ("None of
applicant's advertising demonstrates promotion of this
particular feature of applicant's wrap rings as its
marks.").
Applicant could have argued that this case is similar
to Gammon Reel, wherein acquired distinctiveness was found
in the design of a surveyor's reel, insofar as both that
case and this case involve limited declarations attesting
to acquired distinctiveness (two in Gammon Reel, three
here). However, we find the comparison unavailing. In
Ser No. 74716136
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Gammon Reel, the Board relied on the five years use
statement, the declarations of two individuals, and a
finding made by the International Trade Commission in a
separate proceeding that the Gammon Reel applicant's design
had become distinctive. In the instant case, there is no
separate proceeding that found applicant's proposed mark
distinctive. Moreover, focusing solely on the differences
between the declarations in Gammon Reel and in this case,
though there was one less declaration in Gammon Reel than
there is in this case, the Gammon Reel declarants testified
to long periods of use of the design involved therein,
whereas the declarations made of record by applicant in
this case cover a more limited period of use. The
declaration of Don Caster, a distributor of applicant's
products, and the declaration of applicant's president
attest to six years use of applicant's container. More
significantly, these two declarations and that of a
consumer, Lisa Hamilton, discuss the purported
distinctiveness of applicant's entire container and, in
particular, the protruding tear strip on the middle level
of the cap. As we have already noted, these are no longer
elements of the trade dress which applicant seeks to
register. In short, the declarations proffered in this
case are not as probative as those in Gammon Reel.
Ser No. 74716136
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The totality of the evidence of acquired
distinctiveness is not sufficient to allow applicant to
meet its burden of proving acquired distinctiveness.
Accordingly, we find that applicant has not overcome the
refusal under Sections 1, 2 and 45 by demonstrating a right
to registration under Section 2(f).
The final substantive issue to be addressed is
applicant's assertion in its brief that its proposed mark
is at least entitled to be registered on the Supplemental
Register. The examining attorney argued in his responsive
brief that applicant had unequivocally withdrawn its
earlier request for registration on the Supplemental
Register and had chosen to pursue registration on the
Principal Register, claiming, in the alternative, that the
proposed mark is either inherently distinctive or has
acquired distinctiveness. The examining attorney argues
that telephone discussions between applicant and the
examining attorney, regarding the Supplemental Register but
conducted after the applicant made the choice noted above,
did not provide applicant the right to argue on appeal, as
a third alternative, for registration on the Supplemental
Register. We agree with the examining attorney. At a
minimum, had applicant believed this issue was properly a
subject for appeal, it ought to have filed a supplemental
Ser No. 74716136
22
brief, when it was afforded by the Board an opportunity to
file such, and presented further argument on the issue. We
find the question of registrability on the Supplemental
Register is not an issue properly preserved for appeal and
have not considered the question.
Decision: The refusal of registration on the ground
that the mark in the drawing does not match the mark in the
specimens is reversed; the refusal of registration on the
ground that applicant's trade dress does not function as a
mark because it is neither inherently distinctive nor
possessed of acquired distinctiveness is affirmed.