Triforest Enterprises, Inc.v.Nalge Nunc International Corporation

Trademark Trial and Appeal Board

Jan 31, 2008

No. 91165809 (T.T.A.B. Jan. 31, 2008)

Oral Hearing: Mailed: January 31, 2008
September 27, 2007 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Triforest Enterprises, Inc.
v.
Nalge Nunc International Corporation
_____

Opposition No. 91165809
to application Serial No. 76572253
filed on January 26, 2004
_____

Clement Cheng, Esq. of Law Offices of Clement Cheng for
Triforest Enterprises, Inc.

Donald F. Frei of Wood, Herron & Evans, L.L.P. for Nalge
Nunc International Corporation.
______

Before Hairston, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Nalge Nunc International Corporation (applicant), has
applied to register on the Principal Register the product
design mark shown below for a “plastic water bottle, sold
empty.”1

1 Serial No. 76572253, filed on January 26, 2004; alleging first
use of the mark anywhere and in commerce on April 4, 1992.
Applicant submitted a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91165809
2

Applicant describes its mark as follows:
The mark consists of a plastic water bottle as
shown, namely, a plastic water bottle having a
transparent, generally cylindrical container body
with rounded shoulders interconnecting the upper
and lower extremities of a cylindrical sidewall to
a relatively narrow container neck and a generally
flat, circular container bottom, respectively; an
opaque screw cap releasably engaged with threads
on the upper portion of the neck and having a
button connected to the center of its top surface
via a short stem; and a strap terminating in small
and large annular rings respectively encircling
the button stem and the lower portion of the neck
such that the large annular ring is spaced apart
and visually distinct from the screw cap, wherein
the ratio of the diameter of the generally
cylindrical container body to the overall height
of the water bottle is approximately 0.4 and the
ratio of the height of the generally cylindrical
container body extending between the neck and the
container bottom to the overall height of the
water bottle is approximately 0.8.

Triforest Enterprises, Inc. (opposer) has opposed
registration, alleging in pertinent part, that:
The 76572253 mark is functional and does not have
secondary meaning. In fact, when one looks at the
bottle it is simply a Boston Round, which has been
in the marketplace for many years.
…

Opposition No. 91165809
3
The highly functional nature of the claimed
trademark suggests that the bottle does not have
secondary meaning. There’s nothing distinctive
about any of the features listed. The features
are very common and highly desirable functional
characteristics that improve the strength and ease
of use of the bottle.

(Notice of Opposition, pp. 1 and 5)

In its answer, applicant has denied the allegations of
the notice of opposition.
The record consists of the pleadings and the involved
application. Opposer submitted the testimony deposition,
with exhibits, of its president, Steven Lin. Applicant
submitted the testimony depositions, with exhibits, of Paul
Comeau, applicant’s Director of Engineering; Margaret
Gregory, applicant’s Director of Consumer Products Business,
Sales and Marketing; Frederic Edelstein, a buyer for CDI
International, a distributor of beverage-ware; Robert Cross,
president of Equinox, a purchaser of applicant’s plastic
water bottles; and Samuel L. Belcher, owner of Sabel
Plastechs, Inc., a consulting company in the plastics
industry. Also, applicant submitted under notice of
reliance, opposer’s responses to applicant’s discovery
requests, and copies of third-party design patents and
trademark registrations.
Both parties have filed briefs and an oral hearing was
held.
Opposition No. 91165809
4
Preliminary and Evidentiary Matters
The first matter we address is applicant’s paper, filed
October 20, 2006, captioned “Objections To Trial Testimony
Of Steven Lin and Motion For Determination Adverse To
Opposer.” Applicant maintains that opposer’s president,
Steven Lin, during cross-examination, refused to answer
questions relevant to the issue of functionality involved in
this proceeding, that is, questions relating to the
manufacturing costs of opposer’s own drinking bottle. In
view of Mr. Lin’s refusal to answer such questions,
applicant requests that the Board presume that Mr. Lin’s
answer would have been unfavorable to opposer’s position in
this case. Specifically, applicant requests a determination
that the method for manufacturing applicant’s bottle is more
expensive and complex than the method for manufacturing
opposer’s functionally equivalent drinking bottle. Opposer
has not filed a brief in response to applicant’s motion.
Trademark Trial and Appeal Board Manual of Procedure
(TBMP) Section 707.03(d) provides in relevant part, that:
When an objection is made to a question propounded
during a testimony deposition, the question
ordinarily should be answered subject to the
objection. However, a witness may properly refuse
to answer a question asking for information that
is, for example, privileged or confidential.
…
Accordingly, where the witness in a testimony
deposition refuses to answer a particular
question; no court action is sought; and the Board
finds at final hearing that the objection was not
well taken, the Board may presume that the answer
Opposition No. 91165809
5
would have been unfavorable to the position of the
party whose witness refused to answer, or may find
that the refusal to answer reduces the probative
value of the witness’s testimony.

As discussed infra, one of the factors the Board considers
in determining whether a product design is functional is
whether the design is cheaper and simpler to manufacture
than alternative and competitive designs. Because opposer
is a competitor of applicant and, thus, opposer’s drinking
bottle may be considered an alternative and competitive
design, applicant’s cross-examination questions of Mr. Lin
concerning the costs of opposer’s drinking bottle were
relevant to the issue of functionality. Moreover, while Mr.
Lin objected to the questions on the ground of
confidentiality, a protective order was already in place in
this proceeding to maintain the confidentiality of any
information so designated. In view thereof, we find that
Mr. Lin should have answered the questions concerning the
manufacturing costs of opposer’s bottle. Having failed to
do so, and inasmuch as opposer has not responded to
applicant’s motion, the motion is granted such that we will
presume that Mr. Lin’s answers to the questions would have
been unfavorable to opposer’s position in this case. In
other words, we will presume that Mr. Lin’s answers would
have revealed that the method of manufacturing applicant’s
drinking bottle is more expensive and complex than the
method of manufacturing opposer’s drinking bottle.
Opposition No. 91165809
6
The second matter for our consideration is applicant’s
paper, filed March 13, 2007, captioned “Objections to and
Motion to Strike Portions of Opposer’s Reply Brief and
Motion For Sanctions.” Applicant contends that opposer’s
reply brief (1) is primarily “mere attorney argument lacking
any evidentiary support;” (2) contains exhibits that were
not properly introduced during opposer’s testimony period;
and (3) contains references to the confidential testimony of
applicant’s witness, Margaret Gregory, in violation of the
parties’ protective order. Applicant requests that the
Board strike from opposer’s reply brief such arguments,
exhibits, and testimony. In addition, applicant requests
that sanctions be entered against opposer for failure to
prosecute the opposition in good faith.
Opposer has filed a brief in response to applicant’s
motion. Opposer maintains that all of the arguments in its
reply brief are supported by the testimony of its president,
Mr. Lin. In addition, while opposer acknowledges that the
reply brief exhibits were not made of record during its
testimony period, it requests that the Board consider the
exhibits as “demonstrative.” Also, while opposer contends
that the Gregory testimony was not confidential, it states
that if the Board deems the testimony confidential, the
“Board could simply seal the reply brief rather than strike
the Margaret Gregory statement.” (Opposer’s response at
Opposition No. 91165809
7
11). Lastly, opposer contends that sanctions against it are
not warranted because it has prosecuted this case properly
and has submitted sufficient evidence to prove its case.
The Board generally will not strike statements in a
party’s brief. However, statements made in a party’s brief
will be given no consideration unless they are supported by
evidence properly introduced at trial. TBMP Section
704.06(b). Suffice it to say that to the extent that
opposer’s reply brief contains statements not supported by
evidence properly introduced at trial, we have given these
statements no consideration.
Insofar as the exhibits attached to opposer’s reply
brief are concerned, TBMP Section 704.05(b) provides that
exhibits and other evidentiary materials attached to a
party’s brief on the case will be given no consideration
unless they were properly made of record during the time for
taking testimony. In this case, we have given no
consideration to the exhibits attached to opposer’s reply
brief because they were not properly made of record during
opposer’s testimony period.
With respect to applicant’s request that the Board
strike the reference to the Margaret Gregory testimony in
opposer’s reply brief, we note that applicant marked the
entire Gregory deposition as confidential. However, only
those pages of the deposition which actually contained
Opposition No. 91165809
8
information which is truly confidential in nature, such as
sales and advertising figures, should have been marked
confidential. In this case, the testimony in question is
not truly confidential in nature and therefore, we decline
to strike it from opposer’s reply brief.
Insofar as applicant’s motion for sanctions is
concerned, suffice it to say that in view of our decision on
the merits in this case, applicant’s motion in this regard
is moot.
As the third and final matter, we note that opposer
pleaded in the notice of opposition that applicant’s bottle
design “is functional and does not have secondary meaning.”
(emphasis added). However, opposer did not pursue at trial
the issue of whether, assuming the bottle design is not
functional, it has acquired distinctiveness as a trademark.
Also, opposer’s brief is silent on this issue. In view
thereof, we consider opposer to have dropped this claim.
Thus, the only issue for decision herein is whether the
product design is functional.
Standing
Standing is not an issue in this case. Opposer has
alleged and shown that it is a direct competitor of
applicant in the sale of plastic water bottles, the goods
which are the subject matter of the mark at issue. See
Opposition No. 91165809
9
generally Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 828 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
Opposer’s Arguments and Evidence
It is essentially opposer’s position that the bottle
design applicant seeks to register is functional overall
because virtually every element of the mark outlined in the
description thereof has a utilitarian advantage. Further,
opposer maintains that applicant’s bottle design is
functional because it consists of a common “Boston Round”
bottle shape to which opposer has simply added a functional
tether cap with ring and button.
Steven Lin, opposer’s president, testified with respect
to the asserted utilitarian advantages of applicant’s bottle
design. Specifically, Mr. Lin testified that:
(1) plastic is “probably the best solution nowadays for
making a container;” it is “durable and more chemical
inured” (Lin dep. at 19);
(2) transparent bottles “allow the user to see through;”
“[t]he scientist wants to see what’s grow[ing];” “people
want to see what’s the color of the product they are
drinking];” (Lin dep. at 19-20);
(3) a generally cylindrical body “is stronger than any
other shape;” it is “more durable and [holds] more liquid
with the same amount of material;” “[t]he roller labels
Opposition No. 91165809
10
applicator actually can only be used” on this shape bottle”
(Lin dep. at 20);
(4) the advantage of rounded shoulders is “[w]hen you mold
the plastic, it has to be smooth to open the mold;” “with
this taper, the mold can be easily (sic) to open;” (Lin dep.
at 21);
(5) the opaque screw cap “is made of polypropylene” which
is a “very cheap material, and it’s softer material to
create a leak-proof function for the cap;” “people can dye
any color they want to create a different color cap” (Lin
dep. at 21-22);
(6) there is one small annular ring and one large annular
ring because “[t]he bottom ring has to be larger than the
neck itself to be able to go into” the bottle neck (Lin dep.
at 24);
(7) the .4 and .8 ratios of the container body are “the
typical Boston Round bottle ratio[s]” (Lin dep. at 24); and
(8) the 500 ml size is also “typical” of a Boston Round
bottle. (Lin dep. at 26).
Opposer also submitted a photograph of one of its own
drinking bottles; excerpts from two third-party websites
which contain pictures of bottles that are referred to as
“Boston Round” bottles; and photographs of several drinking
bottles (three of which have tethered lids) which opposer
characterizes as “Boston Round” bottles. Finally, opposer
Opposition No. 91165809
11
submitted copies of three utility patents owned by third-
parties which it maintains are evidence that the applicant’s
tether assembly, in particular, is functional.
Specifically, opposer submitted No. 524,159 for a “Stopper
Or Cover For The Mouths Of Bottles;” No. 4,595,130 for a
“Reversible Pouring Spout Assembly For Containers;” and No.
4,526,289 for a “Screw Stopper For A Can.”
Applicant’s Arguments and Evidence
Applicant, on the other hand, argues that opposer
failed to set out, much less apply, any of the appropriate
factors for determining whether a product design mark is
functional. Applicant maintains that the factors to be
considered are set forth in In re Morton-Norwich Products,
Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982), namely, (1)
whether there exists a utility patent directed to the
design, (2) whether the applicant touts the utilitarian
advantages of the design in advertisements, (3) whether
there are alternative and competitive designs, and (4)
whether the design is cheaper and simpler to manufacture
than alternative and competitive designs.
Applicant contends that there is no utility patent
directed to its plastic water bottle design. Specifically,
Margaret Gregory, applicant’s Director of Consumer Products
Business, Sales and Marketing, testified that applicant does
Opposition No. 91165809
12
not own and has never applied for a utility patent covering
its plastic water bottle. (Gregory dep. at 42).
Further, applicant points out that there are no
advertising or promotional materials of record that tout the
utilitarian advantages of the bottle design.
Applicant also maintains that there are numerous
alternative bottle designs available to competitors. In
this regard, applicant points to the following cross-
examination testimony of opposer’s president, Mr. Lin, when
shown photographs of competitors’ bottles:2
Q. Would you agree with me that the bottle
depicted in Exhibit 40 does not fall within the
scope of the mark sought by Nalgene?
A. Yes.
Q. And would Exhibit 40 function equally as well
as the water bottle sought by Nalgene?
A. This is a squeezable bottle. It’s not – it’s
a squeezable bottle. Other than that, it holds
water. It’s a water bottle.
Q. Okay. So the answer is “yes”?
A. Yes.
Q. Does the bottle depicted in Exhibit 42 fall
within the scope of the mark sought by Nalgene?
A. Yes.
Q. It does?
A. No, it doesn’t. Sorry. I didn’t pay
attention. It doesn’t.
Q. So you would agree with me, then, that the
bottle depicted as Exhibit 42 would function
equally as well as a water bottle exhibiting the
mark sought by Nalgene?
A. Yes.
Q. Would you agree with me that Exhibit 43 does
not fall within the scope of the mark sought by
Nalgene?
A. Yes.

2 Mr. Lin and several of applicant’s witnesses refer to applicant
as “Nalgene” and to its bottle design as the “Nalgene bottle.”
Applicant apparently is referred to as “Nalgene” in the industry.
Opposition No. 91165809
13
Q. And does it function equally as well as a
water bottle?
A. Yes.
Q. That demonstrates the mark sought by Nalgene?
A. Yes.
Q. In your opinion, does the bottle depicted in
Exhibit 44 fall within the scope of the mark
sought by Nalgene?
A. No, it’s not a Boston Round.
Q. Does it function equally well as a water
bottle than the – a bottle demonstrating the mark
sought by Nalgene?
A. Yes.

(Lin dep. at 145-152).
Applicant submitted over fifteen additional examples of
bottles that it contends are competitive and alternative
designs to its water bottle design.
Finally, applicant maintains that its bottle is not
cheaper or simpler to manufacture than alternative and
competitive designs. Applicant maintains that there are
several drawbacks and difficulties associated with the
manufacturing process for its bottle. According to
applicant, it is difficult to maintain a consistent wall
thickness and shape with its bottle design which adds to the
manufacturing costs; the three components of applicant’s
bottle enclosure, i.e., the tether, the cap and a button on
the cap, add to the bottle’s manufacturing costs; and the
ultrasonic process used in welding the button to the cap
adds to the bottle’s manufacturing costs.
In this regard, applicant relies on the testimony of
its Director of Engineering, Paul Comeau. Mr. Comeau
Opposition No. 91165809
14
reviewed the features of a large number of competitor’s
water bottles and testified as followed:
Q. Based on the review of these bottles and based
on your experience in manufacturing water bottles,
would you say that there are competitive water
bottles on the market to the Nalgene narrow mouth
bottle that are competitive from a manufacturing
standpoint?
A. Yes.
Q. –to the Nalgene narrow mouth bottle?
A. Very much so.
Q. Would you say there are competitive water
bottles on the market that are less costly to
manufacture than the Nalgene narrow mouth bottle?
A. Yes.

(Comeau Dep at 36-37).

In addition, applicant relies on the testimony of
Samuel L. Belcher, owner of Sabel Plastechs, Inc., a
consulting company in the plastics industry. Mr. Belcher,
who has 45 years experience in the plastic industry,
testified as follows:
Q. Solely by the design of [Nalge’s narrow mouth
water bottle], does that put the manufacturer at a
competitive advantage over competitors from a cost
of manufacturing standpoint?
A. I don’t think so at all …
Q. Do you think you could design an enclosure
assembly that costs less to manufacture than the
closure described in [Nalge’s narrow mouth water
bottle]?
A. Yes.
Q. In your prospective design, could you design
it so that the cap is retained by a tether?
A. Yes.
Q. And do so, but still make it cost less than
[Nalge’s narrow mouth water bottle]?
A. Yes. Yes …

(Belcher dep. at 66-67).

Opposition No. 91165809
15
Applicant also argues that in view of Mr. Lin’s refusal
to answer questions concerning the manufacturing costs of
opposer’s own drinking bottles, the Board must presume that
opposer’s bottles are not more expensive to manufacture than
applicant’s bottles. Thus, applicant argues that opposer is
not at a competitive disadvantage in this regard.
Analysis
As applicant correctly notes, in determining whether a
product design is functional, the Board is guided by the
Morton-Norwich case and the four factors set forth therein.
With respect to the first factor, namely, whether there
exists a utility patent directed to applicant’s applied-for
mark, there is no utility patent of record which discloses
the utilitarian features of the overall design sought to
registered. While opposer has submitted three utility
patents which it contends show that the tether assembly on
applicant’s bottle design is functional, we note that our
primary reviewing court has stated in In re Teledyne Indus.,
Inc., 692 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982):
Simply dissecting appellant’s trademark into its
design features and attributing to each a proven
or commonly known utility is not, without more,
conclusive that the design, considered as a whole,
is de jure functional and not registrable. In
other words, merely labeling each design feature
as “useful” or as “serving a utilitarian purpose”
cannot, as a matter of law, render the entire
configuration de jure functional.” (citations
omitted)

Opposition No. 91165809
16
Moreover, we note that the three utility patents are
not especially relevant to the issue of functionality herein
because they are not directed to applicant’s applied-for
mark, namely, a plastic water bottle, but rather third-party
designs in the nature of a gasoline can, a bottle stopper,
and a screw stopper for a can that generates an acoustic
signal when closed. In other words, they do not cover or
remotely resemble applicant’s applied-for mark.
With respect to opposer’s contention that applicant’s
bottle design is functional because it is in the shape of a
common “Boston Round” bottle, it is clear that applicant did
not originate or design the shape of its bottle, but has
used a pre-existing bottle shape. Indeed, it appears that
the “Boston Round” bottle has been used in the scientific
field. This fact, however, does not render applicant’s
design functional. See In re Cabot Corp., 15 USPQ2d 1224,
1228 (TTAB 1990) [“[T]he fact that the pillow pack container
may be in the public domain does not necessarily preclude
its use as a trademark”].
With respect to the second factor, whether applicant
touts the utilitarian advantages of its bottle design in
advertisements, there is no evidence of touting in the
record.
With respect to the third factor, whether there is
evidence that alternative designs are available to
Opposition No. 91165809
17
competitors, the record is replete with evidence of
alternative designs. Applicant has submitted examples of
over fifteen such designs and on cross-examination,
opposer’s president, Mr. Lin, even acknowledged the
existence of four alternative designs. A review of these
alternative designs reveals that while each incorporates
some of the features of applicant’s bottle design, there are
still other features which give each design an overall look
that is different from applicant’s design. For example, in
contrast to applicant’s bottle design, one of the
alternative bottle designs has indented panels, another is
collapsible, and still another incorporates hand grips on
the sides. In short, the record shows that there are a
variety of bottle designs available to competitors.
With respect to the fourth factor of whether
applicant’s bottle design is cheaper or simpler to
manufacture, opposer offered no evidence that the design is
the result of a comparatively simple or inexpensive method
of manufacture. Indeed, the testimony of Mr. Comeau and Mr.
Belcher indicates that, on the contrary, applicant’s bottle
design is more costly and complex to manufacture than a
number of alternative and competitive designs. Further, in
view of Mr. Lin’s refusal to answer questions concerning the
manufacturing costs of opposer’s own bottles, we have
presumed that applicant’s bottle is more expensive and
Opposition No. 91165809
18
complex to manufacture than opposer’s own bottle such that
opposer is not at a competitive disadvantage in terms of
manufacturing costs.
Accordingly, when we consider the totality of the
evidence bearing on the Morton-Norwich factors, we conclude
that applicant’s bottle design is not functional. We reach
this conclusion because the design is not disclosed by a
utility patent, there is no evidence of touting, there are a
significant number of functionally equivalent alternative
designs, and there is no evidence that applicant’s
particular bottle design is the result of a comparatively
simple or inexpensive method of manufacture. The mere
testimony of opposer’s president, Mr. Lin, as to the
purported utilitarian advantages of the individual elements
of applicant’s bottle design is not persuasive of a
different result. This testimony, in the absence of any
other evidence on the above factors which supports opposer’s
position, is simply insufficient to demonstrate that
applicant’s bottle design is functional.
As indicated, opposer did not pursue the issue of
whether applicant’s bottle design has acquired
distinctiveness, and therefore we need not address this
issue.
Decision: The opposition is dismissed.