Tuesday, April 19, 2005

TTAB Affirms Refusal To Register "Whirlpool" Background Design

Optiva Corporation's application to register the "whirlpool" design shown immediately below as a trademark for toothbrushes went right down the drain in In re Optiva Corp., Serial No. 76143014 (April 5, 2005) [not citable].

application drawing

In a rambling opinion, the Board affirmed the PTO's refusal to register on two grounds: (1) the design does not function as a trademark under Sections 1, 2, and 45 of the Trademark Act; and (2) Optiva failed to comply with the PTO's requirement for a substitute specimen showing use of the mark as it appears on the application drawing.

Optiva described its design as follows: "[t]he mark consists of a circular whirlpool design, with a plurality of light and dark sections, indicating separate lines." The original specimen of use comprised the packaging box for an electric toothbrush.

original specimen

The Examining Attorney contended that the whirlpool design "is simply an ornamental background," and does not function as a source indicator. Optiva asserted that its design is registrable because it is "uncommon," "arbitrary," "complex," "fanciful," and "distinctive."

Optiva also submitted a substitute specimen, which the Examining Attorney found to suffer from the same lack of distinctiveness.

substitute specimen

The Board noted that Optiva's packaging refers to its product as a "sonic toothbrush" and emphasizes its sonic wave technology, leading the Board to agree with the PTO in concluding that:

"the interplay of the words and images on applicant's package make it most likely that its design - if consumers even cogitate over its significance instead of glossing over it as mere background ornamentation - will be perceived as a highly suggestive representation of the touted sonic waves."

The Examining Attorney, in the alternative, contended that even if the whirlpool design should be found to function as a trademark, Optiva failed to provide a specimen showing use of the design as it appears on the drawing. The Board posed the question as follows: "The determinative factor is whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s)." Relying on the CAFC's "medicine dropper" ruling and its own "cup and saucer" and "ice skater" decisions (illustrated in the opinion), the Board held that the PTO was correct in requiring a new specimen:

"Insofar as the involved design will be perceived as representing sonic waves, we find that the foreground image of the automatic toothbrush head is an integral feature of the total imagery. Seen in this light, the toothbrush head combined with the representation of a sonic wave, suggest a dynamic, three-dimensional activity. * * * On the other hand, taking the toothbrush head out of this combined graphic creates a very different image."

The Board's treatment of this "whirlpool" design is congruent with its decision in the recent Torre case, blogged here, in which the Board affirmed a refusal to register a "substantially obliterated" background design in the form of a "swirl."

The TTABlog poses the following question: does the fact that these whirlpool/swirl designs were refused registration in the northern hemisphere suggest that the designs would be registrable in the southern hemisphere? I.e., the entire flow of the case would be reversed?

Text ©John L. Welch 2005. All Rights Reserved.


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