Thursday, August 30, 2007

Precedential No. 52: TTAB Affirms Refusal of Product Configuration Mark for Boxes as Mere Packaging and Not Goods in Trade

The Board affirmed a refusal to register the configuration shown below for "trapezoidal cardboard boxes" for toys, tames, and athletic protective pads, agreeing with the PTO that the identified goods are not goods in trade and that, even if they were, the configuration is not inherently distinctive and lacks acquired distinctiveness. In re MGA Entertainment, Inc., 84 USPQ2d 1743 (TTAB 2007) [precedential].

Examining Attorney Ellen F. Burns maintained that the goods are "incidental to Applicant's business of selling toys and do not have intended additional utility to the consumer as boxes apart from conveying the goods at point of sale." There was no evidence "that the boxes ... have a use beyond holding the goods for sale," and consumers "would have no reason to view these boxes as having additional functions."

Applicant MGA argued that the boxes have the "additional utilitarian purpose of a storage container in which a consumer keeps the puzzle pieces when not playing with the puzzle." And the box also serves as a "carrying case" for Applicant's toy laptop computer.

The Board noted decisions holding that "collateral products which serve the purpose of promoting a party's primary goods and which have more than a mere incidental function in relation to the primary goods may constitute goods in trade." [e.g., ball point pens and calendars used as promotional items]. But bank passbooks, checks, and forms have been held not to be separate commodities in trade because they were used only as "necessary tools in the performance of banking services."

Here there was no evidence that MGA manufactures boxes or sells boxes as commodities in trade. Moreover, the mere fact that original boxes may be used to store products "does not infuse such boxes or packaging with additional utility such that they constitute goods in trade." As to toy laptops, there was no evidence that MGA promoted the boxes as carrying cases and no evidence that children actually use the boxes for that purpose.

In sum, the Board concluded that MGA's trapezoidal boxes are not goods in trade, and it affirmed the PTO's refusal on that ground.

For the sake of completeness, the Board also considered MGA's Section 2(f) claim (assuming arguendo that the boxes were goods in trade). Because MGA claimed that the boxes were the actual product it was offering, the product shape cannot be inherently distinctive. In any case, MGA, by seeking registration under Section 2(f), conceded that the configuration was not inherently distinctive.

The Board agreed with the Examining Attorney that Applicant's burden of proof is heavier because it seeks to register a product configuration. Moreover, in MGA's declarations in support of acquired distinctiveness, the declarants described the design as product packaging associated with the primary goods, and not as a product configuration. And although MGA's sales of BRATZ dolls were "impressive," that evidence did not speak to the issue of acquired distinctiveness of the box design itself.

Therefore, the Board also affirmed this second ground of refusal.

Text Copyright John L. Welch 2007.


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