TTAB Dismisses Opposition to Bottle Shape Trademark: Opposer Failed to Prove Functionality

Applying the CCPA's Morton-Norwich analysis, the Board dismissed an opposition to registration of the product configuration mark shown below for "plastic water bottle, sold empty," rejecting Opposer's claim that the design is de jure functional. Opposer also pleaded, but failed to pursue, the issue of acquired distinctiveness. Triforest Enterprises, Inc. v. Nalge Nunc Int'l Corp., Opposition No. 91165809 (January 31, 2008) [not precedential].


Opposer argued that "virtually every element of the mark ... has a utilitarian advantage," and that the 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."

Applicant Nalge Nunc pointed out that Opposer had ignored the functionality factors set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982): (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 maintained that there is no utility patent directed to its design, and it has never applied for one. Moreover, there are no advertising or promotional materials of record that tout the utilitarian advantages of the design. Numerous alternative designs are available to competitors, several of which were identified during the testimony of Opposer's president. In addition, Applicant submitted more than 15 additional, alternative bottles. Finally, Applicant asserted that its bottle is not cheaper or simpler to manufacture than other designs.

Applicant's specimen of use
The Board agreed with Applicant. Several utility patents submitted by Opposer "do not cover or remotely resemble applicant's applied-for mark." The Board found no evidence of touting. As to the third factor, the record was "replete with evidence of alternative designs." And the testimony of Applicant's witnesses convinced the Board that the subject design "is more costly and complex to manufacture than a number of alternative designs."

With respect to Opposer's contention that Applicant's design is functional because it is in the shape of a common "Boston Round bottle, the Board recognized that "applicant did not originate or design the shape of its bottle, but has used a pre-existing bottle shape" that has been used in the scientific field." That, however, does not render the design functional. [TTABlog comment: perhaps Opposer should have pursued the acquired distinctiveness issue.]

The Board therefore dismissed the opposition.

TTABlog note: Curiously, the Board never mentioned the Supreme Court's TrafFix decision and its effect on the Morton-Norwich approach to the consideration of alternative designs. The CAFC's addressed that issue in Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), but the Board ignored that case as well. It prefers to stick to the good old Morton-Norwich test.

Text Copyright John L. Welch 2008.