Monday, April 27, 2009

Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional

The Board tossed another purported product configuration mark in the TTAB trash can, finding the tray design of Applicant Gratnell's Limited to be functional under Section 2(e)(5) and, if not functional, lacking in acquired distinctiveness. Gratnell's served up the decisive functionality evidence on a platter: its own advertising materials touting the superiority of the design. In re Gratnell’s Limited, Serial No. 78450327 (April 8, 2009) [not precedential].

Gratnell's sought to register the product design for "trays not of precious metals, namely storage trays, trays of plastic for storage and stackable trays," which the Board understandably referred to simply as "trays."

Functionality: The Board applied the functionality test laid down in In re Morton-Norwich Prods., Inc., 213 USPQ 9, (CCPA 1982), to determine, in essence, "whether granting trademark protection to the design will hinder competition."

Examining Attorney Nicholas Altree pointed to the utilitarian advantages highlighted in Applicant's own promotional materials:

(1) that users "can stack them in and on top of one another," (2) that the trays "save space by fitting into one another," (3) that they "are designed to fit directly into standard school furniture," (4) that "the front handle cutout allows the contents to be seen," (5) that "the flat fronts create a safer grip surface," and (6) that "a continuous ribbed edge keeps the tray sides from squeezing in."

Gratnell's contended that these laudatory claims were merely "standard statements of puffery," but the Board was not blown away by that argument because the statements "point to specific characteristics of applicant's product."

In short, the Board agreed with the PTO: "these advertisements indicate that the tray design ... provides[s] competitive advantages in terms of monitoring content, handling and storage." The Board reviewed two rather mundane alternative designs provided by Applicant, finding (with little discussion) that they "highlight the superiority of applicant's design."

Balancing the Morton-Norwich factors, the Board found the design to be functional because it "provides the ability to see content and improves handling and storage."

Acquired Distinctiveness: Assuming arguendo that the design is not functional, the Board considered Gratnell's Section 2(f) evidence, but not before ominously observing that "applicant faces a heavy burden in establishing the distinctiveness of a product design."

Gratnell's pointed to use of the design since 1992, its receipt of the 1992 WorldDidac Silver Award for the design [On wonders who got the gold? - ed.], sales of about $1 million dollars over the past six years, advertising demonstrating that consumers recognize the design as a trademark, and registration of the design in (what the Board called) the "European Trademark Office."

The Board was unconvinced: seventeen years of use is "not necessarily conclusive or persuasive;" there was no explanation of the nature or meaning of the design award; Gratnell's sales figures "do not seem to be significant;" and the advertising, which points to the qualities of the tray, is not likely to cause consumers to view the design as a trademark. The fact that Gratnell's design is distinct from any competitor's product, or is unique and appealing, does not substitute for proof that consumers recognize the design as a source indicator. As to the European registration, the Board not surprisingly pointed out that a decision by OHIM has no probative value here.

And so the Board affirmed the refusal to register.

TTABlog comment: Can you remember the last TTAB decision that found a product configuration to be registrable? I think it was this one. Unlike a stack of Gratnell's trays, such decisions are few and far between.

Text Copyright John L. Welch 2009.


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