Friday, September 03, 2010

TTAB Affirms Failure-to-Function Refusal of DAP Background Design

The Board agreed with Examining Attorney Ramona Ortiga Palmer that the purported mark shown below is a nondistinctive background design that does not function as a trademark for Applicant's "adhesives for household purposes." Applicant DAP did not seek registration under Section 2(f), and so the Board affirmed the refusal. In re DAP Brands Company, Serial No. 77116207 (August 30, 2010)[not precedential].

The Board began by addressing a dispute over Applicant's description of the mark (set out below), but the Board found it acceptable:

The mark consists of a black band extending across the upper portion of the packaging for the goods. The black band has upper and lower edges which extend in straight lines between straight side edges, but the lower edge extends downwardly from left to right away from the upper edge. The dotted outline of the product packaging is intended to show the position of the mark on the packaging for the goods and is not part of the mark.

The Board then addressed the failure-to-function issue. The Examining Attorney submitted various blister-pack background designs used by third parties in order to "segment product packaging into various segmented portions," allowing them to "set off, or quickly call attention to, a particular part of the product package so the consumer can easily find and view the material contained in that part."

DAP urged that its mark is distinctive, and pointed to two prior registrations for marks comprising a band around its products. The Board, of course, pointed out that each case must be decided on its own record, and in any case the two prior registration issued under Section 2(f).

The Board found it "clear" that Applicant's supposed mark is "a background design for applicant's word marks."

[C]ommon geometric shapes such as circles, squares, rectangles, triangles and ovals, when used as background for the display of word marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the background design alone. *** The “black band” applicant seeks to register is in the shape of a trapezoid that covers the top portion of the blister pack for its adhesives. This trapezoid is very similar to the circles, squares, rectangles, triangles and ovals discussed above, and, as used on the specimen, it does not stand out as a mark by itself.

The third-party uses of background designs of various shapes confirmed that "the purchasing public would be unlikely to regard the black trapezoid applicant seeks to register as identifying and distinguishing applicant's adhesives and indicating source."

And so the Board affirmed the refusal to register under Sections 1, 2, and 45.

Text Copyright John L. Welch 2010.


At 8:03 AM, Blogger Frank said...

I agree with the result in this case, but I am increasingly annoyed by the TTAB's stance that "it doesn't matter what the USPTO did last year, we judge every case on its own merits." Well, of course every case is decided on its own merits, but in law school they teach an arcane concept call "precedent." It is particularly applicable to administrative agencies so we can see that they are not acting arbitrarily. What bothers me most is the willingness of the trademark bar to accept that the TTAB can brush aside USPTO past practices as irrelevant. It is reducing TTAB reasoning to a child-like "because I said so." Precedent is inconvenient for agencies that what to do what they want to do. But it's the foundation of our legal system. And so I am alarmed by a sentence that reads "The Board, of course, pointed out that each case must be decided on its own record."

At 9:52 AM, Blogger John L. Welch said...

Well, you can't expect the Board to be bound by the action of a single examining attorney in another application. We're not talking about a prior Board decision here.

At 12:16 PM, Blogger Ron Coleman said...

I was going to comment just along the lines of, wow, what a dumb idea for a trademark application.

Then I saw the comments. And on this one, John, I'm once again unorthodox in my view of what real trademark lawyers think about "precedent" in the PTO, and I am aligned with Frank. If you don't mind, John, in fact I'll link here to a spot where a few of us last mixed it up on this topic over at my place...

At 12:53 PM, Blogger John L. Welch said...

I must be missing something here. First, I don't agree that the Board should be Bound by decisions made by individual examining attorneys in other applications. Second, here the prior examining attorneys found the two marks nondistinctive and required proof under Section 2(f). So had the Board followed this "precedent," it would have come out the same way here.

At 7:34 PM, Anonymous James said...

I have to agree with John here. I can't see how a trademark registration is "precedential" such that third parties with completely different marks can rely on them for their own registrations. First of all, especially in the case of descriptiveness, a once arbitrary mark can become descriptive (especially in the computer/software industry). Second, things such as identifications are always being updated by the PTO based on the Nice Agreement, so an identification in a registration not even a year old could be unacceptable today. And third (I know this might be difficult to hear since there are absolutely no sub-par attorneys in private practice), but based on the varying experiences I have had with different examiners at the PTO, some are far more stringent about things like likelihood of confusion and descriptiveness than others. And there are certainly registrations on the Register that (I personally believe) shouldn't be there. So I think it would be dangerous precedent (pun intended) to treat registrations as akin to Board decisions. Let's not forget, the majority of registrations are never even considered by the Board, so why should the Board be bound by them?

At 11:43 AM, Blogger Frank said...

I am not of the opinion that the TTAB should be bound by the decisions of USPTO examiners. In fact, just the opposite. I think it's their job to correct the decisions of Examiners when they are wrong. The point I was trying to make is that there is a world of difference between being bound by USPTO decisions and ignoring them as if they were the actions of an ignorant child. Although past practices of the USPTO may not be binding on the TTAB, they should at least be given some persuasive value. After all, the Examiners are the people who make these decisions every day. And although there are certainly bad decisions made, if the USPTO has consistently acted one way for 20 years, the trademark bar should be able to rely on that and not have it ignored with that curt dismissal "each case must be decided on its own record."

At 10:59 AM, Anonymous Orrin A. Falby said...

Frank, although I have never seen it stated in any TTAB decision, I believe that the TTAB's review of the EA's decision is "de novo". Additionally, "each case must be reviewed on its own record" because trademark law is so subjective. I can think of many decisions that would have a different outcome if the applicant's counsel had created a different record below. I cannot think of any legal analysis under the statute that lends deference to PTO practice. The fact is that there are too many inconsistencies in the EA's decisions -- not because they are not skilled, but because the record in each case is so different. To lend deference to those decisions would be a fallacy.


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