Friday, December 31, 2010

TTAB Reverses Refusal to Register Weldebrau Beer Bottle Design, Finding it Inherently Distinctive

Applying the CCPA's Seabrook test for product packaging, the Board reversed a refusal to register the bottle design shown below as a trademark for beers and other beverages, finding the design to be inherently distinctive. It ruled that the design is not a "common" basic shape, that it is "unique and unusual" in its field, that it is not a mere refinement of commonly-adopted trade dress, and that consumers would perceive and rely on the bottle design as an indicator of source. In re Weldebräu GmbH & Co. KG, Serial No. 79056290 (December 13, 2010) [not precedential].

The subject application was filed under Section 66(a) without any allegation of use. The Examining Attorney maintained that the design is "nondistinctive trade dress that does not function as a trademark pursuant to Section 1, 2, and 45 of the Trademark Act."

Both the Examining Attorney and Applicant Weldebrau submitted third-party registrations showing various bottle designs, some on the Principal Register, with and without acquired distinctiveness, and some on the Supplemental Register. The Board, of course, noted that these registrations "are not particularly persuasive because the registrability of each mark must be decided on its own merits." Since both Applicant and the Examining Attorney submitted about the same number of registrations, the Board could discern no particular PTO practice in registering bottle designs.

The Board found that "a central and prominent feature of applicant's bottle design is the spiral neck." One commentator likened applicant's bottle design to 'the shape of a curvy woman.'" [Perhaps after having a few? - ed.]

The Examining Attorney referenced various bottle designs that included spirals on the outside, but none of the bottles was itself spiral. Moreover, there was "very little information" showing the designs in actual use.

More generally, the Board observed that the Examining Attorney "appears to have adopted the position that any bottle 'with a cylindrical base, narrow aperture at top and neck connecting the two' used for beverages lacks inherent distinctiveness." That, said the Board, "is not the law."

And so the Board concluded that consumers "will immediately regard Applicant's bottle design as identifying and distinguishing applicant's beverages and indicating their source."

Text Copyright John L. Welch 2010.


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