Tuesday, December 04, 2012

Precedential No. 35: TTAB Finds Mouthwash Bottle and Cap to Be Inherently Distinctive Source Indicators

Providing a breath of fresh air after so many enervating Section 2(d) and 2(e)(1) decisions, the Board reversed the PTO's refusals to register the two marks shown below, consisting of the overall shape of a container with cap, and the shape of the cap by itself, for mouthwash. The examining attorney deemed the marks to be merely non-distinctive product packaging, and further asserted that the designs are merely ornamental with no showing of acquired distinctiveness. The Board, however, ruled that the designs are inherently distinctive source indicators whose decorative or ornamental aspects are merely incidental. In re The Procter & Gamble Company, 105 U.S.P.Q.2d 1119 (TTAB 2012) [precedential].

The Board began by invoking the Supreme Court's teaching in Wal-Mart that consumers of many products are "'predisposed' through conditioning to regard packaging, containers, and other features of trade dress as signals of the source of the particular product." Wal-Mart, 54 U.S.P.Q.2d 1068-9. Moreover, the record supported "the proposition that indicia of product packaging, and specifically bottle designs, function as source indicators in the retail market for mouthwash products." The fact that store brands often mimic the trade dress of nationally-branded mouthwash products reinforces the conclusion that the trade dress has a source-identifying function

The Board applied the CCPA's Seabrook test to determine whether the designs at issue are inherently distinctive. Under Seabrook, three factors are to be considered in assessing a package design: (1) whether the packaging is a common basic shape or design, (2) whether it is unique or unusual in the particular field, and (3) whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods. [The Board noted that, as Professor McCarthy has pointed out, these three factors really ask the same question: is the design so unique or unusual that one can assume that it will be automatically perceived by consumers as an indicator of source?]

Considering the cap design, the Board compared it to the bottle tops in the record and found it to be unusual and not a mere variation or refinement of an existing design. Therefore it is inherently distinctive and entitled to registration on the Principal Register.

As to the bottle-and-cap design, the Board found it to be "not common" for oral care products. In fact the design has won awards because of its uniqueness, and garnered media publicity when it was released. The record showed that the design "not only enhanced the appeal of the product, but served simultaneously to identify P&G's SCOPE OUTLAST brand as well as to update consumers' associations with the SCOPE brand." Compared to other designs, this design is unique in the field.

As to whether the subject design is a mere refinement of well-known ornamentation for a mouthwash bottle, the Board agreed with P&G that the examining attorney failed to provide "any mouthwash bottle designs that includes the unique contours, shapes, and proportions encompassed within applicant's mark."

The Board therefore reversed the refusal to register this design as well, finding it to be inherently distinctive and registrable.

Finally the Board reversed the refusals to register based on the ground of mere ornamentality, pointing out that a design that serves primarily as a source indicator, and is only incidentally ornamental or decorative, is registrable as a trademark. See TMEP Section 1202.03.

Text Copyright John L. Welch 2012.


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