Monday, January 28, 2013

Precedential No. 3: TTAB Affirms Alternative Refusals to Register Pet Food Container Design, Finding it Functional or Non-Distinctive

Mars, Inc. applied to register the packaging configuration shown below for "pet food." The mark comprises a cylindrical, inverted container having a "rounded top" with two concentric ridges forming the inner and outer lip of the top. The bottom has a wider ridged lip. Examining Attorney Heather Biddulph refused registration on the ground of functionality under Section 2(e)(5), and alternatively on the ground that the package design is not inherently distinctive and fails to function as a trademark. The Board affirmed both refusals. In re Mars, Inc.,  105 USPQ2d 1859 (TTAB 2013) [precedential].

Functionality: The Board applied the Morton-Norwich factors in considering the functionality of the design (In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982)):

1. Whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;
2. Whether applicant’s advertising touts the utilitarian advantages of the design;
3. Whether alternative designs are available that serve the same utilitarian purpose; and
4. Whether the design results from a comparatively simple or inexpensive method of manufacture.

Although Mars did not own a utility patent directed to the design, third-party patents disclosed various benefits that result from using an annulus formed by a ridged or beaded container end: the ridging or beading allows the container to withstand changes in pressure during thermal processing of the container. Mars attempted to distinguish its container design from those of the patents, but the Board found the differences irrelevant in light of the evidence. Mars also argued that its container does not require beading or ridging because its short stature provides adequate structural support. The Board noted, however, that the applied-for mark was not limited as to dimensions, material, or type of sealing.

In addition, even if applicant's container does not make use of the ridges and beadings because it is not vacuum sealed, if they are functional on third-party containers, applicant should not be granted a registration that would inhibit third parties from using such ridges and beading on containers that are vacuum sealed.

As to the flared bottom lip, the Examining Attorney maintained that this feature allows stacking of the containers. Again, a third-party utility patent disclosed a can configuration having "a flared top and a container wall with a recession at the opposing bottom," allowing one can to be stacked with a second can of the same design. "[T]he principle that having an end that cooperates with a flared lip for stacking purposes applies to both designs."

The inverted nature of applicant's design "does not negate any of the functional aspects of the design, thereby rendering them non-functional."

With regard to the second factor, applicant's based its application on an intent-to-use, and therefore the record did not include advertising material.

Mars contended that there are many alternative designs for pet food containers in the marketplace and thus no need to copy the features of its design. The Board noted, however, that not all container designs are relevant: pouches, bags, and boxes are not suitable for wet pet food, and non-circular cans may be more costly and not as readily opened by a simple can opener.

As to cost of manufacture, Mars argued that it could have chosen a "stock" container, which purportedly would have been "an easier and cheaper alternative." The Board pointed out, however, that applicant provided no information regarding whether the stock containers are in fact simpler to manufacture or less costly. At most, the evidence did not show that the applied-for configuration results from a cheaper or easier method of manufacture.

Based on the evidence of record, the Board concluded that "competitors would need this flared lip for containers where no modification is made to the sizing of exterior ridging at the opposite end of the can, or where only slight modifications of the exterior ridging exists." It therefore affirmed the Section 2(e)(5) refusal to register.

Inherent Distinctiveness: For the sake of completeness, the Board also considered the PTO's second ground for refusal: that the alleged mark lacks distinctiveness. Mars did not claim acquired distinctiveness, but product packaging may be inherently distinctive. That determination required application of the CCPA's test set out in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977):

1. Whether the subject matter sought to be registered is a “common” basic shape or design;
2. Whether the subject matter sought to be registered is unique or unusual in a particular field;
3. Whether the subject matter sought to be registered 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; or
4. Whether the subject matter sought to be registered is capable of creating a commercial impression distinct from the accompanying words.
Of course, here the fourth factor is irrelevant.

The Examining Attorney submitted various third-party pet food cans, including cans that have substantially the same ridging and/or beading as the Mars design. This evidence established that the subject design is a common basic shape.

Mars pointed to the differences between its container and the others, shown in the photograph immediately below.

The Board found this evidence unpersuasive. When the third-party containers are inverted, they share many of the same features as the Mars design. Moreover, Mars did not claim any particular size for its container.

The Mars container design resembled many metal cans use in the pet food field. It was not unique or unusual, but rather "has the appearance of an upside down container."

As to the third factor, the Board found that, in view of the "strong similarities" between the Mars container and the other non-inverted containers, the applied-for design was a mere refinement of a commonly-adopted and well-known form of ornamentation for pet food containers.

In short, the applied-for design was not inherently distinctive, and the Board affirmed the refusal to register under Sections 1,2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comments: On the issue of utility patents, it's easy to understand why an applicant's own patent, and his or her design. But as to someone else's utility patent, why aren't the statements therein merely hearsay, and inadmissible? Just because someone in a patent application makes a statement about his or her invention and its benefits, that doesn't mean the statements are true. So why should an applicant be held "accountable" for someone else's statements?

By the way, compare this decision to In re Mars, Incorporated, Serial No. 77727119 (May 16, 2011) [not precedential] [TTABlogged here], where the Board found the pet food container design shown below to be inherently distinctive.

Text Copyright John L. Welch 2013.


At 10:22 AM, Anonymous Anonymous said...

Good question John. My guess is that it's because of the ex parte nature of this proceeding. Hearsay and other strict evidentiary rules don't apply. I think hearsay would certainly be an obstacle in an inter partes proceeding.


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