TTAB Affirms Refusal to Register Non-Distinctive Product Design/Packaging for Clothing

Finding the purported mark shown below - whether deemed product design or packaging - to be non-distinctive and therefore unregistrable under Sections 1, 2, and 45, the Board affirmed the PTO's refusal to register the mark for various clothing items. According to applicant, the purported mark comprises "packaging for sleepwear that consists of a transparent bag enclosing a book positioned behind matching sleepwear so that the cover of the book remains partially visible from the front of the packaging,together with a ribbon positioned directly above the book and sleepwear tying the neck of the bag. The matter in dotted lines is not part of the mark and serves only to show the position of the mark." In re Book to Bed, Inc., Serial No. 85262093 (June 21, 2013) [not precedential].

Examining Attorney Mark Rademacher maintained that the applied-for mark is more akin to product design than packaging, since the book is part of what is offered to and purchased by consumers. Of course, if the mark is a product design, then under Wal-Mart v. Samara it cannot be inherently distinctive. If it is considered packaging it could be inherently distinctive. This difference was potentially important because applicant made no attempt to prove acquired distinctiveness. In other words, its only hope was to convince the Board that its mark is inherently distinctive packaging.

Assuming, without deciding, that the mark constitutes product packaging, the Board applied the CCPA's Seabrook test to determine whether it is inherently distinctive. The record evidence showed use of transparent plastic wrap fastened with a bow for various gift baskets, as well as children's gift sets comprising books and other child-friendly products, including hats and booties. The Board concluded that "consumers are familiar with such arrangements and the placement of a book in a gift set with other items would not serve a source distinguishing purpose." In short, applicant's applied-for mark is a "mere refinement of commonly adopted and well-known product and packaging arrangements." Despite being unique in the marketplace, it is not inherently distinctive.

The Board noted that it need not make "an absolute determination" whether the proposed mark is product packaging or product configuration (or some "tertium quid" that is akin to packaging), because the particular categorization does not affect the outcome of the case. Without proof of acquired distinctiveness, the mark cannot be a registrable product configuration, and because it also lacks inherent distinctiveness, the mark cannot be registrable packaging trade dress.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: I think this decision should be precedential. Good explanation and application of the law.

Maybe I'm being pedantic, but I don't like to use the term "secondary meaning" in connection with trade dress. I think the term makes sense for word marks, because words have meanings. But otherwise, I prefer to use the term "acquired distinctiveness." What do you think about that?

Text Copyright John L. Welch 2013.