TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness

The Board upheld a refusal to register the proposed product configuration mark shown below, for "dental floss," the mark comprising "the presentation and 3-Dimentional (sic) appearance of a dental floss product, specifically comprising an arbitrary bundle of blue looped dental floss." The Board ruled that the mark could not be inherently distinctive (Wal-Mart), and found that it lacked acquired distinctiveness and therefore failed to function as a trademark. In re Loops, LLC, Serial No. 97069982 (January 16, 2024) [not precedential] (Opinion by Judge David K. Heasley).

In an attempt to avoid the impact of Wal-Mart, Applicant Loops argued that the mark comprises product packaging akin to the trade dress in Two Pesos, and therefore is registrable as inherently distinctive. The Board pointed out, however, that in the subject application, Loops describes the mark as "the presentation and 3-Dimentional [sic] appearance of a dental floss product."

In any case, Loops claimed acquired distinctiveness under Section 2(f),"thereby tacitly conceding the lack of inherent distinctiveness." [So why the discussion of inherent distinctiveness? - ed.].

The Board observed that the burden to prove acquired distinctiveness of a color mark is "substantial." So, too, with regard to a product configuration mark. [But if the proposed mark is limited to a configuration in a particular color, does that lighten the burden? ed.].

In attempting to prove acquired distinctiveness, Loops submitted unsworn, unauthenticated lists from anonymous sources that supposedly set forth its sales figures over the past 25 years. The Board noted that, although it "may generally take a somewhat permissive stance with respect to the admissibility and probative value of evidence in an ex parte proceeding, TBMP § 1208, . . . this strains the limits of permissiveness. Unsworn assertions are not evidence."

Moreover, even taking the sales figures at face value, they did not establish acquired distinctiveness of the blue loop bundle. The Board pointed out that Loops' packaging prominently displays its word marks, DENTALOOPS and FLOSS LOOPS. "Customers are more likely to associate these word marks with the source of the goods."

Loops stated that its sales were mostly to institutional or correctional facilities, since the floss loops are “designed to prevent alternate use as a ligature and sold mostly to prison systems.” The Board understood this assertion as an attempt to show that these institutional consumers have come to view the proposed mark as a source indicator.

We note, however, that Applicant provides no support for this supposedly limited channel of trade, either by limiting its identification of goods (“dental floss”) or by a verified statement. 37 C.F.R. § 2.41(a)(3). Moreover, Applicant provides no affidavits or declarations from the purported institutional purchasers or users of its goods.

Most importantly, Loops failed to establish the “substantially exclusive” use of the mark required by Section 2(f). Loops submitted a photograph of a competing blue dental floss loops product and asserted that this was evidence of copying.

However, there was no evidence regarding the competitor's intent, and in fact the competitor uses its own word and design mark on its packages. "In any event, it is more common that competitors copy product designs for desirable qualities or features."

All in all, Applicant has failed to demonstrate that the relevant purchasing public has grown to recognize the primary significance of its blue dental floss loops as identifying source rather than being a feature of the products themselves.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I'm surprised that the Board considered the proposed mark to be potentially registrable, since it seems to me that the mark, in its randomness, was too indefinite to be registrable.

Text Copyright John L. Welch 2024.