TTAB Deems Bottle Trade Dress a Mere Refinement of Existing Designs and so Not Inherently Distinctive

Although the USPTO had accepted its claim of acquired distinctiveness under Section 2(f) for its bottle trade dress for "bitters," Applicant Fee Brothers, Inc. appealed from the rejection of its claim of inherent distinctiveness. The Board applied the Seabrook test in finding that the proposed mark was "a mere refinement of or variation on existing trade dress within the relevant field of use." In re Fee Brothers, Inc., Serial No. 90666517 (October 14, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Fee Brothers described its mark as "a three-dimensional configuration of product packaging for a glass bottle consisting of multiple renditions of a paper label that wraps around and covers substantially all of the glass portion of the bottle and is twisted at the bottom of the bottle and at the top near the neck of the bottle, with a sticker affixed around the circumference of the bottle neck at the top of the twisted label, the two ends of the sticker criss-crossed at the back of the bottle. The shape of the bottle is not a claimed feature of the mark, and therefore, the bottle cap and top of the bottle neck are depicted in dotted lines for the purpose of showing the position of the mark on the goods." [Emphasis added].

In determining whether product packaging is inherently distinctive, the Board considers the following factors set forth by the CCPA in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (CCPA 1977):

1. whether it was a ‘common’ basic shape or design, 
2. whether it was [not] unique or unusual in the particular field, 
3. whether it was 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 it was capable of creating a commercial impression distinct from the accompanying words. 

“If a mark satisfies any of the first three tests, it is not inherently distinctive.” Chippendales, 622 F.3d at 1351.

The first Seabrook factor "essentially asks whether the trade dress is common generally: for example, does it employ a basic shape or design such as a letter or geometric shape?" The Board noted that the proposed mark does not include the shape of the bottle, but rather comprises "a specific placement of the paper label wrapped around the bottle and a specific placement of the sticker around the bottle neck." "The configuration of the paper label and sticker is not a common basic shape or design."

The second factor asks "whether the trade dress “is common in the particular field of use.” The Board found that it was not. "Although there is evidence that some bitters bottles share certain features of Applicant’s product packaging, there is no evidence showing use of the same exact configuration as used by Applicant, and multiple industry experts have attested to the uniqueness of Applicant’s product packaging."

Turning to the third factor, the Board agreed with Examining Attorney Jessica Gearhart that applicant’s proposed mark "is a mere refinement of existing trade dress within the relevant field of use." She identified multiple products of relevance that utilize a paper wrapping similar to Applicant’s paper wrapping:

The Examining Attorney also identified multiple bottles within the relevant field of use that utilize a sticker (or something that resembles a sticker) in the same area of the bottle where Applicant’s sticker appears:

Here, the packaging of other products within the relevant field of use share many of the same features as Applicant’s Mark, including the use of a paper wrapper around the bottle and the use of a label around the neck of the bottle. Applicant’s specific placement of its paper wrapper (i.e., extending it further above and/or below the bottle than third-party configurations and twisting the wrapper at the top and bottom) and its specific placement of its neck sticker (i.e., over the paper wrapper with a criss-crossed pattern on the backside of the bottle as opposed to directly on the glass of the bottle and not in a criss-crossed pattern) are mere refinements of existing designs rather than significant differences from them.

And so, the Board affirmed the refusal on the ground that the mark is not inherently distinctive. However, because Applicant Fee Brothers asserted in the alternative that its mark had acquired distinctiveness, and because the Examining Attorney found Applicant’s evidence of acquired distinctiveness sufficient, the Board ordered the application to be amended to reflect the Section 2(f) claim.

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TTABlogger comment: For a discussion of why a registrant would prefer a registration based on inherent distinctiveness rather than Section 2(f), see Stephen W. Feingold's guest TTABlog post: "Why You Should Think Twice Before Accepting a 2(f) Registration" [here]. By the way, the CAFC affirmed the TTAB in Chippendales [TTABlogged here].

Text Copyright John L. Welch 2025.