Tuesday, November 29, 2005

TTAB Turns Up Its Collective Nose at Nasal Strip Design Marks

The TTAB affirmed four PTO refusals to register two designs (shown immediately below) for various nasal strips on the grounds that the designs fail to function as trademarks, are merely descriptive under Section 2(e)(1), and have not achieved secondary meaning. In re CNS, Inc., Serial Nos. 76250116 et al. (November 18, 2005) [not citable].

Examining Attorney Yong Oh Kim contended that the alleged marks appear on the packaging for Applicant's goods (sold under the brand name BREATHE RIGHT) as purely "informational matter that merely apprises consumers of the physical appearance of the goods." He argued that manufacturers commonly depict a product on its packaging so that consumers will know what the product looks like, and therefore consumers will perceive such a depiction as merely informational.

As to mere descriptiveness, Attorney Kim pointed out that Applicant's "specimens, advertisements and patents clearly demonstrate that the proposed mark[s] [are] accurate pictorial representation[s] of the goods."

As to Applicant's attempt to show secondary meaning, Kim urged that the marks are highly descriptive, that Applicant therefore bears a "heavy burden" to prove acquired distinctiveness, and that Applicant's showing was insufficient.

The Board agreed on all counts. It found that "the manner in which the alleged marks are used on the specimens of use in these applications is not indicative of trademark use." As to two of the applications, the designs appear on the back of the box and are "used to inform the consumer as to the contents of the box and the different available product sizes." With regard to the other two, the alleged marks do appear on the front of the box, but without a TM symbol, "in contrast to all of the trademarks appearing on the box."

The Board also found that the two designs depict the products accurately, rather than in stylistic fashion, and thus are merely descriptive. The sample of Applicant's product as well as its utility patent drawing demonstrate the accuracy of the depiction. Moreover, design patents owned by competitors show that these designs are a generally common shape for such goods, and thus the designs lack inherent distinctiveness.

Because of the accuracy of the depictions, Applicant CNS faced a "heavier" burden to prove acquired distinctiveness. The Board found the evidence insufficient to permit registration under Section 2(f). Although CNS enjoyed sales of $425 million during the period 1993-2002 and spent $59 million in advertising during 1996-2001, those figures may demonstrate only the growing popularity of the product, not purchaser recognition of the two-dimensional designs as trademarks. There was no evidence that the alleged marks were promoted as source indicators.

CNS pointed to unsolicited media publicity regarding its products, but that evidence did not establish customer perception of the two-dimensional designs as source indicators. Finally, Applicant's five-year declaration of substantially exclusive use may serve as prima facie evidence of acquired distinctiveness under Section 2(f), but the language of the statute is permissive and the weight to be accorded such a declaration depends on the facts of the particular case. Here, based on all the evidence, the Board concluded that Section 2(f) had not been satisfied.

Text Copyright John L. Welch 2005.


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