Tuesday, December 13, 2005

Teddy Bear Design on Hanger Not a Trademark, Says TTAB

Build-A-Bear Workshop, Inc. got hung up in its attempt to register the teddy bear design shown immediately below as a trademark for "toy clothing." The Board affirmed a refusal to register on the ground that the design fails to function as a trademark. In re Build-A-Bear Workshop, Inc., Serial No. 76351071 (November 28, 2005) [not citable].

The application describes the alleged mark as "the configuration of the packaging for toy clothing. The dotted line is not part of the mark but is merely to show the mark's position on the packaging."

Examining Attorney Teresa Rupp contended that the proposed mark is a "hybrid packaging/product design" because the hanger, on which Applicant's toy clothing is sold, may be kept and re-used by a purchaser. In such a case, she argued, Wal-Mart requires a showing of secondary meaning for the design.

Alternatively, she maintained that even if the design comprises merely product packaging, it is not inherently distinctive: "[b]ecause the applicant sells toy clothing for teddy bears, the hanger for the clothing that has a teddy bear motif would not be viewed as inherently a trademark for the goods."

The Board agreed with Applicant B-A-B that the design is "quite clearly only packaging for the goods." "Applicant's goods are toy clothing and the design applicant seeks to register consists of a teddy bear design on hangers for toy clothing." Thus the Examining Attorney's reliance on Wal-Mart was misplaced.

The Board, however, agreed with the PTO that B-A-B's design is not inherently distinctive. Although the design may be "unique" in that no one else is using an identical design,

"consumers are likely to view the teddy bear hanger design used in connection with such goods as simply indicating that the toy clothing is designed for teddy bears. Moreover, the use of designs on hangers is not unusual. The evidence submitted by the examining attorney shows that at least two companies market children's clothes hangers with animal designs."

B-A-B also contented that the PTO's position was inconsistent with the registration of the Applicant's two designs shown below, registered for retail toy store services and for toy footwear, respectively.

The Board pointed out once again that "each case must be decided on its own merits, and the Board is not bound by prior actions of the Office. See In re Nett Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001)." Furthermore, the goods/services covered by the prior application "are different from those involved herein."

Finally, B-A-B asked that it be permitted to submit a claim of acquired distinctiveness. Too late, said the Board. Rule 2.142(g) provides that an application "which is decided on appeal ... will not be reopened except for entry of a disclaimer or upon order of the Commissioner."

The Board therefore affirmed the refusal.

"Santa Bearemy and Christmas Tree"

Text Copyright John L. Welch 2005.


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