TTAB Affirms Section 2(e)(5) Functionality Refusal of Mark Consisting of the Transparency of Plastic Food Packaging Trays

The Board affirmed a refusal to register, on the Supplemental Register, a mark whose "essence" is "the transparent nature of the goods," for "Rigid plastic overwrap trays for packaging of uncooked meals," finding that the proposed mark is de jure functional under Section 2(e)(5). The Board, after sorting through the convoluted and messy prosecution history and the disjointed and confusing briefing by applicant, determined that applicant was not attempting to claim a "color" but rather the absence of color. In re Converter Manufacturing, LLC, Serial No. 87587855 (September 14, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Examining Attorney Gene V.J. Maciol, II, submitted webpages discussing the functional benefits of transparent packaging for foods. One webpage stated that nearly one-third of shoppers gauge the freshness of a product by its appearance rather that its "use-by" date. Applicant argued, however, that for uncooked meat, opaque trays are desirable so that the consumer does not see any juices flowing (or purging) freely in the package, and therefore a clear tray is less functional than an opaque tray.

Applicant pointed to the first three Morton-Norwich factors to show that its proposed mark is not functional. First, there are no applicable utility patents. Second, applicant has not advertised any utilitarian advantages over other designs. And third, there are many alternative designs available.

The Examining Attorney disputed the applicant's argument because not all meats "purge," vacuum-packed meats are not susceptible to "purging," and meat-packers would desire the clear packaging in order to increase sales.

The Board pointed out that applicant's argument regarding the "anti-functional" nature of its transparent packaging was unsupported by sworn statements or other evidence. In short, "[a]ttorney argument is no substitute for evidence." Moreover, the argument was counter-intuitive:

Applicant would be acting contrary to its own economic self-interest in offering transparent overwrap trays if “packers of uncooked meats seek to obscure their customers’ view of juices which issue from uncooked meats,” 13 TTABVUE 5, and “seek to use opaque trays, through which neither the juices nor a juice-engorged pad can be viewed by their customers.” Id. It would be irrational for Applicant to “def[y] the common sense in this industry,” id., by producing transparent trays rather than focusing solely on the production of opaque trays to satisfy the claimed demand of meat packers for only such packaging. Yet Applicant has not only developed its transparent packaging as an alternative to opaque packaging, but has sought to register the transparent packaging as its trademark. Applicant’s actions belie its claim that its product is “anti-functional.”

Finally, applicant's "anti-functional" argument was contradicted by its own marketing brochure, which touts the utilitarian benefits of "Clarity," "Efficiency," and "Strength." Under the heading "Clarity," applicant states that the "crystal clear" color "allows you to make your product the STAR of the package." This is "a clear reference to the fact that the transparent nature of this particular overwrap tray in Applicant’s product line enables the packers’ customers, the ultimate consumers of the uncooked meats, to see the products prior to purchase."

Thus, contrary to applicant’s unsupported arguments, "at least some meat packers want to make their meats 'the STAR of the package' by showing the goods to their customers, and for those packers, Applicant touts the transparent nature of its goods as a functional benefit."

The Board found this advertising to be strong evidence of functionality. The brochure "persuasively demonstrates that the claimed mark is functional because 'it is essential to the use or purpose' of the trays in displaying the packers' uncooked meat products ...." (quoting TrafFix, 58 USPQ2d at 1006). With functionality established under the Inwood test, it was unnecessary to undergo a full Morton-Norwich analysis.

Therefore the proposed mark is not eligible for registration on the Supplemental Register, and so the Board affirmed the refusal to register.

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TTABlogger comment: If this "mark" were to register, where would you put the R-in-a-circle symbol?

Text Copyright John L. Welch 2021.