|
MARKS CONSISTING OF A CONFIGURATION OF
A PRODUCT
This examination guide sets forth changes in practice
in accordance with Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., ___ U.S. ___, 120 S. Ct. 1339, 146
L. Ed. 182, 54 USPQ2d 1065 (2000). The next revision
of the Trademark Manual of Examining Procedure (TMEP)
will include this material.
In Wal-Mart, the United States Supreme Court held
that while packaging may sometimes be distinctive,
a configuration of a product can never be inherently
distinctive; therefore, it is registrable only upon
a showing of secondary meaning. The Court noted
that product design almost invariably serves purposes
other than source identification, and that consumers
are aware that even the most unusual product design
(e.g., a cocktail shaker shaped like a penguin)
is intended not to identify the source, but to make
the product itself more useful or appealing.
Therefore, the examining attorney must refuse to
register, on the Principal Register, a mark that
consists of a configuration of a product or portion
thereof, unless the applicant establishes that the
mark has acquired distinctiveness under §2(f).
In re Ennco Display Systems, ___ USPQ2d ___, Serial
No. 74/439,206 (TTAB April 6, 2000). The examining
attorney must issue this refusal in all applications
seeking registration of a product design, regardless
of the basis of the application. For §1(b)
applications, the examining attorney must issue
the refusal even if the applicant has not filed
an amendment to allege use or statement of use.
The ground for refusal is that the proposed mark
consists of a nondistinctive configuration of the
goods or portion thereof, and thus does not function
as a mark under §§1, 2 and 45.
Example: If a §1(b) applicant seeks to register
the configuration of a barbecue grill and the goods
are "barbecue grills," even absent a use
amendment, in the first Office action the examining
attorney must refuse registration because the asserted
mark is not inherently distinctive.
Example: If in a §44(e) application the record
shows that the mark sought to be registered is the
configuration of an automobile grille and the goods
are "automobiles," in the first Office
action the examining attorney must refuse registration
because the asserted mark is not inherently distinctive.
If the product configuration is not de jure functional,
the mark may be registered on the Supplemental Register,
or, if the applicant shows that the product configuration
has acquired distinctiveness, on the Principal Register
under §2(f). See TMEP §1202.03(a) et seq.
regarding de jure functionality; TMEP §1115
et seq. regarding the Supplemental Register; and
TMEP §1212 et seq. regarding acquired distinctiveness.
MARKS CONSISTING OF PRODUCT PACKAGING FOR GOODS
OR TRADE DRESS FOR SERVICES
The Court’s decision in the Wal-Mart case
was limited to product design marks. Therefore,
if the proposed mark consists of product packaging
for goods or trade dress for services, the examining
attorney should apply current practice and determine
whether the mark is inherently distinctive. If it
is not, the examining attorney must refuse registration
on the ground that the proposed mark is not inherently
distinctive under §§1, 2 and 45 for trademark
applications, or under §§1, 2, 3 and 45
for service mark applications.
"[A] mark is inherently distinctive if ‘[its]
intrinsic nature serves to identify a particular
source." Wal-Mart, supra at 1343 (citing Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
768 (1992)). To determine whether a mark is inherently
distinctive, the examining attorney must consider
whether the proposed mark is:
1) a "common" basic shape or design;
2) unique or unusual in the field in which it is
used;
3) 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;
4) capable of creating a commercial impression distinct
from the accompanying words.
Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192,
1205, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994) (citing
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F.2d 1342, 1344, 196 USPQ 289, 291 (CCPA 1977)).
See also TMEP §1202.03(b) et seq.; In re J.
Kinderman & Sons Inc., 46 USPQ2d 1253, 1255
(TTAB1998) ("… while the designs applicant
seeks to register may be unique in the sense that
we have no evidence that anyone else is using designs
which are identical to them, they are nonetheless
not inherently distinctive."); and In re File,
48 USPQ2d 1363, 1367 (TTAB 1998) (Novel tubular
lights used in connection with bowling alley services
would be perceived by customers as "simply
a refinement of the commonplace decorative or ornamental
lighting… and would not be inherently regarded
as a source indicator.")
Unlike §1(b) applications for product designs,
applications for product packaging for goods or
trade dress for services based on §1(b) generally
will not be refused registration on the ground of
nondistinctiveness until the applicant has filed
an amendment to allege use or statement of use.
See TMEP §1202.03(d).
Regardless of basis, if the proposed mark is inherently
distinctive and is not de jure functional it may
be registered on the Principal Register. If the
proposed mark is not inherently distinctive and
is not de jure functional the mark may be registered
on either the Principal Register under §2(f)
or on the Supplemental Register. See TMEP §1212
et seq. regarding acquired distinctiveness; TMEP
§1115 et seq. regarding the Supplemental Register;
and TMEP §1202.03(a) et seq. regarding de jure
functionality.
Example: A §44(e) applicant seeks to register
the configuration of a perfume bottle and the goods
are "perfume." If the examining attorney
determines that the bottle shape is inherently distinctive
and is not de jure functional, it may be registered
on the Principal Register.
COLOR MARKS
Color marks consist solely of one or more colors
used on goods or in connection with services. See
TMEP §1202.04(e). In Wal-Mart, the Court stated
that color marks are never inherently distinctive.
Wal-Mart, supra at 1344 (citing Qualitex Co. v.
Jacobson Products Co., 514 U.S. 159, 162-163, (1995)).
Therefore, the examining attorney must refuse to
register a color mark on the Principal Register
unless the applicant establishes that the mark has
acquired distinctiveness under §2(f). The examining
attorney must issue this refusal in all color mark
applications, regardless of the basis of the application.
For §1(b) applications, the examining attorney
must issue the refusal even if the applicant has
not filed an amendment to allege use or statement
of use. The ground for refusal is that the color
is not inherently distinctive and thus does not
function as a trademark under §§1, 2 and
45, or does not function as a service mark under
§§1, 2, 3 and 45.
If the color mark sought to be registered is not
de jure functional, it may be registered on the
Supplemental Register, or, if the applicant shows
that the color has acquired distinctiveness, on
the Principal Register under §2(f). See TMEP
§1202.04(e).
MARKS THAT ARE FUNCTIONAL
When an applicant applies to register a product
design, product packaging for goods, trade dress
for services, or color, in addition to determining
whether the proposed mark is inherently distinctive,
the examining attorney must determine whether the
mark is de jure functional. If the proposed mark
is de jure functional, it cannot be registered on
either the Principal Register or the Supplemental
Register. 15 U.S.C. §§1052(e)(5), 1052(f),
and 1091. See TMEP §§1202.03 et seq. and
1202.04(e).
To determine if a proposed mark is de jure functional,
the examining attorney must consider how the asserted
mark is used. Generally, in a §1(b) application
the examining attorney will not issue a refusal
on the ground that the mark is de jure functional
until the applicant has filed an amendment to allege
use or statement of use. TMEP §1202.03(d).
|
|
. . . . .
TRADEMARK
SEARCH
. . . . .
TRADEMARK
MONITORING
. . . . .
TRADEMARK
APPLICATION
. . . . .
LEGAL
ADVICE REGARDING TRADEMARKS
. . . . .
|
