Examination Guide 2-00

UNITED STATES PATENT AND TRADEMARK OFFICE

OFFICE OF THE COMMISSIONER FOR TRADEMARKS

EXAMINATION GUIDE NO. 2-00

August 15, 2000

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.

 MARKS CONSISTING OF A CONFIGURATION OF A PRODUCT 

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.

 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).