Mouthwash Bottle, Cap Designs Inherently Distinctive and Thus Registrable

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The designs for Procter & Gamble Co's Scope Outlast mouthwash bottle and cap were sufficiently distinctive to serve as source identifiers, the Trademark Trial and Appeal Board ruled on Nov. 16 (In re Procter & Gamble Co., T.T.A.B., No. 77685045, 11/16/12).

Reversing a refusal to register the bottle and cap designs, the board applied a three-part test for distinctiveness set forth in a 1977 decision.

P&G Applies to Register Bottle, Cap Designs.

The Procter & Gamble is a Cincinnati-based producer of consumer goods, including cleaning supplies and personal care products. One of P&G's prominent products is Scope Outlast mouthwash.

P&G filed an application with the Patent and Trademark Office to register as a trademark the “overall contoured shape of a container for mouthwash” and also the design of the cap for the Scope Outlast bottle.

Trademark Examining Attorney N. Gretchen Ulrich refused registration. According to the board, Ulrich found that the shapes were “merely non-distinctive product packaging,” that they were “not unique or unusual in the field of oral care products,” and were “mere refinements of commonly adopted forms of ornamental trade dress for such goods.”

Ulrich also found that the designs were “merely ornamental” and also that there was no demonstration of acquired distinctiveness.

P&G appealed.

Mouthwash Market Relies on Bottle Designs.

Administrative Trademark Judge David E. Bucher first cited Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), for the presumption that “retail customers of many different products are 'predisposed' through conditioning to regard packaging, containers and other features of trade dress as signals of the source of a particular product.”

Furthermore, the board said, in the area of mouthwash, there was evidence in the record that bottle designs specifically functioned as source indicators.

Turning specifically to the designs in question, the board first determined that the cap design was indeed sufficiently distinctive such that it might serve as a source identifier.

The board applied a three-factor test set forth in Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289 (C.C.P.A. 1977). The board summarized the test:  

Under Seabrook Foods, the three relevant factors that we consider in these circumstances are: (1) whether the packaging is a common basic shape or design, (2) whether it is unique or unusual in the particular field, and (3) whether it is 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.  


Under the first factor, the board found that the Scope cap design was not a common basic shape or design. Turning to the second factor, the board noted that the design in question was “flared,” with “asymmetrical sides on the top portion of the bottle cap that terminate in an undulating wave pattern around a recessed central core of the cap.”

The board then quoted from P&G promotional materials that noted that the shape was “created to appeal to young women” and was intended not to be “medicinal-looking.” The board concluded that the record was sufficient to show that the design was unusual for mouthwash bottle caps.

Finally, the board found that the design was not a mere refinement of existing cap designs.

Overall Bottle Design Also Distinctive.

The board then applied the Seabrook Foods factors to the overall design of the bottle. Again, the board found that the bottle shape was not a common geometric shape and was not common for oral care products.

“Indeed, just the opposite is true: the record indicates that this overall packaging design has won awards because it was considered unique,” the board said. The board concluded that the design was “unique in this field.”

Finally, under the third factor, the board rejected the finding that the design was merely a refinement of existing bottle designs.

Thus, the board reversed the refusals to register both the designs.

Next, the board rejected the proposition that because P&G held several design patents relating to the mouthwash bottle design, this weighed against their effectiveness as source identifiers.

However, the board also agreed that “the fact that a device is or was the subject of a design patent does not, without more, result in said device being treated as inherently distinctive or per se functioning as a trademark.”

With respect to the evidence on record in this case, the board concluded that the existence of the design patents did not weigh for or against registrability.

Finally, the board said that its conclusion that the bottle and cap designs were inherently distinctive and were primarily indicators of source also overturned the finding that the designs were not registrable because they were mere ornamentation or decoration.

The board's opinion was joined by Administrative Trademark Judges Albert Zervas and Thomas Shaw.

Procter & Gamble was represented by Rene L. Guess, of the company's general counsel's office, Cincinnati. The PTO was represented by N. Gretchen Ulrich, trademark examining attorney, Alexandria, Va.

By Anandashankar Mazumdar  

Opinion at

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