Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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.
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.
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.
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.
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.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)