TTAB decision illustrates when product containers can function as trademarks

In In re The Procter & Gamble Company (Serial Nos 77685045 and 77685052, November 12 2012), the Trademark Trial and Appeal Board (TTAB) has reviewed a decision of the examining attorney refusing to register two applications of The Procter & Gamble Company (P&G) – one for a bottle design and one for a cap design for a mouthwash product. During prosecution, the examining attorney had asserted as to both applications that the applied-for design did not function as a trademark and was merely ornamental. 

In a precedential decision, the TTAB overturned the examining attorney’s decision refusing registration, holding that both the bottle design and cap design were inherently distinctive and not merely ornamental. Further, the TTAB held that the existence of design patents for these same elements did not, without more, preclude the designs as functioning as source identifiers. The TTAB allowed the design applications to proceed to registration.

P&G described its bottle design mark as consisting of “the overall contoured configuration of a container for mouthwash having a wide downward arc at the base, with a long, tapered neck that flows into the form of the cap, widening at the top to create an undulating wave pattern along the edge”. The application depicted the mark as:

In the cap design application, P&G described the applied-for mark as “the overall contoured configuration of a cap for a mouthwash bottle having a narrow base with sides that flare out towards the top and terminate in an undulating wave pattern around a recessed central core”. The applications depicted the cap marks as: 

P&G did not assert a claim for colour in either application. Further, the specimen substantiating use of the mark consisted of a photo of the mouthwash product: 

Relying on third-party mouthwash products, the examining attorney asserted on appeal that the bottle design and cap were not unique or unusual in the field of oral care products, but instead consisted of mere refinements of ornamental components of containers in the marketplace. She also contended that the bottle design and cap were merely ornamental. P&G countered also with evidence of third-party mouthwash products, awards it won for its bottle and cap designs, and media publicity the designs garnered.

In evaluating the parties’ arguments, the TTAB recognised the applicability of the holding of the US Supreme Court in Wal-Mart Stores Inc v Samara Bros Inc as to product packaging and containers. The TTAB acknowledged that the Supreme Court held that consumers generally are “predisposed” to recognise and rely on product packaging and containers as source identifiers. Further, the TTAB noted that such consumer predisposition is borne out by the effort of private label products to copy the same look of branded product packaging and containers. 

While highlighting the Supreme Court’s 2000 Wal-Mart decision, the TTAB analysed the registrability of both applications under the TTAB’s traditional test for registrability of design marks first formulated in 1977 in Seabrook Foods Inc v Bar-Well Foods Ltd. The TTAB held that the Seabrook Foods test was entirely consistent with the Supreme Court’s holding in Wal-Mart. Ultimately, the question posed is whether a design is so unique or unusual that it will be presumed to be perceived by relevant consumers as a source identifier, inherently distinctive and not merely ornamental. 

The TTAB determined that both the bottle cap and the bottle designs met this standard. Beyond the predisposition of consumers to rely on product packaging as source identifiers the Supreme Court had recognised in Wal-Mart, the TTAB relied on photographs of third-party mouthwash products, and the media recognition and publicity that the designs had garnered and that were of record. For example, for both applications, the TTAB pointed to the design being featured in Brand Packaging’s Design Gallery, stating that “[m]outhwash seems to have a common home… under the sink. P&G’s new Scope Outlast was designed to get the product out from the cabinets and onto the bathroom counter.” On the basis of this and other evidence of record, the TTAB held that the bottle and cap designs were inherently distinctive and registrable, and not merely ornamental.

In addition, the TTAB noted that the fact that P&G also held design patents for the applied-for marks did not undermine the designs functioning as source identifiers. Instead, the TTAB held that, on this record, the mere existence of the design patents neither supported nor disfavoured registration.

Any applicant seeking to register product packaging or a container as a trademark should review this decision.  It provides practical guidance as to the evidence you will need to have in hand to support an objection by the Trademark Office to registrability.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco