TRADEMARK

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In Re Application of: Mark: Bottle Design
THE BOARD OF REGENTS OF THE
UNIVERSITY OF TEXAS SYSTEM Serial No.: 77/750,955

Filed: June 3, 2009 Trademark Law Office: 108

International Class: 32 Examining Attorney: Kourtnee C. Hodges

Atty. Dkt. No.: UTTB687US

RESPONSE TO OFFICE ACTION

Applicant, by and through its undersigned attorneys, hereby files its Response to the

Office Action dated September 3, 2009 and respectfully requests reconsideration of this

application pursuant to the following remarks.

REMARKS

Refusal Under Section 2(e)

In the Office Action, the Examining Attorney refuses to register Applicant’s mark for

bottled water, stating that the mark is a nondistinctive product design. Applicant respectfully

traverses the ground of refusal and asserts that its “trade dress” is a unique, inherently distinctive

product package that acts as a source identifier. Thus, Applicant respectfully requests that the

refusal to register be withdrawn.

A. Applicant’s Trade Dress is Nonfunctional Product Packaging

The determination of whether an Applicant’s trade dress is registrable requires proper

consideration of three factors: (1) whether the trade dress is functional; (2) if not, whether the

trade dress is “product design” or “product packaging”; and (3) whether the trade dress is

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inherently distinctive (product packaging) or has established secondary meaning (product

packaging and product design). See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532

U.S. 23 (2001); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); In re

Slokevage, 78 U.S.P.Q.2d 1395 (Fed. Cir. 2006); Yankee Candle Co. v. Bridgewater Candle Co.,

59 U.S.P.Q.2d 1720 (1st Cir. 2001); see generally TRADEMARK MANUAL OF EXAMINING

PROCEDURE § 1202.02 (4th ed. 2007) [hereinafter TMEP]; 1 J. THOMAS MCCARTHY, MCCARTHY

ON TRADEMARKS AND UNFAIR COMPETITION § 8:1-14 (4th ed. 2009) [hereinafter MCCARTHY].

Applicant’s mark should be considered nonfunctional trade dress because its bottled

water design presents no utilitarian advantage, performs no function or utility, and has no bearing

on the use or purpose of the product or its cost or quality. See TrafFix Devices, 532 U.S. 23;

Valu Engineering, Inc. v. Rexnord Corp., 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002). In the present

case, the Examining Attorney apparently agrees as no objection was raised on grounds of

functionality. Instead, the examining Attorney begins her analysis with the second of the three

factors, concluding that Applicant’s mark is non-distinctive product design.

In Wal-Mart, the Supreme Court distinguished between two types of trade dress: product

design and product packaging. 529 U.S. 205. Product design, the Court held, can never be

classified as inherently distinctive; rather, the Applicant must always prove that the mark has

acquired secondary meaning. Id.; see MCCARTHY § 8:12.50. Product packaging, however, can

be inherently distinctive. Wal-Mart, 529 U.S. 205; see In re Chippendales U.S.A., Inc., 90

U.S.P.Q.2d 1535 (TTAB 2009). An Examining Attorney’s determination of whether trade dress

is product design or product packaging is a question of fact that must be supported by

“substantial evidence.” In re Slokevage, 78 U.S.P.Q.2d 1395.

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Here, the Examining Attorney offered no evidence whatsoever, let alone “substantial

evidence,” that Applicant’s trade dress constitutes product design. The proposed mark, she

explained in just two sentences, is “a nondistinctive product design” and “a product

design/configuration.” No further explanation for the Examining Attorney’s decision is provided

in the Office Action. Applicant’s mark, however, consists of a three dimensional bottle for water

in the shape of the famous tower on the University of Texas at Austin campus. As Justice Scalia

recognized in Wal-Mart, this is quintessential product packaging: “[A] classic Coca-Cola bottle,

for instance, may constitute packaging for those consumers who drink the Coke and discard the

bottle . . . .” Wal-Mart, 529 U.S. 205; see MCCARTHY § 8:12.50 (Justice Scalia’s categorization

is one “almost everyone would agree with”); see also In re Pacer Technology, 67 U.S.P.Q.2d

1629 (Fed. Cir. 2003) (adhesive container cap product packaging); In re Creative Beauty

Innovations, Inc., 56 U.S.P.Q.2d 1203 (TTAB 2000) (container for bath products inherently

distinctive product packaging).

There is no meaningful difference between the Coca-Cola bottle cited by Justice Scalia

and Applicant’s container for bottled water. Both packages are not the primary product that the

buyer is purchasing. The bottles are, rather, thrown away after the buyer consumes the good

inside. See MCCARTHY § 8:12.50 (common sense inquiry developed by courts asks what the

primary product is that the buyer is purchasing). Because a bottle serves as a container to hold a

liquid beverage until use, it should invariably be classified as product packaging. See id.; see

also Creative Beauty Innovations, 56 U.S.P.Q.2d 1203. Accordingly, the Examining Attorney’s

classification of Applicant’s trade dress as product design should be withdrawn and Applicant’s

trade dress should be evaluated as product packaging.

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B. Applicant’s Trade Dress is Inherently Distinctive

Once the Examining Attorney determines that an Applicant’s trade dress is nonfunctional

product packaging, she must determine whether the mark is inherently distinctive. Wal-Mart,

529 U.S. 205; Yankee Candle, 59 U.S.P.Q.2d 1720; Creative Beauty Innovations, 56 U.S.P.Q.2d

1203; TMEP § 1202.02(b)(ii). A proposed mark will be found inherently distinctive and thus

registrable on the Principal Register where it is reasonable to assume that customers may be

predisposed to think of the packaging as an indicator of source. Wal-Mart, 529 U.S. 205; In re

Slokevage, 78 U.S.P.Q.2d 1395; Bretford Mfg. Inc. v. Smith System Mfg. Corp., 75 U.S.P.Q.2d

1858 (7th Cir. 2005); MCCARTHY § 8:13. In conducting this analysis, the Examining Attorney

must establish a prima facie case that the Applicant’s trade dress is not inherently distinctive,

setting forth a “‘reasonable predicate’ for its position of non-distinctiveness.” In re Udor, 89

U.S.P.Q.2d 1978; TMEP § 1202.02(b)(ii).

Here, because the Examining Attorney erred in classifying Applicant’s trade dress as

product design, she never established a prima facie case of nondistinctiveness. Cf. In re Udor,

89 U.S.P.Q.2d 1978 (PTO set forth ‘reasonable predicate’ for decision by identifying third-party

designs); Pacer Technology, 67 U.S.P.Q.2d 1629 (PTO carried prima facie case by identifying

similar designs). Had the Examining Attorney attempted to do so, she would have found

Applicant’s mark inherently distinctive based on the tests for determining consumer

predisposition identified by the Board. See Creative Beauty Innovations, 56 U.S.P.Q.2d 1203

(finding Abercrombie categories and Seabrook factors complimentary); see also Wal-Mart, 529

U.S. 205 (discussing Abercrombie categories and Seabrook factors); Yankee Candle, 59

U.S.P.Q.2d 1720 (supplementing Abercrombie categories with Seabrook factors).

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The first, based on the categories for word marks put forth in Abercrombie & Fitch Co. v.

Hunting World, Inc., 189 U.S.P.Q. 759 (2nd Cir. 1976), applies such categories as “fanciful or

arbitrary,” “suggestive,” and “descriptive” to trade dress. The second, preferred by most courts

and commentators, see generally MCCARTHY § 8:13, and laid out in Seabrook Foods, Inc. v.

Bar-Well Foods, Ltd., 196 U.S.P.Q. 289 (CCPA 1977), asks whether the product packaging is:

(1) common or basic; (2) unique or unusual in the field; and (3) a mere refinement of well-

known ornamentation in the field. Seabrook, 196 U.S.P.Q. 289; see Yankee Candle, 59

U.S.P.Q.2d 1720 (applying Seabrook factors); In re Chippendales, 90 U.S.P.Q.2d 1535 (same);

see also TMEP § 1202.02(b)(ii).

Under both of these tests, Applicant’s nonfunctional product packaging is found to be

inherently distinctive. First, it is a completely fanciful or arbitrary mark; a container for bottled

water in the shape of the famous tower on the University of Texas at Austin campus neither

suggests nor describes the goods within. Second, Applicant’s trade dress is not a common or

basic package in the bottled water field, merely refining a well-known ornamentation. Rather, it

is a very unusual and unique (in quantity and quality) mark, and not a refinement of any known

ornamentation in the bottled water field. In fact, there is no record of any bottled water in a

similar shape or design. Cf. Creative Beauty Innovations, 56 U.S.P.Q.2d 1203 (noting absence

of similar container design in record and reversing finding of nondistinctiveness).

Finally, a buyer would be predisposed to think of Applicant’s mark as an identification of

source or “badge of origin,” Bretford Mfg., 75 U.S.P.Q.2d 1858, because the tower design is a

famous mark that has been registered and used by the Applicant for over a half-century. See,

e.g., U.S. Reg. Nos. 3,148,092, 3,653,888, and 1,230,438 (printouts from USPTO database

attached as Exhibit A). Moreover, consumers are conditioned to view the packaging/bottles for

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bottled water and other beverages as source identifiers since the manufacturers of such products

routinely develop unique configurations to distinguish themselves on store shelves. Most

consumers can identify the brand of commonly sold beverages by the shape of the container

alone. Consistent with this position, the PTO has registered or published for registration

numerous bottles and containers as product packaging without proof of secondary meaning. See,

e.g., U.S. Reg. Nos. 3,433,359, 3,455,833, 3,462,503, and 3,520,808 (printouts from USPTO

database attached as Exhibit B).

CONCLUSION

Under the proper analysis and in keeping with current USPTO practice, Applicant’s mark

should be found registrable. A three dimensional bottle for water in the shape of a tower cannot,

by definition, constitute product design. Rather, Applicant’s trade dress—arbitrary, unique, and

famous—is nonfunctional product packaging acting as a source identifier.

In view of the foregoing remarks herein, Applicant respectfully requests that the refusal

be withdrawn, and that this application be allowed to proceed to publication. If a telephone

conference would expedite the processing of this application, please contact Applicant’s attorney

Louis Pirkey at (512) 482-5222 or Alison Frey at (512) 482-5236.

Respectfully submitted,

Louis Pirkey
Alison Frey
ATTORNEYS FOR APPLICANT

PIRKEY BARBER LLP
600 Congress Ave., Suite 2120
Austin, Texas 78701
Tel: (512) 322-5200
Fax: (512) 322-5201

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