In re Morton-Norwich Products, Inc.

• Citation: 671 F.2d 1332
• Decision Date: 18 February 1982
• Docket Number: Appeal No. 81-540.
• Parties: In re MORTON-NORWICH PRODUCTS, INC.
• Court: United States Court of Customs and Patent Appeals

671 F.2d 1332

In re MORTON-NORWICH PRODUCTS, INC.

Appeal No. 81-540.

United States Court of Customs and Patent Appeals.

February 18, 1982.

COPYRIGHT MATERIAL OMITTED

Richard J. Egan, Greenville, S. C., for Morton-Norwich Products, Inc.

Joseph F. Nakamura, Sol., Joseph Diamante, Trademark Examiner, and Fred J. McKelvey, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is from the ex parte decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board), 209 USPQ 437 (TTAB 1980), in application serial No. 123,548, filed April 21, 1977, sustaining the examiner's refusal to register appellant's container configuration on the principal register. We reverse the holding on "functionality" and remand for a determination of distinctiveness.

Background

Appellant's application seeks to register the following container configuration as a trademark for spray starch, soil and stain removers, spray cleaners for household use, liquid household cleaners and general grease removers, and insecticides:

Appellant owns U.S. Design Patent 238,655, issued Feb. 3, 1976, on the above configuration, and U.S. Patent 3,749,290, issued July 31, 1973, directed to the mechanism in the spray top.

The above-named goods constitute a family of products which appellant sells under the word-marks FANTASTIK, GLASS PLUS, SPRAY 'N WASH, GREASE RELIEF, WOOD PLUS, and MIRAKILL. Each of these items is marketed in a container of the same configuration but appellant varies the color of the body of the container according to the product. Appellant manufactures its own containers and stated in its application (amendment of April 25, 1979) that:

Since such first use March 31, 1974 the applicant has enjoyed substantially exclusive and continuous use of the trademark i.e., the container which has become distinctive of the applicant's goods in commerce.

The PTO Trademark Attorney (examiner), through a series of four office actions, maintained an unshakable position that the design sought to be registered as a trademark is not distinctive, that there is no evidence that it has become distinctive or has acquired a secondary meaning, that it is "merely functional," "essentially utilitarian," and non-arbitrary, wherefore it cannot function as a trademark. In the second action she requested applicant to "amplify the description of the mark with such particularity that any portion of the alleged mark considered to be non functional sic is incorporated in the description." (Emphasis ours.) She said, "The Examiner sees none." Having already furnished two affidavits to the effect that consumers spontaneously associate the package design with appellant's products, which had been sold in the container to the number of 132,502,000 by 1978, appellant responded to the examiner's request by pointing out, in effect, that it is the overall configuration of the container rather than any particular feature of it which is distinctive and that it was intentionally designed to be so, supplying several pieces of evidence showing several other containers of different appearance which perform the same functions. Appellant also produced the results of a survey conducted by an independent market research firm which had been made in response to the examiner's demand for evidence of distinctiveness. The examiner dismissed all of the evidence as "not persuasive" and commented that there had "still not been one iota of evidence offered that the subject matter of this application has been promoted as a trademark," which she seemed to consider a necessary element of proof. She adhered to her view that the design "is no more than a non-distinctive purely functional container for the goods plus a purely functional spray trigger controlled closure * * * essentially utilitarian and non-arbitrary * * *."

Appellant responded to the final rejection with a simultaneously filed notice of appeal to the board and a request for reconsideration, submitting more exhibits in support of its position that its container design was not "purely functional." The examiner held fast to all of her views and forwarded the appeal, repeating the substance of her rejections in her Answer to appellant's appeal brief. An oral hearing was held before the board.

Board Opinion

The board, citing three cases, stated it to be "well-settled" that the configuration of a container "may be registrable for the particular contents thereof if the shape is non-functional in character, and is, in fact, inherently distinctive, or has acquired secondary meaning as an indication of origin for such goods." In discussing the "utilitarian nature" of the alleged trademark, the board took note of photographs of appellant's containers for FANTASTIK spray cleaner and GREASE RELIEF degreaser, the labels of which bore the words, respectively, "adjustable easy sprayer," and "NEW! Trigger Control Top," commenting that "the advertising pertaining to applicant's goods promotes the word marks of the various products and the desirable functional features of the containers."

In light of the above, and after detailed review of appellant's survey evidence without any specific comment on it, the board concluded its opinion as follows:

After a careful review of the evidence in the case before us, we cannot escape the conclusion that the container for applicant's products, the configuration of which it seeks to register, is dictated primarily by functional (utilitarian) considerations, and is therefore unregistrable despite any de facto secondary meaning which applicant's survey and other evidence of record might indicate. As stated in the case of In re Deister Concentrator Company, Inc. 48 CCPA 952, 289 F.2d 496, 129 USPQ 314 (1961), "not every word or configuration that has a de facto secondary meaning is protected as a trademark." Emphasis ours.

Issues

The parties do not see the issues in the same light. Appellant and the solicitor agree that the primary issue before us is whether the subject matter sought to be registered — the configuration of the container — is "functional."

Appellant states a second issue to be whether the configuration has the capacity to and does distinguish its goods in the marketplace from the goods of others.

The solicitor contends that it would be "premature" for us to decide the second issue if we disagree with the PTO on the first issue and have to reach it, and that we should, in that event, remand the case so the board can "consider" it. Whether to remand is, therefore, an issue.

OPINION

As would be expected, the arguments made in this court are, except for the remand question, essentially the same as they were below. The question is not new and in various forms we have been over the ground before: is the design sought to be registered "functional"? There is a plethora of case law on this subject and it becomes a question of which precedents to follow here — and why. In our view, it would be useful to review the development of the principles which we must apply in order to better understand them. In doing so, it should be borne in mind that this is not a "configuration of goods" case but a "configuration of the container for the goods" case. One question is whether the law permits, on the facts before us, exclusive appropriation of the precise configuration described in the application to register. Another facet of the case is whether that configuration in fact functions as a trademark so as to be entitled to registration. We turn first to a consideration of the development of the law on "functionality."

A trademark is defined as "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others" (emphasis ours). 15 U.S.C. § 1127 (1976). Thus, it was long the rule that a trademark must be something other than, and separate from, the merchandise to which it is applied. Davis v. Davis, 27 F. 490, 492 (D.Mass.1886); Moorman v. Hoge, 17 F.Cas. 715, 718-19 (C.C.D.Cal.1871) (No. 9,783). Accord, Goodyear Tire & Rubber Co. v. Robertson, 18 F.2d 639, 641 (D.Md.1927), aff'd, 25 F.2d 833 (4th Cir. 1928); Capewell Horse Nail Co. v. Mooney, 167 F. 575, 590-91 (N.D.N.Y.), aff'd, 172 F. 826 (2d Cir. 1909); Fairbanks v. Jacobus, 8 F.Cas. 951, 952 (C.C.S.D.N.Y.1877) (No. 4,608).

Aside from the trademark/product "separateness" rationale for not recognizing the bare design of an article or its container as a trademark, it was theorized that all such designs would soon be appropriated, leaving nothing for use by would-be competitors. One court, for example, feared that "The forms and materials of packages to contain articles of merchandise * * * would be rapidly taken up and appropriated by dealers, until some one, bolder than the others, might go to the very root of things, and claim for his goods the primitive brown paper and tow string, as a peculiar property." Harrington v. Libby, 11 F.Cas. 605, 606 (C.C.S.D.N.Y.1877) (No. 6,107). Accord, Diamond Match Co. v. Saginaw Match Co., 142 F. 727, 729-30 (6th Cir. 1906).

This limitation of permissible trademark subject matter later gave way to assertions that one or more features of a product or package design could legally function as a trademark. E.g., Alan Wood Steel Co. v. Watson, 150 F.Supp. 861, 863, 113 USPQ 311, 312 (D.D.C.1957); Capewell Horse Nail Co. v. Mooney, supra. It was eventually held that the entire design of an article (or its container) could, without other means of identification, function to identify the source of the article and be protected as a trademark. E.g., In re Minnesota Mining and Manufacturing Co., 51 CCPA 1546, 1547-48, 335 F.2d 836, 837, 142 USPQ 366, 367 (1964).

That protection was limited, however, to those designs of articles and containers, or features...