In re Pacer Technology, 02-1602.
| Citation | 338 F.3d 1348 |
| Decision Date | 04 August 2003 |
| Docket Number | No. 02-1602.,02-1602. |
| Parties | In re PACER TECHNOLOGY. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Thomas E. Schatzel, Law Offices of Thomas E. Schatzel, of Los Gatos, California, argued for appellant.
Raymond T. Chen, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for appellee. With him on the brief were John M. Whealan, Solicitor; and Cynthia C. Lynch, Associate Solicitor.
Before LOURIE, GAJARSA, and LINN, Circuit Judges.
GAJARSA, Circuit Judge.
Pacer Technology ("Pacer") appeals from a decision of the United States Patent and Trademark Office's ("PTO's") Trademark Trial and Appeal Board ("Board"), which affirmed the PTO's refusal to register as a trademark Pacer's adhesive container cap design on the ground that the design was not inherently distinctive. In re Pacer Tech., Serial no. 75/477,402 (TTAB June 11, 2002). Because the
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Board's decision is supported by substantial evidence, we affirm.
Pacer filed a use-based trademark application with the PTO in 1998 to register a cap of a container for adhesives and bonding agents ("adhesive container cap"). Pacer disclaimed the bottom portion of the adhesive container cap during prosecution. The top portion, which Pacer claims as its trademark, has a pointed crown from which four equally spaced flat wings extend, as shown below:
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In the initial action, the examining attorney, inter alia, refused to register Pacer's application on the basis that the adhesive container cap was not inherently distinctive. To address the refusal, Pacer submitted five affidavits of consumers stating that Pacer's container cap design was a source-identifier of Pacer's product. Nonetheless, the examining attorney maintained his refusal to register the adhesive container cap because it was not inherently distinctive. As support, the examining attorney referred to the cover pages of eleven United States Design Patents showing drawings of various adhesive container caps. The container caps in these design patents all have a crown, and some have four or six evenly spaced wings around the crown. Pacer appealed the examining attorney's refusal to register the adhesive container cap to the Board.
The Board affirmed, finding that the design patents provided by the examining attorney were "probative of the fact that consumers are not likely to find applicant's claimed feature (wings arrayed evenly around a pointed crown) to be at all unique, original or peculiar in appearance." The Board also found that several of the design patents belonged to Pacer's competitors. Based on these design patents, the Board found that Pacer's asserted mark did not serve as a source-identifier for consumers. The Board also found that the design had not acquired distinctiveness, under § 2(f) of the Lanham Act, as a source-identifier, and accordingly affirmed the examining attorney's refusal to register Pacer's adhesive container cap as a trademark. Pacer timely appealed, and this court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
A. Standard of Review
This court reviews the Board's legal conclusions de novo, In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1365 (Fed.Cir.1999), and the Board's factual findings for substantial evidence, On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed.Cir.2000). Substantial evidence is "more than a mere scintilla" and "such relevant evidence as a reasonable mind would accept as adequate" to support a conclusion. Consol. Edison v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Whether an asserted mark is inherently distinctive is a factual determination made by the Board. Hoover Co. v. Royal Appliance
Page 1350
Mfg. Co., 238 F.3d 1357, 1359 (Fed.Cir. 2001).
B. Inherent Distinctiveness
The Board found that Pacer's container cap was not inherently distinctive and thus nonregistrable as a mark, based solely on the eleven design patents of container caps. The Board also found that Pacer could not demonstrate that its adhesive container caps had acquired distinctiveness, which Pacer does not dispute on appeal. Therefore, the sole issue presented on appeal is whether the design patents constitute substantial evidence to support the Board's finding of no inherent distinctiveness.
It is well established that the PTO has the burden to establish a prima facie case of no inherent distinctiveness. See, e.g., In re Gyulay, 820 F.2d 1216 (Fed.Cir.1987) (stating that the Board did not err in affirming the examiner's prima facie case that the mark was merely descriptive); In re Loew's Theatres, Inc., 769 F.2d 764, 768 (Fed.Cir.1985) (stating that the PTO made a prima facie case showing that the asserted mark was primarily geographically deceptively misdescriptive); In re R.M. Smith Inc., 734 F.2d 1482, 1484 (Fed.Cir.1984) (stating that the PTO established a prima facie case of de jure functionality of the asserted mark). Once the PTO sets forth a sufficient prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case. See Gyulay, 820 F.2d at 1217; R.M. Smith, 734 F.2d at 1484.
Accordingly, on appeal, we must consider whether the PTO has made out a sufficient prima facie case of no inherent distinctiveness, and, if so, whether Pacer has submitted sufficient evidence to rebut the prima facie case. Here, the question of inherent distinctiveness rests on whether the public in the relevant market would view Pacer's adhesive container cap as a source-identifier. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (stating that a mark is inherently distinctive if its "`intrinsic nature serves to identify a particular source'" (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992))); Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1206 (Fed.Cir.1994) (Trade dress is inherently distinctive if it "is of such a design that a buyer will immediately rely on it to differentiate...
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