In re SnoWizard, Inc., Serial 87134847

• Decision Date: 21 December 2018
• Docket Number: Serial 87134847
• Court: Trademark Trial and Appeal Board
• Parties: In re SnoWizard, Inc.

In re SnoWizard, Inc.

Serial No. 87134847

United States Patent and Trademark Office, Trademark Trial and Appeal Board

December 21, 2018

THIS OPINION IS A PRECEDENT OF THE TTAB

Kenneth L. Tolar of Tolar Harrigan & Morris LLC, for SnoWizard, Inc.

Carol Spils, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney.

Before Zervas, Ritchie, and Pologeorgis, Administrative Trademark Judges.

OPINION

Pologeorgis, Administrative Trademark Judge.

SnoWizard Inc. ("Applicant") seeks registration on the Principal Register under Section 2(f) of the Trademark Act 15 U.S.C. § 1052(f), of the asserted mark, as displayed below, for goods identified as "Concession trailer for snowball vendors to operate a viable snowball business" in International Class 12.^[1]

Applicant disclaimed the exclusive right to use the term SNOBALLS. Color is not claimed as a feature of the mark. The description of the asserted mark reads as follows:

The mark consists of a three-dimensional configuration of a snow-capped roof with the word "SNOBALLS", a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.

The specimen of record consists of the following photograph of Applicant's asserted mark used in connection with Applicant's identified goods:

(Image Omitted)

The Examining Attorney refused registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-52 and 1127, on the ground that Applicant's applied-for mark consists of a non-distinctive product design that does not function as a trademark and has not acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).

When the refusal was made final, Applicant appealed. The appeal is fully briefed.^[2] We affirm the refusal to register.

I. Product Design vs. Product Packaging

By seeking registration under Section 2(f) of the Trademark Act, Applicant has effectively conceded that its asserted mark is not inherently distinctive. See In re MGA Entm't, Inc., 84 U.S.P.Q.2d 1743, 1747 (TTAB 2007) (application under Section 2(f) is a concession that the asserted mark is not inherently distinctive). Nonetheless Applicant argues that its applied-for mark constitutes product packaging, not product design, so a showing of acquired distinctiveness is not required.^[3] Specifically, Applicant argues as follows:

The claimed design is clearly product packaging as opposed to product design and, therefore, can be, and is inherently distinctive. The uniquely shaped trailer is a stand from which end products (snowballs) are sold, not a design of the product being sold. To conclude otherwise would prevent all trade dress from ever being considered "packaging"; for example, the unique configuration [of] a coca-cola bottle, which is clearly product packaging, does not become product design merely because the bottle might be manufactured by another entity and sold to Coca Cola. Coca Cola purchases the bottle, fills it with its beverage and sells the product to a consumer; the bottle is packaging for the beverage. The identical scenario applies here. SnoWizard manufactures and sells the uniquely designed trailer to snowball vendors who equip the trailer with all supplies necessary to operate a snowball business, and then sell snowballs therefrom. The trailer design is clearly packaging for a snowball sold by snowball vendors.^[4]

Whether a mark constitutes product design or product packaging is an important distinction because product design marks can never be inherently distinctive, whereas product packaging marks can be inherently distinctive. Wal-Mart Stores Inc. v. Samara Bros Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065, 1069 (2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 U.S.P.Q.2d 1081 (1992)). Not all asserted product packaging marks, however, are inherently distinctive. Product packaging that is not inherently distinctive may acquire distinctiveness and thus function as a mark "if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product." Id. at 1068 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 U.S.P.Q.1, 4 n.11 (1982)).

Product design consists of some or all of the design elements of the product itself such as its size, shape, coloring or color combinations, while product packaging consists of some or all of the elements of the packaging or labeling of a product. Id. at 1069. And importantly, the goods relevant to our analysis are the goods identified in the application, i.e., a "[c]oncession trailer for snowball vendors to operate a viable snowball business."

Keeping these principles in mind, we fail to see how Applicant's asserted mark, composed of physical aspects of its concession trailers, constitutes product packaging, when the mark consists of the configuration of the roof of its products, the concession trailers, and the word SNOBALLS. The snow-capped roof, the wording SNOBALLS, and the snowball and associated beverage container are integral parts of the configuration of the concession trailer itself and thus are part of the product's design and are not product packaging. The U.S. Supreme Court stated in Wal-Mart Stores that in close cases, "courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning," see id. at 1070, but this is not a close case. Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant's applied-for mark is properly characterized as a product design. Specifically, it is the design of the roof of a concession trailer. It therefore requires a showing of acquired distinctiveness in order to be registered on the Principal Register.

We further note that Applicant at times characterizes its asserted mark as trade dress, in an apparent attempt to draw a distinction between trade dress and product design. Courts, however, have used the terms "trade dress" and "product design" interchangeably for product features to which trademark rights are claimed.^[5] See e.g., Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 U.S.P.Q.2d 1538 (Fed. Cir. 2018) (a product's design is considered distinctive, and therefore protectable as "trade dress," only upon a showing of secondary meaning); LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 225 U.S.P.Q. 654 (2nd Cir. 1985) (design of lightweight nylon luggage protected as "trade dress"); Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 32 U.S.P.Q.2d 1724, 1729 (3rd Cir. 1994) ("[T]rade dress protection extends beyond a product's packaging or labeling to include 'the appearance of the [product] itself."); M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, 228 U.S.P.Q. 705 (4th Cir. 1986) (defendant's video game console, art work and mark found to be an infringement of plaintiffs "trade dress"); Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 34 U.S.P.Q.2d 1428 (8th Cir. 1995) (design of personal planner was found to be protectable as "trade dress"); Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497 (10th Cir. 1987) (design of fishing reel was "trade dress"); see also Restatement (Third) Of Unfair Competition § 16, comment a (Am. Law Inst. 1995) ("The design features of the product itself are also sometimes included within the meaning of 'trade dress' although the substantive rules applicable to the protection of product designs differ in some respects from those applicable to packaging and related matter."). Thus, whether Applicant's claimed mark for the identified goods is referred to as product design or trade dress is of no consequence. Moreover, the fact that Applicant's asserted mark also includes a word, i.e., SNOBALLS, does not detract from our characterization of Applicant's asserted mark as product design/trade dress, particularly since the wording is at best highly descriptive of the identified goods and has been appropriately disclaimed.^[6]

II. Acquired Distinctiveness of Product Design

As noted earlier, Applicant effectively admits that its asserted mark is not inherently distinctive by seeking registration under Section 2(f). In re MGA Entm't, Inc., 84 U.S.P.Q.2d at 1747. The issue before us, therefore, is whether Applicant has overcome the refusal of its applied-for mark as non-distinctive product design by making a prima facie showing that relevant consumers perceive the design of a snow-capped roof featuring the word SNOBALL^[7] and the design of a snowball and associated beverage container, all positioned on top of a concession trailer, as a trademark for such trailers. "The applicant … bears the burden of proving acquired distinctiveness." In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 75 U.S.P.Q.2d 1420 (Fed. Cir. 2005)); In re Hollywood Brands, Inc., 214 F.2d 139, 102 U.S.P.Q. 294, 295 (CCPA 1954) ("There is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant ...."). Whether acquired distinctiveness has been established is a question of fact. In re Becton, Dickinson and Co., 675 F.3d 1368, 102 U.S.P.Q.2d 1372, 1375 (Fed. Cir. 2012).

Although a product design or, as in this case, the design of a portion of a product, "is not inherently distinctive," a product design that provides no...