Pacific Market, Inc.

Trademark Trial and Appeal Board

Apr 14, 2005

No. 75445415 (T.T.A.B. Apr. 14, 2005)

Mailed:
April 14, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pacific Market, Inc.
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Serial No. 75445415
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Michael J. Folise of Seed Intellectual Property Law Group
PLLC for Pacific Market, Inc.

Shari L. Sheffield, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pacific Market, Inc., seeks registration on the
Principal Register of the product design shown below:

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75445415
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for goods identified in the application, as amended, as
“drinkware, namely, thermal insulated beverage
containers,” in International Class 21.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this product design based upon the ground that
applicant has failed to demonstrate that this matter has
acquired distinctiveness as a source indicator.2

1 Application Serial No. 75445415 was filed by Pacific
Market, Inc. on February 28, 1998 based upon applicant’s
allegation of first use in commerce at least as early as April
15, 1996. The application states that the lining shown in the
image is merely to indicate shading. Applicant has also amended
the application to include a claim of acquired distinctiveness
for this product design.
2 During much of the prosecution of this application (e.g.,
Office actions dating from November 1998 through April 2003),
the Trademark Examining Attorney took the position that this
matter is barred from registration inasmuch as it is a de jure
functional configuration under Sections 1, 2 and 45. However,
in the final refusal, she explicitly withdrew de jure
“functionality” as a continuing basis for refusal (Office action
of September 2003).
At one point in the prosecution, she also took the
position that this design is absolutely barred from registration
under Sec. 2(e)(5) of the Lanham Act as amended (Office action
of May 2003). However, as noted by applicant (response of June
2003), Lanham Act Section 2(e)(5) applies only to applications
filed after October 30, 1998. Technical corrections to
Trademark Act of 1946 (TCTA), Pub. L. No. 105-330, Section
201(b), 112 Stat. 3064 (1998). Given the filing date of this
application (February 28, 1998), the Trademark Examining
Attorney then dropped that statutory ground, reverting again to
the refusal of this design as being a non-distinctive
configuration under Sections 1, 2 and 45 of the Lanham Act
(Office action of September 2003).
Serial No. 75445415
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Applicant and the Trademark Examining Attorney
submitted briefs. Applicant did not request an oral
hearing.
We affirm the refusal to register.
Applicant argues that the evidence of record is
sufficient, according to a preponderance of the evidence,
to sustain applicant’s claim of acquired distinctiveness.
In re Motorola Inc., 3 USPQ2d 1142 (TTAB 1986). By
contrast, the Trademark Examining Attorney argues that
applicant’s evidence of acquired distinctiveness is
insufficient to make a prima facie showing that the
relevant consumers understand this design to be a source
identifier.
The Supreme Court has recently stated that “consumer
predisposition to equate [product design] with the source”
of the product “does not exist,” and that “even the most
unusual of product designs” is intended to render the
product more appealing, not to identify source. Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 120 S.Ct. 1339, 146
L.Ed.2d 182, 54 USPQ2d 1065, 1069 (2000). It is against
this backdrop that we must consider applicant’s claim of
acquired distinctiveness.
Serial No. 75445415
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Moreover, it is applicant’s burden to prove acquired
distinctiveness. Yamaha International Corporation v.
Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d
945, 122 USPQ 372 (CCPA 1959). As the Board has noted,
the burden of showing acquired distinctiveness in a
product configuration is significant. See In re Gibson
Guitar Corp., 61 USPT2d 1948, 1951 (TTAB 2001); and In re
Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283-84 (TTAB
2000).
The evidence of acquired distinctiveness rests
largely on the declarations of two of applicant’s
employees.3
First, applicant’s product manager of drinkware, Tami
Fujii, states that “[o]ur customers for this product
includes Starbucks Coffee Company,” and that an attached
sampling of “catalog pages from competitive companies
selling competitive products” demonstrates that “a wide

3 Although the record contains a declaration prepared by
applicant’s counsel on March 24, 1999, evidently intended to be
executed by Ken Mooney, product manager for Starbucks Coffee
Company (applicant’s largest single distributor of this
product), a signed copy of this declaration was never made a
part of the record, and so we have not considered the contents
of this document. We should hasten to add that even if we had
treated this declaration as having been properly executed, it
would add nothing of significance to the record beyond that of
the Fujii and Styles declarations, infra, and hence, would not
change the result herein.
Serial No. 75445415
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variety of product shapes and configurations are available
for insulated drinkware,” and that “[a]ll of the products
are substantially similar in terms of manufacturing cost
and thermal efficiency.” Ms. Fujii’s declaration goes on
to state, as follows:
6. Pacific Market, Inc. is in the business of
providing its customers with unique,
identifiable products. The product
configuration, which is the subject of the
above trademark application, was
specifically designed with the concept of
providing our customer with a product
identity based on the external appearance
of the product configuration. That is, the
product was specifically designed with the
intention that it be a distinctive design
in the market place. As is apparent from a
comparison of the designs shown in Group
Exhibit A and the subject product design,
the subject design is unique and readily
identifiable due to its distinctive
appearance.

Second, applicant’s director of project/product
management, Rowena Styles, states as follows:
3. The design for which the Applicant has
applied for registration consists of
the external appearance of a beverage
container having a substantially
cylindrical smooth sided main body and
reduced diameter tapering foot
portion.
4. Our customers for this product have
included Starbucks, Target Stores,
Seattle’s Best Coffee, and six others.
5. Exhibit A attached hereto consists of
a page from the Target 1999 holiday
Serial No. 75445415
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catalog (page 85 thereof) in which the
product is shown advertised therein.
This catalog has nationwide
distribution.
6. The product, which is the subject of
this product configuration trademark
registration application, has an
unusual shape and is not similar to
any of the other shapes for insulated
drinkware that I am aware of.
7. The Applicant, Pacific Market, Inc.,
has sold over 153,222 products shown
in the drawings for this trademark
application since at least as early as
April 15, 1996, more than five years
prior to the date of this declaration.

Although applicant’s employees, in their
declarations, conclude that this mug is “unique,”
“unusual” and “distinctive,” we clearly do not find this
configuration to be inherently distinctive. In fact, the
involved beverage container appears to have a fairly
traditional shape. The individual features mentioned by
applicant as comprising the overall design (e.g., the
smooth, cylindrical body having a reduced diameter
tapering foot portion) are functional and fairly
unremarkable.
Moreover, the record includes no evidence that this
shape is recognized in the trade and by the ultimate
consumers of the goods sold by applicant as being the
trademark of Pacific Market, Inc. We agree with the
Serial No. 75445415
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Trademark Examining Attorney that the absence of any
affidavits or declarations from the purchasers or ultimate
users of applicant’s goods undermines applicant’s
contention that the configuration of this beverage
container is recognized as a source indicator for this
line of drinkware.
Turning to the duration and volume of applicant’s use
of this product configuration, it is clear that applicant
had been marketing this insulated travel mug for less than
two years at the time it applied for the instant
registration. In the five-year period prior to Ms.
Styles’ declaration of July 2001, applicant had sold more
than 150 thousand of these beverage containers to
customers through distributors such as Target Stores,
Starbucks Coffee, Seattle’s Best Coffee, and others.
However, in providing a raw figure delineating the
asserted volume of sales, applicant fails to provide any
context in which to assess this number. For example, if
we were to permit ourselves to conjecture about the size
of the market in the United States for insulated travel
mugs, marketing 150 thousand insulated travel mugs over a
period of five years does not seem that significant.
Thus, the weight to be accorded applicant's sales figures
Serial No. 75445415
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is most limited. See Gibson Guitar, supra, 61 USPQ2d at
1952 (no information provided to assess applicant’s
relative position in the marketplace).
However, even if we should be willing to find this
volume of sales as representing a significant volume, the
mere fact that a product has been on the market for five
years and applicant can attest to the sale of tens-of-
thousands of mugs during each of these years, this success
may be solely attributable to the value of the product and
does not, per se, indicate any recognition of the design
of the product as indicating the producer rather than the
product. See Braun Inc., v. Dynamics Corp., 975 F.2d 815,
827, 24 USPQ2d 1121, 1133 (Fed. Cir. 1992) (“[L]arge
consumer demand for Braun’s blender does not permit a
finding the public necessarily associated the blender
design with Braun.”); see also, Ennco, supra, 56 USPQ2d at
1283 (TTAB 2000) (burden on applicant attempting to show
acquired distinctiveness is to show that primary
significance of design has become identification of the
producer).
As to applicant’s alleged promotion of this product
design, the Trademark Examining argues that applicant has
failed to submit copies of any advertisement placed by
Serial No. 75445415
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applicant specifically promoting the overall look, the
shape or the styling of applicant’s beverage container as
a mark for its drinkware. It is the contention of the
Trademark Examining Attorney that the photographs of
applicant’s beverage containers will be viewed by
consumers as nothing more than that. We agree. See
Gibson Guitar, supra, 61 USPQ2d at 1952 (Board was not
persuaded that consumers would understand from photographs
that the guitar configuration was meant to be a source-
identifier); and In re Edward Ski Products Inc., 49 USQP2d
2001, 2005 (TTAB 1998).
It is not sufficient that applicant intends that
consumers identify the product configuration with
applicant; it is the actual recognition by consumers that
is significant. Cf. Edward Ski Products, supra, 49 USPQ2d
at 2005, where declarations from distributors who would be
expected to know source of products bought for resale were
discounted as evidence of acquired distinctiveness and
there were no declarations from ultimate purchasers.
There is absolutely no information in this record
about the amount of money that applicant has expended on
the promotion of this design – if indeed, there has been
any such advertising.
Serial No. 75445415
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In the face of the Trademark Examining Attorney’s
criticisms that there is no evidence of any “look-for”
advertisements, applicant argues in its brief that some
tribunals “have found that trade dress can be recognizable
even when the advertising does not specifically tell a
consumer to look for it.” Applicant’s brief, p. 7.
Furthermore, applicant argues that “applicant’s
advertisement of its Cafe Desktop beverage container as
having a unique and distinctive shape in comparison with
other beverage containers is more than adequate to meet
the threshold of ‘look for’ advertising required by the
courts.” Id. at 8. We disagree. Rather, we find it most
damaging to applicant’s position herein that there is
nothing in the record promoting the look, shape or styling
of this product design.
For example, the point of sale display attached to
the Styles declaration shows the outline configuration of
a variety of different stainless steel beverage containers
(e.g., Bodum® coffee presses, carafes and pots on the left
two-thirds of the page and applicant’s MiGo® coffee cups
and mugs on the right third of the page). Although it is
most difficult to read all the text on the photocopy of
this graphic display, as far as we can discern, in
Serial No. 75445415
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describing applicant’s MiGo® cups and mugs, the text
merely mentions the drink capacity of the containers, the
double wall insulation and the spill-resistant lids.
Styles declaration, Exhibit A, comprising a copy of page
85 of a Target stores holiday catalogue of 1999. In fact,
the text and the images of this advertisement are fairly
consistent with those shown in the print advertisements of
applicant’s competitors.4 Fujii declaration, Exhibit 2.
Another exhibit in the record is a product brochure
card entitled “PMI Stainless Drinkware” (unverified, but
attached to applicant’s response of July 7, 2000). This
brochure pictures in relief seventeen different cups,
mugs, tumblers, bottles and carafes apparently produced by
applicant. The involved container (which we have circled,
supra) comprises one small image of an undistinguished
mug, labeled “Cafe Mug 12 oz.”:

4 Competing mugs appear to be made of combinations of
stainless steel (with or without rubber grips), often with
rubber bases or “footpads,” or made of glass, molded
thermoplastic, stoneware, and/or porcelain, being either vacuum
or non-vacuum in design, having soft lids that press into place
or screw-on metal lids, some having a handle and others without.
They appear to be formed in a variety of different shapes and
sizes.
Serial No. 75445415
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By way of contrast with the “Cafe mug,” we note that
several other styles of beverage containers on this page
Serial No. 75445415
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actually have names that do call slight attention to their
styling or shape (e.g., Chubby, Teardrop Traveler, Tapered
Tumbler, etc.). However, even that small claim of
distinction is absent from the “Cafe Mug.”
Although the small print right above this row of cups
and mugs contains puffery about applicant’s “advanced
design,” this is a general statement applied to all of its
beverage containers. As far as we can see, the unique
shape alleged by applicant throughout the prosecution of
this application is nowhere mentioned in this brochure.
In support of registrability herein,
applicant has pointed repeatedly to the
case of In re Motorola Inc., supra.
However, we find that the instant
case is easily distinguished factually from the Motorola
case:
• In Motorola, the Board found that there appeared
to be a wealth of existing microphone designs,
and that Motorola had demonstrated convincingly
with its submission of photographs that its
hand-held microphones were substantially
different in size, shape and contour from the
competing products on the market. As noted
Serial No. 75445415
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above, we find that applicant herein has
provided examples of several mugs marketed by
applicant’s competitors having a similar look,
shape or style.
• Motorola had a detailed word description of how
its microphone was unique – how it differed from
those of competitors.5 Apart from a generalized
and rather vague description of a smooth,
cylindrical body having a reduced diameter,
tapering foot portion (characteristic of a
number of competing travel mugs), it is not
clear what combination of unique features
applicant is really claiming as its protectable
design.6

5 “… an essentially oviate, or egg-like, overall
configuration, devoid of any substantial straight lines,
flattened somewhat on the top side, and which further includes a
contrasting grille structure in the form of differing truncated
arcuate members, a portion of which protrudes outwardly and
downwardly petal-like from the front side thereof.” Id. at
1143,
6 In addition to those individual features named by
applicant in its responses and brief submitted during the
prosecution of this application, the drawing shows prominently
the lid and handle. As noted earlier, however, the unremarkable
nature of the overall shape of this product creates a most
challenging burden on applicant to demonstrate acquired
distinctiveness.
Furthermore, should applicant be issued a registration for
the involved product design, the failure of applicant to
enumerate specifically the exact combination of features that it
claims comprise its mark could itself hinder competition given
the uncertainty competitors may face in designing a non-
Serial No. 75445415
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• In spite of the fact that a hand-held microphone
retails for much more than a travel mug,
affidavits in the Motorola case attested to
sales of three million units over a period of
almost twenty-five years. Applicant has alleged
sales of 150 thousand travel mugs over a period
of five-year.
• Motorola submitted declarations of individuals
involved in the repair, installation, and
servicing of two-way radio equipment,
individuals involved in the offering of mobile
telephone services, as well as the declarations
of users of applicant’s radio equipment. All of
these declarations demonstrated that Motorola’s
configuration had become distinctive of its
radio apparatus. Here, we have the declarations
of two of applicant’s employees – both immersed
in managing this particular product. The record
is devoid of any affidavits or declarations from

infringing product. Cf. In re R.M. Smith, Inc., 734 F.2d 1482,
1484, 222 USPQ 1 (Fed. Cir. 1984).
Certainly, if applicant should ultimately prevail herein,
it is recommended that it amend this application to set forth
clearly and in detail what it is applicant is claiming as its
mark. See In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d
1544, 1545 n. 1 (TTAB 1996).
Serial No. 75445415
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distributors, purchasers or the ultimate users
of applicant’s goods.
• Twenty-five years of Motorola’s promotional
materials prominently featured applicant’s
microphone configuration. Here, we find no
prominent usage of the claimed configuration in
a way that would predispose potential consumers
to associate the shape of the mug with a single
source of the goods.
Decision: The refusal to register applicant’s design
as a product configuration devoid of acquired
distinctiveness is hereby affirmed.