TTAB - Trademark Trial and Appeal Board - *1 IN RE BABIES BEAT, INC. Serial No. 689,947 January 5, 1990

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 689,947

January 5, 1990



 Application Serial No. 689,947 filed October 16, 1987 claiming first use on October 1, 1986.



Gregory C. Smith for applicant



Fred Mandir



Trademark Examining Attorney



Law Office 7



(David Shallant, Managing Attorney)



Before Sams, Rice and Hanak






Opinion by Hanak






 Applicant Babies Beat, Inc. seeks registration of the configuration shown below for baby accessories, namely baby bottles.






 The Examining Attorney refused registration on four grounds: (1) de jure functionality; (2) in the alternative, de facto functionality without a showing of secondary meaning; (3) applicant's failure to furnish information and exhibits reasonably requested by the Examining Attorney to assist in the proper examination of the application (i.e. copies of patents and patent applications); and (4) applicant's failure to amend the drawing to show which features of the above design are claimed by applicant as its trademark.



 When the refusal was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.



 We will consider first the issue of de jure functionality. Applicant has conceded that its design "may be functional in the sense that because of its shape it allows a baby to more easily grasp the bottle." (Applicant's brief page 1). This admission is not surprising. It has been noted that "most designs ... result in the production of articles, containers, or features thereof which are indeed utilitarian...." In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 14 (CCPA 1982). In determining whether applicant's design is entitled to trademark protection, our task is not to ascertain "the mere existence of utility," but rather to ascertain "the degree of design utility." Morton-Norwich, 213 USPQ at 14.



 In making this determination, we are guided in large part by statements contained within applicant's own literature which was submitted to the Examining Attorney. This literature describes applicant's product as "the plastic baby bottle shaped for even the youngest and smallest babies' hands to hold." Furthermore, it is to be noted that applicant claims trademark rights in the "grippers" in the center portion of its bottle, and that applicant's own literature states that these "grippers line the holding area to give added assurance for safe holding. Both baby and parents can hold [applicant's] bottle in the correct feeding position comfortably.... [The] appealing shape [of applicant's bottle] is a natural with babies and make[s] meal time 'fun' for everyone!"



 In support of its position, applicant submitted a design patent (Des. 286, 911) "showing a competitor's bottle, presently being sold, which is a totally different shape from Applicant's bottle, and offers proof that the functions of Applicant's bottle can be performed by containers of innumerable designs." (Applicant's brief page 2). One of the figures taken from Des. 286, 911 is reproduced below.






  *2 We are by no means certain that this competitive product could be held as easily and as securely as applicant's product. We note in particular that the competitive product lacks grippers which applicant's product has. However, even assuming arguendo that the competitive product could be held as easily and as securely as applicant's product, it appears that the competitive baby bottle design would be more difficult to clean than would applicant's baby bottle design. A standard baby bottle brush may not fit into the competitive product (as it can into applicant's product). Even if a standard baby bottle brush could fit into the competitive product, it still may not reach the center portion of the lower half of the bottle. Obviously, the ability to thoroughly clean and sterilize a baby bottle is of great importance. Indeed, applicant touts its baby bottle design as being: "Easiest to Clean--No hard to reach areas." (emphasis added). Continuing, applicant's literature notes that a "standard bottle brush easily cleans entire inside area of [applicant's] bottle," and that applicant's bottle has "no hard to reach area."



 In summary, in reviewing applicant's own literature, we find that the degree of design utility encompassed by applicant's design is so great such that applicant's design is de jure functional, and hence not entitled to registration as a trademark. Moreover, as will be discussed in greater detail later, we note that in its paper dated August 5, 1988, applicant stated that its "goods are presently the subject of two U.S. Patent application Serial Numbers De 864,908 and 103,132, pending at this time." However, despite repeated requests by the Examining Attorney that applicant furnish copies of these patent applications, applicant never did so. Hence, this Board is left to assume that one of these patent applications may be a utility patent application, which, of course, could constitute evidence as to the functional nature of applicant's design. Morton-Norwich, 213 USPQ at 15.



 We now turn to the second ground cited by the Examining Attorney for refusing registration, namely, that in the alternative, applicant's design is, if not de jure functional, at least de facto functional and not inherently distinctive. On this ground, we reverse. If it is determined on appeal that the degree of design utility embodied in applicant's design is not so great as to make it de jure functional, then we believe that applicant's design is entitled to registration on the basis that it is inherently distinctive and requires no proof of secondary meaning.



 As for the refusal on the basis that applicant has failed to provide copies of the two patent applications requested by the Examining Attorney and further has failed to inform the Examining Attorney as to whether applicant has applied for or obtained any other patents on its design, we affirm. Trademark Rule of Practice 2.61(b) requires the applicant "to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application." Obviously, the Trademark Examiner's request that applicant furnish copies of the patent applications relating to its design and other patent information was clearly reasonable. Such patent applications and patents may have a direct bearing on the issue at hand, namely, the degree of utility encompassed in applicant's design for which it seeks trademark registration.



  *3 Moreover, even if we construe applicant's somewhat ambiguous response of August 5, 1988 to the effect that it was not absolutely refusing to provide copies of the two patent applications, but rather would make these applications available if the Trademark Examiner was "inclined to allow registration of the mark," such a response by the applicant still is not proper. Trademark Rule of Practice 2.142(c) states that "all requirements made by the Examiner and not the subject of appeal shall be complied with prior to the filing of an appeal." In re Big Daddy's Lounges Inc., 200 USPQ 371, 372 (TTAB 1978).



 Finally, as for the refusal to register on the basis that applicant did not submit an amended drawing showing which portions of the design it claimed to be its trademark, we reverse. In his office action of February 5, 1988, the Examining Attorney noted, inter alia, that applicant's initial drawing was unacceptable in that it used gray to indicate shading. In addition, the Examining Attorney required the use of solid and broken/dotted lines if "any part of the drawing [was] not intended to be claimed as part of the mark." With its response of April 25, 1989, applicant submitted a drawing which eliminated the improper gray shading. This amended drawing contained only solid lines. Thus, applicant was indicating that it claimed the entire bottle design as its mark including such functional features as the grippers and indeed the standard baby bottle nipple. While applicant's entire design has a greater degree of functionality than does simply the hour glass shape per se--and hence would be more subject to a claim that the design as described is de jure functional-- applicant has the right to claim as its mark the entire design. Applicant's failure to claim less than the entire design does not constitute a separate, independent ground for a refusal to register.



 Decision: The refusal to register is affirmed.



J.D. Sams



J.E. Rice



E.W. Hanak



Members, Trademark Trial and Appeal Board


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