TTAB - Trademark Trial and Appeal Board - *1 IN RE LEO PETERS Serial No. 527,046 February 9, 1988

Trademark Trial and Appeal Board

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



Serial No. 527,046

February 9, 1988


Timothy L. Tilton, Jerome F. Fallon, John B. Lungmus and John W. Chestnut for applicant



Ronald Sussman



Trademark Examining Attorney



Law Office VII



(Lynne Beresford, Managing Attorney)



Before Rooney, Simms and Seeherman






Opinion by Rooney






 The application filed by Leo Peters to register the figure shown below [FN1] for round shaped embossed butter pats [FN2] was refused registration on the ground that the configuration is de jure functional. The Examining Attorney




also indicated that, even assuming arguendo that the configuration is not de jure functional (and thus could be registered upon a showing of secondary meaning), the evidence submitted by applicant to prove acquired distinctiveness is insufficient for that purpose. Registration was finally refused and applicant has appealed.



 In support of the claim of distinctiveness, applicant submitted his declaration in which he stated that his "E-Z Serve Packs" [FN3] (of butter pats) are purchased by approximately 155 accounts in 27 states; that about 150,000 trays are sold weekly and have been for about five years; that there are no other butter pat trays or packages on the market that have pockets and the trade calls these trays "the package with individual pockets"; and that the overriding distinguishing design feature of the tray is the individual pockets.



 Applicant also submitted a brochure used in the sale of its goods, a copy of its patent, No. 3,896,230 issued on July 22, 1975 for a "Butter Pat Package", two photographs of the packaging tray on the backs of each of which a purchasing agent for a major hotel chain, i.e., Hilton and Hyatt Hotels, has signed a statement which reads: "From the photo on the reverse side I recognize a container for round butter pats produced by Butterball Farms." [FN4]



 A design configuration is considered to be unregistrable when it has been determined to be de jure as opposed to de facto functional. An item which is de facto functional may be registrable while one which is de jure functional may never be registered even if it has been shown to possess some recognition in the trade. The mere existence of a function does not render a configuration unregistrable or de jure functional. That is, containers hold liquid, a function. The ability to hold liquid does not make every liquid container configuration unregistrable. Something more is needed. To be considered de jure functional, it must be shown that, not only does the container have a function, but performance of that function is enhanced by the particular configuration that it takes. See In re R.M. Smith, 734 F.2d 1482, 222 USPQ 1 (Fed.Cir.1984). The distinction is one of the degree of design utility which is determined on the basis of the superiority of the design in question. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).



  *2 Factors which are relied on to determine whether or not a particular design is or is not a superior one are: (a) the existence of a utility patent showing the functional advantages of the design; (b) advertising materials showing that the utilitarian advantages have been touted by applicant; (c) facts tending to show an absence of alternative designs; and (d) facts from which it could be determined that the design is the result of a comparatively simple or inexpensive method of manufacture. See Morton-Norwich, supra.



 Of record in this case is applicant's utility patent No. 3,896,230 for a  "Butter Pat Package," the configuration of which is sought to be registered. Under the title "The Prior Art Deficiencies and the Objectives to Overcome Them" is the following text.

   In the prior art the accepted practice for protectively packaging restaurant-sized embossed butter pats of the kind embraced by this invention is to use two un-like packaging pieces: one, a flat tray on which to rest the flat side of the pats, and another, a blister-type cap to cover and maintain in separated non-touching position, each individual pat within the multiple-pat-holding shipping container. This method ... approximately doubles the cost of packaging materials. Such doubling of packaging costs ... can spell the difference between a sale or no sale ...

   It is another object of this invention ... to eliminate the need for two pieces of packaging materials.... Instead, this invention is designed to accomplish these functions through utilization of a single piece of packaging material.

In connection with dispensing the butter pats from the packaging it is indicated that the prior art had several deficiencies including, "Pats in loose unstable positions", "no positive guide-posts for dispensing blade", "Trays that fail to prevent nesting", "Trays whose sides prevent easy dispensing" and "Trays that are flimsy". Stated objects of the invention are to overcome those deficiencies by providing a shipping tray "... structured to hold embossed pats in fixed aligned positions while a dispensing blade is slipped underneath them", "... that will serve as a positive positioning guide for aligning the flat side of a dispersing blade into perfect centered position underneath the pats," while at the same time providing "equally-extending edges on both sides of the dispersing blade ...", "... having the advantage of a single, identical, standardized, tray structure, but without the nesting disadvantages inherent in such a tray", "... in which the sides remain rigid and the corners remain secure and intact," while providing "easy access for a dispensing blade to be slipped into the tray area and underneath the ... pats", "adapted to be carried in one hand ... and pats therefrom can be easily removed and served by a blade manipulated by a person's other hand".



 The patent makes it clear that the configuration of applicant's container is designed with definite functional advantages, peculiar to it. We note moreover the round shape of the pockets, particularly adapted to round shaped butter pats.



  *3 The second factor has also been satisfied [by applicant.] Applicant's advertising brochure contains the following remarks relative to its "E-Z Serve dispensing trays". "All pats completely separated; therefore no breakage problem." "E-Z Serve Tray makes pats easy to dispense with a knife or fork." "Finger holes underneath the E-Z tray permit waiters to firmly hold a whole tray in one hand and quickly dispense butter by a fork in the other hand." While these functional advantages of the tray are touted in the brochure, there is nothing therein which would impress upon the readers' mind that these trays are intended to and/or do function as a trademark for applicant's butter pats.



 Applicant argues that there are alternative designs which can be utilized by other producers of butter pats, noting that twelve patents were cited as references during the examination of its patent. It is further noted that applicant himself has two earlier patents showing designs which are not identical to the instant one but appear to be forerunners thereof, the latest having distinct functional advantages not possessed by the earlier ones. As for the other twelve, we have no way of knowing what inventions they showed nor whether those patents are still in force, thereby precluding use by other producers of butter pats.



 As to the last element, i.e., facts from which it can be shown that the design results from a comparatively simple or inexpensive method of manufacture, we have only to read applicant's patent to learn that this design is superior to others which use two unlike packaging pieces (stated by the inventor to be the accepted practice for packaging of this kind) because the old method "approximately doubles the cost of packaging materials."



 Summing up, applicant's design eliminates the need for two un-like packaging pieces, holds round butter pats in stable position for dispensing with a knife blade, provides a positioning guide for the blade and is able to be carried in one hand while pats are removed and served by the other hand. In addition, applicant's tray costs only half as much to produce. Applicant advertises the ease of use of its trays. In addition, there is no evidence of record of any alternative designs available to competitors which provide these same functional advantages.



 Accordingly, we agree with the Examining Attorney that the configuration for which registration is sought is de jure functional. This design is superior because it possesses the aforenoted advantages. For the life of his patent, applicant is entitled to enjoy a monopoly on its use. But, upon its expiration in 1992, this design should be available to other producers of butter pats.



 A de jure functional design may not be registered regardless of any evidence of distinctiveness. Had we found applicant's design not to be de jure functional, the evidence offered by applicant to prove secondary meaning is, as the Examining Attorney recognized, inadequate for that purpose.



  *4 Other than the affidavit attesting to sales to 155 accounts, many of them hotel chains, applicant has submitted only the two aforementioned photographs with an inconclusive statement typed on the rear of each. The fact that these two individuals recognize from the photo "a container for round butter pats produced by Butterball Farms" does little, if anything, to establish that the tray functions as a trademark, let alone is distinctive. Regardless of the amount of trays that applicant has delivered to large numbers of hotels, it cannot be determined that the trays are recognized as a trademark for the butter pats they hold in the absence of any evidence to prove that fact.



 In view of the foregoing, the refusal to register is affirmed.



L. E. Rooney



R. L. Simms



E. J. Seeherman



Members, Trademark Trial and Appeal Board



FN1. A description of the alleged mark submitted by applicant reads: "--(T)he mark consists of a container which includes a plurality of elongated parallel channels, each channel having a flat bottom wall, a pair of side walls which extend upwardly from the bottom wall and which are provided with curved recesses to provide circular pockets."



FN2. Ser. No. 527,046 filed March 15, 1985 claiming a first use of June 1, 1970.



FN3. Applicant uses the terms "E-Z Serve Pack," "E-Z Serve Trays" and "E-Z Serve Pack Trays" interchangeably to refer to the container whose configuration is sought to be registered.



FN4. Butterball Farms is the name under which applicant conducts his business.


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