TTAB - Trademark Trial and Appeal Board - *1 IN RE WITCO CORPORATION Serial No. 655,594 September 27, 1989

Trademark Trial and Appeal Board

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



Serial No. 655,594

September 27, 1989

Hearing: August 17, 1989


Sidney Wallenstein, Robert E. Wagner, Russell E. Hattis and Harry V. Strampel for applicant



Gary L. Shaffer



Trademark Examining Attorney



Law Office 7



(David Shallant, Acting Managing Attorney)



Before Simms, Seeherman and Hanak






Opinion by Seeherman






 Witco Corporation has appealed the refusal of Examining Attorney to register the configuration of a container for motor oil [FN1] on the ground that it is de jure functional [FN2] (15 U.S.C. 1051, 1052 and 1127). The drawing submitted as part of the application depicts the applied-for matter as follows, but at the oral hearing held on this appeal applicant conceded that it was claiming as a trademark only the elongated, ribbed neck of the bottle. Accordingly, if applicant should ultimately prevail in this proceeding, it will be required to submit a new drawing showing the disclaimed portions of the bottle, e.g., the rectangular shape, indented sides and offset spout in broken lines. In its reply brief applicant also indicated its willingness to provide a description of its mark, even though the Examining Attorney's requirement for it to do so, made in the Examiner's Statement, was manifestly untimely. Therefore, if applicant does prevail, a description of the mark should be submitted with the amended drawing.






 It is the Examining Attorney's position that applicant's ridged neck design is functionally superior to other designs because the ridges in the neck make it possible to insert the container neck into an oil fill opening in an engine, and leave the container there without holding on to it. This is so because the ridges on the neck will grasp the engine oil opening edge and stabilize the container without assistance. Another functional advantage of the design, according to the Examining Attorney, is that the internal neck ridges cause turbulence in the oil flowing out of the container, thus slowing the oil flow and making it easier to control. [FN3] This, as well as the long neck, makes it easier to add oil to the vehicle engine neatly and cleanly. Accordingly, the Examining Attorney asserts that these features provide utilitarian advantages which should remain available to others in the trade so that they can compete effectively.



 As has been stated in previous cases, if the design of a product or a container for a product is so utilitarian as to constitute a superior design which others in the field need to be able to copy in order to compete effectively, it is de jure functional and, as such, is precluded from registration for reasons of public policy. That is, "... 'functionality' is determined in light of 'utility', which is determined in light of 'superiority of design', and rests upon the foundation 'essential to effective competition'...." In re Weber-Stephen Products Co., 3 USPQ2d 1659, 1664 (TTAB 1987), citing In re Morton-Norwich Products, Inc., 617 F.2d 1332, 213 USPQ 9, 14, 15 (CCPA 1982). Four evidentiary factors were discussed in In re Morton-Norwich, Inc., supra, as being useful in demonstrating such de jure functionality: (1) a utility patent that discloses the utilitarian advantages of the design, (2) advertising material in which the originator of the design touts its utilitarian advantages, (3) facts tending to establish the unavailability to competitors of alternative designs, and (4) facts indicating that the design results from a comparatively simple or cheap method of manufacturing the product or container. See also, In re Honeywell Inc., 8 USPQ2d 1600, 1603 (TTAB 1988).



  *2 Reviewing the evidence which has been submitted in light of these factors, we note at the outset that applicant has no utility patents for its container configuration. Rather, it has a design patent, No. 294802, for the oil container as a whole, and prior decisions have stated that a design patent indicates, presumptively, that the design is not de jure functional. In re Morton-Norwich, Inc., supra at footnote 3, and cases cited therein. However, many of the features of the overall container covered by applicant's design patent have been conceded by applicant to be functional in a trademark sense, and applicant has admitted that it "is not aware of any adjudicated case that lays down as a legal principle, that the ownership of a Design patent in and of itself, and without more, establishes non-functionality as to trademark registrability of that same Design for particular goods." Applicant's brief, p. 7.



 The second evidentiary factor comprises any advertising materials which tout the utilitarian advantages of the configuration. In this connection, we note the following statements in promotional materials submitted by applicant:

   PERFECT BY DESIGN. Easy to Open. Easy to handle. Easy to pour. Easy to store.

   ... A great consumer package that is easy to open, easy to pour, with a special ribbed neck.

   The new and improved offset neck Fun-L-Fil plastic bottle.... A revolutionary ribbed neck plastic bottle.... The ridged neck provides stability when pouring the oil and the easy pour offset neck minimizes spillage.

   [on the back of this same flyer applicant lists the advantages of the  "Newly Designed Fun-L-Fil," including:]

   Ridged Neck for stability when pouring

   Easy pour offset neck minimizes spillage.


   Ridged neck bottle for stability when pouring





   The new and improved ridged offset neck Fun-L-Fil plastic bottle.... A revolutionary ribbed neck plastic bottle. In the age of consumer convenience Kendall leads the competition with our new improved offset neck design plastic Fun-L-Fil bottle.... Extensive research has shown that consumers prefer the Kendall ridged neck bottle because it helps prevent spillage while pouring.





   Fun-L-Fil is a great consumer package that is easy to open, easy to pour with a special ribbed neck.



 Applicant's counsel dismisses these statements in the promotional materials as puffing.



 With respect to the third evidentiary factor, the availability to competitors of alternative designs, applicant has made of record pictures of competitors' containers and, at the oral hearing held on this case, submitted pursuant to stipulation four actual containers of its competitors. An examination of the containers reveals they each have one rib, as well as threads to screw the caps on their necks (which are not visible when the caps are in place), as compared to the six ribs that are part of applicant's configuration. (Applicant's container also has threads.) The necks on all the competitors' containers are all relatively much shorter than applicant's.



  *3 In addition to its evidence that competitors do in fact use different configurations from the matter which it seeks to register, applicant also suggests that if competitors wish to use ribbing in order to increase the strength of the neck they could employ longitudinal, rather than lateral ridges. However, as the Examining Attorney points out, such ridges would not aid in balancing the container in the oil fill opening when adding oil to the engine. Further, if the ribs do provide a functional advantage, as the Examining Attorney contends, it is obvious that a longer neck would be required in order to accommodate the larger number of ridges used by applicant.



 The Examining Attorney suggests (and we regard this as mere speculation) that competitors have not used a similar neck configuration because applicant's configuration has been in use for a relatively short period of time, and competitors may, for reasons unrelated to any functional advantages of the features of applicant's container, not yet have had an opportunity to adopt such functionally advantageous features.



 Turning to the last evidentiary fact, namely whether the design results from a simpler or cheaper method of manufacture, there is no evidence on this point, although applicant states that to the extent the longer neck of its container requires more material, its manufacturing cost might be minimally more, rather than less expensive than short-necked containers. However, if the internal ribbing does indeed provide a functional advantage, as the Examining Attorney asserts, it appears to us that it would be simpler and cheaper to create these ribs by forming them from the entire neck (so that indentations in the inner side of the neck would correspond with ridges in the outer side, and vice versa), rather than by building the ribs only on the inner side of the neck.



 As is obvious from the foregoing discussion, the only real evidence of record relating to the factors set forth in In re Morton-Norwich and its progeny is applicant's advertising touting the utilitarian advantages of its container. However, much of applicant's promotional material contains specific references to the ease of pouring, stability, etc. provided by the ribbed neck. We think it obvious, based on this advertising, that the ridged neck provides the user with stability while pouring from the container no matter at which part of the neck the container rests, or at what angle it is held. This flexibility makes the container easier to handle and pour from, and also reduces spillage. We acknowledge that the advertising does not refer specifically to the relatively longer length of the neck, but concentrates, instead, on the functional advantages of the ribbing. However, since a longer neck is perforce required in order to accommodate the ridges, the advantages of the longer neck are implicit in this advertising. Accordingly, we conclude that the Examining Attorney has demonstrated, prima facie, that the configuration sought to be registered is de jure functional. In reaching this conclusion, we recognize that the Patent and Trademark Office is limited in its resources for analyzing configurations from a technical standpoint. The Examining Attorneys are not engineers, and evidence of a technical nature is normally more readily available to applicants. See, In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9 (Fed.Cir.1982).



  *4 As noted previously, applicant's only response to this evidence is to suggest that the statements in the promotional material are mere puffing, and that the features referred to in the advertising are not in reality better. This explanation is not persuasive to rebut the specific statements touting the functional advantages of these features, in view of the significant number of promotional materials, many headed "Perfect by Design", which focus directly on the advantages of the configuration of the container. Further, applicant's argument is directly contrary to the position taken by applicant (discussed infra) in connection with the possible functional advantage of the internal ribbing in the neck, in which applicant argues that if this ribbing were a functional advantage it would have been touted as such in its advertising.



 Accordingly, we find that applicant has failed to rebut the prima facie case made out by the Examining Attorney.



 Before concluding, we think it appropriate to comment on the Examining Attorney's argument that the ribbing in the interior of the neck also provides a functional advantage by making the oil flow easier to control. As noted in footnote 3, supra, we do not regard the internal ribbing as part of the mark claimed by applicant, so that the discussion as to the utilitarian advantage of such ribbing really goes to whether the exterior ribbing, which is claimed as part of the mark, provides a cheaper or easier method to manufacture containers which have a functional advantage.



 We recognize that the Examining Attorney's arguments about the functional advantage of the interior ribbing are mere speculation, and we do not, therefore, base our decision that the applied-for matter is functional on the likelihood that the external ribbing would provide an easier method of manufacturing the internal ribbing. However, applicant's response to the asserted functionality of the internal ribbing is instructive with regard to the "advertising factor". Applicant has argued that the internal ribbing is not functional, as demonstrated by the fact that nowhere in its advertising is there any touting of the functional advantage of the internal ribbing. Thus, applicant takes an inconsistent position regarding the weight to be accorded the claims contained within its own advertising. When the advertising does not tout the advantages of a certain feature, applicant asks that we accept this as proof that the feature is indeed not functional. On the other hand, when the advertising does tout the advantages of a feature, applicant asks that we dismiss this as mere puffing.



 Decision: The refusal to register is affirmed.



R.L. Simms



E.J. Seeherman



E.W. Hanak



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 655,594, filed April 16, 1987 and asserting first use and first use in commerce as early as February 1985.



FN2. During the course of examination the Examining Attorney conceded that the evidence submitted by applicant was sufficient to demonstrate that the configuration had acquired distinctiveness so that, if the configuration were not functional, there would be no other bar to its registration. We note that the evidence and the Examining Attorney's determination were in connection with the configuration of the container as a whole, rather than the portion of the container which has now been agreed is the subject matter of the application. Nevertheless, since the Examining Attorney has not finally refused registration on the additional basis that the configuration of the claimed portion of the container has not been shown to have acquired distinctiveness, that issue is not before us.



FN3. It should be noted that the internal neck ridges have not been claimed as part of the mark, nor do we believe that the internal ridges could function as a mark because they would not be perceived (if they were perceived at all) until after the motor oil was purchased and the container opened. Thus, any discussion of the functional advantages of the internal neck ridges is made, not in the context of whether they may be claimed as a trademark, but as whether the external neck ridges, which are claimed as a mark, are necessary or useful to create the internal ridges.


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