Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE POLO RALPH LAUREN CORPORATION
Serial No. 625,103
May 30, 1989
Amster, Rothstein & Ebenstein for applicant
David C. Reihner
Trademark Examining Attorney
Law Office 1
(Deborah S. Cohn, Managing Attorney)
Before Rice, Seeherman and Hanak
Opinion by Hanak
Applicant filed a trademark application to register RALPH LAUREN and the design of mounted polo player in the form shown below for "articles for packaging apparel, namely, plastic bags" and for "woven labels." [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Registration was refused on the basis that the mark is not used in a manner so as to identify applicant's goods (plastic bags and woven labels), and to distinguish those goods from similar types of goods manufactured or sold by others.
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.
The manner in which applicant makes use of the mark RALPH LAUREN and design is described in applicant's brief: "Applicant indeed has its goods [woven labels and plastic bags bearing the mark] shipped from its label and bag manufacturers to its manufacturer of clothing and thereafter has the clothing, including the labels and/or bags, shipped to itself ... [Then] applicant ships the clothing, including labels and/or bags, to selected retailers for sale to the ultimate consumer."
The issue in this proceeding is not whether applicant's RALPH LAUREN and design designation is used as a trademark to identify and distinguish applicant's clothing. Instead, the issue is whether applicant's RALPH LAUREN and design designation is used as a trademark to identify the plastic bags and woven labels associated with applicant's clothing, and to distinguish these plastic bags and woven labels from the plastic bags and woven labels of others.
We begin by noting that there is "no question but that a mark may be used and registered for more than one type of merchandise and that ... under special circumstances, for both containers and the contents thereof." In re Kentucky Fried Chicken Corp., 170 USPQ 51, 53 (TTAB 1971). However, in order to be registered as trademark for both items, the mark must serve not only to identify and distinguish the contents (in this case, clothing), but also to identify and distinguish the containers (in this case, plastic bags).
Based on a review of the specimens of record and statements of applicant, we find that applicant's designation RALPH LAUREN and design serves only to identify and distinguish applicant's clothing. It does not serve to identify and distinguish the plastic bags and woven labels, and therefore cannot be registered as a trademark for the plastic bags and woven labels. See In re Burger Family, Inc., 141 USPQ 139 (TTAB 1964). (In refusing to register PAPA BURGER, MAMA BURGER and BABY BURGER for hamburger bags, this Board noted that the marks served to identify only the contents of the bags, namely, hamburgers, and not the bags themselves.)
*2 In arguing that its RALPH LAUREN and design designation also serves to identify and distinguish the plastic bags and woven labels, (5) applicant cites Ex parte Greyvan Lines, Inc., 99 USPQ 343 (Com.Pat.1953) and In re Colgate-Palmolive Co., 154 USPQ 622 (TTAB 1967). However, in Greyvan Lines, it was found that GREYVAN LINES served as a mark for the wardrobe containers to which it was affixed because the containers were sold separately from applicant's moving services, sometimes to customers who did not even use applicant's moving services. In the present case, applicant does not sell the plastic bags and woven labels apart from applicant's clothing.
In Colgate-Palmolive, this Board allowed registration of SOAKY as a trademark for toy figures which served as containers for children's bath soap because the applicant had heavily promoted the toy container per se, and because the toy container was a major factor causing consumers to purchase applicant's overall product (i.e. bath soap in a toy container) in that the container could be used over and over again as a toy long after the bath soap had been consumed. In the present case, applicant not only has failed to promote its plastic bags and woven labels, it also has failed to demonstrate that these bags and labels serve any purpose other than as containers and identifying tags for applicant's clothing. Indeed, the plastic bags are considered to be hazardous items. Consumers are warned to keep the bags away from babies and children.
Finally, we note that the applicant has stated that "if the existing case law is construed [so as to prohibit registration of applicant's mark for plastic bags and woven labels], there is no good reason not to extend the existing case law" so as to allow registration. The problem with applicant's request is that the Lanham Trademark Act of 1946 permits the registration of only those designations which function as trademarks and service marks. As noted previously, applicant's designation RALPH LAUREN and design simply does not function as a trademark to identify and distinguish the plastic bags and woven labels.
Aside from the statutory problems with applicant's suggestion, there is no good policy reason for adopting applicant's request. On the contrary, if every entity which utilized containers and labels for its products were permitted to also register its trademarks as trademarks for the containers and labels, there might well be a plethora of container and label trademarks on the register, thereby making it difficult for container and label manufacturers to select marks which were not confusingly similar to one or more of the numerous previously registered marks.
Decision: The refusal to register is affirmed.
For the reasons set forth in our decision in application Serial No. 625,103, the refusal to register is affirmed.
FN1. Application Serial No. 625,103 filed October 14, 1986 claiming first use as early as July 1972 (woven labels) and January 1979 (plastic bags).