*1 THIS OPINION IS CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE HUDSON NEWS COMPANY
Serial Nos. 74/441,602 and 74/441,603
August 7, 1996
Hearing: July 12, 1995
Brian D. Anderson of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. for applicant
Senior Trademark Examining Attorney
Law Office 12
(Deborah Cohn, Managing Attorney)
Administrative Trademark Judges
Opinion by Quinn
Administrative Trademark Judge
Hudson News Company has filed two applications wherein the services are recited as "retail store services featuring newspapers, magazines, books, snack foods, clothing, film and other sundries." The applications are unusual in that they do not include pictorial drawings of the marks sought to be registered. In lieu of pictorial representations of the matter sought to be registered, [FN1] applicant sets forth the following descriptions:
The mark is a distinctive trade dress consisting of the color blue utilized as a motif in association with the store name and other trade dress elements such as carpeting, neon lighting, publication(s) display panels and surrounds, shelving and employee uniforms. [FN2]
The mark is a distinctive trade dress composed of a cool bluish, clean and salubrious newsstand shopping environment. The blue motif is created and enhanced by blue neon lighting associated with the store name and publication(s) displays, blue carpeting, blue accents, and blue employee uniforms. The blue motif is further enhanced by extensive use of clear, acrylic plastic shelving and coverings for displays which both reflect and allow for the passage of the reflected bluish light throughout. [FN3]
Each application also includes the following statement: "The mark is non-functional, inherently distinctive and is used as trade dress in Applicant's retail newsstand stores."
The Trademark Examining Attorney has refused registration in each application on two grounds, namely, (i) that the matter sought to be registered is de jure functional; and (ii) that in the event the matter sought to be registered is not de jure functional, the applied-for trade dress is not inherently distinctive.
When the refusal to register in each application was made final, applicant appealed. Applicant and the Examining Attorney filed briefs, [FN4] and both argued at an oral hearing held before the Board. Because of the essentially identical issues involved in these appeals, both of which have been presented on the same record and briefs, the Board will explain our decisions in these appeals with one opinion. [FN5]
Applicant essentially argues that the definition of a "trademark," as set forth in the Trademark Act, is broad and encompasses the type of trade dress sought to be registered by applicant. [FN6] Applicant contends that the Examining Attorney has failed to meet the Office's burden of showing that applicant's trade dress is not registrable, particularly in light of applicant's sworn statement regarding the non-functionality and inherent distinctiveness of its proposed marks. In this connection applicant points to the Supreme Court's decision in Two Pesos, Inc. v. Taco Cabana, 112 S.Ct. 2753, 23 USPQ2d 1081 (1992), aff'g 932 F.2d 1113, 19 USPQ2d 1253 (5th Cir.1991), arguing that "[t]he Two Pesos litigation itself, quite apart from the law articulated by the Supreme Court therein, is the best argument both for the broad policies favoring registration as mandated by the statutory framework of the Lanham Act and for registration of the trade dress/trademark in this case." (brief, p. 3) Applicant asserts that no evidence of secondary meaning (i.e., acquired distinctiveness) is necessary for registration of what applicant considers to be its inherently distinctive trade dress which is, in applicant's words, "a combination of visual features that creates a distinctive visual and sensory impression." In support of registration, applicant submitted the entire text of an article introduced by the Examining Attorney, and photocopies of two photographs of the restaurant trade dress at issue in Two Pesos. [FN7]
*2 The Examining Attorney contends, in refusing registration, that the applied-for marks consist primarily of the color blue, which is a common decorating color used in retail stores and for which, thus, there is a competitive need. In this connection, the Examining Attorney goes on to argue that the blue trade dress is de jure functional because it creates a soothing, calming environment which competitors should be free to create in their stores as well. The Examining Attorney also asserts that even if the applied-for marks were not de jure functional, the trade dress is not inherently distinctive. In view of her characterization of the matter sought to be registered as primarily a "color mark", [FN8] the Examining Attorney cites to the Supreme Court's language in Qualitex Co. v. Jacobson Products Co., Inc., 115 S.Ct. 1300, 34 USPQ2d 1161 (1995) which, in the Examining Attorney's view, suggests that color marks require secondary meaning for protection. In support of the refusal to register, the Examining Attorney has relied upon the following evidence: excerpts retrieved from the NEXIS data base which, according to the Examining Attorney, show that other commercial entities are using blue carpeting, paint, etc. in decorating their stores, and that the color blue has a psychological impact when viewed; and two photographs of retail stores having a blue trade dress.
As noted above, there are two refusals on appeal, namely, that the matter sought to be registered is de jure functional, and that if the matter is not de jure functional, then the applied-for mark is not inherently distinctive. [FN9] These refusals raise interesting questions for the Board in the wake of the United States Supreme Court's decision in the case of Two Pesos Inc. v. Taco Cabana Inc., supra.
Section 45 of the Trademark Act, 15 U.S.C. § 1127 (1988) defines a "trademark" as "any word, name, symbol, or device, or any combination thereof" used by a marketer "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." The Supreme Court, in the case of Qualitex Co. v. Jacobson Products Co., supra at 1163, observed that
a source-identifying mark .... quickly and easily assures a potential customer that this item--the item with this mark--is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. It is the source-distinguishing ability of a mark--not its ontological status as color, shape, fragrance, word or sign--that permits it to serve these basic purposes. [emphasis in original; citations omitted].
Trade dress has been used to refer to the total image and overall appearance of a product or service. See Two Pesos, Inc., supra, citing Restatement Third, Unfair Competition § 16, Comment a (Tent. Draft No. 2 (1990)). "Trade Dress" is described in Restatement Third, Unfair Competition § 16 as follows:
*3 The design of elements that constitute the appearance or image of goods or services as presented to prospective purchasers, including the design of packaging, labels, containers, displays, decor, or the design of a product, a product feature, or a combination of product features, is eligible for protection as a mark under the rules stated in this Chapter if:
(a) the design is distinctive under the rule stated in § 13; and
(b) the design is not functional under the rule stated in § 17.
Trade dress is an ever-expanding trademark concept, and has been held to include the decor and style of a restaurant as in the case of Two Pesos. See also: Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 4 USPQ2d 1026 (9th Cir.1987); and T.G.I. Friday's Inc. v. International Restaurant Group, Inc., 405 F.Supp. 698, 189 USPQ 806 (M.D.La.1975), aff'd, 569 F.2d 895, 195 USPQ 513 (5th Cir.1979).
We first turn to the question of the functionality of applicant's trade dress.
Trade dress, if de jure functional, cannot serve as a trademark. Our primary reviewing Court, the U.S. Court of Appeals for the Federal Circuit, has instructed on functionality as follows:
Functionality reflects a tension between two fundamental principles of trademark law. See In re Morton-Norwich, 671 F.2d 1332, 1336-37, 213 USPQ 9, 15 (CCPA 1982). On the one hand, "there exists a fundamental right to compete through imitation of a competitor's product, which right can only be temporarily denied by the patent or copyright laws." Id. at 1336. Because trademark protection is potentially perpetual in duration, protection of a functional trademark would defeat that fundamental right. On the other hand, the functionality doctrine also reflects the individual's right to protect symbols which identify the source of particular goods. Id. at 1337. In sum, the right to protect a product feature serving as a source indicator is limited by "the need to copy [articles which are not protected by patent or copyright], which is more properly termed the right to compete effectively." Morton-Norwich, 671 F.2d at 1339 (emphasis in original).
In balancing these two policies, this court acknowledges a distinction between de facto functional features, which may be entitled to trademark protection, and de jure functional features, which are not:
In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid. De jure functionality, on the other hand, means that the product is in its particular shape because it works better in this shape.
In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed.Cir.1984) (citations omitted) (quoting Morton-Norwich, 671 F.2d at 1338). Thus, merely labeling a design feature as functional will not necessarily defeat registrability. In re Teledyne Indus., Inc. 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed.Cir.1982). Rather, de jure functionality rests on " 'utility,' which is determined in light of 'superiority of design,' and rests upon the foundation [of] ... 'effective competition.' " Morton-Norwich, 671 F.2d at 1340.
*4 Contrary to Mercury's assertion, the test for de jure functionality does not involve inquiry into whether a particular feature is "essential" to compete at all:
If the feature asserted to give a product distinctiveness is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered. Morton-Norwich does not rest on total elimination of competition in the goods.
In re Bose Corp., 772 F.2d 866, 872, 227 USPQ 1, 6 (Fed.Cir.1985) (emphasis added).
In sum, the "crux" of the distinction between de facto and de jure functionality--determining eligibility for trademark protection or not--is a design's effect on competition. Morton-Norwich, 671 F.2d at 1341. Thus, the policies underlying the functional limitation on trademark protection explicitly invoke an inquiry into competitive fairness. Therefore, the Board did not err by basing its finding of de jure functionality on competitive need.
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed.Cir.1994), cert. denied 115 S.Ct. 1426 (1995).
In the present case, the Examining Attorney has asserted that "as used in a retail store, the blue trade dress creates a soothing, calming environment" and that "[t]o allow applicant to appropriate a 'blue trade dress,' would put others who wish to create the same psychological affect [sic] at a competitive disadvantage." (brief, pp. 5-6)
The first piece of evidence relied upon by the Examining Attorney is a newspaper article retrieved from the NEXIS data base. The article examines the psychological/emotional impact of color, that is, "what colors mean and how they can be used to generate different effects in your home." The color blue is described as follows:
BLUE: Blue is the color of tranquillity, representing the sea and the sky. It is cool, soothing and orderly. It is the peacemaker color and the color of royalty.
The cool tones of blue have the amazing ability to calm a violent person and are used in hospital nurseries to help babies relax and cry less.
If you prefer blue, you have a basic need for calm, harmonious, tension-free existence. You are capable, conservative and sensitive to others and make a loyal and trustworthy friend. You are inclined to be somewhat cautious in the way you dress, act and speak. You are generally a conscientious worker in whatever you do. You enjoy life but may find it difficult to release your emotions.
The other NEXIS excerpts, from a variety of printed publications, include the following passages:
.... colors of dress may carry valuable symbolic information. Research in nonverbal communication suggests that colors have meanings: blue, for example, is proposed to convey dignity....
Blues and greens are soothing....
*5 .... soothing music and special blue lighting give a calming ambience.
.... its soothing, light blue motif....
.... the decor is a soothing teal blue.
.... lots of soothing blues and greens.
.... two treatment rooms with soothing blue lighting....
.... even in the perennial [plants] market, people want colors that are soothing to the eye; colors such as blue and mauve.
.... The soothing mauve and blue color scheme....
.... blue has a relaxing quality....
Preferring cool, soothing colors to bright ones in most cases, the designer explained that the store's overall teal blue and salmon color scheme was chosen because of its relaxing effect on shoppers. Variations of these colors are repeated in many areas of the store, including on portions of the vinyl tile flooring; on display case accent trims; on ceramic tile perimeter walls; and on store banners and aisle markers.
Cool colors, such as blues and greens, are more soothing.
The record further includes an article which mentions a "little blue newsstand" in Great Britain. The Examining Attorney also has introduced an article captioned "Tailored Meanings: on the meaning and impact of organizational dress." The Examining Attorney has highlighted the following statements:
Organizational dress comprises the clothing (e.g., jacket, skirt, pants) and artifacts (e.g., name tag, smock, jewelry) that employees of an organization wear while at work.... First, colors of dress may carry valuable symbolic information. Research in nonverbal communication suggests that colors have meanings: blue, for example, is proposed to convey dignity.
We find that the Examining Attorney has not sustained her burden to show de jure functionality. Clearly, most of the particular individual features of applicant's claimed trade dress must be considered de jure functional. The lighting, carpeting, or shelving individually serve particular functions. However, this fact does not prove that the overall trade dress, which includes the color blue, is also functional. That is to say, the fact that separate elements are, by themselves, functional does not render the trade dress as a whole de jure functional and, thus, not registrable.
The evidence of record bearing on the utility of the color blue in retail store environments does not persuade us that the color blue, in combination with the other claimed features, is de jure functional. [FN10] Further, we agree with applicant that even if applicant were attempting to register the color blue per se, we could not conclude, based on the present record, that blue is de jure functional.
On the evidence of record, we fail to see how the color blue has a utilitarian purpose and/or why registering this applicant's "blue motif" would hinder competition. Even if we were to accept as a fact that blue is a soothing color, we do not see why a blue interior necessarily is beneficial to a retail newsstand. In this connection, there is no evidence to even suggest that a newsstand (or any retail store) with a blue interior would attract more customers and/or increase sales. That people are soothed by or feel good in a blue environment does not necessarily mean that these people, as customers in applicant's newsstand, will buy more products.
We have considered the cases relied upon by the Examining Attorney. See Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 123 USPQ 372 (2d Cir.1959), cert. denied 362 U.S. 919, 80 S.Ct. 671, 124 USPQ 535 (1960) [[[[court inferred that merely the purported soothing "psychosomatic effect" of the color pink for a stomach upset remedy (sold under the mark PEPTO-BISMOL) might be characterized as functional]; Doeskin Products, Inc. v. Levinson, 132 F.Supp. 180, 105 USPQ 329 (D.C.N.Y.1955) [assessment of psychological reaction to color led court to infer that pastel shades in facial tissues create a mental impression of "softness"]; and Deere & Co. v. Farmhand, Inc., 560 F.Supp. 85, 217 USPQ 252 (S.D.Iowa 1982), aff'd, 721 F.2d 253 (8th Cir.1983) [court held color green to be functional because farmers like to have farm accessories color-coordinated with their tractor]. The problem in the present case is the lack of probative evidence upon which to reach the conclusion urged by the Examining Attorney.
In making our determination, we recognize the inherent difficulties for Examining Attorneys in their attempts to adduce probative evidence in these types of trade dress cases. Cf. In re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB 1987); In re Mitsubishi Motor Sales of America Inc., 11 USPQ2d 1312 (TTAB 1989); and In re Lutron Electronics Co. Inc., 8 USPQ2d 1701 (Comr.1988). Unless a trade dress clearly is utilitarian in its entirety, it is difficult for an Examining Attorney, who obviously is not in the trade, to assess competitive fairness. Here, the evidence simply does not prove that the combination trade dress claimed by applicant should be available for use by all other retailers because they need to use it to compete effectively.
*7 This refusal is reversed in each application. Were the functionality refusal the only one at issue, we would allow the applied-for trade dress to proceed to publication. At that time anyone in the retail trade could oppose the registration sought if he or she believed that registration would hinder competition. Certainly, such a party would be in a much better position than the Office to marshall the type of evidence necessary to demonstrate that applicant's trade dress is de jure functional.
Inasmuch as we have found that the matter sought to be registered is not de jure functional, registration on the Principal Register would be appropriate if the mark is inherently distinctive [FN11]. In the present case, applicant contends that its claimed trade dress is inherently distinctive and that, therefore, the trade dress is registrable on the Principal Register without any proof of acquired distinctiveness.
We begin our analysis with the case upon which applicant principally relies, namely Two Pesos, Inc. v. Taco Cabana, Inc., supra. In that case, the United States Supreme Court resolved a split of authority in the circuits on the issue of whether trade dress which is inherently distinctive is protectable under Section 43(a) of the Trademark Act without a showing that it has acquired distinctiveness. The Court answered in the affirmative, holding that trade dress that is inherently distinctive is protectable under Section 43(a) without a showing that it has acquired distinctiveness. The Court opined that trademarks and trade dress essentially serve the same purpose, noting "[t]here is no persuasive reason to apply different analysis to the two." Id. at 1085. However, the Court left unanswered other tangential questions, not the least of which is what the proper test is for finding trade dress to be inherently distinctive. [FN12]
Although the Court indicated that trade dress, like a trademark, can be categorized in the spectrum of distinctiveness (i.e., generic-descriptive- suggestive-arbitrary-fanciful), the Court never discussed the proper test for finding a trade dress to be inherently distinctive. The Court, instead, simply noted that the lower courts had "ruled that Taco Cabana's trade dress was not descriptive but rather inherently distinctive, and that it was not functional." In consequence thereof, the Court stated that "[n]one of these rulings is before us in this case, and for present purposes we assume, without deciding, that each of them is correct." Two Pesos, Inc., supra at 1084. Thus, in the wake of the Supreme Court's opinion, lower courts have wrestled with application of the new law. [FN13] The results are inconsistent. [FN14]
In the case now before us, we have looked to our primary reviewing court, the Federal Circuit (or, more accurately, its predecessor, the U.S. Court of Customs and Patent Appeals) for guidance. In determining whether a design (or, in this case, trade dress) is inherently distinctive, the Court in the past
*8 has looked to whether it was a "common" basic shape or design, whether it was unique or unusual in a particular field, [or] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods[.]
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977). Other courts have relied on the Seabrook case when considering whether or not a claimed trade dress is inherently distinctive. See: Brooks Shoe Manufacturing Co. v. Suave Shoe Corp., 716 F.2d 854, 221 USPQ 536 (11th Cir.1983); AmBrit Inc. v. Kraft Inc., 805 F.2d 974, 1 USPQ2d 1161 (11th Cir.1986); Turtle Wax Inc. v. First Brands Corp., 781 F.Supp. 1314, 22 USPQ2d 1013 (N.D.Ill.1991); and Jungle Rags Inc. v. Rainbow Graphics Inc., 29 USPQ2d 1704 (M.D.Fla.1993). The above-mentioned factors were recently summarized by the Federal Circuit in determining whether or not a trade dress is inherently distinctive:
Thus, the focus of the inquiry is whether or not the trade dress is of such a design that a buyer will immediately rely on it to differentiate the product from those of competing manufacturers; if so, it is inherently distinctive.
Tone Brothers Inc. v. Sysco Corp., 31 USPQ2d 1321, 1331 (Fed.Cir.1994), citing Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 582-84, 27 USPQ2d 1189, 1192-93 (2d Cir.1993). [FN15] Restatement (Third) of Unfair Competition, § 16, comment b appears to essentially adopt the Seabrook test:
If the trade dress used by a particular seller differs in significant respects from that employed by others, consumers may be expected to utilize the trade dress as an indication of source.... Trade dress that is unique and prominent can thus be inherently distinctive. If the trade dress is descriptive (see § 14), or inconspicuous, or not sufficiently different from that used by others to justify a conclusion of inherent distinctiveness, trademark rights will depend upon proof of distinctiveness through evidence of secondary meaning.
We thus dispense with applicant's discussion of its trade dress under the analysis set forth in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9, 189 USPQ 759, 764 (2d Cir.1976). In Two Pesos, the Supreme Court, in equating trade dress with trademarks, pointed to the analysis in Abercrombie & Fitch Co. whereby marks are classified in categories of generally increasing distinctiveness: 1) generic; 2) descriptive; 3) suggestive; 4) arbitrary; or 5) fanciful. However, we see no reason in the case now before us to engage in an Abercrombie type of analysis. The Examining Attorney here has not refused registration on the basis that applicant's trade dress is generic or descriptive. Rather, the ground of refusal essentially is that applicant's trade dress would not be perceived by the purchasing public as an indicia of source and that, therefore, the trade dress is not inherently distinctive. [FN16] Accordingly, we look to the factors in the Seabrook case in assessing whether or not the trade dress sought to be registered in the involved applications is inherently distinctive.
*9 We now turn to review the relatively sparse evidence of record, considering it in the light of the general principles set forth above. In terms of applicant's evidence, applicant points to its sworn statement in the original application papers that "[t]he mark is non-functional, inherently distinctive and is used as trade dress in Applicant's retail newsstand stores." Further, applicant asserts that "[a]s is implicit in the oath accompanying the application, to Applicant's knowledge, it operates the only newsstands in commerce that utilize the trade dress presented here for registration." (brief, p. 9) Applicant also has submitted as exhibits photographs of the trade dress found to be inherently distinctive in Two Pesos. Applicant argues that its trade dress "compares favorably" to the one determined to be inherently distinctive in Two Pesos.
As earlier noted in this opinion, the Examining Attorney has submitted an article containing a photograph of the inside of a grocery store, as well as a photograph of a beauty salon, which, according to the Examining Attorney, both show a blue motif. Other articles retrieved from the NEXIS database regard the use by others of blue carpeting, blue lighting or uniforms.
In the present case, we are confronted with trade dress which, as described in the applications, at least to our eyes and minds, is quite pedestrian and is not, in applicant's words, "striking" and/or "unusual." For the "blue motif" of the interior of a retail store to be registrable on the Principal Register without resort to Section 2(f), the trade dress would have to be immediately recognizable as a distinctive way of identifying the source of the store services. We simply fail to see this source-identifying message conveyed in either of applicant's trade dresses as described in the applications involved here. It is our view that prospective purchasers are not likely to perceive applicant's "cool bluish, clean and salubrious newsstand shopping environment" as a symbol of identification. Rather, we think it quite likely that prospective purchasers will view the trade dress as nothing more than interior decoration. The "motif" of carpeting, neon lighting, plastic display racks, uniforms, and unidentified "accents" could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation. The fact that applicant's store is decorated in a monochromatic fashion does not automatically transform the combined trade dress into an inherently distinctive mark capable of federal registration on the Principal Register. [FN17] The overall look and feel of the trade dress, as amorphously described in the application, does not automatically serve to tell a customer that it refers to a specific source; rather, the overall look and feel merely tells a customer that this is a blue-colored store with interior decor features generally found in retail stores, such as lighting, carpeting and display racks.
*10 We readily recognize that there is no prohibition against a trade dress mark both functioning to indicate source and being aesthetically pleasing. Indeed, the critical issue for us is whether the trade dress functions as a service mark by identifying and distinguishing the services and indicating origin in a single source. If purchasers do not, in fact, associate applicant's trade dress with a source of newsstand services, then it is difficult to see how that trade dress serves a trademark function, i.e., to distinguish applicant's services from the services of others. In the present case, prospective purchasers would be drawn inside the newsstand by other indicia, such as the prominently displayed "HUDSON NEWS" or by the clearly visible products for sale. Once inside, patrons are likely to view the trade dress here as decoration or ornamentation, not source identification. In today's highly commercial environment, the consuming public encounters a vast array of stores in many different shapes, sizes and colors. We think it is reasonable to assume that every store owner, no matter the trade, strives for a "clean and salubrious" shopping environment, and that this goal is achieved by many of them in a number of different ways, including using colored fixtures and lighting.
We do know that applicant's executive vice president (who signed the application) thinks that the interior decor of his company's stores is a service mark which identifies its retail store services. There is nothing in this record, however, upon which to base the conclusion urged by applicant that consumers perceive and understand the interior "blue motif" of applicant's stores as a distinctive source indicator. Rather, given the evidence of record showing that various retail stores employ a variety of commonplace interior decorating features, such as carpeting, in the color blue, it would appear to us that consumers would reasonably assume that the combination of these same everyday features in applicant's stores is merely its own interior decorating akin to ornamentation. [FN18] Although applicant argues that its trade dress is "striking", this assertion is supported by neither evidence nor reasons.
To be clear on this significant point, we emphasize that the record is completely devoid of evidence that anyone other than one of applicant's officers views the interior appearance of applicant's stores as a service mark for its retail newsstands. Further, we have no evidence that the trade dress at issue has ever been promoted by applicant as its service mark. Also, applicant's contention that it is the only one in the trade using the trade dress is not persuasive. We find language in an earlier Board decision to be equally appropriate here:
[W]hile applicant's applied for design may be unique in the sense that it is a "one and only," the record demonstrates that said design is not unique in the sense it has an "original, distinctive, and peculiar appearance." In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960) quoting with approval from Ex parte Haig & Haig, Ltd., 118 USPQ 229, 230 (Asst.Comm.1958). In other words, the record demonstrates that applicant's applied for design is not inherently distinctive or unique in the sense that the term "distinct" is defined as "clearly perceived or marked off" or "unmistakable," or in the sense that the term "unique" is defined as "highly unusual, extraordinary." Webster's New World Dictionary of the American Language (2d ed. 1970).
*11 If the concept of inherent distinctiveness was defined as meaning simply "one and only," then one could obtain a registration for a design which, while "unique" in this sense, differed only slightly from the designs of other competing products and/or containers. There would be no need that the applied for design have an "original, distinctive and peculiar appearance" as required by the Haig & Haig ("Pinch bottle") and McIlhenny ("Tabasco bottle") cases.
In re ES Robbins Corp., 30 USPQ2d 1540, 1542-43 (TTAB 1992). Lastly, inasmuch as the registrability of each mark rises or falls on its own merits, we are entirely unpersuaded by applicant's comparison of its trade dress to the one at issue in Two Pesos. [FN19]
In summary, we find that applicant's trade dress in each instance is not de jure functional, but that the trade dress, as described in the applications, is not inherently distinctive either. Applicant has not established that its trade dress was, at the time of adoption and first use, an inherently distinctive service mark that achieved instant recognition as a service mark denoting the origin of applicant's retail newsstand services. Even if applicant's combination of the features comprising its trade dress could be deemed "unique", the trade dress is simply a mere refinement of a basic blue interior decorating scheme.
Decision: The refusal to register based on functionality is reversed in each application. The refusal to register on the ground that applicant's trade dress is not inherently distinctive is affirmed in each instance.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. On the drawing page in the space normally reserved for showing the mark, the notation "(no drawing)" appears.
FN2. Application Serial No. 74/441,602, filed July 29, 1993, alleging dates of first use of September 1, 1987.
FN3. Application Serial No. 74/441,603, filed July 29, 1993. alleging dates of first use of September 1, 1990.
FN5. In doing this we note that applicant filed, then withdrew a request for consolidation of the appeals. The Board, on March 6, 1995, noted same and indicated that "these appeals will not be consolidated but hearings in these appeals will be scheduled for the same time." Although we have rendered our decisions in one opinion, each appeal stands on its own merits. Thus, in the interests of judicial economy, we see no reason to issue two separate opinions. More often than not, the Board, on its own initiative, issues a single opinion in these types of cases.
FN6. Applicant recognizes the technical distinction between a "trademark" and a "service mark." Applicant has used the term "trademark" in its brief for ease of reference and consistency in quoting the statute. We likewise do so herein. See: Section 3 of the Trademark Act ("service marks shall be registrable, in the same manner and with the same effect as are trademarks....").
FN7. Accompanying the photocopies is the affidavit of Richard Taranto, the attorney for Taco Cabana, Inc. in the Two Pesos case. Mr. Taranto confirmed the authenticity of this evidence which was used as exhibits in Two Pesos. The photocopies show mock-ups of the interior and exterior portions of the trade dress claimed by Taco Cabana, as well as an actual interior view of the restaurant.
FN8. The Examining Attorney argues as follows:
In most cases dealing with color, the color was applied to goods and not used in connection with services. Because applicant's service is intangible, it is impossible to apply color to it. Rather, the applicant must apply the color to the tangible furnishings encountered by those who use the service. The applicant's use of the color blue on the carpeting, shelving, lighting, publications display panels and employee uniforms creates a "blue motif". It is this "blue motif" which applicant is seeking to register. It should be noted that the applicant is not seeking to register the shape of the display panels, or the layout of the newsstand, or the positioning of the shelves, counters or lighting. In fact, the applicant has never indicated what is "unique" or "distinctive" about its trade dress. The only distinction the applicant has made in regards to its trade dress is that it is blue. Therefore, the applicant is actually seeking protection for the "blue motif" created by using the type of furnishings found in any store.
FN9. A review of the files shows that the Office originally denied filing dates to the application papers as filed since they were viewed as "incomplete." The papers were returned to applicant. In a communication dated August 10, 1993, the Office found that the drawing requirements had not been met because there was "[n]o mark on drawing." Applicant's counsel apparently contacted the Office regarding the filing dates. In a September 1, 1993 letter to the Administrator for Trademark Policy and Procedure, counsel wrote as follows:
Enclosed herewith are the four applications we discussed this morning. It is my understanding that serial numbers will now be assigned granting us the filing date of July 29, 1993.
The next written communication was a "Notice of Restoration of Filing Date" dated September 29, 1993. The form notice was issued by the Administrator for Trademark Policy and Procedure to the Mail Room/Application Section. The notice indicated as follows:
The Patent and Trademark Office has reviewed the referenced trademark application and concludes that the filing date was denied due to Office error and that therefore the earlier application filing date of July 29, 1993 is restored.
The handwritten reason given on the form is as follows: "per [Administrator for Trademark Policy and Procedure], the drawings are acceptable."
The Board, so as to be sure on this point, questioned the Examining Attorney at the oral hearing as to whether the drawing presented an issue on appeal. She assured the panel that the drawing was not an issue in view of the Office's decision regarding the filing dates.
The Patent and Trademark Office has no announced policy on this particular point. Nothing in the Trademark Manual of Examining Procedure refers to trade dress or speaks to the issue of how marks of this type should be represented. While the drawings in the involved applications were accepted by the Office, future guidelines may limit or prohibit the filing of drawings such as the ones presented here.
FN10. Applicant has objected to the Examining Attorney's evidence on the grounds that the statements contained in the materials constitute hearsay. According to applicant, the statements were offered to prove the truth of the matter asserted, that is, that the color blue imparts a soothing psychological effect on individuals. In addition to the substantive criticisms made by applicant, applicant parenthetically noted that the main article relied upon by the Examining Attorney "read more like an astrology chart or placemat in a Chinese restaurant than any kind of scientific analysis of the psychological aspects of colors." (reply brief, p. 2)
It is difficult for an Examining Attorney to establish facts (as, for example, the psychological effects of color) without reliance on this type of NEXIS evidence. Although there is a hearsay element to this evidence, there is no bias in the evidence which was not prepared for purposes of this case. The Board takes a somewhat more permissive stance with respect to the introduction and evaluation of evidence in an ex parte proceeding than it does in an inter partes proceeding. See: In re Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996). See also: TBMP Section 1208. We therefore have considered this evidence.
FN11. Inasmuch as applicant has not made a claim under Section 2(f), acquired distinctiveness is not an issue in this appeal.
FN12. These unanswered questions have attracted the interest of numerous commentators. See, e.g.: Joan Dillon, Two Pesos: More Interesting For What It Does Not Decide, 83 TMR 77 (1993); Vincent Palladino, Trade Dress After Two Pesos, 84 TMR 408, 409 (1994) [ the Court's "rather loose language [in Two Pesos] overlooks the difficulty of applying the spectrum of distinctiveness to the realm of trade dress, where the meanings of the categories .... are ill-defined and may be hard to follow."]; Anthony Fletcher, Annual Review, 83 TMR 904, 1054 (1993) ["The High Court gave no clue how to apply the concepts embedded in the [arbitrary to generic] spectrum, which was developed for words, to shapes, colors and the various other types of trade dress."]; and Anthony Fletcher, Annual Review, 84 TMR 635, 709 (1994) ["Courts are still coming to grips with the Supreme Court mandates in Two Pesos that they categorize trade dress in the generic to fanciful spectrum, when the categories depend on verbal meaning."]. See also: 1 J. Gilson, Trademark Protection and Practice, 7.02 [[[[d] (1992) [".... with trade dress there are no dictionaries to consult, and often little more than the 'eyeball test' to apply."].
FN13. One commentator questions the Supreme Court's decision to treat trade dress the same as trademarks:
The question begs asking, whether the majority of trade dress cases; i.e., those relied upon by the Court and those involving bottle shapes, food packaging containers, cheerleader uniforms, and luggage, dealing as they do with arbitrary, discrete elements, often capable of being federally registered as trademarks; should be equated with restaurant or other service establishment decor.
The registrable types of trade dress are objectively discernible, capable of presentation in a discrete--rather than amorphous--form, and will not vary based on the viewer's perspective, point of view, or taste. A restaurant trade dress, particularly when defined as its "total image," may change depending upon the rearrangement or deletion of any one of a number of those components.
In basing its decision that there is no reason to analyze the protectibility and infringement of trademarks and trade dress differently merely on an analysis of the Act and the line of trade dress cases involving registrable, or more typical forms of trade dress, the Court missed an opportunity to distinguish restaurant trade dress from packaging trade dress, and, as a result failed to clarify the factors giving rise to a finding of inherent distinctiveness in the former case.
J. Dillon, Two Pesos: More Interesting For What It Does Not Decide, supra at 86.
FN14. See cases cited in Anthony Fletcher, Annual Review, 85 TMR 607, 684 (1995) ["Applying tests formulated to categorize words can be different when what is sought to be categorized is product packaging or configuration. Four Courts of Appeal addressed the subject with considerable care and little consistency."].
FN15. One commentator, in analyzing the Seabrook factors, observed the following:
In reality, all three questions are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicia of origin--a trademark.
1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 8.02 (3d ed. 1993).
FN16. The Examining Attorney appears to leave open the possibility of registration were applicant to make a sufficient showing of acquired distinctiveness under Section 2(f) of the Act.
FN17. As an aside, we note that the debate continues over the specific holdings by the Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc., supra. In that case, the Court held that a mark consisting of color alone can act as a source identifier and, accordingly, can be registered and protected under the Trademark Act. The debate centers on whether or not secondary meaning must be demonstrated for such marks. See: Kevin Jordan and Lynn Jordan, Qualitex Co. v. Jacobson Products Co., The Unanswered Question--Can Color Ever Be Inherently Distinctive?, 85 TMR 371 (1995) ["[T]he Qualitex opinion is inconsistent in its assertion that color be treated no differently than any other mark, while, at the same time, implying that color would need to acquire secondary meaning before it could be protected, a requirement not always necessary for other marks.... While [the decision] does abolish any per se prohibition against color trademarks, the evidentiary burden on trademark applicants will continue to be heavy .... like any trademark, the applicant must prove that the color is nonfunctional and distinguishes the applicant's goods or services from those of others. A closer examination reveals that meeting this criteria will generally not be easy for color.... It is clear that a company seeking color protection faces a formidable task in convincing the public, and then the examining attorney in the PTO, that the color of its product has acquired secondary meaning."]; Jeffrey Samuels and Linda Samuels, Color Trademarks: Shades of Confusion, 83 TMR 554 (1993) ["the inherent improbability that color alone will function as a trademark provides sound justification for a high standard of proof."]; and Jonathan Hudis, Removing the Boundaries Of Color, 86 TMR 1 (1996) ["A combined reading of Qualitex and Two Pesos shows that a color .... is capable of protection even without a showing of secondary meaning.... Qualitex left open the question whether color applied in an inherently distinctive fashion qualifies as a protectible trademark in the absence of secondary meaning. While this author believes that the Supreme Court's twin decisions remove any doubt, it may take another litigant's trip to the Supreme Court before we will know for certain."] See also: Fabrication Enterprises, Inc. v. Hygienic Corp., 64 F.3d 53, 58 n 3, 35 USPQ2d 1753, 1756 (2d Cir.1995) ["Pursuant to Qualitex, Lanham Act protection for a single color may be garnered only upon a showing of secondary meaning. Qualitex Co., 115 S.Ct. at 1303."]; and Mana Products Inc. v. Columbia Cosmetics Mfg. Inc., 65 F.3d 1063, 1071, 36 USPQ2d 1176, 1181 (2d Cir.1995) ["Unlike Qualitex, Mana has not proved the existence of secondary meaning in its trade dress .... color marks by their very nature are not generally distinctive."]. Although the Federal Circuit has not yet spoken to this point since the rendering of the decision in Qualitex Co., the Court in the past stated that "[b]y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character," requiring "convincing evidence." In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 (Fed.Cir.1985).
FN18. We think that the evidence here is sufficient to show that the features of applicant's trade dress are relatively common, particularly when allowance is made for the difficulty faced by the Examining Attorney in obtaining such evidence. In re F.C.F. Inc., 30 USPQ2d 1825, 1828 (TTAB 1994). The Patent and Trademark Office's limited resources obviously constrain an Examining Attorney's ability to acquire photographs of the interiors of retail establishments. See, e.g., In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed.Cir.1988); and In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed.Cir.1985).
FN19. In any event, we would point out again that in Two Pesos, the lower courts' rulings of inherent distinctiveness were not an issue: "None of these rulings is before us in this case, and for present purposes we assume, without deciding, that each of them is correct." 112 S.Ct. at 2758, 23 USPQ2d at 1084.