API Industries, Inc.v.Poly-America, L.P.

Trademark Trial and Appeal Board

Aug 25, 2020

92062601RE (T.T.A.B. Aug. 25, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 25, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Poly-America, L.P.
v.
API Industries, Inc.
_____

Cancellation No. 92062517
_____

API Industries, Inc.
v.
Poly-America, L.P.
_____

Cancellation No. 92062601
_____

Request for Reconsideration in 92062601
_____

Brandon J. Lee for Poly-America, L.P.

Mark I. Koffsky, Efrem Schwalb and Gary Serbin of Koffsky Schwalb LLC
for API Industries, Inc.
_____

Before Kuhlke, Kuczma and Dunn,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Pursuant to Rule 2.144 of the Trademark Rules of Practice, 37 C.F.R. § 2.144,
Poly-America, L.P. (Poly-Am.) timely requests reconsideration of the Board’s
Cancellation No. 92062601

2

February 19, 2020 final decision in Cancellation No. 92062601, 26 TTABVUE,
granting cancellation on the ground that the matter is generic and, in the alternative,
functional.1 31 TTABVUE. API Industries, Inc. (API) filed its response to the request
on May 15, 2020. 34 TTABVUE. API’s consented motions to extend time to respond
are granted. 32, 33 TTABVUE.
The premise underlying a request for reconsideration pursuant to Trademark
Rule 2.144 is that based on the record evidence and the applicable law, the Board
erred in reaching its decision. A request may not be used to introduce into the record
additional evidence or to reargue points presented in the requesting party’s brief on
the case. Reconsideration should be limited to a demonstration that, based on the
evidence properly of record and the applicable law, the Board ’s decision is in error
and requires appropriate change. See Trademark Trial and Appeal Board Manual of
Procedure (TBMP) §§ 543 and 1219.01 (2020) and cases cited therein. For the reasons
discussed below, we see no error in the final decision.
In the final decision, the Board granted API’s petition to cancel Poly-Am.’s
registration for a mark for plastic trash bags described as “the color orange as used
on the drawstring portion of the goods” holding that the mark in Poly-Am.’s
registration is generic and, in the alternative, functional and, thus, unregistrable
under the Trademark Act. Poly-Am. asserts the decision errs in two ways. First, “the

1 Cancellation No. 92062601 was consolidated with Cancellation No. 92062517. Neither party
requested reconsideration of the decision in Cancellation No. 92062517. On June 30, 2020,
after time for appeal had passed, the subject registration in that proceeding (Reg. No.
4824072) was canceled and the proceeding terminated. Canc. No. 92062517, 75-76
TTABVUE. All citations are to the entries in Canc. No. 92062601.
Cancellation No. 92062601

3

Board erred in determining that the Orange Drawstring Mark is generic.” 31
TTABVUE 3. Second, “the Orange Drawstring Mark is not functional and that the
Board relied solely on the suspect evidence of Professor Bleicher without considering
the persuasive, rebutting evidence of Poly-America’s expert, Professor Karen
Schloss.” Id. We address each contention in turn.
I. Generic Claim
Poly-Am. does not contest the Board’s determination that the genus of the goods
is defined by the identification of goods “plastic trash bags” and the relevant public
consists of all consumers of plastic trash bags including at the wholesale and retail
level.
Poly-Am. points to the conclusion in the Board’s decision that consumers “would
perceive [the color orange] as a trade dress for the genus trash bag” as supporting
registrability on the Supplemental Register because the question is not whether the
color orange has acquired distinctiveness but rather whether it is capable of acquiring
distinctiveness. Req. for Recon. 71 TTABVUE 3. “[T]rade dress that cannot serve as
an indicator of source is generic and unprotectable.” Sunrise Jewelry Mfg. Corp. v.
Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999) cited by In re Odd
Sox LLC, 2019 USPQ2d 370879 *6 (TTAB 2019). To the extent there is any ambiguity
in the Board’s statement, the Board clarifies that the color orange as a drawstring on
Applicant’s bags is so common within the genus of trash bags that consumers would
primarily associate it with the genus rather than as indicating a unique source of
goods within the genus and, as such, is incapable of source identifying significance.
Cancellation No. 92062601

4

Poly-Am. also asserts that there is no evidence in the record that any
manufacturer other than Poly-Am. uses orange drawstrings in connection with
drawstring trash bags, or that consumers are incapable of identifying the source of
the goods. First, the issue is not whether “consumers are incapable of identifying the
source,” the issue is whether the color is capable of identifying source. The Board, in
its decision, relies on undisputed evidence showing that Poly-Am. trash bags with
orange drawstrings are sold under private label by many different retailers. 26
TTABVUE 16. The fact that Poly-Am. is the only manufacturer in the record that
makes trash bags with orange drawstring does not change our conclusion.
This brings us to the third basis upon which Poly-Am. requests reconsideration of
the determination that the color orange on drawstrings is generic for trash bags. Poly-
Am. argues that the cases cited by the Board in support of the statement that “when
a company sells to third parties for re-sale under the third parties’ marks rather than
under the manufacturers mark, that circumstance cripples any attempt to show that
consumers uniquely associate the mark with one source,” are not applicable to
registrations on the Supplemental Register. Req. for Recon. 31 TTABVUE 5 (quoting
Final Decision 26 TTABVUE 17).
Because the Board found the matter to be functional in each case, Poly-America,
L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508 (TTAB 2017), Brunswick Corp. v.
British Seagull Ltd., 28 USPQ2d 1197 (Fed. Cir. 1993), aff’d., 35 F.3d 1527 (Fed. Cir.
1999), and Mine Safety Appliances Co. v. Elec. Storage Battery Co., 405 F.2d 901, 160
USPQ 413 (CCPA 1969) were essentially capability cases. Whether it is on the
Cancellation No. 92062601

5

Principal or Supplemental Register the question of functionality is ultimately a
question of capability. In addition, the following quote from Poly-America v. Illinois
Tool Works is directed to the question of genericness. Specifically, after finding the
matter in the registration to be functional the Board stated “[i]n light of our
determination herein, we need not and do not reach the issue of whether Respondent
… has caused the mark to become generic,” noting that “when a company sells to
third parties for re-sale under the third parties’ marks rather than under the
manufacturers mark, that circumstance cripples any attempt to show that consumers
uniquely associate the mark with one source.” Poly America v. Illinois Tool Works,
124 USPQ2d at 1520 n. 48. Acquired distinctiveness was also an issue in Brunswick
v. British Seagull, 28 USPQ2d at 1197 and In re Hillerich & Bradsby Co., 204 F.2d
287, 97 USPQ 451 (CCPA 1953), that is, whether the applied-for matter had acquired
distinctiveness to be registrable on the Principal Register. However, the concept of
ubiquitous third-party use directly addresses the question of capability, and supports
a finding of incapability. These cases simply address, in general terms, the impact of
third-party use on consumer perception in the circumstance where it is the party
itself that created the situation and this translates directly to the question of
genericness because it is about consumer perception.
II. Functionality Claim
Poly-Am. contends that the evidence presented in API’s expert witness’s
(Professor Bleicher) report “never connects the benefits [of the color orange] in [other]
contexts to any discernable benefit for trash bags.” 31 TTABVUE 8. Further, Poly-
Am. asserts:
Cancellation No. 92062601

6

To accept Professor Bleicher’s expert report as a conclusion
that orange is functional in the context of trash bags would
undermine the availability of the color orange in any color
trademark context. The same logic applied by this Board
could be applied to every other context where color
trademarks are visible, rendering it impracticable to obtain
a color trademark in any highly visible color regardless of
the goods and services.
31 TTABVUE 8.
The Board did not rely solely on Professor Bleicher’s report. The record incudes
unrebutted testimony from API’s other witnesses (Mimi Oratz and David Anderson)
describing from the viewpoint of the industry that orange provides the best contrast
against black and white bags. The decision considers the evidence of record, including
that of both expert witnesses, in the context of the relevant goods. The more general
analysis in Bleicher’s report for the color orange provides support for the conclusion
that orange drawstrings are functional for trash bags. This does not mean the report
would provide support for such a finding in the context of other unknown
hypotheticals and records.
Poly-Am. also asserts that the Board did not consider the evidence of Poly-Am.’s
expert witness Professor Karen Schloss. Poly-Am. characterizes her report as
concluding “that orange drawstrings were not functional because, while orange may
serve functions in other contexts, there is no evidence that orange does so in the
context of drawstring trash bags.” Id.
First, the Board considered all evidence of record, including Poly-Am.’s expert
witness Professor Schloss. The focus of Professor Schloss’s critique of the Bleicher
report is that orange is not the most highly visible color or the most highly contrasting
Cancellation No. 92062601

7

color. However, to be found to have utility and function the color does not have to the
best, i.e., the most visible, or most contrasting. Where a design (including color) is one
of the superior designs available this supports functionality. In re Bose, 772 F.2d 866,
227 USPQ 1 (Fed. Cir. 1985); In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB
2006).
Where a product feature is found to be essential to the use or purpose of the
product then the feature is functional, regardless of the availability to competitors of
other alternatives. In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d
1372, 1378 (Fed. Cir. 2012) (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268,
1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)) (“[I]f functionality is found based on
other considerations, there is ‘no need to consider the availability of alternative
designs, because the feature cannot be given trade dress protection merely because
there are alternative designs available.’”)
After carefully considering Poly-Am.’s request, we have determined that the
findings and legal conclusions that Poly-Am.’s orange color drawstring is generic and
functional are clearly articulated in the Board ’s decision and we do not find any error
in reaching those findings or legal conclusions. In view thereof, Poly-Am.’s request
for reconsideration of the Board ’s decision is denied, and the decision of February 19,
2020 stands.
The time for filing an appeal, or for commencing a civil action wherein new
evidence may be submitted (TBMP § 906.01), for review of the Board’s decision, will
expire two months from the date of this order.