Build-A-Bear Workshop, Inc.

Trademark Trial and Appeal Board

Nov 28, 2005

No. 76351071 (T.T.A.B. Nov. 28, 2005)

2,990,861

Mailed: November 28, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Build-A-Bear Workshop, Inc.
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Serial No. 76351071
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Sherry Gunn Hanlon of Blackwell Sanders Peper Martin for
Build-A-Bear Workshop.

Teresa Rupp, Trademark Senior Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney)
_______

Before Seeherman, Hairston, and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Build-A-Bear
Workshop, Inc. to register the mark shown below on the
Principal Register for “toy accessories, namely, toy
clothing.”1

1 Application Serial No. 76351071, filed December 20, 2001,
alleging a date of first use anywhere and a date of first use in
commerce of October 26, 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76351071
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The application includes the following description: “The
mark consists of the configuration of the packaging for toy
clothing. The dotted line is not claimed as part of the
mark but is merely to show the mark’s position on the
packaging.”
The trademark examining attorney has refused
registration of applicant’s mark on the ground that it
fails to function as a mark under the provisions of
Sections 1, 2, and 45 of the Trademark Act. When the
refusal was made final, applicant appealed. Applicant and
the examining attorney filed briefs. An oral hearing was
not requested.
The examining attorney argues that applicant’s mark,
which consists of a teddy bear design on a hanger for toy
clothing, is a “hybrid packaging/product design” which
requires a showing of secondary meaning. (Brief, p. 2).
The examining attorney notes that applicant’s toy clothing
is sold on the hanger which a purchaser may keep and use to
Ser No. 76351071
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hang the toy clothing. In view thereof, the examining
attorney argues that the mark clearly is a hybrid of a
product design and a packaging design. Relying on Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54
USPQ2d 1065 (2000), the examining attorney argues that
where, as here, it is difficult to determine whether the
issue is one of the design of the goods or the packaging, a
showing of secondary meaning should be required.
Alternatively, the examining attorney argues that,
assuming applicant’s mark is merely product packaging, the
mark is not inherently distinctive. The examining attorney
argues that applicant’s mark is not unique and unusual
since applicant’s goods are toy clothing, including
clothing for teddy bears. According to the examining
attorney, “[b]ecause the applicant sells toy clothing for
teddy bears, the hanger for the clothing that has a teddy
bear motif would not be viewed as inherently a trademark
for the goods. Rather, the teddy bear hanger would be
viewed as part of the overall theme for these goods and
would be viewed as one means of telling the consumer that
the clothing hanging on these hangers is specifically
designed for teddy bears.” (11/10/04 Office Action, p. 2).
In support of her position that the mark is not inherently
distinctive, the examining attorney submitted printouts
Ser No. 76351071
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from three web sites which she maintains show that it is
not unusual for clothes hangers to have a whimsical or
decorative feature. At two of the web sites, children’s
clothes hangers featuring animal designs are offered for
sale. At the third web site, doll clothes hangers
featuring a heart design are offered for sale.
Applicant, in urging reversal of the refusal to
register, takes issue with the examining attorney’s
characterization of its mark as a hybrid packaging/product
design. Applicant contends that its mark is “trade dress
consisting of point of sale display and packaging display.”
(Brief, p. 6). According to applicant, the examining
attorney’s contention that its mark is in any way a product
design is unsupportable because applicant is seeking to
register its mark for toy clothing, not hangers for toy
clothing. Since its mark is not a product design,
applicant maintains that it is not required to show
secondary meaning.
Further, applicant argues that its mark is inherently
distinctive in that it is unique and highly visible to
purchasers and potential purchasers of its toy clothing.
Applicant argues that the examining attorney has produced
no evidence which shows that the mark is not inherently
distinctive. With respect to the printouts submitted by
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the examining attorney, applicant argues that if it were
seeking to register its mark for hangers for toy clothing,
this evidence might be relevant, but the evidence is not
relevant here because applicant is seeking to register its
mark for toy clothing. Finally, applicant argues that the
examining attorney’s position is contrary to the PTO’s
decisions in connection with applicant’s other two marks
(shown below) which were found to be inherently
distinctive.

Registration No. 2,344,661 issued April 25, 2000, for
newsletters and brochures on the subject of stuffed animals
and related items; retail store services and retail store
services via a global computer network featuring toy
animals and plush toy animals and related items.

Registration No. 2,990,861 issued September 6, 2005, for
toy footwear.
Ser No. 76351071
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Under Wal-Mart, a product design or configuration
cannot be inherently distinctive. Also, the Court in Wal-
Mart indicated that in cases where it is difficult to
distinguish between product design and product packaging,
“courts should err on the side of caution and classify
ambiguous trade dress as product design, thereby requiring
secondary meaning.” 54 USPQ2d 1069. In this case,
however, we are not persuaded that the design applicant
seeks to register is ambiguous trade dress or a hybrid
packaging/product design, as the examining attorney argues.
Applicant’s goods are toy clothing and the design applicant
seeks to register consists of a teddy bear design on
hangers for toy clothing. The design cannot be considered
the configuration of toy clothing; it is quite clearly only
packaging for the goods. Thus, the examining attorney’s
reliance on Wal-Mart is misplaced and applicant is entitled
to seek registration of its design on the basis that it is
inherently distinctive.
We turn then to the question of whether the design is
inherently distinctive. Among the factors our primary
reviewing court has looked to in determining whether a
design is inherently distinctive are: whether the design is
a common basic shape or design; whether it is unique or
unusual in a particular field; or whether it is a mere
Ser No. 76351071
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refinement of a commonly-adopted and well-known form or
ornamentation for a particular class of goods viewed by the
public as a dress or ornamentation for the goods. See in
re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed.
Cir. 2003) and Seabrook Foods, Inc. v. Bar-Well Foods,
Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977). Further, in
determining whether a design is inherently distinctive, we
look to the specimens of use and any other material
submitted by applicant during the prosecution of the
application. In re The Signal Companies, Inc., 228 USPQ
956 (TTAB 1986).
Applicant argues that its design is unique in the
field and thus inherently distinctive. While the design
applicant seeks to register may be unique in the sense that
we have no evidence that anyone else is using a design
which is identical to it, it is nonetheless not inherently
distinctive. Although the design is a noticeable element
of the packaging, it is likely to be regarded as mere
ornamentation rather than as a trademark for the goods. As
evidenced by the specimens of use, applicant’s goods are
teddy bear clothing; therefore, consumers are likely to
view the teddy bear hanger design used in connection with
such goods as simply indicating that the toy clothing is
designed for teddy bears. Moreover, the use of designs on
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hangers is not unusual. The evidence submitted by the
examining attorney shows that at least two companies market
children’s clothes hangers with animal designs.
Applicant also points out that the Supreme Court, in
Wal-Mart, noted that symbols such as packaging “almost
automatically tell a consumer that they refer to a brand”
and “immediately signal a brand or a product source.” 54
USPQ2d at 1068 (emphasis in original). However, the Court
also observed that there will clearly be cases “where it is
not reasonable to assume consumer predisposition to take …
packaging as an indication of source.” 54 USPQ2d 1068.
This is especially true where, as in this case, applicant’s
design is highly suggestive of the product. Applicant’s
teddy bear hanger design will be perceived as connoting
that the toy clothing is for teddy bears. Purchasers and
prospective purchasers of applicant’s goods are unlikely to
regard applicant’s teddy bear hanger design as identifying
the source of toy clothing.
With respect to applicant’s contention that the
examining attorney’s position in this case is inconsistent
with that taken in two prior cases, it is well settled that
each case must be decided on its own merits, and the Board
is not bound by prior actions of the Office. See In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
Ser No. 76351071
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(Fed. Cir. 2001) [“Even if some prior registrations had
some characteristics similar to [applicant’s] application,
the PTO’s allowance of such prior registrations does not
bind the Board or this court.”]. In this regard, we also
note that the two prior registrations cover goods that are
different from those involved herein.
Finally, applicant, in its appeal brief, requests that
if the Board were to determine that its mark cannot be
registered on the Principal Register because it is
inherently distinctive, applicant be permitted to submit a
claim of acquired distinctiveness. The examining attorney,
in her brief, has objected to applicant’s request as
untimely.
Trademark Rule 2.142(g) provides, in relevant part,
that an application which is decided on appeal, as we do
here, will not be reopened except for entry of a disclaimer
or upon order of the Commissioner. Accordingly, the Board
has no power to reopen examination of the application for
consideration of a Section 2(f) claim, and applicant’s
request is therefore denied. The proper procedure would
have been for applicant to submit a claim of acquired
distinctiveness as an alternative claim during the
prosecution of the application.
Ser No. 76351071
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In sum, we find that the design applicant seeks to
register fails to function as a mark for toy clothing.
Decision: The refusal to register is affirmed.