CNS, Inc.

Trademark Trial and Appeal Board

Nov 18, 2005

No. 76250613 (T.T.A.B. Nov. 18, 2005)

Mailed:
November 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CNS, Inc.
________

Serial Nos. 76250116; 76250194; 76250611; 762506131
_______

Stephen R. Bergerson of Fredrikson & Byron, P.A. for CNS,
Inc.

Yong Oh Kim, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

CNS, Inc. has filed applications to register as
trademarks on the Principal Register the following:

1 Inasmuch as the issues raised by these four appeals are
similar, the Board is addressing them in a single opinion.
Citations to the briefs refer to the briefs filed in application
Serial No. 76250116, unless otherwise noted; however, we have, of
course, considered all arguments and evidence filed in each case.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial Nos. 76250116, 76250194, 76250611, 76250613
2

for “medical device in the nature of a drug-free
nasal strip for use as an external nasal dilator”
in International Class 10;2

for “transdermal nasal strip for use in the
delivery of pharmaceuticals to relieve nasal
congestion” in International Class 5;3

for “transdermal nasal strip for use in the
delivery of pharmaceuticals to relieve nasal
congestion” in International Class 5;4

2 Application Serial No. 76250116, filed May 2, 2001, alleging
October 19, 1993 as the date of first use and October 22, 1993 as
the date of first use in commerce, and describing the mark as “a
pictorial representation of a geometric figure comprising an
irregular shaped rectangle which has irregular shaped concave
sides and includes lines or bands across the rectangle.”
3 Application Serial No. 76250194, filed May 2, 2001, alleging
October 19, 1993 as the date of first use and October 22, 1993 as
the date of first use in commerce, and describing the mark as “a
pictorial representation of a geometric figure comprising an
irregular shaped rectangle which has irregular shaped concave
sides and includes lines or bands across the rectangle.”
4 Application Serial No. 76250611, filed May 3, 2001, alleging
October 19, 1993 as the date of first use and October 22, 1993 as
the date of first use in commerce, and describing the mark as “a
pictorial representation of a geometric figure comprising an
irregular shaped rectangle which has irregular shaped concave
sides and includes lines or bands across the rectangle.”
Serial Nos. 76250116, 76250194, 76250611, 76250613
3

for “external nasal dilator” in International Class
10.5

The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), on the ground that applicant’s alleged marks
are merely descriptive of its goods, and under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052,
1127, on the ground that applicant’s alleged marks fail to
function as trademarks. In maintaining these refusals, the
examining attorney also found that applicant did not make a
sufficient evidentiary showing of acquired distinctiveness
under Section 2(f), 15 U.S.C. § 1052(f).6 In addition, in
Application Serial No. 76250611, the examining attorney
also refused registration on the ground that applicant
failed to submit a specimen that shows use of the alleged
mark for the goods identified in the application.

5 Application Serial No. 76250613, filed May 3, 2001, alleging
October 19, 1993 as the date of first use and October 22, 1993 as
the date of first use in commerce, and describing the mark as “a
pictorial representation of a geometric figure comprising an
irregular shaped rectangle which has irregular shaped concave
sides and includes lines or bands across the rectangle.”
6 The examining attorney initially refused registration under
Section 2(e)(5) of the Trademark Act on the ground that the
alleged marks are functional, and under Sections 1, 2 and 45 of
the Trademark Act on the ground that the marks are non-
distinctive configurations. Upon applicant’s clarification that
Serial Nos. 76250116, 76250194, 76250611, 76250613
4
When the refusals were made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusals to register in each
application.
Summary of Examining Attorney’s Arguments
In maintaining the refusal that the alleged marks fail
to function as marks, the examining attorney contends that
the alleged marks are used on the packaging for the goods
as purely “informational matter that merely apprises
consumers of the physical appearance of the goods.” Brief
p. 3. The examining attorney argues that “manufacturers
commonly depict the goods contained within a package on the
package itself to show consumers what the product looks
like [therefore] consumers will view the pictorial
representation for applicant’s goods as merely
informational matter.” Brief p. 3.
With regard to the contention that the alleged marks
are merely descriptive of the goods under Section 2(e)(1),
the examining attorney argues that applicant’s “specimens,
advertisements and patents clearly demonstrate that the
proposed mark[s] [are] accurate pictorial representation[s]
of the goods.” Brief p. 6. He concludes that because the

the alleged marks are pictorial representations of the goods, the
examining attorney withdrew these refusals.
Serial Nos. 76250116, 76250194, 76250611, 76250613
5
marks are accurate representations of the involved goods
they are descriptive of them. Pointing to a utility patent
referenced on applicant’s packaging, the examining attorney
further argues that because “the alleged mark[s] [are]
pictorial representation[s] of the device in the patent and
therefore a genus of goods, [they are] highly descriptive,
if not generic, representation[s] of the goods.” Brief p.
6. Finally, he argues that by claiming acquired
distinctiveness applicant has conceded that the alleged
marks are merely descriptive.
As to applicant’s showing of acquired distinctiveness,
the examining attorney stated that because “the proposed
mark[s] [are] accurate pictorial representation[s] of the
goods, and this precise design of the goods is the subject
of a utility patent, the mark[s] [have] a very high degree
of description” and applicant “bears a heavy burden to
prove that the mark[s] [have] acquired distinctiveness.”
Brief p. 8. The examining attorney concluded that the
showing here was insufficient to support a finding of
secondary meaning. Brief p. 13.
Summary of Applicant’s Arguments and Evidence
Applicant contends that the examining attorney’s
refusals are “based on principles of functionality, which
are not relevant in this matter.” Brief p. 1. Applicant
Serial Nos. 76250116, 76250194, 76250611, 76250613
6
admits that it owns several patents “regarding the process
of opening nasal passages” but argues that “None of the
claims within these patents cover Applicant’s unique
product shape,” (brief p. 2) and, in any event, the utility
patents and functionality are not relevant to this matter.
Brief p. 3. Applicant argues that its alleged marks “show
its products to be distinguished from the goods of others”
which is an indication that its alleged marks are “fully
functioning trademark[s]” (brief p. 4) and applicant uses
them “as trademark[s]” (brief p. 5). In the alternative,
applicant asserts that its alleged marks have acquired
distinctiveness. In support of this assertion, applicant
provided: (1) the declaration of Marti Morfitt,
applicant’s Chief Executive Officer, stating that the
alleged mark has become distinctive through exclusive and
continuous use of the design in commerce for at least five
years; (2) charts showing planned advertising expenditures
from 1996 through 2003; (3) a summary of sales in dollar
figures from 1993 through 2002; (4) samples of print
advertising; (5) samples of television advertising,
including a competitor’s commercial; and (6) samples of
newspaper articles.7

7 Applicant also attempted to rely upon a prior registration for
the mark BREATHE RIGHT with banner background design in support
Serial Nos. 76250116, 76250194, 76250611, 76250613
7
The record also includes: (1) the declaration of M.
W. Anderson, applicant’s Vice President of Product
Development and Regulatory Affairs; (2) dictionary
definitions of the words pharmaceutical and drug; (3)
several design patents owned by third parties for external
nasal dilators; (4) samples of competitors’ products; (5) a
sample of applicant’s product; (6) three utility patents
for external nasal dilators;8 and (7) applicant’s specimens
of use.9

of its assertion of acquired distinctiveness. However, this
registration was cancelled under Section 8 on May 17, 2003,
nearly two years before applicant filed its brief, and cannot be
the basis for such a claim. In re BankAmerica Corp., 229 USPQ
852, 853 (TTAB 1986); TMEP 1212.04(d). Moreover, the mark in
that registration is not event remotely similar to support a
claim of acquired distinctiveness based on a prior registration.
8 One utility patent was submitted by applicant in response to
the request made in the first Office action. The other two,
notably patent no. 5533503, were only submitted in response to a
specific follow up request from the examining attorney based on
the patent numbers appearing on the specimens of use. Not
surprisingly, the drawing of the product in utility patent no.
5533503 closely resembles the alleged mark.
9 The print-outs from the Trademark Electronic Search System
(TESS) of third-party registrations for various product
configurations attached to applicant’s reply brief are untimely.
Trademark Rule 2.142(d); In re Posthuma, 45 USPQ2d 2011, 2012 n.
2 (TTAB 1998). In any event, third-party registrations are not
probative inasmuch as prior decisions of other examining
attorneys are not binding upon the Office and the Board must
decide each case on its own facts and record. In re
International Taste Inc., 53 USPQ2d 1604 (TTAB 2000); In re
Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).
Serial Nos. 76250116, 76250194, 76250611, 76250613
8
Discussion
Failure to Function Under Sections 1, 2 and 45
As has been frequently stated, “Before there can be
registration, there must be a trademark.” In re Bose
Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 896,
192 USPQ 213, 215 (CCPA 1978). See also In re
International Spike, Inc., 196 USPQ 447, 449 (TTAB 1977)
(law pronounced in the Bose case is just as applicable to
pictures and illustrations as it is to words; Trademark Act
is for the registration not the creation of trademarks); In
re Ratcliff Hoist Co., Inc., 157 USPQ 118, 119 (TTAB 1969)
(mere representation of an article of applicant’s
merchandise fails to function as a trademark for its
goods).
In Application Serial Nos. 76250116 and 76250194, the
alleged marks appear on the front of the box next to the
wording “Mentholated Vapors In Every Strip” and on the
bottom spine of the box. In Application Serial Nos.
76250611 and 76250613, the alleged marks purportedly appear
on the back of the box in an overlapping pattern for the
different available sizes.
The examining attorney relies on In re International
Spike, Inc., supra at 449 (TTAB 1977) for his analysis,
noting the similarities between the cases, in particular,
Serial Nos. 76250116, 76250194, 76250611, 76250613
9
the impact on consumer perception when the pictorial
representation is also used on an instruction sheet
included in the packaging and the evidence that the
applicant did not intend that the alleged mark function as
a trademark. See International Spike, supra at 449-450
(pictorial representation depicted next to words “How to
Use for Trees” and use of TM with other marks on the carton
indicate “that customers and prospective purchasers would
not look upon the picture as a symbol of origin or as
anything except as part of the illustration of how to use
the goods, which are fertilizer sticks manufactured in the
form of spikes for ease in hammering them into the
ground”). Specifically, the examining attorney argues that
the “informational nature of the proposed mark is
reinforced in the minds of consumers by applicant’s own
instruction sheets in which the alleged marks appear in
illustrations demonstrating the proper method of affixing
and removing the goods from the user’s nose.” Brief p. 3.
With regard to the latter point, the examining attorney
highlights that “a federal registration symbol appears next
to BREATHE RIGHT, VICKS, and CNS and design, and a TM
symbol appears next to BREATHE RIGHT RIGHT NOW, yet no such
designation appears next to the alleged mark on either the
packaging or the instruction sheet.” Brief p. 4.
Serial Nos. 76250116, 76250194, 76250611, 76250613
10
We find that the manner in which the alleged marks are
used on the specimens of use in these applications is not
indicative of trademark use.
With regard to Application Serial Nos. 76250611 and
76250613, we cannot even say that the alleged marks
depicted in the drawing pages of the applications are
represented on the specimens as depicted in the overlapping
format. To the extent the alleged marks are depicted on
the specimens, they are devoid of any trademark
significance, appearing on the back of the box away from
consumer view, and used to inform the consumer as to the
contents of the box and the different available product
sizes. With regard to Application Serial Nos. 76250116 and
76250194, the specimens of use show the alleged marks on
the bottom front of the box next to the descriptive wording
“Mentholated Vapors in Every Strip” and without a TM symbol
in contrast to all of the trademarks appearing on the box
which are accompanied by either the federal registration
symbol or the TM symbol.10 The other locations are on the
spine of the box, which would typically not be visible to
the consumer, and the back of the box as part of an
illustration depicting how it is used on the nose. Simply

10 While the lack of a TM symbol is not determinative, the use of
a TM symbol might have lent support to show applicant’s intent
Serial Nos. 76250116, 76250194, 76250611, 76250613
11
put, the manner in which these alleged marks are being used
does not support a finding that potential consumers would
perceive these two-dimensional pictorial representations as
trademarks or source identifiers.
Merely Descriptive Under Section 2(e)(1)
A pictorial or visual representation that consists
merely of an illustration of the goods or services, or of
an article that is an important feature or characteristic
of the goods or services is merely descriptive under
Section 2(e)(1) of the Trademark Act. See In re Society
for Private and Commercial Earth Stations, 226 USPQ 436
(TTAB 1985) (representation of satellite dish held merely
descriptive of services of an association promoting the
interests of members of the earth station industry); In re
Underwater Connections, Inc., 221 USPQ 95 (TTAB 1983)
(pictorial representation of a compressed air gas tank held
merely descriptive of travel tour services involving
underwater diving); Thistle Class Assoc. v. Douglass &
McLeod, Inc., 198 USPQ 504, 511 (TTAB 1978) (representation
of a thistle held merely descriptive of sailboats); In re
Custom Trim Products, Inc., 182 USPQ 235 (TTAB 1975)
(representation of protective molding on vehicle being

for these pictorial representations to function as trademarks.
See International Spike, supra.
Serial Nos. 76250116, 76250194, 76250611, 76250613
12
struck by opening car door). See also Planters Nut &
Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134
USPQ 504, 507 (CCPA 1962) (a visual representation which
consists merely of an illustration of one’s product is
unregistrable under Section 2(e)(1) of the Act just as
merely descriptive word); and TMEP § 1209.03 (4th ed. 2005).
The analysis under this refusal focuses on the degree
of accuracy of the depiction. Where the design is more
realistic and leaves no doubt about the depiction of the
goods or services it is deemed merely descriptive. In re
Eight Ball, Inc., 217 USPQ 1183 (TTAB 1983) (representation
of a cue stick and eight ball); International Spike, Inc.,
supra at 450 (representation of a man holding a hammer and
applicant’s product); In re AMF Inc., 181 USPQ 848 (TTAB
1974) (representation of two sailboats held merely
descriptive but secondary meaning established).
Conversely, where there is sufficient stylization to lessen
the degree of accuracy the representation may not be merely
descriptive. See In re LRC Products Ltd., 223 USPQ 1250
(TTAB 1984) (stylized hand design found not merely an
illustration of gloves; thus not merely descriptive); In re
Curtiss-Wright Corp., 183 USPQ 621, 622 (TTAB 1974)
(representation of rotary engine found arbitrary and not
merely descriptive). See also TMEP §1209.03
Serial Nos. 76250116, 76250194, 76250611, 76250613
13
In this case, we find that applicant’s alleged marks
are accurate illustrations of applicant’s goods and, as
such, are merely descriptive. Applicant, has, in fact,
conceded this point by seeking registration under Section
2(f), Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 1575, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988),
and by its own statements that the alleged marks are “the
shape of the product.” Reply Brief p. 2. However, for
completeness, we also find this determination is supported
by the evidence of record. First, the sample of
applicant’s product and the drawings of the product in
utility patent no. 5533503, show that the alleged marks are
an accurate representation of the goods. Second, the
design patents for external nasal dilators and samples of
competitors’ external nasal dilators that also have a
thinner central band with wider end regions support a
finding that this is generally a common shape for these
goods and, therefore, these designs lack inherent
distinctiveness. Cf. In re Pacer Technology, 338 F.3d
1348, 67 USPQ2d 1629 (Fed. Cir. 2003).
Acquired Distinctiveness Under Section 2(f)
Refusals based on descriptiveness and failure to
function may be overcome by a showing of acquired
distinctiveness under Section 2(f) of the Trademark Act.
Serial Nos. 76250116, 76250194, 76250611, 76250613
14
The burden of proving a prima facie case of acquired
distinctiveness in an ex parte proceeding rests with
applicant. Yamaha, supra at 1576, 1004. An applicant must
show that the primary significance of a pictorial
representation of the product in the minds of consumers is
not the product but the source of that product to establish
acquired distinctiveness. See In re Steelbuilding.com, 415
F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In
re Ennco Display Systems Inc., 56 USPQ2d 1279, 1283 (TTAB
1983). Acquired distinctiveness may be shown by direct
and/or circumstantial evidence. Direct evidence includes
actual testimony, declarations or surveys of consumers as
to their state of mind. Circumstantial evidence is
evidence from which consumer association might be inferred,
such as years of use, extensive amount of sales and
advertising, and any similar evidence showing wide exposure
of the mark to consumers. In re Ennco, 56 USPQ2d at 1283.
See also 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, Sections 15:30, 15:61, 15:66 and 15:70
(4th ed. 2005).
There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness, however,
the burden is heavier in this case because of the accuracy
of the two-dimensional pictorial representations of the
Serial Nos. 76250116, 76250194, 76250611, 76250613
15
goods. See Yamaha, 840 F.2d at 1581, 6 USPQ2d at 1008
(evidence required to show acquired distinctiveness is
directly proportional to the degree of non-distinctiveness
of the mark at issue). Cf. In re Ennco, 56 USP2d 1279
(TTAB 1983) (product configurations face a heavy burden to
establish secondary meaning).
In this regard, we note that the examining attorney
supports his position that the alleged marks in issue are
highly descriptive marks and applicant bears a heavy burden
to establish secondary meaning, in part, by relying on the
utility patents, in particular patent no. 5533503. As
noted above, applicant takes issue with the relevancy of
the utility patents in the absence of a functionality
refusal. We find that, under these circumstances where the
refusal is based on descriptiveness under Section 2(e)(1),
the utility patent is relevant evidence to show the
accuracy (descriptiveness) of the depiction of the product
in the pictorial representations, in the same way a sample
of the product is useful evidence by which to determine the
accuracy of the depiction. This, in turn, affects the
burden of proof necessary to establish acquired
distinctiveness, as the degree of accuracy
Serial Nos. 76250116, 76250194, 76250611, 76250613
16
(descriptiveness) increases, the burden to establish
acquired distinctiveness increases.11

11 Although a functionality refusal is not before us, inasmuch as
the examining attorney withdrew that refusal, we note that other
cases involving two-dimensional pictorial representations were
based on functionality refusals. See In re Universal Filters
Inc., 218 USPQ 456 (TTAB 1983) (refusal to a visual
representation of the applicant’s goods based on the ground that
it was functional, evidence included a utility patent; Board
found that because the design was different from the patent
drawings and from the actual product it was not functional). See
also In re Pingel Enterprise, 46 USPQ2d 1811, fn. 5 (TTAB 1998)
(“However, for purposes of determining the issues of de jure
functionality and acquired distinctiveness, it simply makes no
difference in this appeal whether we regard the matter which
applicant seeks to register, as shown on the drawing submitted
with the application, as either the product configuration of
applicant’s petcock or a ‘logo’ thereof.”); In re Lighting
Systems, Inc., 212 USPQ 313 (TTAB 1981) (mark described as a
facsimile of a portable, electric flashlight and used by applying
it to the box, refused as functional); Textron Inc. v. Pilling
Chain Co., Inc., 175 USPQ 621, 622 (TTAB 1972) (“It is a well
established precedent that one may not claim a right to
registration in the configuration or illustration of a purely
functional item...”; illustration of functional zipper
unregistrable). Clearly, the case law supports the conclusion
that if the product configuration is functional and
unregistrable, then the accurate depiction of that configuration
is also unregistrable. See also 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, Section 7:37 (4th ed. 2005)
(“if a picture of a functional and utilitarian product is
regarded as the equivalent of the utilitarian shape itself, the
picture should not be capable of appropriation as a trademark for
one seller of that product.”)
We further note, in this regard, that, applicant’s
arguments to the contrary, the claims in utility patent no.
5533503, include aspects that may affect the configuration of the
product. For example, claim no. 13 “...the end edges of the
first and second end regions are shaped with radius corners to
prevent inadvertent peeling of the strip of base material from
the outer wall tissue of the first and second nasal passage”;
claim no. 14 “...a pair of spaced, first and second extensions,
the first and second extensions being located outboard and
extending past the first and second protrusions, respectively, to
prevent inadvertent peeling of the strip of base material from
the outer wall tissue of the first and second nasal passages”;
and claim no. 19 “wherein there is another extension included in
each said end region also extending past said other portion of
Serial Nos. 76250116, 76250194, 76250611, 76250613
17
We emphasize that even without these utility patents,
the record does not support registration (i.e., the
accuracy of the depiction is born out by the sample of the
product, see supra, and the evidence submitted in support
of the claim of acquired distinctiveness is insufficient
even at a lower threshold, see infra).
After careful review of the evidence of record, we
agree with the examining attorney that applicant's evidence
of acquired distinctiveness is insufficient to permit
registration of the accurate two-dimensional pictorial
representations of applicant’s goods under Section 2(f).
1. Advertising and Sales
Applicant claims to have $425 million in sales of the
external nasal dilators during the period 1993 through 2002
and to have spent approximately $59 million on advertising
between 1996 and 2001.
While the sales volume figures may demonstrate the
growing popularity of the product, mere figures
demonstrating successful product sales are not probative of
purchaser recognition of a two-dimensional representation
of the product as an indication of source. See Braun Inc.

that said end region, said other portion in a said corresponding
end region being positioned between those said extensions therein
to thereby form a primarily concave opening between said
extensions” dictate that each end has extensions that are longer
than the center strip and combine to create a concave appearance.
Serial Nos. 76250116, 76250194, 76250611, 76250613
18
v. Dynamics Corp., 975 F.2d 815, 827, 24 USPQ2d 1121, 1133
(Fed. Cir. 1992) (“[L]arge consumer demand for Braun’s
blender does not permit a finding the public necessarily
associated the blender design with Braun.”); In re Bongrain
Int’l (American) Corp., 894 F.2d 1316, 1318, 13 USPQ2d
1727, 1729 (Fed. Cir. 1990) (growth in sales may be
indicative of popularity of product itself rather than
recognition as denoting origin). It is well established
that compelling sales and advertising figures do not always
amount to a finding of acquired distinctiveness. See In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) ($85,000,000 in annual sales revenues and
$2,000,000 in advertising expenditures found insufficient
to establish acquired distinctiveness); Goodyear Tire &
Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705 (TTAB
1998) ($56,000,000 sales revenues and 740,000 tires sold
insufficient to show acquired distinctiveness of tire tread
design).
Although there may have been substantial sales and
spending on advertising, the more important question is how
is the alleged mark being used, i.e., in what manner have
consumers been exposed to the alleged mark so that we can
impute consumer association between the two-dimensional
pictorial representation of the product and the product
Serial Nos. 76250116, 76250194, 76250611, 76250613
19
producer.12 To determine whether an accurate two-
dimensional pictorial representation of the goods has
acquired distinctiveness, advertisements must show
promotion of the two-dimensional pictorial representation
as a trademark.
Here, there is nothing of record that shows that the
alleged marks are being promoted as source indicators.
Much of the advertising of record does not even depict the
accurate pictorial representations for which registration
is sought, but rather consists of photographs or film
footage of the goods themselves at different angles in use
on a face or being handled. Other examples simply show a
picture of the packaging where the alleged marks are not
used in a trademark manner, see supra. Moreover, as the
examining attorney stated “there is no indication from the
print advertisements themselves that the proposed mark is
being promoted as anything other than a pictorial
representation of the goods” rather “the print
advertisements ... demonstrate how the product is utilized,
i.e., attached over the nose of the user” and are “not

12 We note that the examining attorney correctly points out that
the sales and advertising figures may be somewhat overstated in
that some of them are “projected” figures and not actual figures,
and the advertising budget includes radio advertising that is
“immaterial in determining secondary meaning” in a pictorial
representation.
Serial Nos. 76250116, 76250194, 76250611, 76250613
20
directed at creating secondary meaning in the proposed
mark[s].” Brief p. 10.
While applicant argues that its product design is a
“prominent element within its advertising and packaging”
(brief p. 2) and that it has spent “hundreds of millions of
dollars in promoting the unique shape of its product to aid
in consumer recognition” (brief p. 2), as noted above,
there is nothing in the record to show that the advertising
promotes the two-dimensional pictorial representations in a
way that would imbue them with source-identifying
significance, but rather as the advertising informs the
consumer that the trademark is BREATHE RIGHT it also shows
the product like any advertising would and perhaps attempts
to dispel any reluctance a consumer might have wearing this
product in public by placing it on famous faces.
Applicant has not presented evidence of advertising or
promotional efforts that focus upon the trademark
significance of the two-dimensional pictorial
representations claimed as marks and as such has failed to
demonstrate that consumers recognize the alleged marks as
anything but pictorial representations of the goods.
2. Unsolicited Publicity
The examples of unsolicited publicity for applicant’s
products do not serve to show customer perception of the
Serial Nos. 76250116, 76250194, 76250611, 76250613
21
two-dimensional pictorial representations as trademarks.
One example is the following, “...Wayne Gretzky, has been
seen wearing a Breathe Right.” Drug Store News, February
20, 1995. This pertains only to the name Breathe Right,
not to the claimed marks herein. While these articles may
be evidence of the popularity of the product, they do not
show customer recognition of the source identifying
significance of the pictorial representations of the
product, nor can we infer such recognition from this
evidence. The following are several examples: “Well maybe
you might look goofy, but this is becoming a status
symbol,” Physician and Sportsmedicine (August 1995);
“...it remains to be seen if kid-size Breathe Right strips
will cross the fashion line from silly to cool,” The
Washington Post, Style section p. C13 (November 10, 2000);
“Personally I thought the strip was silly looking so I
would not wear it out in public,” The Denver Post,
“Colorado Kids” (November 21, 2000); and “Although the
strip looks very silly, it seems to help,” The Plain
Dealer, (October 16, 2000); “Over 30 percent of households
trying the product come back and buy it again...[b]ut the
company’s biggest challenge is that although they have
achieved a very high recognition of the product, people are
not sure what it does.” Medical Industry Today, Interview
Serial Nos. 76250116, 76250194, 76250611, 76250613
22
of Paul Laufer analyst at Principal Financial Securities
(January 31, 1997). Finally, in another example, applicant
notes the following excerpt: “total brand awareness is in
the neighborhood of 80 percent of the country.” Drug Store
News (July 23, 2001). The brand discussed in the article
is the BREATHE RIGHT name (“the Breathe Right brand is only
seven years old”).
While there is at least one example that references
the shape of the product, see, for example, “The butterfly-
shaped adhesive bandage stretches across the nose just
below the bridge and fits snugly onto each side crease”
Physician and Sportsmedicine (August 1995), this is not
relevant to the two-dimensional marks involved in this
case.
3. Licensing Agreements
As to applicant’s argument that secondary meaning is
shown through its licensing agreements, it is not supported
by the evidence. Applicant directs us to an article from
“Drug Store News” attached in Exhibit G wherein its
marketing and licensing arrangements with other companies
are discussed. The article explicitly states that
applicant “is exploring new opportunities to license the
Breathe Right name...” This evidence contains no reference
Serial Nos. 76250116, 76250194, 76250611, 76250613
23
to or use of the marks involved herein and, thus, is of no
probative value.
4. Declaration of Use
With respect to applicant’s declaration of
substantially exclusive use for a period of five years
immediately preceding filing of an application, while this
may serve as prima facie evidence of acquired
distinctiveness, the language of the statute is permissive
and the weight to be accorded this kind of evidence depends
on the facts and circumstances of the particular case. See
Section 2(f) of the Trademark Act 15 U.S.C. Section
1052(f).
Accordingly, based upon consideration of all the
evidence in the record, we find that applicant has failed
to establish that the two-dimensional pictorial
representations involved in the applications before us have
acquired distinctiveness within the meaning of Section
2(f).
Specimen of Use
Finally, in Application Serial No. 76250611 the
examining attorney also refused registration on the basis
that the specimen of use did not support the identification
of goods in international class 5 inasmuch as the specimen
indicates that the goods are drug free. Brief p. 9.
Serial Nos. 76250116, 76250194, 76250611, 76250613
24
Applicant argues that the specimen “reflects a product that
is a nasal dilator which contains and delivers ‘VICKS®
mentholated vapors’ to consumers to help relieve nasal
congestion.” Response p. 21. Applications for
registration under Section 1(a) of the Trademark Act must
include one specimen showing use of the mark as used on or
in connection with the goods identified in the application.
15 U.S.C. Section 1051(a)(1); 37 C.F.R. Section 2.56(a).
The identification of goods (“transdermal nasal strip for
use in the delivery of pharmaceuticals to relieve nasal
congestion”) indicates that the product is infused with a
pharmaceutical. Contrary to applicant’s assertion, the
specimens submitted in support of this application do not
include any reference to mentholated vapors or any other
type of pharmaceutical and, in fact, include the statement
that they are drug free.13 Thus, the examining attorney
correctly determined that the specimens of use are not
acceptable in this application.
Decision: The refusals to register the pictorial
representations claimed as marks in each application on the

13 We note the specimens of use in Application Serial No. 76250194
do make reference to mentholated vapors and those specimens were
accepted by the examining attorney in support of the goods in
international class 5. These specimens may not be used to
support another application unless submitted in the other
application; and, in any event, Application Serial No. 76250194
depicts a different mark.
Serial Nos. 76250116, 76250194, 76250611, 76250613
25
grounds that the pictorial representations are merely
descriptive, fail to function as marks and have not been
shown to have acquired distinctiveness are affirmed. The
refusal to register the pictorial representation in
Application Serial No. 76250611 on the basis that the
specimen of record does not support the identified goods is
affirmed.