De Ster Corp.

Trademark Trial and Appeal Board

Jan 5, 2000

EX (T.T.A.B. Jan. 5, 2000)

Paper No. 17
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 5, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re De Ster Corporation
________
Serial Nos. 74/711,715;
74/711,899 and 74/721,195
_______
Michael J. Powell of Kennedy, Davis & Hodge, LLP
for De Ster Corporation.
Alan C. Atchison, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Wendel and Bucher, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
De Ster Corporation has filed three applications for
registration of the configuration of a container as a mark
for “plastic containers for the storage of food.”1 The
three configurations are depicted below:

1 Serial No. 74/711,715, filed August 7, 1995, claiming first use
dates of September 1992; Serial No. 74/711,899, filed August 7,
1995, claiming first use dates of March 1994; and Serial No.
74/721,195, filed August 28, 1995, claiming first use dates of
June 1993.
Ser Nos. 74/711,715;74/711,899 and 74/721,195
2
4-Compartment Dinner Box
Serial No. 74/711,715
3-Compartment Dinner Box 2-Compartment Dinner Box
Serial No. 74/711,899 Serial No. 74/721,195
Registration has been refused in each application on
the ground that the configuration sought to be registered,
although not de jure functional, is not inherently
distinctive, and has not be shown to have acquired
distinctiveness within the meaning of Section 2(f) of the
Trademark Act.

Ser Nos. 74/711,715;74/711,899 and 74/721,195
3
Applicant and the Examining Attorney have filed briefs
in each of the cases. No oral hearing was held, the
initial request therefor having been withdrawn by
applicant. Applicant’s motion to consolidate the cases was
granted by the Board on April 20, 1999 and accordingly,
this one opinion is being issued for all three appeals.
The Examining Attorney initially refused registration
on two grounds, both that the configurations appeared to be
functional and that the configurations were not inherently
distinctive and thus only registrable with an acceptable
showing of acquired distinctiveness under Section 2(f).
Upon the submission by applicant of evidence of numerous
alternative designs for similar products, the Examining
Attorney accepted applicant’s argument that the
configurations were not de jure functional and hence
dropped the functionality refusal. The Examining Attorney
maintained his position that the configurations were not
inherently distinctive and, although applicant had
submitted the declaration of an officer and other evidence
in support of a claim of acquired distinctiveness, the
Examining Attorney found this to be an insufficient showing
to demonstrate acquired distinctiveness under Section 2(f).
Applicant followed with supplemental evidence, which will
be discussed infra, but the Examining Attorney continued
Ser Nos. 74/711,715;74/711,899 and 74/721,195
4
and made final his refusal on the basis of the
insufficiency of the evidence to demonstrate acquired
distinctiveness.
The Refusal
The Examining Attorney takes the position that
applicant’s food storage containers share many of the
characteristics found in other available containers, as
demonstrated by the evidence of alternative designs for
similar containers submitted by applicant in response to
the functionality refusal. (Exhibit C of applicant’s
response of August 6, 1996). He points out that many of
the containers are rectangular in shape, are of sufficient
depth to hold food, and feature separate compartments for
different food items. While having earlier acknowledged
that the shapes of some of the interior compartments of
applicant’s containers might be unusual, the Examining
Attorney argues that there is nothing in the configurations
as a whole which renders the designs unique or distinct
from the containers of third parties. Thus, he maintains
that the configurations are not inherently distinctive.
Applicant, however, has clearly stated in its reply
brief that it makes no claim of inherent distinctiveness,
and thus this issue need not be considered. Applicant’s
claim is that its dinner box configurations have acquired
Ser Nos. 74/711,715;74/711,899 and 74/721,195
5
distinctiveness because of certain features of the
containers. Applicant argues that the particular angling
and beveling of the compartments of its containers produce
a unique and uncommon appearance, and that the “upscale”
appearance and image of the containers as a whole sets them
apart from the generic food packaging containers used by
fast food establishments.
With respect to this claim of acquired
distinctiveness, the Examining Attorney maintains that, in
view of the similarity of the configurations of applicant’s
food containers in general to others used in the industry,
the evidence submitted by applicant is insufficient to
establish acquired distinctiveness under Section 2(f).
The Evidence
In each case, applicant has submitted the declaration
of Daniel Whitehead, an officer of applicant, in support of
its claim of distinctiveness. In his declarations, Mr.
Whitehead states that applicant has sold its 4-compartment
container since 1992, its 3-compartment container since
1994 and its 2-compartment container since 1993; that the
purchasers of its dinner box containers are restaurants,
delicatessens and similar stores engaged in selling foods
of an “upscale” quality for take-home meals and that
applicant’s containers are designed to have a suitable
Ser Nos. 74/711,715;74/711,899 and 74/721,195
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“upscale” appearance for these foods; that as a result of
applicant’s promotional and sales efforts and the
distinctive appearance of the containers, applicant’s
designs have achieved fame in the industry and have come to
be recognized as trademarks of applicant;2 that since 1992
applicant has sold over 3.6 million boxes in all and
expended over $24,000 in promotional materials;3 and that,
upon becoming aware of the copying of these designs by a
competitor Ultra Pac, Inc., applicant initiated a civil
action, which has been settled, and Ultra Pac, Inc. has
entered into a licensing agreement with applicant.
After the Examining Attorney found this evidence
insufficient to demonstrate consumer recognition of the
configurations of applicant’s containers as an indication
of source, applicant augmented its showing with eleven
affidavits or statements from persons identified as
customers or distributors of applicant describing the
recognition of containers with applicant’s “distinctive”
configurations as symbols of, or as coming exclusively

2 The primary promotional or advertising material of applicant is
its catalog, a copy of which was submitted with the declaration
(Exhibit A).
3 The original declaration was filed in 1996. In a supplemental
declaration of Mr. Whitehead in 1997, these figures were updated
to 9.5 million boxes in all and $30,000 in promotional expenses.
A further declaration with more recent figures which was attached
Ser Nos. 74/711,715;74/711,899 and 74/721,195
7
from, applicant. The persons making these statements were
active in the food service industry in the marketing of
consumer packaging products. While some persons gave
direct statements with respect to their recognition of the
configurations as originating from applicant, many
expressed their beliefs that customers of theirs would
recognize applicant as the source of the containers because
of their “unique shape” or “lines that are unique and
distinctive.”
The Claim of Acquired Distinctiveness
The burden of proving acquired distinctiveness lies
upon applicant. Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir.
1988). Applicant argues it has met this burden by means of
its evidence of 1) direct consumer testimony,
2) exclusivity, length and manner of use of its mark,
3)amount and manner of advertising, 4) amount of sales,
5) established place in the market, and 6) proof of
intentional copying.
Looking first to the affidavits and statements which
applicant has submitted as evidence of consumer
recognition, we find the major deficiency with respect to

to applicant’s brief has been given no consideration. See
Trademark Rule 2.142(d).
Ser Nos. 74/711,715;74/711,899 and 74/721,195
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these statements lies in the fact that there is no
evidence therein of recognition by the ultimate purchasers
of the containers as an indication of source. Applicant
has stated that its “upscale” containers are sold to
restaurants, delicatessens and the like for the packaging
of take-out meals. Thus, it is the owners of restaurants,
delicatessens and the like who are the ultimate purchasers
of the goods. There are no statements, however, from any
purchasers at this level. Recognition of specific features
of applicant’s product line by distributors and others
involved in the wholesale marketing of consumer packaging
cannot serve to establish that the ultimate purchasers
would recognize the so-called “upscale” features of
applicant’s containers as an indication that they originate
from applicant. See In re Edward Ski Products, Inc., 49
USPQ2d 2001 (TTAB 1999); In re Pingel Enterprise Inc., 46
USPQ2d 1811 (TTAB 1988) and the cases cited therein.
Applicant argues that the statements of distributors
should be considered evidence of purchaser recognition of
applicant’s configurations, citing the Board’s holding in
In re Bose Corp., 216 USPQ 1001 (TTAB 1983), that the
statement of a retailer as to recognition by purchasers of
the product design as an indication of source is competent
evidence of secondary meaning. We do not agree. In the
Ser Nos. 74/711,715;74/711,899 and 74/721,195
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first place, the Board added the caveat in Bose that the
weight to be given to this evidence is “of course ... a
matter of judgment on the trier of the facts.” Supra at
1005. Furthermore, in contrast to the Bose case, here we
have no corroborative evidence that any particular design
features have been promoted to the ultimate purchasers,
such that they have reason to recognize the features as an
indication of source. In fact, as pointed out by the
Examining Attorney, it is not clear in most of the
statements proffered by applicant what features even the
declarants considered essential to the so-called “unique”
and “distinctive” lines of applicant’s containers.
Turning to the second category of evidence, we agree
with the Examining Attorney that continuous use of these
product configurations for periods ranging from five to
seven years is insufficient in itself to demonstrate
acquired distinctiveness. Furthermore, although applicant
argues that its containers are highly visible products used
by restaurants, delicatessens and stores to showcase food
and that applicant has promoted the “upscale” quality of
its containers for this purpose, there is no evidence of
record of any such promotion or manner of use. The
evidence is limited to the simple fact that applicant has
manufactured and sold food containers having these
Ser Nos. 74/711,715;74/711,899 and 74/721,195
10
particular configurations for a period of five to seven
years.
As for advertising, applicant has admitted that its
expenditures for its printed advertisements have not been
great, being only around $30,000 in the period from 1992-
1997. Although applicant argues that it also has
expenditures for trade shows and in-person sales
presentations, no evidence has been submitted to show the
extent of these efforts, or the amounts of the
expenditures.
Even more significantly, when we look to applicant’s
advertising material, we find no evidence of any promotion
of the particular beveling and angling of the separate
compartments or of the “upscale” quality of the containers
as a whole. The only promotional material before us is
applicant’s catalog, which simply lists the dinner box
items by name, color and dimensions and includes a rather
indistinct photograph of each item. There is no further
description and no promotion whatsoever of any particular
features of the containers. There is no reference in this
material to the design features being trademarks of
applicant or a means of recognizing applicant as the source
thereof. See In re Visual Communications Company, Inc., 51
USPQ2d 1141 (TTAB 1999). Although applicant contends that
Ser Nos. 74/711,715;74/711,899 and 74/721,195
11
it is through direct touting by sales representatives that
applicant promotes the distinctiveness of the product
configurations, we have no evidence before us to support,
or by which we can evaluate, this type of sales promotion.
Applicant’s sales figures are more impressive in
volume, but equally ineffective in demonstrating acquired
distinctiveness for the container configurations. Although
these figures may demonstrate the growing popularity of the
containers, sales success is not, in itself, probative of
purchaser recognition of the specific design or
configuration of the containers as an indication of source.
Desirability of the product, whether based on the overall
configuration or particular features of the compartments,
cannot be equated with acquired distinctiveness for the
configuration as a trademark. See In re Edward Ski
Products, Inc., supra; In re Pingel Enterprise Inc., supra;
In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992).
Finally, applicant places great importance on its
civil action against its competitor Ultra Pac, Inc., both
as evidence of the intentional copying of applicant’s
configurations and of applicant’s securing its place in the
market by litigating the issue. Applicant states that
Ultra Pac, Inc. made virtually identical copies of
applicant’s dinner box containers to trade off the good
Ser Nos. 74/711,715;74/711,899 and 74/721,195
12
will of these designs, but, as a result of the suit, has
acknowledged applicant’s trademark rights in the
configurations and has agreed to become a royalty-paying
licensee in order to continue producing the containers.
Applicant has submitted a copy of the judgment
dismissing the civil action by reason of settlement. In
this consent judgment, the parties agreed that applicant
has enforceable trademark rights in its consumer packaging
products, which include both the dinner box products
involved here and an 8-sided box. The terms of the license
agreement between the parties with respect to these
packaging products are set forth in a separate settlement
agreement, a copy of which has not been made of record.
We have no evidence, however, to substantiate that
Ultra Pac, Inc.’s intent in copying applicant’s
configurations was for purposes of attempting to trade on
any secondary meaning which the configurations may have
acquired as an indication of applicant as the source,
rather than simply for the desirable qualities of certain
features. See Thomas & Betts Corp. v. Panduit Corp., 65
F.3d 654, 36 USPQ2d 1065 (7th Cir. 1995). The fact that
Ultra Pac, Inc. has agreed to a license for the production
of containers of these particular configurations does not
convince us that the configurations function as trademarks
Ser Nos. 74/711,715;74/711,899 and 74/721,195
13
for applicant. As noted by the Examining Attorney,
agreement by a competitor to take a license from applicant
may well be viewed as a desire to avoid litigation and not
as evidence that the configurations actually have acquired
distinctiveness and point uniquely to applicant. See In re
Wella Corp., 635 F.2d 845, 196 USPQ 7, n.2 (CCPA 1977); In
re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB 1989).
Accordingly, upon consideration of all of the evidence
submitted by applicant, we find that applicant has failed
to establish that the configurations sought to be
registered as trademarks have acquired distinctiveness
within the meaning of Section 2(f).
Decision: The refusal to register under Section 2(f)
is affirmed in each application.
E. J. Seeherman
H. R. Wendel
D. E. Bucher
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser Nos. 74/711,715;74/711,899 and 74/721,195
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Ser Nos. 74/711,715;74/711,899 and 74/721,195
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