Mars, Incorporated

Trademark Trial and Appeal Board

May 16, 2011

No. 77727119 (T.T.A.B. May. 16, 2011)

Mailed:
May 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mars, Incorporated
________

Serial No. 77727119
_______

Cristina A. Carvalho of Arent Fox LLP for Mars,
Incorporated.

Brendan D. McCauley, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Mars, Incorporated (“applicant”) filed an intent-to-
use application for the mark shown below for “pet food,” in
Class 31.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77727119
2
Applicant adopted the description of the mark, set forth
below, suggested by the Examining Attorney in the June 24,
2009 Office Action.
The mark consists of a three-
dimensional configuration of packaging
for pet food that consists of a round
bowl-shaped, inverted and lacquered pet
food container. The top of the
container has a center circle with
rounded edges tapering to the sides
with a wider larger lip at the bottom
with various placement lines
representing a lacquered finish. The
inverted nature of the container and
the lacquered finish are claimed as
features of the mark.

Although the applicant is the owner of Registration
Nos. 3220575, 2052069 and 2052071 for similar marks, shown
below, for pet food, applicant did not claim ownership of
those registrations and the Examining Attorney did not
require applicant to claim ownership of the registrations.1
1. Registration No. 3220575 for pet food.2

1 Applicant submitted copies of those registrations as part of
its evidentiary showing in its December 14, 2009 response.
2 Issued March 20, 2007 on the Principal Register.
Serial No. 77727119
3
Applicant described this mark as “the design of a unique
pet food container.”
2. Registration No. 2052069 for dog food and
Registration No. 2052071 for cat food.3

In the December 14, 2009 response to the June 24, 2009
Office Action, applicant also submitted photographs of the
product packaging comprising Registration No. 3220575,
shown below, to display the inverted nature of the mark
which applicant explained “is completely arbitrary and
serves absolutely no purpose other than to act as a unique
feature that stand out to consumers and identifies source.”4
The photographs also display the lacquer finish claimed as
a feature of the subject matter sought to be registered.

3 Issued April 15, 1997 on the Principal Register under the
provisions of Section 2(f); renewed. No description of the mark
is printed on the registrations.
4 December 14, 2009 Office Action, pp. 6-7. Applicant stated
that these photographs suggest how the subject matter sought to
be registered would appear. Id. at p. 6.
Serial No. 77727119
4

Applicant explained the affect of the lacquer finish
as follows:
Applicant’s product packaging design
features a lacquered finish that also
is unlike anything in the pet food
marketplace. Traditional canned pet
food packages simply feature paper
labels affixed to standard cans. … In
contrast the lacquered finish of
Applicant’s packaging design creates a
unique and unusual display that sets
Applicant’s product apart from products
offered by others. The lacquered
finish not only gives Applicant’s
packaging a different look, it also
results in a different feel.5

Registration was refused on the ground that the
subject matter sought to be registered “consists of a
nondistinctive configuration of product packaging for pet
food that is not registrable without sufficient proof of
acquired distinctiveness.”6 Sections 1, 2, and 45 of the
Trademark Act 1946, 15 U.S.C. §§1051, 1052, and 1127. The
examining attorney contends that the subject matter sought

5 Applicant’s December 12, 2009 Response, p. 7.
6 Examining Attorney’s Brief, p. 1.
Serial No. 77727119
5
to be registered is a common basic shape or design for pet
food packaging.7 The Examining Attorney specifically argues
that the evidence proves that “a round shape for pet food
packaging containers is common,”8 that “the round and lip
features of applicant’s applied-for mark are not unique in
the field of pet food packaging field (sic),”9 and that
“[t]he rounded tapering side edges, lacquered, inverted
opening and lip features of applicant’s mark are merely
refinements to the common round shape for the container.”10
Thus, on the whole, applicant’s mark is
a mere refinement of a commonly adopted
and well-known form or ornamentation
for product packaging for pet food
viewed by the public dress or
ornamentation for the packaging of the
goods, namely, a round shape
container.11

The Examining Attorney submitted excerpts from
websites displaying various pet food containers to support
his contention that the subject matter sought to be
registered is a common, basic shape. The containers set
forth below are representative.

7 Examining Attorney’s Brief, p. 7.
8 Examining Attorney’s Brief, p. 7.
9 Examining Attorney’s Brief, p. 9.
10 Examining Attorney’s Brief, p. 10.
11 Examining Attorney’s Brief, p. 10.
Serial No. 77727119
6
1. Wegmans.com12

2. Walmart.com13

12 June 24, 2009 Office Action.
13 January 19, 2010 Office Action.
Serial No. 77727119
7
3. Petsmart.com14

As indicated above, applicant made of record its three
previously registered product packages for pet food:
Registration Nos. 2052069 and 2052071 under the provisions
of Section 2(f), and Registration No. 3220575 on the
Principal Register without a showing of acquired
distinctiveness. If an applicant initially seeks
registration based on acquired distinctiveness or amends
its application to seek registration based on acquired

14 January 19, 2010 Office Action.
Serial No. 77727119
8
distinctiveness without expressly reserving its right to
argue that its mark is inherently distinctive, registration
under Section 2(f) is an admission that the mark is not
inherently distinctive. Yamaha International Corporation
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1005 (Fed. Cir. 1988); Kasco Corp. v. Southern Saw
Services, Inc., 27 USPQ2d 1501, 1506 n.7 (TTAB 1993) (“By
amending (without reservation) its application to claim
that its green wrapper had become distinctive of its saw
blades, [defendant] conceded that the green wrapper was not
inherently distinctive of its saw blades … when [defendant]
amended its application to claim the benefits of Section
2(f), it did not reserve its right to argue in the
alternative that its green wrapper was, from the outset,
inherently distinctive”); see also TMEP §1212.02(c) (7th ed.
2010). An applicant can avoid the admission that its mark
is not inherently distinctive if it makes the claim of
acquired distinctiveness in the alternative and files an
appeal of the final refusal on the basis that the mark is
not inherently distinctive. Of course, if an appeal of a
descriptiveness refusal with a claim of acquired
distinctiveness in the alternative results in a finding
that the mark is descriptive and also that the claim of
acquired distinctiveness is sufficient, then a finding that
Serial No. 77727119
9
the mark is descriptive or, in this case, that the mark is
not inherently distinctive, though not conceded by the
applicant, would be present.
During the prosecution of this application, the better
practice would have been for the examining attorney to have
reviewed the files for applicant’s Registrations Nos.
2052069 and 2052071, issued under Section 2(f), to
determine whether applicant had previously conceded that
the particular product package was not inherently
distinctive or, perhaps, on appeal, that the Board found
that the product packaging was not inherently distinctive.
The Examining Attorney would have known the particulars of
the Section 2(f) claims in the prior registrations which
may have aided in the prosecution of this case by providing
information regarding whether applicant had conceded that
arguably similar product packaging was not inherently
distinctive, the evidence supporting a finding that
arguably similar product packaging was not inherently
distinctive or a decision by the Board explaining why under
potentially similar circumstances arguably similar product
packaging was not inherently distinctive. Because that was
not done, the Examining Attorney missed an opportunity to
fully develop the record.
Serial No. 77727119
10
Product packaging may be inherently distinctive and
registrable on the Principal Register if its intrinsic
nature serves to identify a particular source. Wal-Mart
Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d
1065, 1068 (2000); Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 23 USPQ2d 1081, 1083 (1992). In other words,
the issue before us is whether the subject matter sought to
be registered can function independently of any words as a
trademark to identify and distinguish applicant’s pet food.
Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977). In determining
whether a design is arbitrary or distinctive, the Board
should consider the following factors:
1. Whether the subject matter sought to be
registered is a “common” basic shape or design;
2. Whether the subject matter sought to be
registered is unique or unusual in a particular field;
3. Whether the subject matter sought to be
registered is 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; or
Serial No. 77727119
11
4. Whether the subject matter sought to be
registered is capable of creating a commercial impression
distinct from the accompanying words.
Seabrook Foods, Inc. v. Bar-Well Foods Limited, 196 USPQ at
291. See also In re Chippendales USA Inc., 622 F3d 1346,
96 USPQ2d 1681, 1684 (Fed. Cir. 2010).
Although the Examining Attorney suggested the
description of the mark adopted by applicant, the Examining
Attorney focused his evidence and argument on the round
shape of the product packaging (e.g., “the applied for mark
is the round bowl-shaped pet food packaging”).15 The
subject matter sought to be registered is “a three-
dimensional configuration of packaging for pet food that
consists of a round bowl-shaped, inverted and lacquered pet
food container.” Thus, the Examining Attorney improperly
dissected the subject matter sought to be registered by
placing too much attention on the round bowl shape to the
exclusion of the other elements of the proposed mark,
particularly the inverted nature and lacquered finish.
Applicant’s product packaging at issue is a derivative
of the product packaging displayed in Registration No.
3220575 and as displayed in the photographs of that product

15 Examining Attorney’s Brief, p. 7.
Serial No. 77727119
12
packaging, shown above, displaying the inverted nature and
lacquered finish; the subject matter sought to be
registered is more than just a round shaped bowl with minor
refinements. The proposed mark engenders the commercial
impression of a serving platter and cover holding a gourmet
meal for a pet. This conclusion is corroborated by the
fact that none of the product packaging by competitors is
similar.
In applying the Seabrook test for inherent
distinctiveness, we are not persuaded that the Examining
Attorney has made a prima facie case that consumers would
not perceive and rely on the product packaging at issue as
an indication of source for applicant’s pet food.
Specifically, the evidence fails to show that the subject
matter sought to be registered is a common design, that it
is not an unusual container for pet food, that it is simply
a refinement of a well-known design or ornamentation, or
that the proposed mark fails to function as a mark without
accompanying words.
Decision: The refusal to register is reversed.