3M Company

Trademark Trial and Appeal Board

May 10, 2012

No. 77701928 (T.T.A.B. May. 10, 2012)

Hearing: Mailed:
January 24, 2012 May 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 3M Company
________

Serial No. 77701886
Serial No. 77701928
_______

Scott M. Oslick of Merchant & Gould PC for 3M Company.

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

Before Quinn, Grendel, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On March 30, 2009, 3M Company, applicant, applied to
register the two configuration marks shown below on the
Principal Register for goods identified as “hand-sanitizing
antiseptic with moisturizers” in International Class 5.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial Nos. 77701886 and 77701928
2

The mark appearing above-left (subject of application
Serial No. 77701886) does not claim color as a feature of
the mark; the mark appearing above-right (subject of
application Serial No. 77701828) is depicted in the colors
“peach and white” which applicant claims as a feature of
the proposed mark. Otherwise, the marks are the same and
the descriptions thereof, as amended, essentially are the
same.
The descriptions of the marks currently read as
follows in the respective application files:
The mark consists of a three dimensional configuration
as depicted in the drawing with claimed features drawn
in solid lines that can be generally described as a
wedge-shaped container with a curved top, a curved
front, a flat back, a flat bottom, concave sides, and
a three-dimensional, smaller wedge-shaped covering on
a circular background in the lower portion of the
container. The dotted lines represent indentations
and are not claimed as features of the mark.
[Application Serial No. 77701886]

and

The mark consists of a three dimensional configuration
as depicted in the drawing with claimed features drawn

Serial Nos. 77701886 and 77701928
3
in solid lines that can be generally described as a
wedge-shaped container with a curved top, a curved
front, a flat back, a flat bottom, concave sides, and
a three-dimensional wedge-shaped covering on a
circular background in the lower portion of the
container. The dotted lines represent indentations
and are not claimed as features of the mark. The
colors peach and white are claimed as features of the
mark. The top portion of the wedge-shaped container
and the three-dimensional, smaller wedge-shaped
covering on the circular background are in the color
white, and the bottom portion of the wedge-shaped
container is in the color peach.
[Application Serial No. 77701928]
Both applications are based on an allegation of first use
anywhere and in commerce on November 30, 1999, and contain
a claim that the mark has acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The two proposed marks are hereinafter collectively
referred to as the “dispenser configuration marks.”
The trademark examining attorney refused registration
under Section 2(e)(5) of the Trademark Act, 15 U.S.C. §
1052(e)(5), on the ground that applicant’s dispenser
configuration marks are functional designs for the
packaging of the goods. The examining attorney also
refused registration on the alternative ground that, if the
marks are not functional, they nonetheless consist of non-
distinctive configurations of packaging for the goods that
do not function as marks under Trademark Act Sections 1, 2,
and 45, 15 U.S.C. §§1051-1052 and 1127, and have not
Serial Nos. 77701886 and 77701928
4
acquired distinctiveness under Trademark Act Section 2(f),
15 U.S.C. §1052(f). Finally, the examining attorney also
refused registration based on applicant’s alleged failure
to provide acceptable descriptions of the marks, as
required by Trademark Rule 2.37.
When the refusals were made final, applicant
concurrently appealed and filed requests for
reconsideration. The examining attorney denied the
requests for reconsideration. Applicant and the examining
attorney then filed briefs, including applicant’s reply
briefs. In addition, applicant and the examining attorney
presented arguments at an oral hearing held before this
panel on January 24, 2012. Because the matter on appeal in
both applications is based upon common issues of law and
fact, and further because the evidence of record and briefs
are nearly identical, we will decide both appeals herein in
a single opinion.1
The Marks and the Goods
As to the dispenser configuration marks, there is no
dispute that they depict a configuration of a container for
the identified goods, i.e., dispensers for hand-sanitizing
antiseptic with moisturizers. The goods are sold in the

1 Unless otherwise noted, all references to the dates of
correspondence between applicant and the examining attorney
Serial Nos. 77701886 and 77701928
5
dispensers under the trademarks AVAGARD and 3M. They are,
according to applicant, “primarily intended for use in
critical care settings, such as for use in surgery,
emergency rooms, neonatal care, intensive care, cath[ether]
labs and other such settings.” Response to Office Action,
December 19, 2009.
Functionality
We first determine whether the proposed marks are
functional. A product or product packaging feature is
functional, and cannot serve as a trademark, if it is
essential to the use or purpose of the article or if it
affects the cost or quality of the article. Qualitex Co.
v. Jacobson Prods. Co., Inc., 514 U.S. 159, 34 USPQ2d 1161,
1163-1164 (1995) (quoting Inwood Labs., Inc. v. Ives Labs.,
Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). Functional
matter cannot receive trademark protection. At its core,
the functionality doctrine serves as a balance between
trademark and patent law. As the Supreme Court explained
in Qualitex:
The functionality doctrine prevents trademark law,
which seeks to promote competition by protecting a
firm’s reputation, from instead inhibiting legitimate
competition by allowing a producer to control a useful
product feature. It is the province of patent law,
not trademark law, to encourage invention by granting

during prosecution of these applications and evidence attached
thereto refer to application Serial No. 77368754.
Serial Nos. 77701886 and 77701928
6
inventors a monopoly over new product designs or
functions for a limited time, 35 U.S.C. §§154, 173,
after which competitors are free to use the
innovation. If a product’s functional features could
be used as trademarks, however, a monopoly over such
features could be obtained without regard to whether
they qualify as patents and could be extended forever
(because trademarks may be renewed in perpetuity).

34 USPQ2d at 1163.

In making our determination as to whether a proposed
mark is functional, the following four factors are
considered:
(1) the existence of a utility patent that discloses
the utilitarian advantages of the design sought to be
registered;

(2) advertising by the applicant that touts the
utilitarian advantages of the design;

(3) facts pertaining to the availability of
alternative designs; and

(4) facts pertaining to whether the design results
from a comparatively simple or inexpensive method of
manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (CCPA 1982). See also, In re Becton,
Dickinson and Co., ___ F.3d___, 102 USPQ2d 1372 (Fed. Cir.
2012); and Valu Engineering Inc. v. Rexnord Corp., 278 F.3d
1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002). Upon
consideration of these factors, our determination of
functionality is ultimately a question of fact, and depends
on the totality of the evidence presented in each
Serial Nos. 77701886 and 77701928
7
particular case. Valu Engineering, 278 F.3d at 1273, 61
USPQ2d 1424; In re Caterpillar Inc., 43 USPQ2d 1335, 1339
(TTAB 1997); see also, TMEP §1202.02(a)(iv)(8th Edition
2011).
In his brief, the examining attorney concentrates on
the first Morton-Norwich factor in asserting that
applicant’s marks comprise functional designs. While
apparently conceding that the other three factors favor a
finding of a non-utilitarian design, the examining attorney
believes that the utility patents outweigh those factors:
Although existence of a utility patent does not per se
establish functionality, it is the strongest Morton-
Norwich factor in this case which supports the Section
2(e)(5) refusal for which applicant has not
successfully rebutted. With respect to the second
Morton-Norwich factor, outside of the web shape of the
applied-for mark, applicant’s advertising does not
expressly tout utilitarian advantages associated with
the packaging nature of the applied-for mark. With
respect to Morton-Norwich factors three and four, the
fact that applicant has shown that the dispenser is
one of many alternative feasible designs which is more
expensive to manufacture bears little resolution on
the issue of functionality in light of U.S. Patent
Numbers 5,897,031 and 5,799,841 owned by applicant.

Brief, (unnumbered) p. 5.2
We disagree with the examining attorney’s
interpretation of and ultimate reliance on the utility

2 In all, applicant submitted copies of its two design patents
and two utility patents with its December 19, 2009 response to an
Office action. They are: Des. 383,631 (issued September 16,
1997); Des. 386,640 (issued November 25, 1997); 5,799,841 (issued
September 1, 1998); and 5,897,031 (issued April 27, 1999).
Serial Nos. 77701886 and 77701928
8
patents. Upon review of these patents, we do not find that
they disclose utilitarian advantages or features found in
applicant’s dispenser configuration marks. The particular
patent excerpts referenced by the examining attorney in his
brief provide a general description of the overall shape of
the dispenser’s reservoir; however, there is no explanation
or claims in the patents divulging any utilitarian purpose
for such design or configuration. Specifically, the
examining attorney relies on the language in the patents
regarding a “preferable geometry” for the dispensers, but
does not point to any further language in the patents
illustrating how this “preferable geometry” actually
provides a utilitarian advantage.
As to the nozzle feature found in both dispenser
configuration marks, the examining attorney correctly notes
that applicant’s utility patent 5,897,841 (“Drip Resistant
Nozzle for a Dispenser”) contains a description of the
nozzle area as including “...grasping surfaces that are
sized and shaped to be manually grasped...As described in
greater detail below, the knob can be turned to permit or
prohibit flow of product.” While this description clearly
indicates that the nozzle (or knob area) has been designed
to be “manually grasped,” the actual functional nature of
the nozzle is within the dispenser or nozzle assembly. The
Serial Nos. 77701886 and 77701928
9
mere fact that the nozzle may be handled is secondary to
the function that it performs, i.e., being able to be
turned so as to place the dispenser in an “open” or
“locked” position. The inner-workings of the nozzle are
shown in the applications’ drawing pages and thus cannot be
claimed as features of applicant’s proposed dispenser
configuration marks. Even if we were to allow for or find
some utilitarian advantage in the dispenser configuration
marks’ nozzle and that it is somehow easier to grasp and
turn, we could not find the entire mark to be functional
based on this feature by itself.
Accordingly, we are not persuaded that the existence
of applicant’s utility patents involving the dispenser and
its nozzle weighs in favor of finding the proposed
dispenser configuration marks as being functional.
We further acknowledge that applicant owns two design
patents for designs which we cannot say are identical in
shape to the proposed dispenser configuration marks, but
are nearly visually indistinguishable. Des. 383,631 is for
an “ornamental design for a reservoir assembly for a
product dispenser” and Des. 386,640 is for the “ornamental
design for a support and reservoir assembly for a product
dispenser.” The court in Morton-Norwich stated that when a
party owns a design patent, this “at least presumptively,
Serial Nos. 77701886 and 77701928
10
indicates that the design is not de jure functional,” and
thus registrable. In re Morton-Norwich Products, Inc., 213
USPQ at 11, footnote 3 (citations omitted). Accordingly,
applicant’s design patents are evidence of non-
functionality because they are recognition of the
ornamental features of the dispenser configuration marks.
As to the other Morton-Norwich factors, there is no
evidence that applicant touts any utilitarian advantages
associated with its dispenser configuration. Applicant has
also submitted evidence showing several examples of third-
party dispensers which the examining attorney concedes are
“feasible” alternatives. Finally, the examining attorney
has accepted applicant’s contention that the dispensers are
more expensive to manufacture.
Ultimately, based on all of the record evidence and
arguments in relation to the Morton-Norwich factors, we
find that the examining attorney has not met his burden in
establishing a prima facie case that the dispenser
configuration marks are functional and, thus, are not
registrable on that basis. While there is some evidence
that the shape of the dispenser’s nozzle in the proposed
marks may have some utilitarian value, it does not follow
that the entire mark is necessarily functional. Indeed,
our primary reviewing court very recently has instructed
Serial Nos. 77701886 and 77701928
11
that the “Morton-Norwich inquiry is to weigh the elements
of a mark against one another to develop an understanding
of whether the mark as a whole is essentially functional
and thus non-registrable. Whenever a proposed mark
includes both functional and non-functional features,...the
critical question is the degree of utility present in the
overall design of the mark.” In re Becton, Dickinson and
Co., 102 USPQ2d at 1376. Here, we find that the overall
design of applicant’s proposed dispenser configuration
marks is not dictated by utilitarian concerns.
Acquired Distinctiveness
We now address the examining attorney’s refusal to
accept applicant’s Section 2(f) acquired distinctiveness
showing for each mark. Here, applicant admits that the
dispenser configuration marks are not inherently
distinctive by seeking registration under Section 2(f). In
re MGA Entertainment, Inc., 84 USPQ2d 1743, 1747 (TTAB
2007) (application under § 2(f) is a concession that the
mark is not inherently distinctive). Thus, the issue is
not whether the proposed marks are inherently distinctive,
but whether the designs have acquired distinctiveness,
i.e., whether the relevant consumers view the
configurations as trademarks. And, on this issue, it is
applicant's burden to prove that the proposed marks have
Serial Nos. 77701886 and 77701928
12
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
In support of its argument that the dispenser
configuration marks have acquired distinctiveness,
applicant relies on, inter alia, a few copies of
advertisements for the goods that highlight the wedge-shape
of the dispensers and/or can be characterized as “look for”
advertising inasmuch as there is a tagline (“get the
wedge”) used that references the dispenser’s configuration.
Applicant also submitted a copy of a wedge-shaped (same
shape as reservoir in the dispenser configuration marks)
note pad that advertises applicant’s Avagard brand
“antiseptic with moisturizers.” Applicant also asserts
that the aforementioned advertisements have been placed in
“numerous industry journals” and applicant specifically has
identified six such journals; that the dispenser
configuration marks have been used in commerce for “over 10
years”; that it currently “holds more than 70% of the
market share within the waterless, brushless category of
hand sanitizing antiseptics with moisturizers, and more
than 50% of the overall market share of all types of
competitive products, including water-based brush
Serial Nos. 77701886 and 77701928
13
products”; and that its “packaging at issue was purposely
designed to be distinctive and serve to identify the source
of the goods.” In addition, applicant submitted 9 signed
affidavits containing the following, identical statement:
I use and/or purchase (circle one or both) hand-
cleaning and sanitizing products. I work or do not
work (circle one) as a medical or healthcare
professional.

I associate the wedge-shaped bottle/dispenser for hand
sanitizing antiseptic, depicted below with and without
color, with AVAGARD and/or 3M brands. This wedge-
shaped bottle/dispenser, both with and without color,
has become distinctive to me and I associate it to
identifying a single source for a hand-cleaning and
sanitizing product. I know of no other similar
bottle/dispenser for any other hand-cleaning or
sanitizing product.

[The marks depicted in the application drawing pages are
placed below each statement, followed by, “I verify that
the foregoing is true and correct” and the declarant’s
name, title, and signature.] All declarations were signed;
however, 4 of the 9 statements were incomplete inasmuch as
the declarant did not circle or indicate information
requested in the uniform statements, i.e., they did not
indicate if they “use and/or purchase” the product and
whether “work or do not work as a medical or healthcare
professional.”
We initially address the manner in which applicant
supported its claim that the dispenser configuration marks
Serial Nos. 77701886 and 77701928
14
have acquired distinctiveness. Specifically, applicant
makes several key factual assertions without any supporting
declarations or affidavits from a person who attests to
these facts based on personal knowledge or information
personally ascertained. For example, and as identified
above, applicant states that it has advertised in several
journals and that it possesses a certain percentage of
market share without any supporting affidavit or
declaration.
The Board generally takes a more permissive stance
with respect to the admissibility and probative value of
evidence in ex parte proceedings, and focuses instead on
the spirit and essence of the rules of evidence. See TBMP
§ 1208 (3d ed. 2011). However, when it comes to
advertising, sales or market presence, we have long stated
that it is the better practice to provide such evidence by
affidavit or declaration. See Id. In this proceeding,
applicant did not support the factual representations made
by its counsel concerning its advertising efforts and
market share with declarations or affidavits.3

3 In its reply brief, applicant refers to its December 19, 2009
response to an Office action as an “extensive declaration of
Applicant’s Assistant Chief Intellectual Property Counsel, James
F. Voegeli.” While the response to the Office action is signed
by Mr. Voegeli, it is not in the form of a declaration;
specifically, the response does not make clear that the
information or representations being made by “applicant” in the
Serial Nos. 77701886 and 77701928
15
Nevertheless, throughout the prosecution and in his brief,
the examining attorney did not object to the lack of
evidentiary support for applicant’s counsel’s factual
assertions. Moreover, there is no evidence contradicting
applicant’s factual assertions. Accordingly, and under
these circumstances, we decide to consider and accept this
information and applicant’s attorney’s factual
representations concerning applicant’s advertising efforts
and market share. See In re EBSCO Industries Inc., 41
USPQ2d 1917, 1923 n.5 (TTAB 1997). In the EBSCO Industries
decision, which also involved the issue of whether a
configuration mark has acquired distinctiveness, the Board
considered and accepted specific sales and advertising
figures as represented by applicant’s counsel and not
supported by affidavits or declarations, in light of the
examining attorney’s failure to object to or otherwise
rebut such representations.
Upon careful consideration of all of the submissions
by applicant, in addition to the arguments set forth on
appeal, we find that the record does not establish that the
dispenser configuration marks have acquired distinctiveness

response are based on Mr. Voegeli’s personal knowledge. Rather,
the factual representations in the response are being made by
applicant, not the individual authorized to sign the response on
behalf of applicant. Thus, the response to the Office action
cannot be construed as a declaration.
Serial Nos. 77701886 and 77701928
16
as identifying the source of the identified goods. There
is simply insufficient evidence in this regard; notably, we
have no evidence regarding the sales numbers for
applicant’s identified goods that are sold in the
containers which bear the same shape as the dispenser
configuration marks. Remarkably, there is no evidence
showing the number of dispensers sold or dollar figures for
such sales. Likewise, there is no evidence regarding
advertising figures and the degree of advertising efforts
made to associate applicant’s proposed dispenser
configuration marks with the identified goods. While we
have several examples of “look for” advertising and we
accept counsel’s statements that these advertisements were
placed in industry journals with a relevant and sizable
circulation, there is no evidence how many times or with
what regularity over certain years such advertisements were
placed in the journals. As to the “wedge-shaped” notepads,
we have no evidence indicating the circulation of such
notepads – the Board is left to guess if there were 10
notepads distributed to potential consumers or if there
were 25,000.
As to applicant’s market share and over 10 years of
use of the dispenser configuration marks, this information
is insufficient to establish a prima facie showing of
Serial Nos. 77701886 and 77701928
17
acquired distinctiveness. Specifically, applicant’s stated
market shares only reflect a certain degree of popularity
of applicant’s goods within the limited realm of the
medical scrub markets; however, the application’s
identification of goods is not so limited and covers “hand-
sanitizing antiseptic with moisturizers” in general. In
other words, the identification of goods is broadly worded
and covers hand-sanitizing antiseptics sold over-the-
counter and to the general public, whereas applicant’s
stated market shares are for a subset or niche market. We
have no information showing whether or not the medical
scrub hand-sanitizing antiseptic market is a large
subcategory of the broader market for hand-sanitizing
antiseptics.
Finally, as to the 9 declarations submitted by
applicant, these are insufficient by themselves or in
conjunction with the totality of the record, to demonstrate
that the proposed marks have acquired distinctiveness.
First, the number of declarations is not impressive and
presumably represents a very small sample of the relevant
consumers; further, there is no evidence to suggest the
declarations resulted from a random selection of possible
declarants. And, as already noted, 4 of the 9 statements
were incomplete because the declarants did not carefully
Serial Nos. 77701886 and 77701928
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complete their declarations by indicating if they “use
and/or purchase” the product and whether “work or do not
work as a medical or healthcare professional.” In sum,
while the declarations have been considered, their
probative value is minimal.
Upon review of all of the evidence and arguments in
this case, we affirm the examining attorney’s alternative
refusal that applicant has not met its burden in
establishing that its marks have acquired distinctiveness.
Description of the Marks Requirement
Finally, we turn to the examining attorney's
requirement for acceptable descriptions of the proposed
marks.
The examining attorney did not accept applicant’s
originally-submitted descriptions of its marks and, during
the prosecution, he suggested to applicant several possible
acceptable descriptions. Applicant declined to accept any
of the proposed descriptions, but amended more than once to
descriptions that were ultimately not accepted by the
examining attorney. The descriptions of the marks
currently read as recited at the beginning of this
decision.
Trademark Rule 2.37 provides that “a description of
the mark must be included if the mark is not in standard
Serial Nos. 77701886 and 77701928
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characters.” Section 808.01 of the TMEP further provides
guidelines for requiring a description of the mark if “the
mark is three-dimensional, or is a configuration of the
goods or packaging.” TMEP 808.02 further allows, “the
description should state clearly and accurately what the
mark comprises, and should not create a misleading
impression by either positive statement or omission. The
description should describe all significant aspects of the
mark, including both literal elements and design elements.
Insignificant features need not be included in a
description.” (emphasis in original).
With the above in mind and upon reviewing the
descriptions of the marks in the applications, we find that
they comply with Rule 2.37 and the corresponding guidelines
provided in the TMEP. While perhaps not as succinct as
possible, applicant’s descriptions of the proposed marks,
as amended, suffice for purposes of the requirement.
Moreover, we note that the examining attorney’s most recent
suggested descriptions of marks contain the inaccurate
statement that the marks depict “packaging for a dispenser
for hand-sanitizing antiseptics.”4

4 As previously noted, the configuration marks actually depict
dispensers for the identified goods; they may be characterized as
packaging for the identified goods but certainly not “packaging
for a dispenser.”

Serial Nos. 77701886 and 77701928
20
We find that applicant's descriptions of the marks, as
amended and currently reflected in the application, provide
accurate characterizations of the marks. In view of the
foregoing, the examining attorney's requirement for
acceptable descriptions of the marks is not well-taken and
the refusal to register the marks based thereon is
reversed.
Decision: We reverse the refusals to register the
asserted marks under Trademark Act Section 2(e)(5) on the
ground of functionality. We further reverse the examining
attorney’s refusals to register the marks based on improper
descriptions of the marks.
However, we find the marks have not acquired
distinctiveness and are not entitled to registration under
Section 2(f). We affirm the examining attorney’s refusals
to register on this ground.