Book to Bed, Inc.

Trademark Trial and Appeal Board

Jun 21, 2013

No. 85262093 (T.T.A.B. Jun. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Book to Bed, Inc.
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Serial No. 85262093
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Roger N. Behle, Jr., Foley Bezek Behle & Curtis LLP for Book to Bed, Inc.

Mark Rademacher, Trademark Examining Attorney, Law Office 112 (Angela
Wilson, Managing Attorney).
_____

Before Kuhlke, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Applicant, Book to Bed, Inc., seeks to register the following as a trademark
on the Principal Register for “Children’s and infant’s apparel, namely, jumpers,
overall sleepwear, pajamas, rompers and one-piece garments; Nightgowns;
Pajamas; Sleepwear” in Class 25:

Serial No. 85262093

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The applied-for mark is described in the application as follows: 1
The mark consists of packaging for sleepwear that
consists of a transparent bag enclosing a book positioned
behind matching sleepwear so that the cover of the book
remains partially visible from the front of the packaging,
together with a ribbon positioned directly above the book
and sleepwear tying the neck of the bag. The matter in
dotted lines is not part of the mark and serves only to
show the position of the mark.
All features except for the bow and the book are shown in dotted lines which are
used only to show the position of the mark.
The examining attorney issued a final refusal to register the applied-for mark
pursuant to Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and
1127, on the ground that the “applied-for-mark consists of a nondistinctive product
design or product packaging.” After the refusal was made final applicant appealed.
Applicant and the examining attorney have filed briefs. For the reasons set forth
below, the refusal to register is affirmed.
Distinctiveness
It is well-established that registrable trade dress includes product packaging
and product design and that distinctiveness is a prerequisite for registration of a
trade dress under § 2 of the Trademark Act, 15 U.S.C. § 1052. Wal-Mart Stores Inc.
v. Samara Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1067 (2000).
Classification of trade dress as either product packaging or product design is
typically an important consideration. A product configuration or design can never

1 Application Serial No. 85262093 was filed on March 9, 2011, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and first use in
commerce at least as early as October 1, 2005.
Serial No. 85262093

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be inherently distinctive and proof of secondary meaning is necessary in order to
obtain a registration. On the other hand, trade dress that is deemed to be product
packaging may be inherently distinctive and therefore, registrable, without proof of
secondary meaning. Wal-Mart, 54 USPQ2d at 1069-1070.
Applicant’s applied-for trade dress is a book and bow, being part of a
sleepwear set, with the book being positioned behind the sleepwear such that part
of the book is visible, all of which is packaged in a transparent bag tied off with the
bow at the top. Applicant contends that its trade dress is directed to the packaging
of its product and constitutes the overall composite of the packaging.2 Specifically,
applicant contends that the key to its trade dress “lies in the positioning of the
goods within and relative to their packaging (i.e., the books are positioned directly
behind matching sleepwear so that the cover of the book remains partially visible
through the front of the transparent bag, and a distinctive ribbon tying the neck of
the bag is placed directly above the book and sleepwear).” (emphases original).3
The examining attorney counters that the book included as part of the
applied-for mark is more than just packaging as it is an object of the consumer’s
purchase. As such, this renders the trade dress more akin to a product design or to
nondistinctive features of a product design.4 In support of his position, the
examining attorney points to pages from applicant’s website which show that
applicant markets its product as “Pajama and Book Sets Designed from your

2 Applicant’s Appeal Brief p. 1.
3 Applicant’s Appeal Brief p. 8.
4 Examiner’s Appeal Brief p. 4.
Serial No. 85262093

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Favorite Bedtime Books.”5 Notably, the website advises customers that the apparel
is also sold without the book and only comes with a matching book if a gift set is
ordered. Given this condition of sale, customers who purchase the gift set desire to
include the book as part of their purchase. While applicant characterizes the book
as part of its packaging, the examining attorney correctly argues that the book is
more than just packaging; it is an object of what is offered to and purchased by
customers. This is a strong indication that applicant’s trade dress is more akin to a
feature of product design than product packaging. See In re Slokevage, 441 F.3d
957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006) (product design can consist of design
features incorporated into a product).
The Supreme Court has recognized that it may be necessary to draw difficult
lines between product-design and product-packaging trade dress observing that the
classic Coca-Cola bottle may constitute packaging for those consumers who drink
the beverage then discard the bottle, but may constitute the product itself for those
consumers who are bottle collectors, or part of the product itself for those consumers
who purchase Coke in the classic glass bottle, rather than a can, because they think
it more stylish to drink from the former. To the extent that there is any question as
to whether a trade dress is a product design or product packaging, the Supreme
Court advises courts to err on the side of caution classifying ambiguous trade dress
as product design, thereby requiring proof of secondary meaning. Wal-Mart, 54
USPQ2d at 1070. If we classify applicant’s applied-for trade dress as a product

5 See attachment Nos. 79-81 to April 6, 2012 final Office Action.
Serial No. 85262093

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design, the absence of any secondary meaning evidence in this case requires
affirmance of the refusal to register.6 However, even if we construe applicant’s
trade dress to constitute product packaging, the registrability of the trade dress is
doomed unless it is inherently distinctive.
Unlike product configurations which are never inherently distinctive, product
packaging may be inherently distinctive and registrable without proof of secondary
meaning. Alternatively, product packaging that is not inherently distinctive may be
registrable upon proof of secondary meaning. Applicant maintains that its trade
dress constitutes inherently distinctive product packaging. As it has not submitted
any secondary meaning evidence, if its trade dress is not inherently distinctive
packaging, the refusal to register must be affirmed. We therefore come to the
determinative issue presented in this case: whether the applied-for trade dress
constitutes inherently distinctive product packaging.
For purposes of evaluating the distinctiveness of marks under § 2, inherently
distinctive marks are marks whose intrinsic nature serves to identify their
particular source. Wal-Mart, 54 USPQ2d at 1067-68, citing Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992). Our primary reviewing
court and the Board look to Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d
1342, 196 USPQ 289 (CCPA 1977), to determine whether a design (exclusive of
product design, which can never be inherently distinctive) used in connection with

6 In the Office Action of June 16, 2011, the examining attorney advised applicant that
applicant may submit evidence that the applied-for mark has acquired distinctiveness
under Trademark Act § 2(f). No such evidence has been submitted.
Serial No. 85262093

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goods or services, is inherently distinctive. See In re Chippendales USA Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1689 (Fed. Cir. 2010); In re Procter & Gamble Co., 105
USPQ2d 1119, 1122 (TTAB 2012) and In re Right-On Co. Ltd., 87 USPQ2d 1152,
1155 (TTAB 2008).
Seabrook articulates the following factors for determining whether a design is
inherently distinctive: (1) whether the design is a common basic shape or design;
(2) whether the design is unique or unusual in the field in which it is used;
(3) whether the design is a mere refinement of a commonly-adopted and well-known
form of ornamentation for the particular class of goods viewed by the public as a
dress or ornamentation for the goods; or (4) whether the design is capable of
creating a commercial impression distinct from any accompanying matter, if
presented together with text or other matter. Seabrook, 196 USPQ at 291. Any one
of these factors, by itself, may be determinative as to whether the trade dress is
inherently distinctive. Chippendales, 96 USPQ2d at 1687.
Looking to the first three factors, the evidence shows that transparent plastic
wrap that is fastened at the top with a bow, including bows having a similar
appearance to the bow featured in applicant’s trade dress, are commonly used for
packaging gift sets:
● Creative Gift Packaging Florist & Gift Basket Suppliers
features clear cellophane bags for gifts and gift baskets7
● Google search results for “gift baskets bag” shows images
(with accompanying descriptive text) for clear cellophane

7 See Attachment Nos. 16-17 to April 6, 2012 final Office Action from http://www.creative
giftpackaging.com/Cellophane_bags_s/1.htm.
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Serial No. 85262093

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Because applicant’s product contains only two items, pajamas and a book, it
is logical that the book would be placed behind the sleepwear item, particularly
where the book is larger in size than the sleepwear item. Such positioning also
provides a firm support for the non-rigid sleepwear. Indeed, viewing applicant’s
product and those shown in the evidence, it appears that placement of a book in gift
sets is determined by the size of the book relative to the size of the accompanying
items; if the books are smaller in size they will be placed near the front of the
arranged items while larger-sized books are placed behind the other items.
Accordingly, the evidence shows that the relative locations of the book and the bow
featured in applicant’s applied-for mark are the ordinary locations that are used for
gift sets which are frequently wrapped in transparent plastic wrap or bags which
are cinched with a bow at the top. Thus consumers are familiar with such
arrangements and the placement of a book in a gift set with other items would not
serve a source distinguishing purpose.
In view of the foregoing evidence, packaging gift sets, including gift sets
containing children’s apparel and books, in transparent wrap with a bow at the top
as shown in the applied-for mark is not new. Although the third-party evidence
does not reveal the exact arrangement shown in applicant’s trade dress, this is not
conclusive. Even if no other party uses trade dress identical to the applied-for
mark, such circumstances do not render applicant’s trade dress inherently
distinctive. Where, as here, an applied-for mark is a mere refinement of commonly
adopted and well-known product and packaging arrangements, the applied-for
Serial No. 85262093

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mark is not inherently distinctive despite being unique in the marketplace. See In
re File, 48 USPQ2d 1363, 1367 (TTAB 1998) (novel tubular lights used in connection
with bowling alley services would be perceived by customers as “simply a
refinement of the commonplace decorative or ornamental lighting to which they
have become accustomed and would not be inherently regarded as a source
indicator.”); In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998)
(“while the designs [of packaging for electric lights for Christmas trees that]
applicant seeks to register may be unique in the sense that we have no evidence
that anyone else is using designs which are identical to them, they are nonetheless
not inherently distinctive”). Thus, under the analysis of the first three Seabrook
factors, applicant’s trade dress is nondistinctive.
The fourth Seabrook factor, whether applicant’s trade dress is capable of
creating a commercial impression distinct from any accompanying matter, also
points to the nondistinctiveness of the trade dress. In addition to incorporating a
common and ordinary arrangement in its trade dress, applicant’s trade dress is
always accompanied by applicant’s registered BOOKS TO BED and Design mark.18
Applicant readily acknowledges the source-identifying role of its registered word
and design mark which appears on its packaging and sleepwear arguing that use of
its BOOKS TO BED and Design mark “ . . . on both the packaging and the products
identify the source of the product as Applicant’s and distinguish the product from

18 See Applicant’s Appeal Brief p. 8. Although applicant’s registration for its BOOKS TO
BED and Design mark is not of record, whether or not the mark is actually registered does
not impact the registrability of applicant’s trade dress.
Serial No. 85262093

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other products . . . . ”19 We agree with applicant that its BOOKS TO BED and
Design mark is what serves to indicate source to consumers. We find it unlikely
that applicant’s applied-for mark, which features ordinary packaging and product
arrangement, is capable of creating a commercial impression that is distinct from
applicant’s admitted use of its BOOKS TO BED and Design mark on both the
packaging, namely, on the ribbon (bow) and the “bellyband” placed around the book
and sleepwear, and the product.20 Based upon the record presented, applicant’s
trade dress is not inherently distinctive.
In this case, we need not make an absolute determination whether
applicant’s trade dress comprises a product configuration, packaging, or some
“tertium quid” that is akin to packaging,21 because the particular classification does
not affect the outcome. If applicant’s trade dress is classified as a product
configuration or design, by operation of law, it cannot be considered inherently
distinctive and proof of secondary meaning is required. Likewise, if applicant’s
trade dress is classified as product packaging, the record establishes that it is not
inherently distinctive and proof of secondary meaning is required. Because
applicant has not submitted any evidence of secondary meaning, its trade dress is

19 See Applicant’s Appeal Brief p. 9.
20 See Applicant’s Appeal Brief p. 9.
21 In addressing the Two Pesos case in Wal-Mart, the Supreme Court explained that Two
Pesos is “inapposite to our holding here because the trade dress at issue, the décor of a
restaurant, seems to us not to constitute product design. It was either product packaging—
which, as we have discussed, normally is taken by the consumer to indicate origin—or else
some tertium quid that is akin to product packaging and has no bearing on the present
case.” (emphases original). Wal-Mart, 54 USPQ2d at1069.
Serial No. 85262093

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unregistrable as either a product configuration or as product packaging, and the
refusal of registration must be affirmed.

Decision: The refusal of registration pursuant to §§ 1, 2 and 45 of the Trademark
Act is affirmed.