Libby Glass, Inc.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75250499 (T.T.A.B. Sep. 28, 2000)

Paper No. 12
CEW
9/28/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Libby Glass, Inc.
________
Serial No. 75/250,499
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Gregg W. Emch of Emch, Schaffer, Schaub & Porcello Co.,
L.P.A. for Libby Glass, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Walters, Bottorff and McLeod, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Libby Glass, Inc. filed an application to register the
design shown below on the Principal Register as a trademark
for “beverage glassware.”1 In its application as originally
filed, applicant claimed that, as a result of substantially
exclusive and continuous use in commerce for the five years
preceding the filing of the application, the design has

1 Application Serial No. 75/250,499, filed March 3, 1997, in
International Class 21, based on use in commerce, alleging first
use and first use in commerce as early as 1989.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/250,499
2
become distinctive of applicant’s glassware and is
therefore registrable under the provisions of Section 2(f)
of the Trademark Act, 15 U.S.C. 1052(f). The application
record includes the statement that “[t]he mark consists of
a beverage container with side panels extending from a
pentagon-shaped base to a circular rim or lip.”
The Examining Attorney issued a final refusal to
register, under Sections 1, 2 and 45 of the Trademark Act,
15 U.S.C. 1051, 1052 and 1127, on the ground that the
design is a nondistinctive configuration of applicant’s
goods that does not function as a trademark, and applicant
has not established that the configuration has acquired
distinctiveness, under Section 2(f) of the Trademark Act.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Ser No. 75/250,499
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The Examining Attorney contends that applicant’s
configuration is not inherently distinctive and applicant
has not demonstrated that it has acquired distinctiveness
as a trademark. She argues that purchasers of glassware
are familiar with glassware products featuring multi-sided
bases and sides which lead up to round lips, so that such
purchasers are unlikely to view the configuration of
applicant’s glasses as anything other than one of the many
possible ornamental designs for glasses. In support of her
position, the Examining Attorney submitted photographs of
third-party glassware of various sizes and shapes, a number
of which feature polygonal bases and sides; and
advertisements from various catalogs and store circulars
showing that glassware is available in a variety of shapes
and sizes.
Applicant contends that the configuration sought to be
registered, although de facto functional in the sense that
applicant’s glassware is used to contain beverages, is not
de jure functional in the sense that it embodies a superior
design or one that competitors need to be able to copy in
order to compete successfully in the market for glassware.
Applicant further contends that the two declarations of
Jeffrey W. Joyce, applicant’s corporate marketing director,
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establish that the configuration has become distinctive of
applicant’s goods by virtue of extensive use and promotion.
The first declaration states that the “mark” is not
the subject of either a design patent or a utility patent;
that alternative designs which are equally efficient and
not more costly to produce are available to competitors;
that applicant has advertised its glassware, “including the
feature embodied in the proposed mark,” through catalogs, a
copy of one of which was attached as an exhibit to the
declaration; that applicant had spent more than $75,000 to
advertise and promote “the proposed mark”; and that the
declarant believes that “the proposed mark” has acquired
distinctiveness as a source indicator for the goods
identified in the application.
The second declaration from Mr. Joyce expands on his
previous declaration. He provides information about
applicant’s business activities, including the fact that
between 1989 and 1998, applicant sold almost nine hundred
thousand dozen glasses incorporating the “mark” for over
nine million dollars, with advertising expenditures for the
years 1996 through 1998 of approximately 19% of sales, or
$170,199, $307,901 and $364,018, respectively.
Several exhibits accompanied this declaration. An
introductory advertisement, Exhibit A, titled “Introducing
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Inverness DuraTuff Tumblers,” shows three glasses, two of
which are filled with beverages. The bases of the three
glasses appear to be polygonal, although one cannot discern
from the photo how many sides they have, or even if they
all have the same number of sides. The text of the
advertisement, however, includes the following sentence:
“Traditional clear panels make a simple, elegant statement,
extending from the pentagonal base to the circular rim.”
The declaration states that these advertisements were
provided to applicant’s salesmen and distributors, but the
exact number that were printed is not stated. Exhibit B,
another example of what applicant describes as “early
literature” used to promote applicant’s goods, shows three
glasses in a photo similar to the one in Exhibit A. The
heading is “PRESENTING… Inverness Tumblers.” The text
includes the following: “Inverness offers classic styling-
—a heavy, pentagonal shaped base that rises to a lip that’s
round and DuraTuff treated for built-in resistance to
thermal and mechanical shock."
Exhibits C through G are brochures, catalogs, order
forms, and so forth. The glasses in question are shown in
most of these documents, but there is no mention of the
features that applicant now claims as its distinctive
trademark. In fact, these exhibits show that applicant
Ser No. 75/250,499
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produces glassware in a variety of configurations, with bases
in many different shapes.
Exhibit H is a photo of a shipping carton for
applicant’s “INVERNESS” glassware. In addition to the word
mark, stock number and quantity indication, the box bears
an illustration of a glass, as seen from the side, although
the features claimed as the trademark are obscured.
By filing its application for registration with a
claim of distinctiveness under Section 2(f), applicant has
conceded that the design it seeks to register is not
inherently distinctive and, thus, not registrable on the
Principal Register without evidence of acquired
distinctiveness.2 Both applicant and the Examining Attorney
agree that the issue in this appeal is whether applicant’s
shape of its beverage glassware, i.e., the pentagonal base
extending into a round lip at the top, has acquired
distinctiveness as an indication of the source of
applicant’s goods.

2 Although applicant made a statement in an early response that
its alleged mark is inherently distinctive, applicant filed its
application with a Section 2(f) claim of acquired
distinctiveness. Further, the Supreme Court has held that
product configurations are never inherently distinctive in Wal-
Mart Stores Inc. v. Samara Brothers Inc., 120 S. Ct. 1339, 54
USPQ2d 1065 (2000). See also In re Ennco Displays Systems, Inc.,
2000 TTAB LEXIS 235, (Serial No. 74/439,613 et. al., April 4,
2000).
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The burden of establishing acquired distinctiveness is
on applicant. In re Automatic Radio Mfg. Co., 404 F.2d
1391, 160 USPQ 233 (CCPA 1969). Based on the record before
us, we conclude that applicant has not established that the
configuration sought to be registered has acquired
distinctiveness as an indication of the source of
applicant’s glassware.
Although it is clear from the record that applicant’s
Inverness line of beverage glassware has been actively
promoted and sales have been significant, there is very
little evidence from which we can conclude that prospective
glassware purchasers view the shape of glassware with
pentagonal bases and round lips as an indication of the
source of that glassware.
Neither Mr. Joyce’s conclusions regarding acquired
distinctiveness, which are, essentially, self–serving for
applicant, nor the exhibits to his declaration establish
that the configuration is, or is likely to be, perceived as
a trademark by prospective glassware purchasers. Exhibit C
does not show or mention the configuration of applicant’s
glassware. Although Exhibits D through G picture the
glassware in question, the exhibits contain nothing that
constitutes even an attempt to draw viewers’ attention to
the design as an indication of the source of the goods. As
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noted above, Exhibit H depicts a glass on the carton in
which applicant’s goods are shipped, but the features that
applicant contends constitute its trademark are not even
visible, much less promoted, as applicant’s trademark.
According to Mr. Joyce, the advertisements contained
in Exhibits A and B were distributed to applicant’s own
salesmen and distributors, rather than to prospective
purchasers, during the initial effort to market the goods.
There is no indication whether or to what extent these
advertisements were seen by prospective purchasers.
Further, even if these advertisements were distributed
beyond the introductory period, and to actual or potential
purchasers of the goods instead of to applicant’s own
salesmen and distributors, the ways in which the
advertisements refer to the features in question do not
indicate promotion, much less perception in the
marketplace, of these features as applicant’s trademark.
For example, Exhibit A touts the “[t]raditional, clear
panels” in its Inverness tumblers, stating that the panels
“make a simple, elegant statement, extending from the
pentagonal base to the circular rim.” Exhibit B describes
the same feature as “classic styling.” These two
statements are at best rather lyrical descriptions of the
shape of applicant’s Inverness tumblers. Characterizing
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its design as a traditional design with classic styling is
hardly promotion of the configuration as a trademark, nor
is it evidence that the configuration applicant seeks to
register is perceived in the marketplace as an indication
of the origin of beverage glassware.
In conclusion, applicant has presented insufficient
evidence from which to conclude that the non-inherently
distinctive configuration that is the subject of this
application has acquired distinctiveness as a source
identifier in connection with applicant’s beverage
glassware.
Decision: The refusal to register under Sections 1, 2
and 45 of the Act on the ground that the design is not
inherently distinctive and applicant has not established
acquired distinctiveness under Section 2(f) of the Act is
affirmed.
C. E. Walters
C. M. Bottorff
L. K. McLeod
Administrative Trademark Judges
Trademark Trial & Appeal Board
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