MGA Entertainment, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 76603323 (T.T.A.B. Aug. 17, 2007)

Mailed: August 17, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MGA Entertainment, Inc.
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Serial No. 76603323
_______

Joel D. Voelzke, Law Office of Joel D. Voelzke for In re
MGA Entertainment, Inc.

Ellen F. Burns, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Hairston, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:
MGA Entertainment, Inc. seeks registration on the
Principal Register of the box design shown below,

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 76603323
2
with a claim of acquired distinctiveness under Section 2(f)
of the Trademark Act, for goods identified as:
trapezoidal cardboard boxes for toys, games and
playthings, namely, dolls, doll clothing, doll
accessories, playsets, children’s play cosmetics,
plush toys, toy action figures and accessories
therefore, action figure play environments,
action skill games, toy vehicles and playsets,
toy scooters, board games, card games; and
athletic protective pads, namely, arm pads, knee
pads, elbow pads and wrist pads for cycling,
skating, snowboarding and skateboarding in
International Class 16.

The design is described as “[t]he form of a trapezoidal
cardboard box.”
The trademark examining attorney has finally refused
registration under Sections 1, 2, and 45 of the Trademark
Act on the grounds that (1) the identified goods are not
goods in trade of applicant; and (2) the box design, as a
product design, is not inherently distinctive and applicant
has not established that the box design has acquired
distinctiveness as a trademark.1
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.

1 We note that during the prosecution of the application,
applicant amended the application to add goods in International
Class 28. The examining attorney made final a requirement that
applicant delete from the application the Class 28 goods.
Applicant did not appeal this requirement, and thus we consider
the Class 28 goods to be deleted from the application.
Ser No. 76603323
3
Before turning to the merits of the appeal, we must
discuss an evidentiary matter. Applicant, for the first
time with its appeal brief, submitted copies of three
third-party registrations in support of its position that
the box design is registrable. The examining attorney, in
her appeal brief, has objected to this evidence as
untimely. Trademark Rule 2.142(d) provides that the record
in an application should be complete prior to the filing of
an appeal. Additional evidence filed after appeal normally
will be given no consideration. TBMP §1207.01 (2d ed. rev.
2004). In view of the foregoing, the examining attorney’s
objection is sustained, and the third-party registrations
submitted with applicant’s appeal brief have not been
considered in reaching our determination. We hasten to add
that the third-party registrations, even if considered,
would not compel a different result in this case. In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001)[“Even if prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”].
We now turn to the refusal to register on the ground
that the “trapezoidal cardboard boxes for toys, games and
playthings, namely, dolls, doll clothing, doll accessories,
Ser No. 76603323
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playsets, children’s play cosmetics, plush toys, toy action
figures and accessories therefor, action figure play
environments, action skill games, toy vehicles and
playsets, toy scooters, board games, card games; and
athletic protective pads, namely, arm pads, knee pads,
elbow pads and wrist pads for cycling, skating,
snowboarding and skateboarding” are not goods in trade.
The examining attorney argues that such goods “are
incidental to Applicant’s business of selling toys and do
not have intended additional utility to the consumer as
boxes apart from conveying the goods at point of sale.”
(Brief at 5). The examining attorney maintains that there
is no evidence that applicant communicates to purchasers of
its puzzles and toy laptop computers, in particular, that
the boxes therefor have a use beyond holding the goods at
point of sale.2 Thus, the examining attorney argues that
purchasers would have no reason to view these boxes as
having additional functions.

2 We note that applicant’s identification of goods does not
specifically enumerate trapezoidal cardboard boxes for “puzzles”
or “toy laptop computers.” However, the examining attorney and
applicant have argued this case as if such goods are included in
the identification. Thus, we have considered the arguments of
the examining attorney and applicant in this regard.
Ser No. 76603323
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It is applicant’s position that the identified
trapezoidal cardboard boxes for toys, games and playthings
are goods in trade. Applicant maintains that its puzzle
boxes and toy laptop computer boxes, in particular, have
use beyond simply holding the goods at point of sale. With
respect to the puzzle boxes, applicant argues that “[t]he
cardboard box in which the puzzle is packaged
unquestionably serves the ongoing utilitarian purpose of a
storage container in which a consumer keeps the puzzle
pieces when not playing with the puzzle.” (Brief at 14).
With respect to the toy laptop computer boxes, applicant’s
senior paralegal, Bryan Armstrong, states in his
declaration:
The cardboard box that the “laptop” play unit
comes in has a plastic handle and a recessed and
contoured portion for receiving the laptop. The
case functions as an ongoing carrying case for
the laptop, like a laptop carrying case for a
real laptop computer, so that the child can carry
her “laptop” in a case just like mommy and daddy
carry their real laptop computers to work in a
carrying case. The case is therefore [part] of
the child’s ongoing play environment.

Applicant has submitted pictures of its puzzle box and toy
laptop computer box.
The Board has held that collateral products which
serve the purpose of promoting a party’s primary goods and
which have more than a mere incidental function in relation
Ser No. 76603323
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to the primary goods may constitute goods in trade. In re
Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point
pens which are used to promote applicant’s tools, but which
possess utilitarian function and purpose, and have been
sold to applicant’s franchised dealers and transported in
commerce under mark, constitute goods in trade]; and In re
United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB
1967) [calendar which is used as advertising device to
promote applicant’s plastic film, but which possesses, in
and of itself, a utilitarian function and purpose, and has
been regularly distributed in commerce for several years,
constitutes goods in trade].
On the other hand, in Ex parte Bank of America
National Trust and Savings Association, 118 USPQ 165
(Comm’r Pats. 1958), it was held that a mark was not
registrable for bank passbooks, checks and other printed
forms, where such materials were used only as necessary
tools in the performance of banking services, and the
applicant was not engaged in printing or selling forms as
commodities in trade. Further, in In re Douglas Aircraft
Co., Inc., 123 USPQ 272 (TTAB 1959), the Board held that
pamphlets, booklets, brochures, bulletins, and letterheads
which serve only to advertise, explain and publicize the
goods in which an applicant deals do not constitute goods
Ser No. 76603323
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of such applicant. In Paramount Pictures Corp. v. White,
31 USPQ2d 1768 (TTAB 1994), the Board found that an
applicant’s purported game that was not clearly labeled as
a game and consisted merely of three photocopied pages,
stapled together without any packaging, served only to
promote applicant’s band and other products, and was not a
bona fide game but rather an advertising flier for
applicant’s band. The Board also noted that there was no
real substance or entertainment value to the purported
game, that the flier/game had been distributed primarily as
a give-away, and the record showed only one advertisement
which made reference to a game.
We note that there is no evidence that applicant is a
manufacturer of boxes or that applicant is engaged in
selling boxes as commodities in trade. With respect to the
puzzle boxes, in particular, we are not persuaded by
applicant’s argument that because the puzzle boxes may be
used to store the puzzle pieces when not being used, such
boxes have additional utility and thus constitute goods in
trade. It is obvious that because of the loose nature of
puzzle pieces, they must be held within some type of point
of sale container. It only makes sense that consumers
would store the puzzles pieces in the original container
when the puzzles pieces are not being used. Any number of
Ser No. 76603323
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products may be stored by consumers in their original boxes
or packaging when not being used (e.g., shoes may be stored
in their original cardboard boxes, coffee beans may be
stored in their original bags, and DVDs may be stored in
their original plastic boxes). However, the mere fact that
original boxes or packaging may be used to store products
does not infuse such boxes or packaging with additional
utility such that they constitute goods in trade. Because
many products are stored in the containers in which they
are sold, consumers are likely to regard the puzzle boxes
as nothing more than point of sale containers, as opposed
to separate goods in trade.
Insofar as the toy laptop computer boxes are
concerned, there is no indication that such boxes are
labeled as carrying cases for the toy laptop computers.
Moreover, there is no evidence that applicant advertises or
promotes the toy laptop computer boxes as carrying cases
for the toy laptop computers. In addition, we note that
there is no evidence that children actually use the toy
laptop computer boxes in the manner argued by applicant,
that is, as carrying cases and as part of the ongoing play
environment. We hasten to add that, even if there were
evidence that children actually used the boxes in this
manner, we would not necessarily be persuaded by this
Ser No. 76603323
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evidence that the boxes have additional utility and thus
constitute goods in trade. It is common knowledge that
packaging materials may be used as toys by children and
thus many such materials, such as plastic bags, have
warnings that they are not toys to be used by children. In
short, we are not convinced on this record that consumers
recognize the toy laptop computer boxes as carrying cases
and part of the ongoing play environment. Rather, we
believe consumers would view such boxes as nothing more
than point of sale containers for applicant’s toy laptop
computers. In view of the foregoing, we are not persuaded
that the toy laptop computer boxes have additional utility
such that they constitute goods in trade.
In sum, the goods in this case, trapezoidal boxes for
toys, games and playthings, are unlike the ball point pens
and calendars in Snap-On Tools and United Merchants &
Manufacturers, Inc., respectively. We agree with the
examining attorney that such goods are incidental to
applicant’s primary goods, namely, toys, games and
playthings, and are not goods in trade of applicant.
Accordingly, the refusal on the ground that the identified
goods do not constitute goods in trade is affirmed.
While we find that no trademark rights for such goods
have been created, in order to render a complete decision
Ser No. 76603323
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herein, we will consider the refusal that the box design is
not inherently distinctive and the Section 2(f) evidence
applicant has presented is insufficient to establish
acquired distinctiveness. For this portion of our
discussion we will assume, arguendo, that the identified
trapezoidal cardboard boxes for toys, games and playthings
are, in fact, goods in trade.
At the outset, we note that there is no issue that the
box design is not distinctive, for two reasons. First,
while mere trade dress in the nature of product packaging
can be inherently distinctive, trade dress in the nature of
a product configuration cannot be, and because applicant
claims the box is a good in trade, i.e., a product, rather
than mere packaging, its design is registrable, if at all,
only on a showing of acquired distinctiveness. See Wal-
Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,
54 USPQ2d 1065 (2000). Second, by seeking registration
under Section 2(f), applicant has conceded lack of inherent
distinctiveness and must prove acquired distinctiveness.
The burden of proving a prima facie case of acquired
distinctiveness in an ex parte proceeding rests with
applicant. Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd.,
840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). To
establish acquired distinctiveness, applicant must show
Ser No. 76603323
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that the primary significance of the product configuration
in the minds of consumers is not the product but the
producer. Acquired distinctiveness may be shown by direct
and/or circumstantial evidence. Direct evidence includes
actual testimony, declarations or surveys of consumers as
to their state of mind. Circumstantial evidence, on the
other hand, is evidence from which consumer association
might be inferred, such as years of use, extensive amount
of sales and advertising, and any similar evidence showing
wide exposure of the mark to consumers. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
Sections 15:30, 15:61, 15:66 and 15:70 (4th ed. 2006).
In support of its Section 2(f) claim, applicant
submitted the declaration of Christopher Byrne, an
independent toy industry consultant, who states as follows:
In my initial product review of the BRATZ® dolls,
among the details related to the product, I
noticed the unique trapezoidal shape packaging
that I described at the time as “beautiful.”
…

It is my belief that when it was introduced, the
trapezoidal packaging was a unique innovation in
the toy industry in general and the fashion doll
category in particular.

Through the years, I have continued to notice
that MGA has consistently marketed its BRATZ®
related product in trapezoidal packaging. In my
opinion, I believe MGA’s trapezoidal packaging is
unique and has come to be associated by consumers
and retailers as indicating MGA’s products and
Ser No. 76603323
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specifically the BRATZ® line of fashion dolls and
associated products. The conclusion is based
upon both my own personal reaction to the
trapezoidal packaging over the course of several
years, my in-depth knowledge of toy packaging, my
knowledge and ongoing review of products and
discussion with consumers and retailers in the
industry.

Applicant also submitted the declaration of Julie
Chomo, its vice-president of nationwide sales. Ms. Chomo
states that at the time of her declaration (July 2005),
applicant had made substantially exclusive and continuous
use of the “trapezoidal packaging” within the toy industry
for more than four years; that applicant, in association
with national retailers such as Target, Kmart and Toys “R”
Us, places advertisements for its BRATZ products in
newspapers throughout the United States; that these
advertisements reach millions of consumers; that since the
introduction of BRATZ dolls in 2001, applicant has sold
approximately 85 million dolls in the United States alone,
totaling more than $1 billion in retail sales. Finally,
Ms. Chomo states her belief that:
MGA’s tremendous success with its BRATZ® brand,
combined with MGA’s continued efforts to
advertise its line of BRATZ® dolls and
accessories in conjunction with its trapezoidal
shaped packaging, has created a strong visual
impression in the minds of consumers, such that
when consumers see the trapezoidal packaging in
advertising and on store shelves they immediately
Ser No. 76603323
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connect the packaging with the BRATZ® line of
dolls and related products.

Accompanying the Chomo declaration are photographs of
several newspaper advertisements that feature
applicant’s BRATZ dolls.
Finally, applicant argues that “the PTO appears to
have a well established practice of allowing registrations
for marks that consist of the configuration of packaging.”
(Response to Office Action, 9/8/05). With this response,
applicant submitted copies of three third-party
registrations.
It is the examining attorney’s position that acquired
distinctiveness has not been proven. First, the examining
attorney maintains that applicant is seeking to register as
its mark a product configuration which is not an unusual or
uncommon shape, and therefore the burden of proof for
acquired distinctiveness is a heavy one. In support of her
position in this regard, the examining attorney made of
record four Internet printouts. One of the printouts is
the homepage of a company named “Koolprint” which sells
many types of boxes, including a “Trapezoid Box.” Another
printout shows a brand of chocolates in a trapezoid-shaped
package; and the two remaining printouts provide
instructions for designing/making a trapezoid box.
Ser No. 76603323
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Second, the examining attorney contends that
applicant’s evidence in support of the Section 2(f) claim
is insufficient because such evidence speaks to the
acquired distinctiveness of the box design as it relates to
applicant’s primary goods, i.e., toys, games and
playthings, and not to the acquired distinctiveness of the
box design as it relates to the identified goods, i.e.,
trapezoidal cardboard boxes for toys, games and playthings.
After careful review of the evidence of record, we
agree with the examining attorney that applicant’s evidence
of acquired distinctiveness is not sufficient to permit
registration of the box design as a mark for trapezoidal
cardboard boxes for toys, games and playthings.
The examining attorney is correct that the applicant’s
burden is heavier in this case because applicant seeks
registration of the box design as a product configuration.
In re Ennco Displays Systems Inc., 56 USPQ2d 1279 (TTAB
2000) [product configurations face a heavy burden to
establish acquired distinctiveness]. See also Yamaha,
supra, 6 USPQ2d at 1008 [evidence required to show acquired
distinctiveness is directly proportional to the degree of
non-distinctiveness of the mark at issue]. Further, with
respect to applicant’s contention that the Office has
allowed other registrations to issue for marks that consist
Ser No. 76603323
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of product configurations, as we have indicated, it is
settled that we are not bound by the decisions made by
examining attorneys in previous cases. See Nett Designs,
supra.
The central problem, however, with applicant’s
evidence is that both declarants describe the box design as
product packaging rather than as a product configuration
and speak of the acquired distinctiveness of the box design
as it relates to applicant’s primary goods, i.e., toys,
games and playthings, rather than the acquired
distinctiveness of the box design as it relates to the
identified goods, i.e., trapezoidal cardboard boxes for
toys, games and playthings. In particular, Mr. Byrne
states in his declaration that “MGA’s trapezoidal packaging
is unique and has come to be associated by consumers and
retailers as indicating MGA’s products and specifically the
BRATZ® line of fashion dolls and associated products”.
Similarly, Ms. Chomo states in her declaration that “when
consumers see the trapezoidal packaging in advertising and
on store shelves they immediately connect the packaging
with the BRATZ® line of dolls and related products.”
(emphasis added in each instance). Both declarants speak
of consumers/retailers associating the box design with
applicant’s primary goods, i.e., the BRATZ line of dolls.
Ser No. 76603323
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Neither declarant speaks of consumers/retailers associating
the box design with the identified goods, namely,
trapezoidal boxes for toys, games and playthings. Thus,
the declarations are not probative of whether the box
design has come to be associated with trapezoidal boxes for
toys, games and playthings.
Finally, while we acknowledge that applicant’s sales
of BRATZ dolls are impressive, this evidence speaks to the
success of the dolls themselves (or at most to the acquired
distinctiveness of the box design as it relates to the
dolls themselves). Again, such evidence is not probative
of whether the box design has acquired distinctiveness with
respect to the trapezoidal boxes in which the dolls are
packaged.
In view of the foregoing, we find that applicant’s
showing is insufficient to establish acquired
distinctiveness of the box design for the identified goods,
i.e., trapezoidal boxes for toys, games and playthings.
Decision: The refusal to register applicant’s box
design on the ground that the identified goods do not
constitute goods in trade is affirmed. If such goods do
constitute goods in trade, the refusal to register the box
design on the ground that, as a product design, it is not
Ser No. 76603323
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inherently distinctive and has not acquired distinctiveness
is also affirmed.