Optiva Corp.

Trademark Trial and Appeal Board

Apr 5, 2005

No. 76143014 (T.T.A.B. Apr. 5, 2005)

Mailed:
April 5, 2005
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Optiva Corporation
________

Serial No. 76143014
_______

Clark A. Puntigam of Jensen & Puntigam, P.S., for Optiva
Corporation.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______

Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Optiva Corporation, seeks registration on the Principal
Register of the design shown below:

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76143014
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for goods identified in the application as “toothbrushes” in
International Class 21.1 The application includes the
following statement: “[t]he mark consists of a circular
whirlpool design, with a plurality of light and dark
sections, indicating separate lines.” Hereinafter, we shall
refer to the proposed mark as the design or the whirlpool
design.
The application is now before the Board on appeal from
the final refusal of the Trademark Examining Attorney to
register this design based upon the ground that, as shown on
the specimen of record, the design does not function as a
trademark under Sections 1, 2 and 45 of the Trademark Act,
15 U.S.C. Sections 1051, 1052 and 1127, and based upon
applicant’s failure to comply with the requirement for a
substitute specimen showing use of the mark as it appears on
the drawing. 37 C.F.R. §2.51.
Applicant and the Trademark Examining Attorney
submitted briefs.2 Applicant did not request an oral
hearing.
We affirm the refusals to register.

1 Optiva Corporation filed application Serial No. 76143014 on
October 10, 2000 based upon applicant’s allegation of first use in
commerce at least as early as December 7, 1992.
2 We accept the appeal brief of the Trademark Examining
Attorney as timely filed because it appears that she did not
receive timely notice of the deadline for her brief. 37 C.F.R
§2.142(b)(1); and TBMP §1203.02(b)(2d ed. Rev. 2004).
Serial No. 76143014
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The original specimen of record is a packaging box for
an electric toothbrush, of which we have reproduced the top
and front portions:

Serial No. 76143014
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The Refusal under Sections 1, 2 and 45
The Trademark Examining Attorney has taken the position
that, as it appears on the packaging, applicant’s whirlpool
design does not function as a trademark:
[The whirlpool design] appears on the
specimens as background to a picture of a
large toothbrush head with droplets of water
scattering around it, along with a picture of
the whole toothbrush and stand. … [T]he
whirlpool design is simply an ornamental
background. It does not function as a
source-identifier for the applicant’s goods
because the design is not set apart or
featured in a way so that it stands out from
the package or is noticed separate and apart
from its function as a background design for
the toothbrush head and toothbrush with
stand.

Trademark Examining Attorney’s final refusal of October 6,
2003, pp. 1 - 2.
By contrast, applicant argues that its design – even if
it is considered to be ornamental – is far more than mere
background. Applicant takes the position that it is
registrable because it is “uncommon,” “arbitrary,”
“complex,” “fanciful” and “distinctive.”
On the other hand, the Trademark Examining Attorney has
properly raised a question about whether this “complex”
design, as it appears on the specimens of record (the
original or the substitute filed during prosecution of the
application), will strike the prospective consumer as a
source indicator. In arguing that it will not, the
Serial No. 76143014
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Trademark Examining Attorney has relied on reported
decisions dealing with issues of decorative trade dress.
See e.g., In re J. Kinderman & Sons Inc., 46 USPQ2d 1253
(TTAB 1998); In re F. C. F., Inc., 30 USPQ2d 1825 (TTAB 1994);
and In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987).
In any use-based application seeking registration of a
design utilized as part of trade dress in the nature of
product packaging, the Trademark Examining Attorney must
determine (based upon the specimens of record) whether the
design is eligible for registration as a trademark.
Specifically, the Trademark Examining Attorney must
determine whether the design is inherently distinctive or,
when necessary, whether it has acquired distinctiveness. In
this case, applicant does not claim that its design has
acquired distinctiveness and it is, therefore, necessarily
relying on a claim that it is inherently distinctive. When
considering this claim in the instant case, the Trademark
Examining Attorney properly referred to the specimens of use
to discover how applicant actually uses the whirlpool design
within the context of its overall package design. See In re
Bose Corp., 546 F.2d 893, 192 USPQ 213 (CCPA 1976); In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992); In re Scientific
Methods, Inc., 201 USPQ 917 (1979). The Trademark Examining
Attorney also properly assessed the likely impact of the
Serial No. 76143014
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design on the potential consumer. For trade dress in the
nature of product packaging to be registered, there must be
a logical basis for the consumer to draw an association
between the design and the product – an association that
causes consumers to recognize the design as a source
indicator for the goods.
The Trademark Examining Attorney contends that
applicant’s overall trade dress relegates the whirlpool
design to nothing more than a background design. Given the
placement of the design on the packaging, she takes the
position that it will not create strong and distinct visual
impressions in the mind of a potential consumer so as to
allow the consumer to distinguish applicant’s goods from
similar goods of others. The Trademark Examining Attorney
also contends that the placement of the pictorial image(s)
of the toothbrush(es) and the flecks of water in the
foreground further minimize the ability of this design to
create a distinct commercial impression.
The Trademark Examining Attorney also takes the
position that the design would not be perceived as a mark
because the entire design is not shown intact on a single
surface of the packaging. As seen on the first page of this
opinion, the drawing depicts the mark as a rectangular
portion of the whirlpool design, while the specimen on the
Serial No. 76143014
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third page shows the design is broken up into two disjointed
rectangular surfaces, with a small portion on the top of the
package, and a larger portion on the front of the box. The
top portion of the design is separated from the balance by a
grey band having textual matter, including prominently
thereon, the word “SONICARE.”
We note that applicant submitted a substitute specimen
that varies from the original specimen, but that, according
to the Trademark Examining Attorney, suffers the same lack
of inherent distinctiveness.

A merchant or manufacturer who merely uses a background
graphic on packaging does not necessarily transform the
graphic into a trademark for the packaged product. While
applicant may have intended its design to function as a mark
for its toothbrushes, it is also true that:
“… not everything that a party adopts and
uses with the intent that it function as a
trademark necessarily achieves this goal or
Serial No. 76143014
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is legally capable of doing so and not
everything that is recognized or associated
with a party is necessarily a registrable
trademark.”

In re Port-A-Hut, Inc., 183 USPQ 680, 682 (TTAB 1974). To
be an inherently distinctive aspect of trade dress, a design
should “come out into the spotlight of real trademark
significance” and ‘hit the buyer in the eye’….” See 1 J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition
§7:28 (4th ed. 2000). Stated differently, to be found
inherently distinctive, the design feature should be “ … so
unique, unusual or unexpected in this market that one can
assume without proof that it will automatically be perceived
by customers as an indicator of origin – a trademark.” Id.
§8:13. We find that applicant’s design fails to emerge out
of the background of the specimens and hit the prospective
buyer in the eye.
This Board has had occasion in
the past to review product packaging
trade dress where each applicant
claimed that its proposed mark was
more than just a background design.
The Trademark Examining Attorney
argued at length in her brief about

Serial No. 76143014
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one such case, wherein a package for cosmetics included a
rose design as an ornamental or decorative background. In
that case the Board held:
[A]pplicant’s rose design is not utilized in
an inherently distinct manner on the
specimens of record. Instead, such design is
employed on the packaging for its goods in a
merely ornamental or decorative way, forming
simply a background for the display of
applicant’s “CLARINS” within an oval mark.
Applicant’s rose design, we observe, covers
the entire front and left side of the boxes
for its goods, with a similar, but slightly
different, rose pattern appearing on the
remainder thereof. As so used, purchasers
and prospective customers for applicant’s
goods would be unlikely to regard applicant’s
rose design as identifying and distinguishing
its cosmetics and indicating their source.

In re F. C. F., Inc. supra, at 1827. The Trademark Examining
Attorney argues that the F. C. F. case is most instructive for
the instant case “where the whirlpool design functions as a
background for the term SONICARE and the toothbrushes and
flecks of water.” Like the rose design in F. C. F., she
argues that applicant’s proposed mark consists of nothing
more than an ornamental background design that fails to
function as a trademark. We agree.
In another case involving a
number of related applications,
the colored images on the rear
panel of four different containers
f h d l h ld

Serial No. 76143014
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for hand tools were held
unregistrable as merely
ornamental, and without acquired
distinctiveness. In re Petersen
Mfg. Co., 2 USPQ2d 2032 (TTAB
1987).

Related to the question discussed above of how the
design is used in applicant’s trade dress, is the question
of how consumers are likely to perceive the design.
In response to applicant’s argument that consumers will
be able to recognize the whirlpool design notwithstanding
that it is overlaid or bordered with other images and words,
the Trademark Examining Attorney contends:
While the concept that the background is
separable from the toothbrush is possible,
the likelihood of it happening is not. A
consumer cannot be expected to parse a
package design to determine the trademark. A
trademark that functions as a source-
identifier is not one that needs to be
scrutinized by the consumer.

When one looks at the original and substitute
specimens, it is possible to identify distinctly different
levels of imagery. In the center of the pictorial portion
of each package is a toothbrush head. In the substitute
specimen (p. 7 supra), the toothbrush head is vertical and
static, while in the original specimen (p. 3 supra), it is
horizontal and noticeably vibrating (e.g., the tips of the
Serial No. 76143014
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bristles appear somewhat blurry and flecks of water are
being sprayed from the moving toothbrush head). Also in the
original specimen is a second image of the entire automatic,
rechargeable toothbrush, shown in relatively close proximity
to its base recharging unit. Given the scale of this
toothbrush (i.e., significantly smaller than the toothbrush
head depicted directly above it), it might well appear to be
located in a second plane of the composite imagery at an
intermediate distance, but curiously, still in front of the
background whirlpool design associated with the larger,
horizontal and vibrating toothbrush head in the foreground.
The interplay of the various visual elements, including
the whirlpool design, as well as certain wording on
applicant’s package, influences the way in which consumers
are likely to perceive the design. We note that applicant’s
packaging refers to its product as “the sonic toothbrush”
and touts its sonic wave technology. In addition to the
scrubbing action created by contact between the teeth/gums
and the moving bristle tips of the toothbrush, applicant
claims that the ultrahigh-speed motion of the bristles
creates acoustic pressure that results in remote sonic
cleansing of the teeth and massaging action for the
Serial No. 76143014
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gums -- “31,000 gentle brush strokes per
minute create sonic waves.” Despite
applicant’s description of the applied-for-
matter as being a whirlpool design, given
the nature of the goods, the dynamic
interplay of the visual elements on the
packaging, and the wording which touts the
sonic wave action of the product, we find
that the whirlpool design shown on

Imagery on original
specimens
applicant’s packaging, if consumers actually cogitate about
it, will be viewed as a visual representation of sonic
waves.
In one published decision that similarly involved a
visual element of trade dress that
constituted a suggestive evocation of the
product, the designs of containers for
holiday lights that resembled wrapped gifts
were held not to be inherently distinctive.
See In re J. Kinderman & Sons Inc., 46
USPQ2d 1253 (TTAB 1998).3

In discussing trade dress issues, the Supreme Court has
observed that there will clearly be cases “where it is not

3 In the J. Kinderman case, the highly suggestive relationship
between packaging in the form of wrapped gifts used for holiday
lights diminished the likelihood that prospective consumers would
immediately rely upon this gift box design to differentiate J.
Kinderman’s holiday lights from the lights of its competitors.
Serial No. 76143014
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reasonable to assume consumer predisposition to take …
packaging as indication of source.” Wal-Mart Stores, Inc.
v. Samara Brothers, Inc., 120 S.Ct. 1339, 1344, 146 L.Ed.2d
182, 190, 54 USPQ2d 1065, 1068 (2000). This is especially
true where, as in this case, the element of the trade dress
is highly suggestive of the product or an attribute thereof.
Applicant argues, in essence, that its design is not
suggestive but is unusual relative to toothbrushes - “unlike
anything used by applicant’s competitors on similar
products” - that it is “arbitrary,” “fanciful” and
“distinctive.” However, as we have discussed, the interplay
of the words and images on applicant's package make it most
likely that its design – if consumers even cogitate over its
significance instead of glossing over it as mere background
ornamentation – will be perceived as a highly suggestive
representation of the touted sonic waves.
The specimen refusal

We turn then to the second basis for refusal to
register in this case. The Trademark Examining Attorney has
taken the position, in the alternative, that even if the
matter shown in the drawing should be found to function as a
mark, applicant failed to provide a specimen – either the
original or the substitute – showing use of the design as it
appears on the drawing. Accordingly, the Trademark
Serial No. 76143014
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Examining Attorney has refused registration based upon
applicant’s failure to comply with the requirement to
provide a proper specimen.
As a preliminary matter, we note that the differences
between the original colored artwork on the packaging and
the black-and-white drawing create such different commercial
impressions that this alone would support the requirement
for a substitute specimen. In this regard, we agree with
the assessment of the original Trademark Examining Attorney,
who explained in the Office action of March 23, 2001, that
“the drawing displays the mark as a circular, whirlpool-like
design with numerous sections of white denoting separate
lines. However, this differs from the display of the mark
on the specimen, where it appears as almost a solid
background design with no clear designation of the circular
pattern evidenced in the drawing ….”

Black-and-white
drawing
Color artwork used
in design of specimens
Serial No. 76143014
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Applicant argued in its response of September 24, 2001,
that:
“[t]he same camera-ready artwork used for the
display on the container was used to prepare
the drawing. Enclosed is a copy of that
artwork [right image, supra] for the
examiner’s convenience. It is logical that
the specimen and the drawing would agree,
since they were made from the same source.
In fact, they do agree. The same swirling
whirlpool lines are present in both the
specimen and the drawing as indicated by the
pattern of and dark lines and regions.
Considerable care was taken to ensure
correlation between the specimen and the
drawing.”

This application was filed prior to November 2, 2003,
the date on which the Office began accepting color drawings.
Prior to that date, grey-tones were not allowed, and if
applicant had wanted to show color in a special form
drawing, it was done by use of lining patterns. Previous
Trademark Rule 2.52(b) and (e). This problem would be
solved by the current ability of the Office to accept a
color drawing. 37 C.F.R. §2.52(b)(1).
Yet, we note that the current Trademark Examining
Attorney has not explicitly taken the position that the
image depicted in the black-and-white drawing creates a
different commercial impression than the black-and-blue
imagery shown on the specimens of record. This difference
in look-and-feel is not even mentioned among the critical
Serial No. 76143014
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differences discussed by the current Trademark Examining
Attorney in her appeal brief:
The drawing filed with the application shows
the mark as a complete whirlpool design,
contained within a rectangle. However, this
differs from the specimens, where it appears
on two sections of the box for the
toothbrushes. Three-quarters of the
background design appears on the front of the
box, separated from the top one-quarter of
the design by a gray band with textual
matter, including the term ‘SONICARE.’ The
whirlpool design appears to be a decorative
background for the textual matter. Both
portions of the background whirlpool design
have toothbrushes and flecks of water
superimposed over the image. The drawing of
the whirlpool design does not contain any
additional elements, such as the toothbrushes
or flecks of water. Simply put, there are
significant differences between the two
renditions of the mark. First, the whirlpool
design is bisected by the textual term
‘SONICARE’ and the gray banner. Second, the
whirlpool design appears in two sections on
two different parts of the product packaging.
Third, the whirlpool design has additional
elements superimposed on it that cannot be
separated visually from the underlying
design. These differences serve to render
the specimen unacceptable. An amendment to
the drawing to add the additional elements
would be an impermissible alteration of the
original drawing. 37 C.F.R. §2.72(b); TMEP
§§807.14, 807.14(a) and 807.14(a)(i).

Again, applicant argues that the Trademark Examining
Attorney is in error:
… In this case of a composite mark shown in
the specimen, the toothbrush with the flecks
of water and the whirlpool design create two
separate and distinct visual impressions.
The design, being distinctive and
recognizable as a swirl or whirlpool, is a
Serial No. 76143014
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separate mental and visual concept from the
toothbrush with water specks and is readily
identified as separate in the mind of the
consumer. They embody two separate,
basically unrelated concepts and are visually
quite different. This difference in
intellectual concept and visual content
results in the design making it own separate
visual impression. Accordingly, since the
whirlpool design makes its own separate and
distinct visual impression a part of the
composite mark, the submitted specimen
satisfies the requirements of the Trademark
Act.

We are mindful of the fact that in an application under
§1 of the Trademark Act, the applicant should have some
latitude in selecting the mark it wants to register. Cf.
TMEP §807.14(b). However, in this case, applicant and the
Trademark Examining Attorney disagree about whether these
visually overlapping elements are separable for registration
purposes. The test for whether the applied-for-matter can
be registered alone has to do with that oft-quoted but
sometimes-nebulous standard of “commercial impression.”
In reported decisions, the question is whether one
portion of that composite can be registered apart from other
matter with which the mark is used on the specimen. The
determinative factor is whether or not the subject matter in
question makes a separate and distinct commercial impression
apart from the other element(s).
We turn first to a case from our primary reviewing
Court, In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d
Serial No. 76143014
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1828 (Fed. Cir. 1988). In this case, the Court affirmed the
Board's decision that the mark as applied for (the medicine
dropper and droplet alone) could not be registered based
upon the larger composite image appearing on the specimens:

Drawing Specimen

In the specimen (“7 DROPS”) image, the dropper is in
the foreground where it intersects the handle of the
watering can, and the droplet is logically coming out of the
dropper and falling into the watering can below. Hence, in
Chemical Dynamics, it was determined that in the context of
this composite design, the applied-for-image was
inextricably bound up in the interrelated elements
comprising the entire composite, and that applicant’s
attempt to separate out the dropper and droplet portions
resulted in an impermissible mutilation of a single, unified
design.
Similarly, in a Board decision, the relationship among
various elements of a composite design on the specimens was
held to create imagery appearing to be active, dynamic and
Serial No. 76143014
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almost three-dimensional. In re Boyd Coffee Co., 25 USPQ2d
2052 (TTAB 1993). In this case, the Trademark Examining
Attorney refused registration on the ground that the
applied-for silhouette of a cup and saucer sitting on a
tabletop was a mutilation of the composite mark in actual
use, as illustrated by the specimens:

In the Boyd Coffee case, the Trademark Examining
Attorney contended that the specimens showed a composite
mark featuring the cup and saucer design as well as the
sunburst design.4 In affirming the refusal of registration
in that case, the Board agreed with the Trademark Examining
Attorney that the cup and saucer design did not present a
separate commercial impression, noting, inter alia, that the
sunburst design seemed to be emanating from the cup. Boyd
Coffee, supra at 2053. Similar to the image of a coffee cup
and saucer in the Boyd Coffee case, here applicant’s
whirlpool design is centrally located within the larger
imagery on the specimens. Moreover, as in Boyd Coffee,
wherein the literal element TECHNI-BREW was deleted from the

4 In fact, the Trademark Examining Attorney in the Boyd Coffee
case named the overall impression imparted by the specimens as
“sunshine-in-a-cup.”
Serial No. 76143014
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mark drawing, applicant in this case has deleted the term
SONICARE.5
In another Board case, the visual impact of the matter
shown in the original drawing creates such a different
impression from the usage on the specimens that the drawing
was found to represent a mutilation of the graphics as shown
on the specimens of record:
6
While multiple elements comprise the combined imagery
in the instant case, consumers who encounter these graphics
will be left with an impression of activity, motion, or
sonic waves. The toothbrush head in the center of the wave
design (especially in view of the logical connection
explicitly created several times on these specimens between

5 As noted by this Board in the Boyd Coffee case, many
“mutilation” cases have involved attempts by applicants to
register designs or background devices apart from words with which
they were used. Often the elements that the respective applicants
wanted to extract were inextricably bound together with other
design features within the composite, as shown on the respective
specimens of record. See In re Speroulias, 227 USPQ 166 (TTAB
1985), In re Volante International Holdings, 196 USPQ 188 (TTAB
1977), In re The Library Restaurant, Inc., 194 USPQ 446 (TTAB
1977), and Permatex Company, Inc. v. California Tube Products,
Inc., 175 USPQ 764 (TTAB 1972). Arguably, that is similar to one
of the complaints of the Trademark Examining Attorney in her
appeal brief herein, e.g., in the original specimens, the
Sonicare® mark appears in the middle of the sonic wave design but
is not part of the drawing.
6 In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999).
Serial No. 76143014
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the toothbrush head and the whirlpool or sonic wave design)
is proximate, touching and interacting with the design.
Insofar as the involved design will be perceived as
representing sonic waves, we find that the foreground image
of the automatic toothbrush head is an integral feature of
the total imagery. Seen in this light, the toothbrush head
combined with the representation of a sonic wave, suggest a
dynamic, three-dimensional activity. For example, the
design suggests concentric waves that would be emanating
outward if the bristles of the vibrating toothbrush head
were placed down into the surface of a tub of water.
On the other hand, taking the toothbrush head out of
this combined graphic creates a very different image.
Moreover, the enlarged toothbrush head with the moving
bristles on the specimens totally obscures the epicenter of
the design as seen prominently at the center of the drawing.
In other words, the center of the design in the drawing is,
in practice, not seen by consumers.
In consequence thereof, a properly verified substitute
specimen, in which the whirlpool or sonic wave design
projects a separate and distinctive commercial impression,
would have been necessary in order for applicant to register
such design alone as a mark for its goods. Given
applicant’s failure to comply with this requirement, we
Serial No. 76143014
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affirm the refusal of the Trademark Examining Attorney to
register this matter.
Decision: The refusal to register this design based
upon the ground that it does not function as a trademark
under Sections 1, 2 and 45 of the Trademark Act is hereby
affirmed. Moreover, we affirm the refusal to register based
upon applicant’s failure to comply with the requirement for
a substitute specimen showing use of the mark as it appears
on the drawing.