Watermark Properties Inc.

Trademark Trial and Appeal Board

Nov 10, 2020

88578623 (T.T.A.B. Nov. 10, 2020)

Mailed: November 10, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Watermark Properties Inc.
_____

Serial No. 88578623
_____

Steven C. Sereboff of SoCal IP Law Group LLP
for Watermark Properties Inc.

Andrew Crowder-Schaefer, Trademark Examining Attorney, Law Office 104,
Zachary B. Cromer, Managing Attorney.
_____
Before Shaw, Adlin and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Watermark Properties Inc. seeks a Principal Register registration for
three-dimensional product packaging trade dress for “pre-mixed alcoholic beverages,
other than beer-based.” Specifically, the involved application includes this drawing of
the proposed mark

This Opinion is Not a
Precedent of the TTAB
Serial No. 88578623
2
and this description of it: “The mark consists of a stylized cylinder bottle with a bottle
cap which is three-dimensional and symmetric. The sides of the bottle cap and bottle
are concave, with a curve beginning at the bottle cap and ending at the bottom of the
bottle. The bottle cap and cylinder bottle configuration are shown in solid lines as
being claimed as part of the mark.”1
The Examining Attorney refused registration under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, on the ground that the proposed
mark is non-distinctive product packaging, in response to which Applicant submitted
an alternative claim of acquired distinctiveness under Section 2(f), while maintaining
its position that the mark is inherently distinctive. Ultimately, the application was
finally refused on the ground that the proposed mark is not distinctive, inherently or
by acquisition. Applicant then appealed and Applicant and the Examining Attorney
filed briefs.
I. Evidence and Arguments
The Examining Attorney argues that Applicant’s beverage bottle design “is not so
unusual, unique, or unexpected in the alcoholic beverage industry” that consumers
would rely on it to distinguish Applicant’s beverages from those of competitors. 7
TTABVUE 5. This contention is based on a number of third-party beverage bottles
which, the Examining Attorney argues, have features similar to Applicant’s bottle.

1 Application Serial No. 88578623, filed August 14, 2019 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on first use dates of February 2, 2012. Applicant later
amended the application to include, in the alternative, a claim of acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
Serial No. 88578623
3
Two of the third-party bottles the Examining Attorney relies upon are not product
packaging, but are instead sold as reusable personal bottles:

2

2 While this bottle is offered on what appears to be an Australian website, the record as a
whole reveals that beverages, and thus the bottles in which they are packaged, are sold
internationally, suggesting that consumers’ exposure to particular types of bottles may not
always depend on where they live. Furthermore, the listing makes clear that the bottle is
intended as a “Promotional Product,” which “can be branded with your own logo.” Foreign
customers for these bottles who sell products or services in the United States could very well
distribute these promotional bottles in this country. In any event, there is no reason to expect
that countries generally use or limit use of certain types of bottle shapes or designs, especially
where the record reveals that not to be the case with respect to a number of specific alcoholic
and other beverages sold in bottles. Finally, the listing indicates that the bottle’s concave
Serial No. 88578623
4
October 21, 2019 Office Action TSDR 7-8. These bottles are sold as “curved” and
“concave,” terms specifically mentioned in Applicant’s description of its proposed
mark to identify features for which Applicant seeks protection.3 While the caps of
these bottles do not appear to be concave or curved like Applicant’s bottle cap is, the
overall shape and appearance of these third-party bottle caps is nevertheless quite
similar to Applicant’s cap. The second bottle’s generic description – “Classic Concave
Drink Bottle” – suggests that “concave” identifies a category of beverage bottles,
perhaps even an established, traditional or recognized category.
The Examining Attorney also relies on bottles used as packaging for specific
beverages sold in commerce, both alcoholic and non-alcoholic. Bottles for alcoholic
beverages include the following:

shape performs a function as it is billed as “easy grip.” Some United States consumers surely
desire this same benefit, and it is therefore likely that there is a market for concave bottles
in the United States (as evidenced by the H2GO water bottle depicted above). Cf. In re Pacer
Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (“the fact that some of these
competitors were foreign companies would not preclude the presence of these respective
adhesive container caps in the relevant United States market”).
3 Promoting and selling these bottles as “curved” or “concave” suggests that these features
are desirable, perhaps because they perform a function, or because some customers prefer a
curved or concave “look.”
Serial No. 88578623
5

December 9, 2019 Office Action TSDR 12; February 18 2020 Office Action TSDR 9.
These bottles, like Applicant’s, are used to package alcoholic beverages, three-
dimensional, primarily cylindrical and concave. While the curves of these bottles do
not appear to start at the caps, the caps of these bottles appear fairly similar to
Applicant’s bottle cap. The sides of both of these bottles also look very much like the
sides of Applicant’s bottle. In addition, the two bottles themselves (as opposed to their
caps) fit within the involved application’s description of Applicant’s mark.
Additional third-party bottles feature caps which differ to one extent or another
from Applicant’s cap, but are otherwise quite similar to Applicant’s bottle, and but
for the caps, these bottles fit within the description of Applicant’s mark in the
involved application:
Serial No. 88578623
6

December 9, 2019 Office Action TSDR 14-16. The bottle pictured below, by contrast,
differs from Applicant’s because it is straight, but the bottle’s cap looks very much
like Applicant’s cap:

December 9, 2019 Office Action TSDR 11.
Serial No. 88578623
7
The Examining Attorney introduced a number of additional third-party alcoholic
beverage bottles which are similar to Applicant’s bottle in many important ways, even
if their caps are not the same as Applicant’s cap, including:

Serial No. 88578623
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Serial No. 88578623
9
October 21, 2019 Office Action TSDR 13, 17, 23, 27, 30, 31; February 18, 2020 Office
Action TSDR 7, 8, 11, 13-17.
The Examining Attorney also relies on bottles used for non-alcoholic beverages,
including the following:

Serial No. 88578623
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December 9, 2019 Office Action TSDR 7-10, 17, 18, 19; October 21, 2019 Office Action
TSDR 6, 9.
For its part, Applicant maintains that third-party bottles for non-alcoholic
beverages are irrelevant because the goods are different. Applicant also contends that
many of the bottles cited by the Examining Attorney which are used as packaging for
alcoholic beverages “have materially different shapes and designs,” such as “a long
thin neck and a small cap.” November 7, 2019 Office Action Response TSDR 8.
Applicant points out that it has won awards for its bottle design. Id. at 10-11
(Declaration of Julie Stevens Kang, Applicant’s President). However, apparently only
two of the awards are specifically for “bottle design” – the 2016 SIP Award for
individual bottle design and the 2019 SIP award for series bottle design. Id. at 11.
The other awards listed are for “package design,” it is not clear whether, or the extent
to which, the package design awards relate specifically to the claimed features of
Applicant’s bottle design. Id. That is, it is unclear whether or the extent to which the
awards relate to, for example, the bottle’s labels, boxes or other packaging rather than
Serial No. 88578623
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the bottle’s design itself. Indeed, there is no evidence that these package design
awards relate to any of the bottle features that Applicant seeks to register.
II. Analysis
“Distinctiveness is … an explicit prerequisite for registration of trade dress under
§ 2” of the Act. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000).
Product packaging trade dress may be inherently distinctive, or it may acquire
distinctiveness. See In re Chippendales USA, Inc., 622 F.2d 1346, 96 USPQ2d 1681,
1684 (Fed. Cir. 2010). We thus first consider whether Applicant’s proposed mark is
inherently distinctive, and if it is not, we will then turn to whether it has acquired
distinctiveness.
A. Inherent Distinctiveness
“[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a
particular source.’” Wal-Mart, 529 U.S. at 210 (quoting Two Pesos , Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992); see also In re Chevron Intellectual Prop. Grp.
LLC, 96 USPQ2d 2026, 2027 (TTAB 2010). “The facts of each case dictate that
determination,” the ultimate focus of which “is whether or not the trade dress is of
such a design that a buyer will immediately rely on it to differentiate the product
from those of competing manufacturers; if so, it is inherently distinctive.” Tone Bros.,
Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994).
“The PTO has the burden to establish a prima facie case of no inherent
distinctiveness … Once the PTO sets forth a sufficient prima facie case, the burden
shifts to the applicant to come forward with evidence to rebut the prima facie case.”
In re Chippendales, 96 USPQ2d at 1684 (citing In re Pacer Tech., 67 USPQ2d at 1631).
Serial No. 88578623
12
However, as we pointed out in our decision in In re Chippendales, which the Federal
Circuit affirmed, “the Examining Attorney does not bear a heavy burden in
establishing a prima facie case that a mark is not inherently distinctive. The
Examining Attorney need only establish a ‘reasonable predicate’ to make the
necessary prima facie showing.” In re Chippendales USA, Inc., 90 USPQ2d 1535,
1539-40 (TTAB 2009), aff’d, 96 USPQ2d 1681 (citing In re Pacer Tech., 67 USPQ2d
at 1632). This is because the USPTO “is an agency of limited resources,” and unable
“to undertake the research, such as a marketing survey, necessary to prove that the
public would actually” rely on the claimed trade dress to distinguish source. In re
Pacer Tech., 67 USPQ2d at 1631-32.
We apply a “four-part test for determining the inherent distinctiveness of trade
dress,” as follows:
[1] whether it was a ‘common’ basic shape or design, [2]
whether it was [not] unique or unusual in the particular
field, [3] whether it was a mere refinement of a commonly-
adopted and well-known form of ornamentation for a
particular class of goods viewed by the public as a dress or
ornamentation for the goods, or [4] whether it was capable
of creating a commercial impression distinct from the
accompanying words.4

In re Chippendales, 96 USPQ2d at 1684 (quoting Seabrook Foods, Inc. v. Bar-Well
Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)). “If a mark satisfies
any of the first three tests, it is not inherently distinctive.” Id. As we have previously
pointed out, one prominent commentator has opined that all parts of this test “are

4 The fourth factor is not relevant here.
Serial No. 88578623
13
merely different ways to ask whether the design, shape or combination of elements is
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.” J.
Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 8:13 (5th
ed. 2020); see In re Hudson News Co., 39 USPQ2d 1915, 1922 n.15 (TTAB 1996).
Here, the evidence of record establishes a “reasonable predicate” for finding that
Applicant’s bottle design is not inherently distinctive, and thus establishes the
Examining Attorney’s prima facie case. In fact, Applicant’s design is fairly
commonplace, and not unique in the alcoholic beverage field, as the record reveals
almost 20 cylindrical alcoholic beverage bottles with concave sides that curve inward
starting at the top and ending at the bottom. Rather, to the extent Applicant’s bottle
design differs from the bottles upon which the Examining Attorney relies, these
differences are mere refinements of common features for alcoholic beverage bottles.
Applicant’s bottle design is therefore not inherently distinctive.
Designs similar to Applicant’s bottle design are also used for water and soft drink
bottles, in addition to alcoholic beverage bottles. While we focus our discussion here
primarily on bottles for alcoholic beverages, and the consumers thereof, because those
are Applicant’s goods, the soft drink bottles are not insignificant. Cf. In re Brouwerij
Bosteels, 96 USPQ2d 1414, 1420 (TTAB 2010) (“these glasses and stands are sold as
products in their own right, rather than as packaging for beer or ale … they
nevertheless may be considered in determining whether consumers would be likely
Serial No. 88578623
14
to find applicant’s product packaging to be distinctive, whether inherently or through
acquisition”).
In fact, because alcoholic beverage drinkers also must, or at least would be
expected to, drink non-alcoholic beverages, bottles for non-alcoholic beverages are
relevant, and would be expected to impact the relevant alcoholic beverage consumers’
perceptions of alcoholic beverage bottles.5 See e.g. In re Mars, Inc., 105 USPQ2d 1859,
1869-70 (TTAB 2013) (finding a can design non-distinctive for pet food based in part
on cans for other products); In re F.C.F. Inc., 30 USPQ2d 1825, 1828 (TTAB 1994)
(relying on third-party advertisements for perfume to find Applicant’s design used for
make-up and cosmetics non-distinctive, referring to relevant field of use as “toiletries”
generally and recognizing “the difficulty faced by the Examining Attorney in
obtaining such evidence”). Cf. In re Chippendales, 96 USPQ2d at 1688 (finding that
the relevant market was adult entertainment generally even though Applicant’s
identification of services was limited to “exotic dancing for women”).
We agree with Applicant that there are differences between its bottle and most or
all of the bottles upon which the Examining Attorney relies. Most significantly, a
relatively small number of the bottles introduced by the Examining Attorney have a
cap which resembles Applicant’s cap, and even fewer if any of them appear to have
concave caps (as opposed to concave bottles). Furthermore, as Applicant points out,

5 To the extent there may be any alcoholic beverage consumers who are never exposed to non-
alcoholic beverages sold in bottles, we would not expect many if any of them to be in a
condition to “immediately rely” on trade dress to distinguish source.
Serial No. 88578623
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many of the bottles the Examining Attorney relies upon have small caps or thin
necks.
These differences are not enough to call into question or rebut the Examining
Attorney’s prima facie case, however. For example, in In re Pacer Tech., the Court
found that the applicant’s adhesive container cap design featuring “a pointed crown
from which four equally spaced flat wings extend” to be non-distinctive based on
design patents showing container caps with a crown, with some having “four or six
evenly spaced wings around the crown”. In re Pacer Tech., 67 USPQ2d at 1630
(emphasis added). And, in In re Chippendales, the Court found the applicant’s “Cuffs
& Collar” trade dress was not inherently distinctive based on the Playboy bunny
costume, even though “the Cuffs & Collar mark includes no bunny ears and includes
a bare-chested man instead of a woman in a corset.” In re Chippendales, 96 USPQ2d
at 1688.
The point is that neither symmetric bottle caps, nor concave bottles curve from
the bottle cap or elsewhere on the top of the bottle to the bottom are “unusual” in the
field of bottles for alcoholic beverages (or soft drinks). In re F.C.F. Inc., 30 USPQ2d
at 1828. Rather, Applicant’s bottle “appears to be no more than a mere refinement of
a basic, relatively common and well-known form of decoration or ornamentation for”
alcoholic beverage packaging. Id.; see also In re Hudson News, 39 USPQ2d at 1923
(finding “quite pedestrian” trade dress to be non-distinctive).
In fact, even if Applicant is correct that its bottle is unique in the field, in the sense
that there are no other bottles exactly like it, that is not enough to establish inherent
Serial No. 88578623
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distinctiveness given the evidence of widespread third-party use of highly similar
bottles.
If the concept of inherent distinctiveness was defined as
meaning simply “one and only,” then one could obtain a
registration for a design which, while “unique” in this
sense, differed only slightly from the designs of other
competing products and/or containers. There would be no
need that the applied for design have an “original,
distinctive and peculiar appearance” as required by the
Haig & Haig (“Pinch Bottle”) and McIlhenny (“Tabasco
bottle”) cases.

In re E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB 1992) (citing In re McIlhenny
Co., 278 F.2d 953, 126 USPQ 138 (CCPA 1960) and Ex Parte Haig & Haig, Ltd., 118
USPQ 229 (Asst. Comm. 1958)). See also In re Mars, Inc., 105 USPQ2d at 1871, In re
File, 48 USPQ2d 1363, 1365-66 (TTAB 1998) and In re J. Kinderman & Sons, Inc., 46
USPQ2d 1253, 1254-55 (TTAB 1998).
Here, as in In re Hudson News, “we emphasize that the record is completely devoid
of evidence that anyone other than one of the applicant’s officers views” Applicant’s
bottle design as a mark for alcoholic beverages. Nor do we have any “evidence that
the trade dress at issue has ever been promoted by applicant” as its mark. In re
Hudson News, 39 USPQ2d at 1924; see also In re File, 48 USPQ2d at 1366. Applicant’s
reliance on its two bottle design SIP awards on this point is misplaced, because there
is no evidence that those awards were for the specific features Applicant seeks to
register, or that the awards would somehow cause relevant consumers to
“immediately rely” on the claimed features of Applicant’s award-winning bottle
design “to differentiate the product[s] from those of competing manufacturers.” Tone
Serial No. 88578623
17
Bros., 31 USPQ2d at 1331. Cf. In re Proctor & Gamble Co., 105 USPQ2d 1119 (TTAB
2012) (in which the applicant’s Silver Winners Innovation award for packaging
specifically stated that the new “Genie” bottle design and its claimed cap design
“clearly separates Scope from private label and other offerings in the category”).
There is simply insufficient information about the awards, what they are based upon
or what they might show about consumer perceptions and inclinations for them to
weigh in Applicant’s favor.
In short, the Examining Attorney has established a prima facie case, which
Applicant has not rebutted, that Applicant’s bottle design is not inherently
distinctive.
B. Acquired Distinctiveness
Applicant argues in the alternative that its proposed mark is entitled to
registration under Section 2(f) of the Act because it has acquired distinctiveness. In
other words, Applicant argues, “in the minds of the public, the primary significance
of [the bottle design] is to identify the source” of Applicant’s goods. 15 U.S.C. § 1052(f);
Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir.
2018) (citation omitted). Applicant bears the burden of establishing acquired
distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
1264 (Fed. Cir. 2015).
“The kind and amount of evidence necessary to establish that a mark has acquired
distinctiveness … depends on the nature of the mark and the circumstances
surrounding the use of the mark ….” In re Chevron, 96 USPQ2d at 2030. See also
Royal Crown, 127 USPQ2d at 1045 (“Where a mark sits on a sliding scale of
Serial No. 88578623
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descriptiveness impacts the burden a proposed registrant must bear with respect to
its claim of acquired distinctiveness.”); In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13
USPQ2d 1727 (Fed. Cir. 1990)). Here, based on the evidence of record, and as
discussed above, Applicant’s bottle design is not at all distinctive because it “is a mere
refinement of the commonly used [concave bottle] design in the [alcoholic beverage]
industry,” and Applicant therefore “has a relatively heavy burden for establishing
acquired distinctiveness.” In re Chevron, 96 USPQ2d at 2030; see also In re
Steelbuilding, 75 USPQ2d at 1424 (Applicant’s burden to show acquired
distinctiveness is “concomitantly high”).
In assessing whether Applicant has met its heavy burden of establishing acquired
distinctiveness, we consider any evidence bearing on: “(1) association of the
trade[mark] with a particular source by actual purchasers (typically measured by
customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner
of advertising; (4) amount of sales and number of customers; (5) intentional copying;
and (6) unsolicited media coverage of the product embodying the mark.” In re
Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. Int’l
Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). Here,
Applicant’s evidence falls well short of establishing that its “mere refinement” of
common alcoholic beverage bottle designs has acquired distinctiveness.
There is no survey or other evidence which shows that consumers associate the
proposed mark with Applicant. This is not particularly surprising given the evidence
Serial No. 88578623
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that a number of third-party sources of alcoholic beverages use bottles similar to the
bottle for which Applicant seeks protection.
Applicant has used its proposed mark for the last seven years. This is not a
significant amount of time given the nature of the proposed mark and how similar it
is to third-party bottle designs. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401,
222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are
confronted with more than one (let alone numerous) independent users of a term or
device, an application for registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under such circumstances.”).
Furthermore, this is much less time than found insufficient to establish acquired
distinctiveness in analogous cases. See e.g. In re Chevron, 96 USPQ2d at 2030
(“applicant’s 22 years of use of the design in question is substantial but not
necessarily conclusive or persuasive, considering the nature of the subject matter
sought to be registered”); In re Brouwerij Bosteels, 96 USPQ2d at 1424 (“We agree
with the examining attorney that given the nature of the alleged mark, i.e., it is
highly similar to a specific type of glass and stand for serving and holding beer, a
claim of twenty-five years of use is insufficient to prove acquired distinctiveness,
especially without evidence of the extent of such use.”).
Applicant has not provided any evidence regarding its sales, customers or
advertising, nor is there any evidence of intentional copying or unsolicited media
coverage of Applicant’s bottle design.
Serial No. 88578623
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While Applicant has won two awards for bottle design, and additional awards for
its packaging, this evidence is bare, out of context and does not without more support
a finding of acquired distinctiveness. In fact, the criteria for the awards are not
provided and it is not clear that any of the awards were for features of Applicant’s
proposed mark for which it seeks trade dress protection. Even if Applicant had won
the awards for claimed features of its bottle design, however, there is no indication
how many consumers are familiar with the awards, or, more to the point, the bottle
design itself. While we can assume that at least a few people involved with these
awards themselves are familiar with Applicant’s packaging and bottle design, it is
not clear whether those people are relevant consumers, or whether they took the
views of relevant consumers into account in making their decision to present the
awards to Applicant.
There is no evidence that Applicant has promoted the claimed features of its bottle
design as a source identifier. In re Chevron, 96 USPQ2d at 2031 (“Another reason
applicant’s evidence of acquired distinctiveness is deficient is the absence of
advertisements and promotions featuring or promoting recognition of the pole
spanner design as a service mark.”); In re Brouwerij Bosteels, 96 USPQ2d at 1424
(“there is simply no evidence that the alleged mark has ever been promoted by
applicant as its trademark in the United States using ‘Look for …’ promotions, and
the record is devoid of evidence that anyone other than applicant regards a beer glass
and stand with wording and scrollwork as a trademark for beer sold at restaurants,
bars, pubs and the like”); In re Usher, S.A., 219 USPQ 920, 922 (TTAB 1983).
Serial No. 88578623
21
In short, because Applicant’s proposed mark is so similar to a number of third-
party alcoholic beverage bottles, we would require significantly more and higher
quality evidence than we have here to find that the proposed mark has acquired
distinctiveness. In the absence of such evidence, we find that Applicant has not
established its alternative claim that the proposed mark has acquired distinctiveness.
What might have been persuasive on this issue is not a
proper subject for our speculation, but the relatively short
term use of the package in interstate commerce, combined
with a lack of specific amounts spent to promote the
configuration as a mark in the United States and examples
of how the configuration has been promoted and recognized
as a mark by customers and potential customers here in
the United States, clearly falls short of compelling evidence
of secondary meaning.

In re Usher, 219 USPQ at 922.
III. Conclusion
Because the evidence of record shows that Applicant’s bottle design is not
distinctive, inherently or by acquisition, it would not be perceived as an indicator of
source for Applicant’s identified goods and therefore fails to function as a trademark
under Sections 1, 2 and 45 of the Trademark Act. 15 U.S.C. §§ 1051-1052 and 1127.
Decision: The refusal to register Applicant’s bottle design because it does not
function as a mark is affirmed.