3M Company

Trademark Trial and Appeal BoardJun 21, 2012

No. 77701886re (T.T.A.B. Jun. 21, 2012)

Mailed: June 21, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re 3M Company ________ Request for Reconsideration Serial No. 77701886 Serial No. 77701928 _______ Before Quinn, Grendel, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: The Board, in a decision dated June 11, 2012, reversed the Office’s refusal to register applicant’s proposed marks, subject of the above-captioned applications, under Section 2(e)(5) of the Trademark Act on the ground of functionality, and reversed the refusal based on applicant’s asserted failure to provide proper descriptions of the marks. However, the Board affirmed the Office’s refusal to register the marks on the ground that the marks have not acquired distinctiveness and thus are not entitled to registration under Section 2(f). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial Nos. 77701886 and 77701928 2 Applicant has timely filed a request for reconsideration of the Board’s affirmance of that refusal, arguing that the Board “improperly made findings of facts that appear to have overlooked the proper and detailed [declaration]” submitted during prosecution and that the Board “misapplied the appropriate authorities in determining that applicant’s marks did not acquire distinctiveness in the minds of consumers.” Req. for Recon., p. 1. In the alternative, applicant requests the Board remand the applications to the examining attorney for consideration of a proposed amendment to the identifications of goods to limit the field of use to “for use in medical and healthcare fields.” Applicant’s December 19, 2009 Response to Office Action We turn first to applicant’s contention that the Board did not properly construe applicant’s December 19, 2009 “Response to Office Action” as a declaration. Initially, we reiterate that the factual assertions made in that response were given consideration and applicant has not been prejudiced in this regard. See Decision, p. 15 (“we decide to accept and consider this information and applicant’s attorney’s factual representations concerning applicant’s advertising efforts and market share”). The reasons for our view to not consider applicant’s December Serial Nos. 77701886 and 77701928 3 19, 2009 response to an Office action as a declaration are explained in the original decision and need not be repeated in this order. However, as a general matter, we further point out that evidentiary declarations being submitted to support arguments in a response to an Office action should be filed separately from the response.1 A single document containing applicant’s arguments and interspersed with factual assertions, that purportedly are being made under declaration based on the signer’s personal knowledge, is inappropriate. We also disagree with applicant’s assertion that “[w]hile the Board did not ultimately exclude the evidence on this [declaration versus non-declaration] basis, its faulty procedural conclusion permeated its substantive analysis of the evidence.” Req. for Recon., p. 4. To be clear, the Board gave full and fair consideration to the entire record. Board’s Treatment of the Evidentiary Record We now address points made by applicant in its contention that the Board did not properly weigh or 1 Applicant’s argument that the Office’s electronic filing system (TEAS) does not provide for a separate “declaration” submission is not well taken. TEAS provides applicants with the ability to attach copies of declarations and other evidentiary submissions to the Response to an Office Action. Serial Nos. 77701886 and 77701928 4 consider the totality of the evidence submitted in support of applicant’s acquired distinctiveness claim. Applicant argues that “it appears the Board treated the applied-for marks as highly weak product designs that were nearly incapable of functioning as source indicators in its evaluation of whether the marks had acquired distinctiveness.” (emphasis in original) Req. for Recon., p. 6. However, the Board clearly and consistently treated the marks as configurations of containers for the identified goods, and not as the goods themselves. This distinction was not lost on the Board in the analysis when weighing the evidence regarding acquired distinctiveness of the marks. Applicant asserts that its decision to file its application under Section 2(f) somehow worked to its detriment when the Board considered the evidence. Applicant correctly notes that product packaging can be inherently distinctive, but then goes on to argue that it “was never given the opportunity to amend its applications to withdraw its Section 2(f) claims because the Trademark Office improperly took the position that the applied-for marks were functional and as a result could never acquire distinctiveness.” Req. for Recon., p. 8. We fail to see the logic in this assertion. Applicant had many Serial Nos. 77701886 and 77701928 5 opportunities to argue that its mark was inherently distinctive during the prosecution of the application, including when it first filed the application, but it chose not to do so. The Board has long held that when an applicant initially seeks registration based on acquired distinctiveness or amends its application to seek registration based on acquired distinctiveness without expressly reserving its right to argue in the alternative that its mark is inherently distinctive, registration under Section 2(f) is an admission that the mark is not inherently distinctive. Yamaha International Corporation v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); Kasco Corp. v. Southern Saw Services, Inc., 27 USPQ2d 1501, 1506 n.7 (TTAB 1993) (“By amending (without reservation) its application to claim that its green wrapper had become distinctive of its saw blades, [defendant] conceded that the green wrapper was not inherently distinctive of its saw blades …. [W]hen [defendant] amended its application to claim the benefits of Section 2(f), it did not reserve its right to argue in the alternative that its green wrapper was, from the outset, inherently distinctive.”); see also In re Thomas Nelson, 97 USPQ2d 1712 (TTAB 2011) and TMEP § 1212.02(c) (7th ed. 2010). This law and practice was well settled Serial Nos. 77701886 and 77701928 6 prior to applicant’s filing of its application, and applicant and its counsel can scarcely claim surprise about the state of the law or that applicant was not asked by the Office to reconsider its position for its own safety. Based on the aforementioned precedent and the fact that applicant has not claimed, in the alternative or otherwise, that the marks are inherently distinctive, both the examining attorney and the Board properly concluded that applicant conceded that the marks are not inherently distinctive. Under the law, any conclusion to the contrary would have been inapposite. Finally, applicant makes general and lengthy arguments as to why it believes the Board did not properly weigh the evidence in its favor and find that the marks have acquired distinctiveness. In essence, applicant is rearguing the record and points made in its appeal brief. The Board has reconsidered the entire record and finds no error in the ultimate determination that the applied-for marks have not been shown to have acquired distinctiveness. Certain evidentiary shortcomings are discussed in the original decision and will not be repeated here. Applicant’s Alternative Request to Remand Application Applicant requests the Board remand the application to the examining attorney to consider its proposed amendment Serial Nos. 77701886 and 77701928 7 to the identification of goods. Applicant correctly notes that the examining attorney never raised the issue, but the Board found the identification of goods to be “broadly worded” such that it would include hand-sanitizing antiseptics with moisturizers being used in various fields. By way of the proposed amendment, applicant seeks to add the limiting wording “for use in medical and healthcare fields.” While we can appreciate applicant’s concern, it has long been held that the Board is not necessarily bound by the arguments made by the examining attorneys, but “may rely on a different rationale.” TBMP Section 1217 (3rd ed. rev. 2012); in particular, see authorities cited in footnote 1. Even if the Board were inclined to remand the application to the examining attorney to consider the proposed amendment (which we are not), applicant’s request is impermissible. Trademark Rule 2.142(g) specifically provides: An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated. In view thereof, applicant’s request to remand the application is denied. Serial Nos. 77701886 and 77701928 8 Conclusion After carefully considering applicant’s request, we have determined that our conclusion that applicant has not established that its marks have acquired distinctiveness is not in error. Moreover, applicant’s request in the alternative to amend its mark is impermissible. In view thereof, applicant’s request for reconsideration of the Board’s decision is denied, and the decision of May 10, 2012 stands.