Greenleaf, Inc.

Trademark Trial and Appeal Board

Aug 27, 1999

No. 74631589 (T.T.A.B. Aug. 27, 1999)

Hearing: Paper No. 19
September 15, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 27,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Greenleaf, Inc.
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Serial No. 74/631,589
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Richard M. Moose of Dority & Manning for Greenleaf, Inc.
Tina L. Sapp, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Greenleaf, Inc. has applied to register the design
shown below as a trademark for “air fresheners.”1 Applicant
has provided the following description of the mark: “The
mark consists of a rectangular generally flatpack envelope
serving as a container for the subject goods.”

1 Ser. No. 74/631,589, filed on February 8, 1995, which alleges
dates of first use as early as 1983 and states that “the
stippling in the drawing is for shading purposes only.”
Ser No. 74/631,589
2
Ser No. 74/631,589
3
Applicant has claimed that the design has become
distinctive of its goods due to its long use and public
recognition, and applicant therefore seeks registration
pursuant to Section 2(f) of the Trademark Act, 15 U.S.C.
1052(f).
Registration has been finally refused on the ground
that the design sought to be registered is de jure
functional (Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. 1051, 1052 and 1145) and, in the alternative, should
the Board determine that the design is not de jure
functional, that the design has not acquired
distinctiveness as a trademark.
Ser No. 74/631,589
4
Applicant has appealed. Briefs have been filed and an
oral hearing was held.
We turn first to the issue of de jure functionality.
At the outset we think it useful to describe the precise
goods for which applicant desires to register its envelope
configuration. The application identifies the goods as air
fresheners, but it is clear from the record that applicant
uses its envelopes as a container for a specific type of
air freshener, i.e., scented granulated matter.
As has often been stated in cases involving
configurations of the goods, if the design of a product or
a container for a product is so utilitarian as to
constitute a superior design which others in the field need
to be able to copy in order to compete effectively, it is
considered to be de jure functional and, as such, is
precluded from registration for reasons of public policy.
See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, (CCPA 1982). The Morton-Norwich case discussed
what evidence is useful to show that a configuration of a
product or container is functional and pointed to the
existence of utility patents; advertising touting the
utilitarian advantages of the configuration sought to be
registered; the existence of alternative configurations and
evidence showing that the configuration sought to be
Ser No. 74/631,589
5
registered results from a simpler or cheaper method of
manufacture as factors which may be helpful in determining
whether a particular design is functional.
We recognize that, in this case, there is no utility
patent of record covering the design of a rectangular
generally flatpack envelope. While the existence of a
utility patent disclosing the utilitarian advantages of a
design is strong evidence of de jure functionality of that
configuration, the absence of a utility patent does not
mean that the configuration is not de jure functional.
That is especially true here where the utilitarian
advantages of a rectangular generally flatpack envelope are
patently obvious. For example, it is thin and lightweight.
Further, it is common knowledge that this kind of envelope
has been in use for many years by others in different
commercial fields to package their merchandise. While it
appears that applicant has used special paper, glue, ink
and carrier materials in manufacturing its envelopes in
order to accommodate the scented granular matter, it does
not claim any of these “features” as part of its mark.
What applicant claims as its mark is simply the
configuration of a basic rectangular flatpack envelope. We
may take judicial notice of the fact that envelopes are
Ser No. 74/631,589
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generally rectangular and are used as containers.2
Applicant’s envelope is neither unusual in shape (e.g., it
is not an octagonal envelope), nor is it being put to an
unusual use. It seems perfectly logical to us that a
manufacturer of air fresheners which consist of scented
granulated matter would package its goods in a rectangular,
generally flatpack envelope. Competitors of applicant seem
to share this view since at least seven of them have used
this kind of envelope as containers for their air
fresheners which consist of scented granular matter.
As to the existence of alternative designs, the record
is replete with examples of air fresheners in various other
forms and containers (e.g., scented candles, aerosol
sprays, fragrance mists, potpourri, and incense).
Obviously, it would not be feasible to package many of
these air fresheners in rectangular flatpack envelopes.
However, with respect to those air fresheners which consist
of scented granular matter, it appears that a generally
rectangular flatpack envelope is, at the very least, “one

2 We note that Webster’s Third New International Dictionary
(1976), at page 759, defines an “envelope” as, inter alia,
“something that envelops: WRAPPER, CONTAINER, RECEPTACLE”; and
The American Heritage Dictionary (New College Ed. 1976), at page
438 defines an “envelope” as “a flat, folder paper container for
a letter or similar object, usually rectangular and having a
gummed sealing flap.”
Ser No. 74/631,589
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of a few superior designs available.” See Morton-Norwich,
supra, at page 16. Applicant’s type of air fresheners can
easily be contained in an envelope and a purchaser does not
have to open the envelope to experience the fragrance.
Rather, as touted by applicant, its air fresheners, while
still contained in the envleope, can be placed in a number
of locations “for a distinctively fragrant experience.”
Finally, although there is no evidence that envelopes are
less expensive than other types of containers, it is common
knowledge that envelopes are relatively inexpensive items.
In view of the foregoing, we find that the envelope
configuration which applicant seeks to register is de jure
functional.
Although a de jure functional design may not be
registered regardless of any evidence of distinctiveness,
in order to render a complete decision herein, we have
considered applicant’s 2(f) evidence. Applicant has
submitted two declarations from its president, Mr.
Caldwell, wherein he states, in relevant part: that the
mark was in substantially exclusive and continuous use for
almost twelve years preceding the filing of the
application; that applicant has sold its air fresheners to
over 55,000 gift and specialty shops (83% of the market)
Ser No. 74/631,589
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with sales for the period between 1983 and 1996 totaling
more than $94,000,000; that the principal method by which
applicant promotes its goods is through direct mailings of
samples of the goods to gift and specialty retailers; that
in its direct mailings, applicant uses one of the larger
envelopes as a direct mailer and encloses therein an order
form, advertising card and product sample; that applicant
has sent over 1,000,000 direct mailings to gift and
specialty retailers; that applicant is the owner of
Registration No. 1,820,94 for the mark SCENTENVELOPE for
fragranced paper sachet and Registration No. 1,821,328 for
the mark CARDENVELOPE for scented greeting cards; and that
these goods, along with applicant’s air fresheners, are
part of an “envelope theme;” that applicant’s air
fresheners are leading products in the gift and specialty
products field as recognized by surveys which have appeared
in the trade publication Giftbeat; that in these surveys
applicant’s air fresheners are referred to as “envelopes”;
that applicant was the first to market air fresheners in a
rectangular flatpack envelope, but that since applicant’s
introduction, several competitors have begun to market air
fresheners in rectangular flatpack envelopes; that these
competitors have copied applicant’s envelope without its
authorization; and that these are initial offerings from
Ser No. 74/631,589
9
companies which are not substantial players in the home
fragrance market. Numerous samples of applicant’s air
fresheners, direct mailers and product catalogs have been
made of record. Applicant argues that the foregoing
establishes that its envelope design has acquired
distinctiveness for its goods.
The Examining Attorney, on the other hand, essentially
argues that applicant’s evidence fails to establish
acquired distinctiveness because there is no evidence to
suggest any promotion or perception of the envelope, per
se, as a trademark.
After careful consideration of the record, we find
that the evidence is not sufficient to establish that the
envelope configuration sought to be registered has acquired
distinctiveness.
First, there is no evidence in this record as to how
the ultimate consumers of applicant’s air fresheners, i.e.,
ordinary purchasers, perceive the envelope design. In this
case, we have no affidavits from consumers as to their
perception of the envelopes which applicant uses.
Purchasers may well regard the envelopes as nothing more
than containers for applicant’s air fresheners.
At most, applicant’s sales figures demonstrate a
growing popularity or commercial success for its air
Ser No. 74/631,589
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fresheners, but such evidence alone does not demonstrate
that the envelope design which applicant seeks to register
has become distinctive of its air fresheners and thus
functions as a source indicator. See e.g., In re Bongrain
International (American ) Corp., 894 F.2d 1316, 13 USPQ2d
1727, 1729 (Fed. Cir. 1990) [growth in sales may be
indicative of popularity of product itself rather than
recognition of a term as denoting origin].
Further, there is an absence of any advertising or
other promotional material that even refers to the
envelopes. As we have already noted, it is common for
merchants to use rectangular flatpack envelopes as
containers for their goods. Thus, purchasers have come to
expect goods to be packaged in this kind of envelope. In
view of the ordinary nature of the configuration of an
envelope, a large amount of evidence would be required to
establish that the configuration has acquired
distinctiveness and would not be regarded as mere
packaging. See for example, In re Sandberg & Sikorski
Diamond Corp., 42 USPQ2d 1544 (TTAB 1996) [Because ring
designs which applicant seeks to register are ordinary in
nature, applicant has heavy burden to establish that
designs have acquired distinctiveness and would not be
regarded merely as ordinary arrangement of gems].
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Accordingly, even if we had found that the envelope
configuration was not de jure functional, advertising
showing substantial promotion of the envelope configuration
and recognition thereof by ordinary purchasers would be
necessary in order to demonstrate that the envelope
configuration which applicant seeks to register has in fact
acquired distinctiveness for air fresheners.
Decision: The refusal to register is affirmed.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board