The Procter & Gamble Company

Trademark Trial and Appeal Board

Nov 16, 2012

No. 77685045 (T.T.A.B. Nov. 16, 2012)

Mailed:
November 16, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re The Procter & Gamble Company
________
Serial Nos. 77685045 and 77685052
_______
Rene L. Guess of The Procter & Gamble Company.
N. Gretchen Ulrich, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
_______
Before Bucher, Zervas and Shaw, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Procter & Gamble Company seeks registration on the Principal Register,
for “mouthwash” in International Class 3, of the marks shown below, which consist
of the overall contoured shape of a container for mouthwash and the design of the
cap by itself:
1 2

1 Application Serial No. 77685052 (the “ ’052 application”) was filed on March 6, 2009,
based upon applicant’s allegation of a bona fide intention to use the mark in commerce.
“The mark consists of the overall contoured configuration of a container for mouthwash
having a wide downward arc at the base, with a long, tapered neck that flows into the form
of the cap, widening at the top to create an undulating wave pattern along the edge. Color

This Opinion Is a
Precedent of the TTAB
Serial Nos. 77685045 and 77685052
- 2 -
The Trademark Examining Attorney refused reg-
istration under Sections 1, 2 and 45 of the Trade-
mark Act, 15 U.S.C. §§ 1051, 1052 and 1127, on the
ground that applicant’s marks are merely non-
distinctive product packaging for the goods. The
Trademark Examining Attorney asserts that these
trade dress marks are not unique or unusual in the
field of oral care products, but are mere refinements of commonly adopted forms
of ornamental trade dress for such goods. She also refused registration in both appli-
cations, alleging that the designs of both the cap and the container are merely or-
namental and that there is no showing of acquired distinctiveness.
After the Trademark Examining Attorney made the refusals final, applicant
appealed to this Board. We reverse the refusals to register.
I. Preliminary matters:

The Trademark Examining Attorney objected to applicant’s discussion in its
initial brief of several third-party registrations that applicant has conceded in its
reply brief it inadvertently failed to attach to responses during the examination
process. Applicant has indicated it is willing to withdraw these references as evi-

is not claimed as a feature of the mark.” Applicant filed its Statement of Use (SOU) on
March 1, 2010.
2 Application Serial No. 77685045 (the “ ’045 application”) was filed on March 6, 2009,
based upon applicant’s allegation of a bona fide intention to use the mark in commerce.
“The mark consists of the overall contoured configuration of a cap for a mouthwash bottle
having a narrow base with sides that flare out towards the top and terminate in an undu-
lating wave pattern around a recessed central core. Color is not claimed as a feature of the
mark.” Applicant filed its Statement of Use (SOU) on March 1, 2010.
Serial Nos. 77685045 and 77685052
- 3 -
dentiary support for registration herein, and we have given them no considera-
tion.3
The Trademark Examining Attorney also objected to applicant’s footnote ref-
erence in its appeal brief to an article from The National Law Journal entitled,
“Private-Label Versions: Free Enterprise or Freeloading?” Applicant argues that
this article was not intended to serve as evidence, but rather in the manner that a
relevant case citation, an excerpt from a treatise, or a law journal article could be
considered. We reject this analogy. The potential value to applicant of this article is
not that it would provide a commentary on legal principles, but would have proba-
tive evidentiary value concerning a marketplace in which store brands mimic the
trade dress of the national brands. Because it is being offered for its evidentiary
value but was not properly introduced, we have given it no consideration.
Applicant has objected to the Trademark Examining Attorney’s having
attached to her appeal brief the copy of a non-precedential Board opinion, In
re Kason Indus., Inc., Application Serial No. 74691008 (TTAB August 17, 1999), be-
cause, inter alia, the drawing of the mark was not available in the attached
copy of the Kason opinion. We note that although the Trademark Examining
Attorney is not prohibited from citing to non-precedential opinions, the Board

3 From early in the prosecution of these applications, the record contained several different
photographs of third parties’ products, for example, bottles of Listerine brand mouthwash.
Referring to such photos, applicant mentioned the Listerine mouthwash bottle design as
“the subject of Registration No. 2287138” (in its response of May 10, 2011) but never sub-
mitted a copy of the registration.
Serial Nos. 77685045 and 77685052
- 4 -
does not encourage this practice.4 In addition to the fact that an opinion desig-
nated as not precedential is not binding upon the Board, absent a drawing of the
complicated mechanical device in that case, its persuasive value is most lim-
ited. Finally, the opinion in that case is inapposite inasmuch as its relevance
in this context is limited to a final refusal of utilitarian functionality for a
product. Although the Trademark Examining Attorney earlier made a utili-
tarian functionality refusal as to this product packaging, it has since been
withdrawn.
II. Whether the Packaging is Inherently Distinctive

A. Inherent Distinctiveness of Product Packaging Generally
The question before us is whether the overall product packaging, and the cap
design, shown above, are each inherently distinctive. We analyze the refusal under
the principles set forth in Wal-Mart Stores v. Samara.5 Consistent with the teach-
ings of the Supreme Court in Wal-Mart Stores, we presume that retail customers of
many different products are “predisposed” through conditioning to regard packag-
ing, containers and other features of trade dress as signals of the source of a partic-
ular product. In the following excerpt, following a discussion of Judge Friendly’s
classic formulation in Abercrombie6 of the “spectrum of distinctiveness,” the Court
analogizes distinctive product packaging to a suggestive word mark (i.e., inherently
distinctive), rather than to a merely descriptive or generic term:

4 See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 101.03,
801.03, and 1203.02(f) (3d Ed. Rev. 1, 2012).
5 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).
6 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976).
Serial Nos. 77685045 and 77685052
- 5 -
… The attribution of inherent distinctiveness to certain categories
of word marks and product packaging derives from the fact that the
very purpose of attaching a particular word to a product, or encas-
ing it in a distinctive packaging, is most often to identify the source
of the product. Although the words and packaging can serve sub-
sidiary functions -- a suggestive word mark (such as “Tide” for
laundry detergent), for instance, may invoke positive connotations
in the consumer's mind, and a garish form of packaging (such as
Tide's squat, brightly decorated plastic bottles for its liquid laundry
detergent) may attract an otherwise indifferent consumer's attention
on a crowded store shelf -- their predominant function remains
source identification. Consumers are therefore predisposed to regard
those symbols as indication of the producer, which is why such
symbols “almost automatically tell a customer that they refer to a
brand,” “[Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162-
63, 34 USPQ2d 1161 (1995)], and “immediately … signal a brand or
a product ‘source’” [Qualitex Co., 514 U.S.] at 163. And where it is
not reasonable to assume consumer predisposition to take an af-
fixed word or packaging as indication of source -- where, for exam-
ple, the affixed word is descriptive of the product (“Tasty” bread) or
of a geographic origin (“Georgia” peaches) -- inherent distinctive-
ness will not be found. That is why the statute generally excludes,
from those word marks that can be registered as inherently distinc-
tive, words that are “merely descriptive” of the goods, Section
2(e)(1), 15 U.S.C. Section 1052(e)(1), or “primarily geographically
descriptive of them,” see Section 2(e)(2), 15 U.S.C. Section
1052(e)(2). In the case of product design, as in the case of color, we
think consumer predisposition to equate the feature with the
source does not exist. Consumers are aware of the reality that, al-
most invariably, even the most unusual of product designs -- such
as a cocktail shaker shaped like a penguin -- is intended not to
identify the source, but to render the product itself more useful or
more appealing.
Wal-Mart Stores, 54 USPQ2d at 1068-69.
Beyond this presumption, there is specific support in the record for the propo-
sition that indicia of product packaging, and specifically bottle designs, function as
source indicators in the retail market for mouthwash products. The photographs of
mouthwash bottles consistently demonstrate that frequently the purveyors of store
brands adopt bottle designs, coloration and other visual indicia of trade dress quite
similar to those of nationally-branded mouthwash products. In a real sense, such
Serial Nos. 77685045 and 77685052
- 6 -
discernible mimicry is a strong reinforcement that competitors marketing “compare-
to” house brands – as well as the consumers whom they are targeting – perceive
some source-indicating function in such indicia.
To determine whether product packaging is inherently distinctive, we consult
the test formulated in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342,
196 USPQ 289 (CCPA 1977).7 Under Seabrook Foods, the three relevant factors that
we consider in these circumstances are: (1) whether the packaging is a common
basic shape or design, (2) whether it is unique or unusual in the particular field,
and (3) whether it is 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.8 A finding that either the first or third of these fac-
tors is satisfied may render the marks not inherently distinctive; and a finding that
the second factor is not satisfied also might contribute to a finding that the proposed
marks are not inherently distinctive. However, Professor McCarthy has observed
that “[i]n reality, all three [Seabrook Foods] questions are 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 automati-

7 The Supreme Court’s decision in Wal-Mart Stores did not diminish the usefulness of the
Seabrook Foods test as to cases presenting the question of the inherent distinctiveness of
product packaging. See e.g., In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1689 (Fed. Cir. 2010) (“Nothing in the Wal-Mart decision questioned or undermined the
reasoning in Seabrook. Indeed, the Court cited Seabrook but did not express any disagree-
ment with its use to determine the inherent distinctiveness of trade dress, although reject-
ing it as a test for inherent distinctiveness in the context of product design.”); and In re
Brouwerij Bosteels, 96 USPQ2d 1414, 1420-21 (TTAB 2010).
8 Given the manner in which the product packaging design in Seabrook Foods differs from
the involved configurations, the fourth Seabrook Foods factor — whether the packaging is
capable of creating a commercial impression distinct from the accompanying words — is not
relevant to this packaging case.
Serial Nos. 77685045 and 77685052
- 7 -
cally be perceived by customers as an indicia of origin – a trademark.” 1 J.T.
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, Section 8.02 (4th
ed. 2010). The focus of the inquiry is whether 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. See, e.g., Tone Bros. Inc.
v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994), citing Pad-
dington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 27 USPQ2d 1189, 1192-
93 (2d Cir. 1993).
Thus, we are faced with two fact-specific determinations as to whether the cap
and the overall design of applicant’s mouthwash bottle are each so distinctive as to
point to a single source or origin such that each should be registered as inherently
distinctive.
B. Inherent Distinctiveness of the Cap Design
The ’045 application involves the contoured shape of a bottle cap having a nar-
row base with sides that flare out towards the top and terminate in an undulating
wave pattern around a recessed central core. The first Seabrook Foods factor asks
whether the involved trade dress is common generally: for example, does it employ a
basic shape or design such as a letter or geometric shape? See Brooks Shoe Mfg. Co.,
Inc. v. Suave Shoe Corp., 716 F.2d 854, 221 USPQ 536 (11th Cir. 1983). The cap is
clearly not a common geometric shape such as a circle, oval, square or triangle. See,
e.g., In re Creative Beauty Innovations Inc., 56 USPQ2d 1203, 1207-08 (TTAB 2000).
The second factor asks whether the symbol, here the cap, is common in the
particular field of use. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 226 USPQ
Serial Nos. 77685045 and 77685052
- 8 -
101 (1st Cir. 1985) (“Using a red heart as ornamentation for stuffed animals is … far
from unique or unusual … . [T]he record contains so many examples of use of a red
heart motif on teddy bears and other stuffed animals, not to mention all manner of
other toys and paraphernalia, that no reasonable argument
on this point can be made.”). The record shows in detail
the flared, asymmetrical sides on the top portion of the
bottle cap that terminate in an undulating wave pattern
around a recessed central core of the cap.
This cap design was also prominently featured in Brand Packaging’s “Design
Gallery Volume 7” in 2009:
SCOPE OUTLAST
PROCTER & GAMBLE | MULTINATIONAL
Mouthwash seems to have a common home in bathrooms: under the sink. P&G’s new
Scope Outlast was designed to get the product out from the cabinets and onto the bathroom
counter. By having the product visible at all times, the idea is that consumers will remember
to use it on a regular basis, increasing consumption of the brand.
The unique shape of the bottle was created to appeal to young women. The bot-
tle features a less medicinal-looking cap and more attractive shape. Its look was also
meant to clearly differentiate Outlast from other Scope mouthwashes.9

Most of the bottle caps shown in the record are wider at the base, or are gen-
erally cylindrical. The Examining Attorney highlights the upper portion of the
ACT Fluoride Anti-Cavity Treatment bottle, having an ordinary cap positioned
above the fill line on a molded reservoir built into the neck of the bottle, as
shown below, to demonstrate that applicant’s cap is similar. However, compared

9 http://www.brandpackaging.com/, attached to applicant’s response to Office action, dated
May 10, 2011.
Serial Nos. 77685045 and 77685052
- 9 -
to applicant’s bottle cap, this cap is rather
commonplace. Although the “squeeze-meter”
and reservoir built into the neck of the bottle
may be different from other bottles, the form-
fitting cylindrical cap is not unusual and does
not resemble applicant’s cap, which we find to
be a unique and distinctive shape.
Based upon this record, we find that applicant’s cap design is unusual for
mouthwash bottle caps.
The third Seabrook Foods question asks whether the dress is a mere refine-
ment of or variation on existing trade dress within the relevant field of use. Based
on all the evidence of record, we find that the bottle cap as shown in these applica-
tions is not a mere refinement of or variation on existing mouthwash caps.
Under the Seabrook Foods test, we find that the cap of the ’045 application is
sufficiently distinctive as to point to a single source and is entitled to registration on
the Principal Register.
C. Inherent Distinctiveness of the Bottle Design
We turn then to the overall contoured shape of applicant’s mouthwash bottle,
the subject of the ’052 application. As with the bottle cap design, in evaluating this
mark, again we are not faced with a common geometric shape. As described by ap-
plicant, this bottle features a relatively narrow base, with a wide, downward arc at
the base of a triangular “tear-drop” shaped core (almost resembling a smile), with
a disproportionately long, tapered neck that flows up through vertical, parallel
Serial Nos. 77685045 and 77685052
- 10 -
lines into the cap. The intricacies of the design are apparent in twenty-one dif-
ferent images from applicant’s United States Patent and Trademark Office De-
sign Patent D591607, made a part of the record by applicant on May 10, 2011.
As seen above in our discussion of the bottle cap design, the bottle then
widens at the top to create a reverse flare cap having a dramatically curved,
wavy top edge.
We find that the bottle shape is not common for oral care products under the
second Seabrook Foods factor. Indeed, just the opposite is true: the record indicates
that this overall packaging design has won awards because it was considered
unique. For example, it won a “Silver Winners Innovation” award for packaging as
part of the 22nd annual du Pont packaging competition:
Silver Winners Innovation

Making a Great Brand Better – Revitalizing an Iconic
Brand Through Innovative New Packaging Scope “Out-
last” Mouthwash from Procter & Gamble, Alpla,
TechGroup, and Webb deVlam Industrial Designers –
USA
Proliferation of private labels in the oral care rinse
category has made it very difficult to differentiate
among brands on store shelves.
Procter & Gamble (P&G) recognized that the novel Scope Outlast formula
needed equally compelling packaging to standout on the shelf. P&G worked with its
collaborators to create a new bottle shape and closure when launching new Scope
Outlast Mouthwash. Dubbed the “Genie” bottle, the new design has outstanding
stopping power and clearly separates Scope from private label and other offer-
ings in the category. … The company took a significant risk by radically changing
an iconic brand and it has paid off with significant consumer impact plus operational
efficiency.10

And as previously mentioned in our discussion of the cap design, applicant’s
bottle design was also prominently featured in Brand Packaging’s “Design Gallery
Volume 7” in 2009.

10 http://www2.dupont.com/Packaging_Resins/en_US/whats_new/article20100525.html, as attached to appli-
cant’s response to the First Office Action of October 19, 2010 (emphasis supplied).
Serial Nos. 77685045 and 77685052
- 11 -
The record contains additional articles taken from package design websites
about the publicity surrounding the release of this particular container design, of
which the following is representative:
Webb Scarlett deVlam sent us their newest work for Scope Out-
last mouthwash packaging (structural design). The design's
main merit is in its structural form. This is probably the nicest-
looking mouthwash bottle I've seen yet, and there's a good rea-
son for making it so. According to Christine McGovern, brand
manager for Scope, studies have shown most consumers tend to
put their mouthwash under their cabinet. If the bottle design is
elevated, people would be more inclined to leave it out on the
counter in full view so they're more likely to use twice a day in
their oral health regimen.

We purposely put this product in a bottle that would speak to
the consumer that this is something new and different. We real-
ly wanted to reinvent Scope with this,” said McGovern. “We are
also trying to drive more consumption. One of the things we’ve
learned is that consumers tend to put the bottle underneath
their cabinet so if you want consumers to use the product twice a
day as part of their routine if it is out of sight it could be out of
mind. Having a bottle that is counter-worthy can help drive
more usage and consumption to help bring those extra sales to
the marketplace.”11

The record shows that the bottle design not only enhanced the appeal of the
product, but served simultaneously to identify P&G’s SCOPE OUTLAST brand as
well as to update consumers’ associations with the SCOPE brand. When one com-
pares this design with all the other alternatives available in the field of oral care
products (whether pictured singly or displayed on supermarket shelves), we find
the applied-for design (shown first below) to be unique in this field:

11 http://www.thedieline.com/blog/2009/9/8/scope-outlast.html, as attached to Office Action
of April 19, 2010.
Serial Nos. 77685045 and 77685052
- 12 -

The third question under the Seabrook Foods test (e.g., whether the design is a
mere refinement of or variation on existing trade dress within the relevant field of
use12) is not satisfied merely by showing that other mouthwash bottles employ

12 In applying the Seabrook Foods test, we have considered dozens of images of bottles of
mouthwash that were submitted for the record by the Trademark Examining Attorney and
by applicant. In determining what is common or unusual for bottles in the particular field,
we find, on the record in this case, the relevant market to be that of containers for mouth-
wash products. Given that the Seabrook Foods test refers to the “particular field” and “par-
ticular class of goods,” we find that the designs of bottles for containing and dispensing liq-
uids in other fields (e.g., whether it be perfumery, ketchup, or salad dressings), and empty
crystal decanters, are, on this record, irrelevant to our inquiry. Seabrook Foods, 196 USPQ
at 291; In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396, 398 (CCPA 1972). We
think that, to make out a prima facie case that the particular field or class of goods that is
relevant under Seabrook Foods should be expanded beyond the most reasonable category
that may be inferred from the market for the goods themselves (e.g., here, the market for
mouthwash in disposable containers), some evidence showing substantiality of the link be-
tween the two markets would be required. This could perhaps be shown, for instance, by
evidence of the size of a particular alleged additional market and the degree of overlap be-
tween that market and the market for the specific goods at issue—although we are not fore-
closing that other evidence could supply the basis for the substantial link. Here, however,
the record contains no such evidence. Although the Trademark Examining Attorney points
to multiple vendors offering online empty crystal decanters to be filled by the consumer
with liquids, and specifically mouthwash, absent evidence from which we could reasonably
conclude that this market ought to be part of our inquiry in this case, we do not view the
mere availability of empty crystal decanters (i.e., the configuration of a type of Internation-
al Class 21 goods) as a sufficient factual predicate for considering such decanters here.

Serial Nos. 77685045 and 77685052
- 13 -
somewhat similar shapes or may have an elongated neck or a wide girth that ta-
pers to a narrower base. In spite of the conclusory statements made by the
Trademark Examining Attorney that this is a mere refinement of a well-known
form of ornamentation for a mouthwash bottle, we agree with applicant that the
Trademark Examining Attorney has failed to make of record any mouthwash bot-
tle design that includes the unique contours, shapes, and proportions encompassed
within applicant’s mark. While some other bottles may have necks more narrow than
their bottoms, we find that the Trademark Examining Attorney has not set forth a
“reasonable predicate” for her position of no inherent distinctiveness, the standard
required for the Office to make out a prima facie case that applicant’s bottle design
is not entitled to registration. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d
1629, 1632 (Fed. Cir. 2003).
We also see strong similarities between this case and an
earlier decision of this Board involving a container design, In re
Creative Beauty Innovations Inc., 56 USPQ2d at 1207-08. The
evidence in that case also included an article the applicant
submitted from a packaging design publication, an award for
the design, and third-party commentary about the distinctive-
ness of the bottle when compared to other containers. The
Board concluded that it was an uncommon design, was unique and unusual in the
field of cosmetics, and not a mere refinement of existing designs. Similarly, in the
case at hand, we find that both the design of the bottle cap and the overall bottle
design for applicant’s mouthwash are unique and unusual, and not mere refine-
Serial Nos. 77685045 and 77685052
- 14 -
ments of existing trade dress, and hence, we reverse the refusals to register these
designs.
D. The Effect of Applicant’s Design Patents
We have, as urged by the Trademark Examining Attorney, considered the fact
that applicant owns several design patents. The Trademark Examining Attorney
argues, in part, that these designs cannot serve a source-indicating function because
the design patents explicitly say they are “ornamental.” Applicant responds that:
[T]he Examining Attorney has confused the use of “ornamental”
in the Patent Act with the use of “ornamental” as it relates to
trademarks. The term “ornamental,” as the term appears in the
Patent Act, is used to identify the threshold for protectability of
a design patent covering an article of manufacture, as contrast-
ed with the “useful” threshold for protectability of a utility pa-
tent covering a process, machine, etc. See, 35 U.S.C. §§ 100, 171.
Applicant is aware of no authority whatsoever, and the Examin-
ing Attorney has cited to no authority, which stands for the
proposition that a design patent covering an applied-for mark
automatically renders such mark merely ornamental and inca-
pable of identifying the goods or services of the owner under Sec-
tion 1, 2, and 45 of the Lanham Act. While a valid U.S. design
patent may constitute evidence that the applied-for mark is or-
namental in some way, it does not carry with it a presumption
that the applied-for mark does not perform a source identifying
function because it is merely ornamental.
We agree with applicant that these design patents do not carry with them a
presumption that the applied-for marks do not perform a source-identifying func-
tion merely because the designs are described in the design patent documents as
being ornamental. On the other hand, the Trademark Examining Attorney is cor-
rect in arguing that the fact that a device is or was the subject of a design patent
does not, without more, result in said device being treated as inherently distinctive
or per se functioning as a trademark. In re Becton, Dickinson and Co., 675 F.3d
Serial Nos. 77685045 and 77685052
- 15 -
1368, 102 USPQ2d 1372 (Fed. Cir. 2012); In re R.M. Smith, Inc., 734 F.2d 1482, 222
USPQ 1, 3 (Fed. Cir. 1984). See also In re American Nat’l Can Co., 41 USPQ2d 1841
(TTAB 1997); and In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997). On this rec-
ord, we do not view the mere existence of the design patents as either supporting or
disfavoring registration. See also Secalt S.A. v. Wuxi Shenxi Const. Machinery Co.,
668 F.3d 677, 101 USPQ2d 1553, 1557 (9th Cir. 2012) (a design patent “cannot do
the whole job of proving inherent distinctiveness”), quoting Krueger Int'l, Inc. v.
Nightingale Inc., 915 F.Supp. 595, 40 USPQ2d 1334 (S.D.N.Y.1996) (Sotomayor, J.).
E. Conclusion: The Cap and Bottle Designs are Inherently Distinctive
In summary, we find the evidence of record to reveal that both the design of
the bottle cap and the overall bottle design for applicant’s mouthwash are unique
and unusual, and not mere refinements of existing trade dress, and are thus inher-
ently distinctive.
III. Ornamentation

The applications were also refused as consisting of merely decorative matter
that is neither inherently distinctive nor had acquired distinctiveness. As noted by
the Trademark Examining Attorney, TMEP § 1202.03 provides that “[s]ubject mat-
ter that is merely a decorative feature does not identify and distinguish the goods
and, thus, does not function as a trademark.”13 But it further provides that
“[m]atter that serves primarily as a source indicator, either inherently or as a result
of acquired distinctiveness, and that is only incidentally ornamental or decorative,

13 The section uses the terms “decorative” and “ornamental” interchangeably.
Serial Nos. 77685045 and 77685052
- 16 -
can be registered as a trademark.” As noted in section II, supra, we have found that
the bottle design and the cap design are both inherently distinctive, serve primarily
as indicators of source, and, to the extent they are decorative or ornamental in na-
ture, are only incidentally so. This finding necessarily requires reversal of the re-
fusal to register based on mere ornamentation or decorativeness.14
Decision: The refusals of registration are hereby reversed.

14 We also note that the distinctiveness of a putative mark consisting of a product packag-
ing should typically be analyzed under the framework set forth by the Supreme Court in
Wal-Mart Stores v. Samara, 529 U.S. 205, 54 USPQ2d 1065 (2000), and by our primary re-
viewing court in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ
289 (CCPA 1977); TMEP § 1202.02(b)(ii). Indeed, the “ornamentation” cases the Trademark
Examining Attorney pulls from TMEP § 1202.03(f)(iii) are difficult, if not impossible, to
apply to a putative mark consisting of the shape of a product’s packaging —
when those fact patterns involve a discrete “feature” of a package, such as:
the outline shape of the back side of a blister pack for a 10” Vise-Grip lock-
ing wrench where the angular shapes at the top of the box are non-
distinctive margins holding applicant’s word mark and product descrip-
tions, while the shaded squares on the lower portion represent the place-
ment of illustrations of how the locking wrench pliers can be used, (e.g.,

speed wrench, safe grinding, super pliers, emergency handle, all-purpose
clamp, pipe wrench, etc.), see In re Petersen Mfg. Co., 2 USPQ2d 2032
(TTAB 1987); the rose design that was merely a small portion of a larger
floral blossom pattern drawn from the overall package surface of unlimited
or undefined shape, all of which served as a background for the prominent
word mark, used on packaging for toiletries ranging from cosmetics to per-
fumes, see In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994); and a third
applicant’s package design for holiday decorations resembled gift wrapping
that would not be perceived as a source indicator, see In re J. Kinderman &
Sons Inc., 46 USPQ2d 1253 (TTAB 1998). Thus, as explained above, to the
extent that the concepts of TMEP §§ 1202.03 et seq. apply to this case, they are subsumed
in the discussion in section II, supra.