United States Court of Appeals for the Federal Circuit
02-1602
(Serial no. 75/477,402)
IN RE PACER TECHNOLOGY
Thomas E. Schatzel, Law
Offices of Thomas E. Schatzel, of Los Gatos, California, argued for appellant.
Raymond T. Chen, Associate
Solicitor, Office of the Solicitor, United States Patent and Trademark Office,
of Arlington, Virginia, argued for appellee.
With him on the brief were John M. Whealan, Solicitor; and Cynthia
C. Lynch, Associate Solicitor.
Appealed from: United
States Patent and Trademark Office,
Trademark Trial and Appeal Board
United States Court
of Appeals for the Federal Circuit
02-1602
(Serial no.
75/477,402)
IN RE PACER
TECHNOLOGY
______________________
DECIDED:
August 4, 2003
______________________
Before LOURIE,
GAJARSA, and LINN, Circuit Judges.
GAJARSA,
Circuit Judge.
Pacer Technology (“Pacer”) appeals from a decision of the
United States Patent and Trademark Office’s (“PTO’s”) Trademark Trial and
Appeal Board (“Board”), which affirmed the PTO’s refusal to register as a
trademark Pacer’s adhesive container cap design on the ground that the design
was not inherently distinctive. In re
Pacer Tech., Serial no. 75/477,402 (TTAB June 11, 2002). Because the Board’s decision is supported by
substantial evidence, we affirm.
I. BACKGROUND
Pacer
filed a use-based trademark application with the PTO in 1998 to register a cap
of a container for adhesives and bonding agents (“adhesive container
cap”). Pacer disclaimed the bottom
portion of the adhesive container cap during prosecution. The top portion, which Pacer claims as its
trademark, has a pointed crown from which four equally spaced flat wings
extend, as shown below:
In the initial action, the
examining attorney, inter alia, refused to register Pacer’s
application on the basis that the adhesive container cap was not inherently
distinctive. To address the refusal,
Pacer submitted five affidavits of consumers stating that Pacer’s container cap
design was a source-identifier of Pacer’s product. Nonetheless, the examining attorney
maintained his refusal to register the adhesive container cap because it was
not inherently distinctive. As support,
the examining attorney referred to the cover pages of eleven United States
Design Patents showing drawings of various adhesive container caps. The container caps in these design patents
all have a crown, and some have four or six evenly spaced wings around the
crown. Pacer appealed the examining
attorney’s refusal to register the adhesive container cap to the Board.
The Board affirmed, finding that
the design patents provided by the examining attorney were “probative of the
fact that consumers are not likely to find applicant’s claimed feature (wings
arrayed evenly around a pointed crown) to be at all unique, original or
peculiar in appearance.” The Board also
found that several of the design patents belonged to Pacer’s competitors. Based on these design patents, the Board
found that Pacer’s asserted mark did not serve as a source-identifier for
consumers. The Board also found that the
design had not acquired distinctiveness, under § 2(f) of the Lanham Act,
as a source-identifier, and accordingly affirmed the examining attorney’s
refusal to register Pacer’s adhesive container cap as a trademark. Pacer timely appealed, and this court has
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
II. DISCUSSION
A. Standard of Review
This court reviews the Board’s
legal conclusions de novo, In re Int’l Flavors &
Fragrances Inc., 183 F.3d 1361, 1365 (Fed. Cir. 1999), and the Board’s
factual findings for substantial evidence, On-Line Careline, Inc. v. Am.
Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000). Substantial evidence is “more than a mere
scintilla” and “such relevant evidence as a reasonable mind would accept as
adequate” to support a conclusion. Consol.
Edison v. NLRB, 305 U.S. 197, 229 (1938).
Whether an asserted mark is inherently distinctive is a factual
determination made by the Board. Hoover
Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001).
B. Inherent Distinctiveness
The Board found that Pacer’s
container cap was not inherently distinctive and thus nonregistrable as a mark,
based solely on the eleven design patents of container caps. The Board also found that Pacer could not
demonstrate that its adhesive container caps had acquired distinctiveness,
which Pacer does not dispute on appeal.
Therefore, the sole issue presented on appeal is whether the design
patents constitute substantial evidence to support the Board’s finding of no
inherent distinctiveness.
It is well established that the
PTO has the burden to establish a prima facie case of no inherent
distinctiveness. See, e.g.,
In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) (stating that the Board did
not err in affirming the examiner’s prima facie case that the
mark was merely descriptive); In re Loew’s Theatres, Inc., 769 F.2d 764,
768 (Fed. Cir. 1985) (stating that the PTO made a prima facie
case showing that the asserted mark was primarily geographically deceptively
misdescriptive); In re R.M. Smith Inc., 734 F.2d 1482, 1484 (Fed. Cir.
1984) (stating that the PTO established a prima facie case of de
jure functionality of the asserted mark). 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. See Gyulay, 820 F.2d at 1217; R.M.
Smith, 734 F.2d at 1484.
Accordingly, on appeal, we must
consider whether the PTO has made out a sufficient prima facie
case of no inherent distinctiveness, and, if so, whether Pacer has submitted
sufficient evidence to rebut the prima facie case. Here, the question of inherent
distinctiveness rests on whether the public in the relevant market would view
Pacer’s adhesive container cap as a source-identifier. See Wal-Mart Stores, Inc. v. Samara
Bros., Inc., 529 U.S. 205, 210 (2000) (stating that a mark is inherently
distinctive if its “‘intrinsic nature serves to identify a particular source’”
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992))); Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1206 (Fed. Cir.
1994) (Trade dress is inherently distinctive if it “is of such a design that a
buyer will immediately rely on it to differentiate the product from those of
competing manufacturers.”). In
considering whether a design is inherently distinctive, we consider factors
such as:
whether it was a “common” basic shape or design, whether it was unique or unusual in a particular field, 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 whether it was capable of creating a commercial impression distinct from the accompanying words.
Seabrook Foods, Inc. v. Bar-Well
Foods Ltd.,
568 F.2d 1342, 1344 (CCPA 1977) (citations omitted).
The PTO’s position is that the
design patents showing other adhesive container cap designs are sufficient prima
facie evidence from which one could conclude that Pacer’s design is not
unique or unusual in the relevant field and therefore not inherently
distinctive. Pacer disagrees, contending
that the PTO, as part of its prima facie case, is required to
show that the patented designs were actually used in the relevant marketplace. We
agree with the PTO that it need not do so.
Our decision in Loew’s is
instructive on this issue. Loew’s
concerned whether the use of “Durango” for the product tobacco was primarily
geographically deceptively misdescriptive pursuant to § 2(e)(2) of the
Lanham Act.[1] 769 F.2d at 765. On appeal to this court, the applicant argued
that the PTO failed to meet its prima facie case that there was a
goods/place association between tobacco and the geographic name “Durango”
because the PTO produced no evidence that the public would actually make
the asserted association. Id. at
768. We disagreed that the PTO, as part
of its prima facie case, must establish an actual goods/place
association. Id. We reasoned that the PTO “does not have
means” to undertake the research, such as a marketing survey, necessary to
prove that the public would actually make the goods/place association
asserted. Id. We consequently required the PTO only to
establish “a reasonable predicate for its conclusion that the
public would be likely to make the particular goods/place association on
which it relies,” and not that the public would actually make the asserted
association. Id. (emphases
added).
Similarly, in Gyulay, we
did not require the PTO, as part of its prima facie case, to show
that the relevant public actually viewed the asserted mark as merely
descriptive. There, the applicant
appealed the Board’s denial of registration, pursuant to § 2(e)(1) of the
Lanham Act, of the term “APPLE PIE” as merely descriptive of the smell of
potpourri. Gyulay, 820 F.2d at
1216. In support, the Board had referred
to the applicant’s wholesale catalog in which the applicant asserted that its
potpourri was available in scents “that simulate those unforgettable aromas”
such as apple pie. Id. On appeal, the applicant argued that
descriptiveness should be determined by the ultimate purchasers, and that the
contents of the wholesale catalog did not constitute evidence of
descriptiveness from the vantage point of the purchasing public. Id. at 1217. While we acknowledged that “the trademark
attribute of descriptiveness vel non is determined from the point
of view of the purchaser,” we concluded that the wholesale catalog was proper
evidence of descriptiveness and sufficient to satisfy the PTO’s prima facie
burden. Id.
As in Loew’s and Gyulay,
we conclude here that the PTO is not required as part of its prima facie
case to show that the container caps in the design patents actually were being
advertised, sold, or used in the relevant market. Rather, to meet its prima facie
burden, the PTO must, at a minimum, set forth a “reasonable predicate” for its
position of no inherent distinctiveness.
See Loew’s, 769 F.2d at 768 (stating that the PTO, in
making its prima facie case that a mark is primarily
geographically deceptively misdescriptive, must establish a “reasonable
predicate” for its conclusion that the public would be likely to make the
goods/place association in question).
Furthermore, under our standard of review, we look only for substantial
evidence, or more than a scintilla of evidence, in support of the PTO’s prima
facie case. Consol. Edison,
305 U.S. at 229; Hoover, 238 F.3d at 1359; R.M. Smith, 734 F.2d
at 1484. Here, the design patents are
such sufficient evidence. We agree with
the Board that the adhesive container caps in these design patents are
“probative” of the fact that consumers would not find Pacer’s adhesive
container cap design to be unique or unusual.
See Seabrook, 568 F.2d at 1344. Moreover, the Board found that some of these
patents were assigned to Pacer’s competitors. In disputing this finding
by the Board, Pacer argues that some of the design patents were assigned to
foreign companies. However, 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. Therefore, Pacer fails to
demonstrate why we should not accept this finding by the Board. In proffering the design patents, some of
which belonged to Pacer’s competitors, the PTO was not obliged to do more to
meet its prima facie burden.
We are mindful of the reality that the PTO is an agency of limited
resources. Loew’s, 769 F.2d at
768 (“The practicalities of the limited resources available to the PTO are
routinely taken into account in reviewing its administrative action.” (citing Norton
v. Curtiss, 433 F.2d 779, 794 (CCPA 1970))). As such, the PTO cannot be expected to
shoulder the burden of conducting market research to establish the actual
presence of the design patent container caps in the relevant market. See id. (“The PTO does not have
means to conduct a marketing survey” to determine whether the public actually
made a goods/place association. . . .”); see also In
re The Boulevard Entm’t, Inc., No. 02-1585, slip. op. at 7 (Fed. Cir. July
9, 2003) (stating that “although other evidence, such as consumer surveys,
would no doubt be instructive,” the PTO’s finding that a mark comprises or
consists of scandalous matter pursuant to 15 U.S.C. § 1052(a)
“is not legally insufficient because of the absence of such evidence”). We therefore hold that the PTO has
established its prima facie case with substantial evidence in the
form of the design patents.
Given the PTO’s prima facie
case of no inherent distinctiveness, Pacer now holds the burden of rebutting
the prima facie case with “competent evidence,” In re Teledyne
Indus., Inc., 696 F.2d 968, 971 (Fed. Cir. 1982). Pacer could successfully rebut the prima
facie case, for example, with evidence showing that the container caps
shown in the design patents were not actually being sold in the relevant
market. Although Pacer complains that
this would put an unreasonable burden on the applicant to compile such
information, we disagree. As between the
PTO and the applicant, who can more easily access and compile information
requiring market research, it is appropriate, once the PTO makes out its prima
facie case, to place the burden on the applicant to come forward with
relevant evidence of distinctiveness to overcome the PTO’s rejection. See id. (stating that the
determination that a showerhead design is not de jure functional
“may well be possible only in light of evidence more readily available to, or
uniquely in the possession of, the applicant[,]” including whether competitors
were able to compete with applicant’s design).
Alternatively, to forward a successful rebuttal, Pacer could provide
evidence showing that, even if one accepted the design patents as evidence of
use in the relevant market, the relevant public nonetheless viewed Pacer’s
container cap as unique or unusual.
Pacer fails to provide any such
evidence. Pacer’s rebuttal consists of
five affidavits signed by individuals in the business of marketing and applying
artificial nail products to customers.
All five affidavits are nearly identical and merely state that upon
seeing Pacer’s adhesive container cap, the said affiant “identif[ied] the
source of the product to be Pacer Technology.”
As the Board noted, these affidavits, thus conclusorily worded, fail to
explain what it is about Pacer’s adhesive container cap that is unique or
unusual, or distinctive from those of its competitors. Considering the substance of these
affidavits, we conclude that there is substantial evidence that they are not
the kind of “competent evidence,” id., that could carry Pacer’s burden
of rebutting the PTO’s prima facie case. Moreover, as the Board pointed out, these
affidavits, which are all signed by individuals in the artificial nail
business, at most purport to represent the views of a small segment of the
relevant market. The relevant market for
the mark is much broader, as Pacer’s cap is part of a container holding
adhesives and bonding agents generally, and not simply those for artificial
nails. In view of the above, we hold
that Pacer has failed to rebut the PTO’s prima facie case of no
inherent distinctiveness.
III. CONCLUSION
Substantial evidence exists as to
the PTO’s prima facie case that the adhesive container cap is not
inherently distinctive and as to Pacer’s failure to rebut the prima facie
case. We therefore affirm the Board’s
decision sustaining the examining attorney’s refusal to register Pacer’s
adhesive container cap on the ground of no inherent distinctiveness.
AFFIRMED.
COSTS
No costs.