United States: Precedential No. 36: Applying CAFC's Converse Factors, TTAB Finds SNOBALLS Concession Trailer Configuration Lacks Acquired Distinctiveness

Last Updated: January 4 2019
Article by John L. Welch

The Board affirmed a refusal to register the product configuration mark shown below, for "Concession trailer for snowball vendors to operate a viable snowball business" [the word SNOBALLS being disclaimed], finding that Applicant SnoWizard, Inc. failed to prove acquired distinctiveness under Section 2(f). After rejecting SnoWizard's claim that the mark at issue constitutes packaging trade dress (which can be inherently distinctive), the Board applied the CAFC's recently-minted Converse factors to the Section 2(f) issue. In re SnoWizard, Inc., Serial No. 87134847 (Decefber 21, 2018) [precedential] (Opinion by Judge George C. Pologeorgis).

Product Packaging or Product Design?: The applied-for mark is described as "a three-dimensional configuration of a snowcapped roof with the word "SNOBALLS," a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors."

SnoWizard sought registration under Section 2(f) of the Lanham Act, thereby "effectively" conceding that its mark is not inherently distinctive. See In re MGA Entm't, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007). Nonetheless, it argued that the mark constitutes product packaging, not product design, and therefore a showing of acquired distinctiveness is not necessarily required - although a product design mark can never be inherently distinctive, product packaging marks can be. Wal-Mart Stores Inc. v. Samara Bros Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992)).

In Wal-Mart, the Supreme Court stated that, in close cases, "courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning," 54 USPQ2d 1070, but the Board pointed out that "this is not a close case."

Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant's applied-for mark is properly characterized as a product design.

Acquired Distinctiveness: The Board applied the "secondary meaning" factors set out by the CAFC in its recent decision in Converse, Inc. v. ITC, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress 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.

Snow Wizard annual sales of the "claimed trade dress concession trailer average" amounted to approximately $35,000 per year over the past nine years. The Board found this figure to be meaningless, since there was no information as to the cost of each concession trailer, how many consumers have purchased the trailers, or how many trailers SnoWizard sold per year. "Indeed, one could reasonably assume that the sales average is modest for large items such as concession trailers." In any case, even assuming that the sales were more than modest, "mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source."

The Board noted that "look for" advertising may be "particularly probative on the issue of whether a product design functions as a source identifier," but the record was devoid of any such advertising. Moreover, SnoWizard did not provide "any of the other kinds of evidence that may show that the mark has acquired distinctiveness, namely: (1) advertising figures for its goods, (2) the number of customers for its goods, (3) evidence regarding its exclusivity of use, (4) the unit amount of concession trailers it has sold, (5) evidence demonstrating an association of Applicant's applied-for product design or trade dress with Applicant by actual purchasers, (6) evidence showing that others have intentionally copied Applicant's product design, or (7) unsolicited media coverage of its concession trailer product design. See, e.g., Converse, Inc., 128 USPQ2d at 1546.

Examining Attorney Carol Spils submitted evidence that concession trailers with decorative roofs having representations of ice, snow cones, and similar food items are "not uncommon." There was no indication that any of the third-party configurations were "perceived by consumers as indicators of source for any goods or services, let alone for the trailers themselves."

Moreover, while these third-party uses of concession trailer designs may not be substantially similar to Applicant's applied-for mark, this evidence nonetheless shows that consumers are accustomed to seeing decorative roofs with snow cones, ice cream and similar food item designs on concession trailers and the like, presented in a non-source-indicating manner. Under such circumstances, consumers for concession trailers would look to differently designed concession trailer roofs as being aesthetic features, or generally advertising food items sold within, rather than acting as an indicator of source.

Weighing the Converse factors, the Board found that SnoWizard failed to prove acquired distinctiveness in its product configuration, and so the Board affirmed the refusal to register under Sections 1, 2 and 45 of the Trademark Act.

The TTABlog

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