Ouch! Well, you can't win them all! The Board affirmed a refusal to register the container shape shown below, for "dairy products, namely, skyr," on the ground that the applied-for mark comprises "a nondistinctive configuration of packaging for the goods." The Examining Attorney had accepted Applicant’s amendment to the Supplemental Register in the alternative, and so the mark will now proceed to registration on the Supplemental Register. In re Icelandic Provisions, Inc., Serial No. 86768287 (February 16, 2016) [not precedential].
The mark consists of the three-dimensional configuration of a container for the goods, the container having substantially the shape of a non-rectangular parallelogram in horizontal cross-section. Examining Attorney Kristina Morris maintained that the configuration was not inherently distinctive and therefore was eligible for registration on the Principal Register only upon a showing of acquired distinctiveness. Applicant Icelandic Provisions contended that the configuration "constitutes inherently distinctive packaging registrable without proof of acquired distinctiveness."
As usual, the Board applied the Seabrook test for determining whether a design is inherently distinctive:
(1) whether the design is a common basic shape or design; (2) whether the design is [not] unique or unusual in the field in which it is used; (3) whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for the particular class of goods viewed by the public as a dress or ornamentation for the goods; or (4) whether the design is capable of creating a commercial impression distinct from any accompanying matter.
The Examining Attorney argue that a parallelogram is a basic geometric shape, and that Applicant’s parallelogram-shaped containers are merely a refinement of the square- and rectangular-shaped containers commonly used in the dairy industry. Applicant pointed to the rounded corners and sloped sides of the container as distinguishing and distinctive features.
The Board agreed with applicant that there was no evidence "showing use of the same exact configuration as that used by Applicant." But it found that the evidence submitted by the Examining Attorney showed that "many yogurt and similar dairy products are sold in containers having square, rectangular and oblong shapes, i.e., three-dimensional configurations, having tapered sides and rounded corners."
[P]urchasers and prospective customers for Applicant’s goods would be unlikely to regard its three dimensional configuration as identifying and distinguishing Applicant’s skyr and indicating its source.
Viewing applicant's specimen of use, the Board found that "[t]he wording and design elements applied to Applicant’s container contribute to the overall trade dress, and we see no basis for a finding that the shape of Applicant’s container creates a separable commercial impression."
Prospective customers viewing yogurt and related dairy product containers including those shown in the record and those used for Applicant’s goods, are likely drawn to the products by viewing the prominent word marks, logos and the decorative colors used on the packaging i.e., indicia other than the relatively common geometric shapes of the product containers.
And so the Board affirmed the refusal to register on the Principal Register.