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Transparent Container Clearly Functional
Published By World Trademark Law Report September 01, 2005

In Pennzoil-Quaker State Company v. Texaco Inc. (2005 US App LEXIS 11930 (FedCir), June 10 2005), the US Court of Appeals for the Federal Circuit has affirmed a decision of the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) to refuse the registration of a transparent container design mark for use with motor oils.

Pennzoil-Quaker State Company (PQS) applied to register a design mark that it described as 'the clear color used on containers for motor oil'. Texaco Inc opposed the application, arguing that the design was functional and that it was not distinctive as a source indicator. The case came before the TTAB (Texaco Inc v The Pennzoil-Quaker State Company (2004 TTAB LEXIS 397, May 28 2004)).

On the issue of functionality, the TTAB first disposed of PQS's claim for 'clear' as a color, finding that PQS was trying to claim transparency - the absence of color - and to carve out transparent plastic containers for its own exclusive use. The TTAB observed that permitting PQS to protect transparent plastic containers as its identity would force all competitors in the market for automotive motor oils to use opaque containers. The TTAB also found the design functional, relying on factors enumerated in In re Morton Norwich Products Inc and later reaffirmed by the Federal Circuit in Valu Engineering Inc. v. Rexnord Corp. The relevant factors were: (i) evidence of PQS advertising touting the utilitarian advantages of a clear container, and (ii) the fact that competitors would not have available alternative designs that perform the same function. The TTAB recognized that PQS's design was not chosen from among an infinite variety of design alternatives, but rather was chosen from only two alternatives - a container that is either transparent or opaque.

The TTAB also agreed with Texaco's argument that the clear container was not distinctive as an indication of source. At the outset, the TTAB noted that PQS sought registration based on acquired distinctiveness, and that absence of inherent distinctiveness therefore was established. While PQS tried to show acquired distinctiveness through evidence of substantial advertising referring to the clear packaging, the TTAB found that such advertising only tangentially promoted the clear packaging. The TTAB also relied on several other facts:

  • the absence of any direct or empirical evidence, such as surveys, showing consumer awareness of clear packaging as a source identifier;
  • the presence on PQS's containers of other source identifiers such as QUAKER STATE word and design marks; and
  • the many other uses of clear containers for consumer household and automotive products demonstrate that consumers are not predisposed to look to clear plastic containers as source indicators.

The TTAB concluded that PQS could not meet its burden of persuasion, which is very high for a mark of this type.

On appeal, the Federal Circuit simply upheld the earlier ruling without delivering an opinion.

It should be noted that the decisions are not precedential.
 

This article has been reprinted with permission from the September 1, 2005 edition of the World Trademark Law Report . © 2002-2006, Globe Business Publishing Ltd.

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