This Box Is Not A Trademark
Thanks to the TTABlog for pinting out In re MGA Entertainment, Inc., Serial No. 76603323 (August 17, 2007) where the U.S. Trademark Trial and Appeal Board affirmed a refusal to register a configuration for "trapezoidal cardboard boxes" for toys, tames, and athletic protective pads, agreeing with the PTO that the identified goods are not goods in trade and that, even if they were, the configuration is not inherently distinctive and lacks acquired distinctiveness. According to the TTAB,
We note that there is no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade. With respect to the puzzle boxes, in particular, we are not persuaded by applicant’s argument that because the puzzle boxes may be used to store the puzzle pieces when not being used, such boxes have additional utility and thus constitute goods in trade. It is obvious that because of the loose nature of puzzle pieces, they must be held within some type of point of sale container. It only makes sense that consumers would store the puzzles pieces in the original container when the puzzles pieces are not being used. Any number of products may be stored by consumers in their original boxes or packaging when not being used (e.g., shoes may be stored in their original cardboard boxes, coffee beans may be stored in their original bags, and DVDs may be stored in their original plastic boxes). However, the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade. Because many products are stored in the containers in which they are sold, consumers are likely to regard the puzzle boxes as nothing more than point of sale containers, as opposed to separate goods in trade.
Insofar as the toy laptop computer boxes are concerned, there is no indication that such boxes are labeled as carrying cases for the toy laptop computers. Moreover, there is no evidence that applicant advertises or promotes the toy laptop computer boxes as carrying cases for the toy laptop computers. In addition, we note that there is no evidence that children actually use the toy laptop computer boxes in the manner argued by applicant, that is, as carrying cases and as part of the ongoing
play environment. We hasten to add that, even if there were evidence that children actually used the boxes in this manner, we would not necessarily be persuaded by this evidence that the boxes have additional utility and thus constitute goods in trade. It is common knowledge that packaging materials may be used as toys by children and thus many such materials, such as plastic bags, have warnings that they are not toys to be used by children.
In short, we are not convinced on this record that consumers recognize the toy laptop computer boxes as carrying cases and part of the ongoing play environment. Rather, we believe consumers would view such boxes as nothing more than point of ale containers for applicant’s toy laptop computers. In view of the foregoing, we are not persuaded that the toy laptop computer boxes have additional utility such that they constitute goods in trade.
In sum, the goods in this case, trapezoidal boxes for toys, games and playthings, are unlike the ball point pens and calendars in Snap-On Tools and United Merchants & Manufacturers, Inc., respectively. We agree with the examining attorney that such goods are incidental to applicant’s primary goods, namely, toys, games and
playthings, and are not goods in trade of applicant. Accordingly, the refusal on the ground that the identified goods do not constitute goods in trade is affirmed.