Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA964111
`
`Filing date:
`
`04/02/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`Correspondence
`Address
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`87285412
`
`Reelex Packaging Solutions, Inc.
`
`DAVID P. GORDON
`GORDON & JACOBSON, P.C.
`60 LONG RIDGE ROAD, SUITE 407
`STAMFORD, CT 06902
`UNITED STATES
`pto@gordonjacobson.com
`203-323-1800
`
`Submission
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`Attachments
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`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Appeal Brief
`
`REE-TM-013 APPEAL BRIEF.pdf(189303 bytes )
`
`Christian Mannino
`
`pto@gordonjacobson.com
`
`/Christian Mannino/
`
`04/02/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Appellant: REELEX PACKAGING
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`
`
`SOLUTIONS, INC.
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`Serial No.: 87/285412
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`Filed: December 30, 2016
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`
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`Examining Attorney: Suzanne Blane
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`Attorney Docket: REE-TM-013
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`APPELLANT’S BRIEF ON APPEAL
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`A Notice of Appeal to the Trademark Trial and Appeal Board was filed on April 2, 2019, in
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`
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`which Appellant appealed from the final refusal in the Office Action dated November 8, 2018.
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`1
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`TABLE OF CONTENTS
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`(1) INDEX OF CASES .................................................................................................................... 2
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`(2) DESCRIPTION OF THE RECORD .......................................................................................... 2
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`(3) STATEMENT OF THE ISSUES ............................................................................................... 3
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`(4) RECITATION OF THE FACTS ................................................................................................ 4
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`(5) ARGUMENTS ........................................................................................................................... 9
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`(6) CONCLUSION ........................................................................................................................ 25
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`
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`(1) INDEX OF CASES
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`In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB, January 7, 2011).
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`In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982).
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`TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).
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`In re Becton, Dickinson & Co., 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012). In re
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`R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984).
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`
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`(2) DESCRIPTION OF THE RECORD
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`All references to the TSDR will be with respect to the relevant document downloaded as a pdf
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`file.
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`Appellant filed its application on December 30, 2016. On April 5, 2017 the Examining Attorney
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`issued a non-final Office Action (“the first Office Action”) refusing registration on two grounds,
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`functionality and non-distinctiveness. See Apr. 5, 2017 Office Action TSDR. The Appellant responded
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`to the first Office Action on October 3, 2017. See Oct. 3, 2017 Response to Office Action TSDR.
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`In response to Appellant’s response, on November 1, 2017, the Examining Attorney approved the
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`applied-for mark for publication on the principle register. Later, after approving the mark for publication,
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`the Examining Attorney withdrew the mark from publication, and issued another non-final Office Action
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`dated December 30, 2017 (“the second Office Action”). See Dec. 30, 2017 Office Action TSDR. As
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`2
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`noted in the second Office Action, the reason for withdrawing the application from publication was that
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`“it was found the mark fails to function as an identification of source,” which was a new ground of
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`refusal. Also, the Examining Attorney stated that the identification of goods required further clarification
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`and that the specimen does not show the mark in use with the identified goods. Appellant notes that in
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`the second Office Action, the Examining Attorney did not base refusal on grounds of functionality and
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`Appellant considered the issue of functionality settled based on the evidence of record. Nonetheless, the
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`Examining Attorney maintained the refusal on the ground of non-distinctiveness and added the new
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`ground of refusal, i.e., failure to function as a trademark.
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`Appellant responded to the second Office Action on May 24, 2018. See May 24, 2018 Response
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`to Office Action TSDR. In Appellant’s response, Appellant amended the mark description to clarify that
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`the goods are identified as electric cables and wire in class 9, as suggested by the Examining Attorney in
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`the second Office Action. On June 29, 2018 the Examining Attorney issued another non-final Office
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`Action (“the third Office Action”). See June 29, 2018 Office Action TSDR. In the third Office Action,
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`the Examining Attorney maintained all of the refusals in the second Office Action, and, additionally,
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`reintroduced the functionality refusal that was raised in the first Office Action.
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`Appellant responded to the third Office Action on September 26, 2018. See Sep. 26, 2018
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`Response to Office Action TSDR. On November 11, 2018, the Examining Attorney issued a fourth, final
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`Office Action, which maintains all of the rejections raised in the third Office Action. See Nov. 11, 2018
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`Office Action TSDR.
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`(3) STATEMENT OF THE ISSUES
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`Whether the applied-for mark for trade dress is functional.
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`Whether the appplied-for mark has acquired distinctiveness.
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`Whether the applied-for mark functions as an indication of source of the identified goods.
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`A.
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`B.
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`C.
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`3
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`(4) RECITATION OF THE FACTS
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`A.
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`The Appellant is the developer and licensor of Reelex Licensed Packaging System, hereinafter
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`referred to as the “Reelex System”. The Reelex System is used by cable and wire manufacturers around
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`the world to package their cable and wire into what are known as “Reelex Packages”. Those
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`manufacturers use proprietary winding machines that are designed, manufactured, and patented by
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`Reelex, and Reelex knowhow to wind the cable and wire into finished coils of cable and wire. See Oct. 3,
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`2017 Response to Office Action, TSDR p. 35.
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`B.
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`A Reelex Package, otherwise known as a Reelex Box, includes a wound coil of cable or wire
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`inside a box. See Oct. 3, 2017 Response to Office Action, TSDR pp. 35, and 42-48.
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`C.
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`Appellant’s proprietary winding process winds cable in a figure-eight pattern that allows the
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`cable and wire to be “paid out” from a box without kinking and tangling. See Nov. 8, 2018 Office
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`Action, TSDR p. 34.
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`D.
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`The applied-for trade dress is trade dress for electric cable and wire in class 9. See May 24, 2018
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`Response to Office Action, TSDR pp. 5 and 6.
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`E.
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`The Appellant owns U.S. Patents 5,810,272; 6,086,012; 6,341,741; 4,160,533; and 7,156,334,
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`which relate to various aspects of manufacturing coils of cable and wire that can be packaged. See Oct. 3,
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`2017 Response to Office Action pp. 4-5. See Sep. 26, 2018 Response to Office Action, TSDR p. 12.
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`F.
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`None of Appellant’s patents require the features of the box described in Appellant’s applied-for
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`trade dress. Indeed, at least U.S. Patent 6,086,012 actually teaches at least three shapes (oval, elliptical,
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`and diamond) of the payout hole that differ from the circular hole of the applied-for trade dress. See Oct.
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`3, 2017 Response to Office Action, TSDR pp. 4-5.
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`G.
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`The applied-for trade dress incorporates many design elements – shape and aspect ratio of the
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`box, as well as the shape, size, and location of the hole – which were selected for their ornamentality and
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`distinctiveness. See Oct. 3, 2017 Response to Office Action, TSDR pp. 22-24.
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`4
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`H.
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`The specific combination of sizes, shapes, and locations embodied in the applied-for trade dress
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`are not dictated by the function of the box, but are instead arbitrarily selected. See Oct. 3, 2017 Response
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`to Office Action, TSDR pp. 22-24.
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`I.
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`REELEX publishes a “Packaging Guide” that includes a section “Box Design Guidelines” that
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`does not require that a box have the applied-for design in order to perform its function and does not
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`suggest that the applied-for configuration is preferred. See See Oct. 3, 2017 Response to Office Action,
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`TSDR pp. 22-24.
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`J.
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`There are many alternative designs of the package that would appear different from the applied-
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`for trade dress and would result in the same or lower component cost. See Oct. 3, 2017 Response to
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`Office Action, TSDR pp. 22-24.
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`K.
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`Some alternative embodiments of the design, include:
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` Different hole/tube shape
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`o Oval (U.S. Patent 6,086,012, Figs. 4 to 6 )
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`o Elliptical (U.S. Patent 6,086,012, Fig. 7)
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`o Diamond Shaped (U.S. Patent 6,086,012, Fig. 4)
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` Different hole size
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`o 1.5, 2.0, 2.5, 6.0, 8.0 inches
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` Different hole location
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`o Top and bottom of rectangular panel
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`o Corner between rectangular panels (U.S. Patent 4,160,533)
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` Different Box Shape and Aspect Ratio
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`o Trapezoidal box
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`o Cube box
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`o Octagonal box (U.S. Patent 6,491,163)
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`o Slingpack box (U.S. Patent 8,960,431)
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`5
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` Different box closures
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`o Square side having a line folding assembly divided 1/3 and 2/3.
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`See Oct. 3, 2017 Response to Office Action, TSDR pp. 22-24.
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`L.
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`Any combination of these design variations would provide all of the function of the applied-for
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`trade dress and with a different overall appearance, and some embodiments would provide that function at
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`the same or lower cost. Indeed, there are a myriad of package designs that can be chosen that will have
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`the functionality of the applied-for trade dress with a different overall appearance and would cost
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`approximately the same. See Oct. 3, 2017 Response to Office Action, TSDR pp. 22-24.
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`M.
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`Products having the applied-for trade dress have been marketed by the Appellant for over 16
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`years as of December 30, 2016. See Oct. 3, 2017 Response to Office Action, TSDR p. 27-41.
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`N.
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`Over the years, in excess of $1.1 million was spent to promote awareness of the product having
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`the applied-for trade dress. The manner of such promotion particularly promoted the product’s trade
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`dress. See Oct. 3, 2017 Response to Office Action, TSDR p. 27.
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`O.
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`As a result of the various marketing and advertising efforts, as of December 30, 2016, more than
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`54.8 million Reelex Packages have been sold, each of which including a box having the applied-for trade
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`dress. See Oct. 3, 2017 Response to Office Action, TSDR pp. 27-41.
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`P.
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`The Executive Director of the Communications Cable & Connectivity Association (CCCA) and
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`CEO/Director of the International Wire & Cable Symposium, David B. Kidoo, has declared that he
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`recognizes coils of cable and wire having the applied-for trade dress as “Reelex Boxes” that are licensed
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`by Reelex Packaging Solutions, Inc. See Oct. 3, 2017 Response to Office Action, TSDR p. 45. CCCA is
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`a non-profit corporation that was started in June 2007 to explore ways to address communication network
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`performance issues caused by non-compliant and counterfeit structured cabling components as well as
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`identify potential threats to public safety these components may represent. CCCA is a major resource for
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`well researched, fact-based information and education on the important issues, technologies and
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`structured cabling products impacting the current and future needs of the building network and cabling
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`infrastructure. CCCA is proactive in supporting and participating in codes and standards bodies and other
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`6
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`trade, industry and safety organizations, which affect the quality, performance and societal needs of the
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`structured cabling infrastructure. See CCCA at http://cccassoc.org/about/, last reviewed on January 10,
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`2019.
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`Q.
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`Other declarants representing companies that are large consumers and users of cable and
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`packaging who are very knowledgeable about such cable and packaging have similarly declared their
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`ability to recognize whether or not a box of cable or wire is a Reelex Box by simply looking at the box.
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`See Oct. 3, 2017 Response to Office Action, TSDR pp. 42-44, 46-48. Those other declarants and their
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`organizations include:
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`1. Wayne B. Roussel, Senior Packaging Engineer at Belden Inc.
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`Established in 1902, Belden Inc. is a global leader in signal transmission and security solutions
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`for mission-critical applications in enterprise and industrial markets. See Belden Inc. at
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`https://www.belden.com/about, last viewed on Jan. 10, 2019. Belden Inc. designs, manufactures, and
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`sells a comprehensive portfolio of cable, connectivity, and networking products for the transmission
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`of signals for data, sound and video applications. See Oct. 3, 2017 Response to Office Action, TSDR
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`p. 42. In 2017, Belden Inc. had revenue of $2.3 billion. See 2017 Annual Report, Belden Inc.,
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`available at http://investor.belden.com/investor-relations/financial-information/latest-
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`financials/default.aspx, last viewed on Jan. 10, 2019.
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`2. Dominic Desmond, Vice President at Benfield Electric.
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`In operation for over 65 years, Benfield Electric is a supplier of products covering fields of
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`electrical distribution, data communications, control, power systems, HVAC, and elevator equipment.
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`See Oct. 3, 2017 Response to Office Action, TSDR pp. 43-44. In 2018 Benfield Electric had revenue
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`of over $196 million. See D&B Hoovers, H.H. Benfield Electric Supply Company, Inc. profile at
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`http://www.hoovers.com/company-information/cs/company-
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`profile.hh_benfield_electric_supply_company_inc.3ff8faf8901f8945.html, last viewed on Jan. 10,
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`2019.
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`3. John Leffingwell, Continuous Improvement Manager at The Siemon Company.
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`7
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`Established in 1903, The Siemon Company is an industry leader specializing in the design and
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`manufacture of high quality, high-performance low voltage infrastructure solutions and services for
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`data centers, LANs, and intelligent buildings. See Oct. 3, 2017 Response to Office Action, TSDR p.
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`48. In 2018, The Siemon Company had revenue of over $156 million. See D&B Hoovers, The
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`Siemon Company at http://www.hoovers.com/company-information/cs/company-
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`profile.the_siemon_company.4603846ed94c0964.html, last viewed on January 10, 2019.
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`4. Darrell Edgett, Vice Presidenet and General Manager of Deca Cables Inc.
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`Deca Cables Inc. is a leading manufacturer of wire and cable for the industrial, petro-chemical,
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`utility, mining, transportation, OEM, and electronic markets. See Oct. 3, 2017 Response to Office
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`Action, TSDR p. 46. Deca Cables Inc. has over 40 years of manufacturing experience and is
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`committed to design, development, and manufacturing process for wire and cable. See Deca Cables
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`Inc. at http://www.decacables.com/about, last viewed on Jan. 10, 2019. In 2018, Deca Cables Inc.
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`had revenue of over $100 million. See Deca company profile at https://www.zoominfo.com/c/deca-
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`cables-inc/33165698, last viewed on Jan. 10, 2019.
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`5. Brian Rizzo, CEO of ICE Cable Systems.
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`ICE Cable Systems is a leading manufacturer of premium low-voltage wire and cable products
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`which are distributed in over twenty countries. See Oct. 3, 2017 Response to Office Action, TSDR p.
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`47. Founded in 2004, ICE Cable Systems has revenue of over $10 million in 2018. See D&B
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`Hoovers, Installers Choice Electronics, LLC, http://www.hoovers.com/company-
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`information/cs/company-profile.installers_choice_electronics_llc.cd79136745c454ca.html, last
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`viewed on Jan. 10, 2019.
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`8
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`(5) ARGUMENTS
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`A. The Mark Should Not Be Refused as Functional under Section 2(E)(5)
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`The mark has been refused as being a functional design for packaging of goods. The Examining
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`Attorney takes the position that a feature is functional if it is “essential to the use or purpose of the
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`[product]” or “it affects the cost or quality of the [product].” TrafFix Devices, Inc. v. Mktg. Displays,
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`Inc., 532 U.S. 23 (2001). However, the Examining Attorney also notes that “where the evidence shows
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`that the specific product or container configuration at issue provides no real utilitarian advantages to the
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`user, but is one of many equally feasible, efficient and competitive designs, then it may be registrable.”
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`See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982). Appellant submits
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`that the above-noted facts are evidence that supports the conclusion that that the applied-for trade dress is
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`one of many equally feasible, efficient and competitive designs, and, thus, is registrable on the Principal
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`Register.
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`As the Morton-Norwich court noted, “it is the ‘utilitarian’ design of a ‘utilitarian’ object with
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`which we are concerned.” See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A.
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`1982), at 1338. In the present application, the utilitarian object recited in the applied-for trade dress is a
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`box that has a de facto utility of storing and facilitating dispensing (or paying out) of wound cable or
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`wire. Many such boxes (as cited by the Examining Attorney in the record) have a circular opening and a
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`tube to guide wire out of the box. Such features, are thus, de facto functional in the same way a bottle
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`holds liquid and a lamp provides light. Indeed, without opening the flaps of the box, the only way to
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`dispense wire or cable from the box is to dispense through a hole in the box.
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`However, the other features of the applied-for trade dress, including the size and location of the
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`hole, and the relative dimensions of the box (e.g., aspect ratio), taken together, render the overall trade
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`dress non-functional, because the features of the applied-for trade dress do not necessarily allow the box
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`to work better than any other box in the same category of goods applied-for. Instead, the applied-for trade
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`dress, as a whole, provides an overall impression that is distinctive and source identifying, as testified to
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`by Mr. Kidoo and others. See Facts P and Q, above. Indeed, none of the boxes cited by the Examining
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`9
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`Attorney in the record has a 4.00-inch hole centered on one side of the box in combination with the
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`relative dimensions of the length to width to height recited in the applied-for the same aspect ratio of
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`length to width recited in the applied-for trade dress. Therefore, when viewed as a whole, all of the
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`elements of the applied-for trade dress render it visually distinctive and non-functional.
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`The specific product or container configuration at issue provides no utilitarian advantages to the
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`user, but is one of many equally feasible, efficient and competitive designs. The applied-for trade dress
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`incorporates many design elements – shape and aspect ratio of the package, as well as the shape, size, and
`
`location of the hole – which were selected for their overall ornamentality and distinctiveness. The
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`specific combination of sizes, shapes, and locations embodied in the applied-for trade dress are not
`
`dictated by the function of the package, but are instead arbitrarily selected. See Oct. 3, 2017 Response to
`
`Office Action, TSDR pp. 22-24.
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`The Appellant publishes a “Packaging Guide” that includes a section “Box Design Guidelines”
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`that does not require that a box have the applied-for trade dress in order to perform its function and does
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`not suggest that the applied-for configuration is preferred. See Oct. 3, 2017 Response to Office Action,
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`TSDR pp. 22, 25, 26. Indeed, there are many alternative designs of the packages that would appear
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`different from the applied-for trade dress and would result in the same or lower component cost. See Oct.
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`3, 2017 Response to Office Action, TSDR p. 23. As noted above, alternative embodiments of the box
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`design are feasible and any combination of the design variations would provide all of the function of the
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`applied-for trade dress and with a different overall appearance, and some embodiments would provide
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`that function at the same or lower cost. Indeed, there are a myriad of package designs that can be chosen
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`that will have the functionality of the applied-for trade dress with a different overall appearance and
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`would cost approximately the same. See Oct. 3, 2017 Response to Office Action, TSDR pp. 22-24.
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`The Examining Attorney states that “applicant also argues its trade-dress is unique in its design
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`and function, in that no other competitive trade dress for coiled cable and wire dispenses the contents
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`without tangling and compressing the cable and wire.” Nov. 8, 2018 Office Action, TSDR p. 4.
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`(Emphasis added.) Respectfully, as noted above, Appellant has taken the exact opposite position.
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`10
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`Specifically, Appellant has made clear that the shape of the box around the identified goods (the coil of
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`cable and wire) does not provide any advantages for tangling or compressing cable and wire. Instead, the
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`features that provide advantageous dispensing of the cable and wire without tangling are features of the
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`coil of cable and wire (i.e., the goods themselves). Specifically, Appellant has repeatedly pointed out that
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`the proprietary Reelex winding technology for manufacturing the coil of cable and wire in a figure eight
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`pattern allows for the cable and wire to be dispensed without kinking. The specific configuration of the
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`box around the coil does not contribute to the prevention of kinking. See Oct. 3, 2017 Response to
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`Office Action, TSDR pp. 13 and 63-65.
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`Thus, it is clear that the designer of the knockoff box is not attempting to exploit a desirable
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`utilitarian product feature of the box, but is instead seeking only to confuse customers as to the source of
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`the goods (i.e., the coiled cable or wire) inside the box. See, e.g., In re Charles N. Van Valkenburgh,
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`Serial No. 77025789 (TTAB, January 7, 2011). This confusion is causing harm in the marketplace and to
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`Appellant and is precisely why Appellant is seeking trade dress protection for its distinctive and non-
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`functional trade dress.
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`The Examining Attorney cites to Appellant’s U.S. Patents 5,810,272; 6,086,012; 6,341,741;
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`4,160,533; and 7,156,334 to support the Examining Attorney’s position on the functionality of the
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`applied-for trade dress. The Examining Attorney states that “applicant is essentially asking for a
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`trademark to protect packaging features for which applicant already holds patent protection.” See Nov. 8,
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`2018 Office Action, TSDR p. 5. Also, the Examining Attorney states:
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`“The examining attorney does not challenge the superiority of applicant’s
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`packaging over that of its competitors. … Applicant’s industrial design of the
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`components of its packaging provides what was at the time package protection and
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`dispensing unique in its field. As such, applicant was awarded patents for its unique
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`packaging that provides improved functioning of the packaging in that it produces and/or
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`licenses. But the patents are utility patents for components that affect the functionality of
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`applicant’s packaging. Applicant clearly states its packaging has been imitated and at
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`11
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`times successfully copied. Such imitation and piracy constitutes patent infringement.
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`Thus, applicant’s mechanical design affects the functioning of the packaging but the
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`superficial appearance is not sufficiently distinctive from other packaging for consumers
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`to recognize the appearance as an indication of the source of the packaging.” See Nov.
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`8, 2018 Office Action, TSDR p. 5. (Emphasis added.)
`
`The Examining Attorney’s statements are incorrect. Appellant is not seeking trade dress
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`protection to protect features covered by Appellant’s patents. The Examining Attorney’s position
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`completely mischaracterizes the scope of Appellant’s patent rights and the scope of the applied-for trade
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`dress protection. Moreover, the Examining Attorney has not set forth any citations from any of
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`Appellant’s patents to support the proposition that the applied-for trade dress, as a whole (much less in
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`part), is functional. Indeed, at least one of Appellant’s patents, U.S. 6,086,012, teaches alternative payout
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`hole shapes (i.e., other than circular), including oval, elliptical, and diamond shape, further supporting
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`Appellant’s position that the specific applied-for trade dress is arbitrary and not dictated by functional
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`concerns. The record should clearly reflect what, if any, teaching in Appellant’s patents is being relied
`
`upon that discloses the alleged utilitarian advantages of the applied-for trade dress.
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`Appellant is aware of the distinctions between patent and trademark rights, but is not aware of
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`any law or regulation that would per se prohibit an applicant from obtaining trade dress protection for
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`non-functional trade dress in a case where the applicant holds tangentially related utility patents. The
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`Appellant does not seek to use the applied-for trade dress to monopolize ideas for how to use a box or for
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`how to dispense wire or cable from a box. Rather, Appellant seeks to obtain a registration for a
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`distinctive, non-functional trade dress.
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`
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`Furthermore, the Examining Attorney conflates Appellant’s argument regarding copying trade
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`dress with patent infringement. The Examining Attorney starts from the premise that Appellant’s trade
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`dress is per se functional, and thus not registrable or capable of functioning as a trademark. Accordingly,
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`the Examining Attorney sees Appellant’s only remedy for copying and piracy as a remedy for patent
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`infringement. Since the Examining Attorney begins with an incorrect premise concerning the
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`12
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`functionality of Appellant’s trade dress, the Examining Attorney has also incorrectly concluded that
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`Appellant would not be entitled to a trademark remedy.
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`The Examining Attorney also states:
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`“In its May 24, 2018 response, applicant discussed particular ways in which its
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`box design provides features and a consistency of performance unmatched by other boxes
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`for the same goods.
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`‘Applicant developed the market for packages for figure-eight coiled
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`cable starting in 1976. More specifically, products having the applied-for trade
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`dress have been marketed by the Applicant for over 39 years. . . . [T]here are
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`multiple suppliers of coiled cable and packaging for such coiled cable, which
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`share the retail space with Applicant’s product. Some of the competititive [sic]
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`products have features that with [sic] some visual similarities with an aspect of
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`the Applicant’s trade dress, whether it be the circular shape of the payout type
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`opening or the flange around the opening. However, such competitor products
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`do not duplicate the well-known and widely-marketed overall configuration of
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`the applied-for Reelex trade dress, which includes a generally circular outer
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`flange and an inner raised circular lip around the payout tube hole.’” See Nov. 8,
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`2018 Office Action, TSDR pp. 4-5. (Emphasis added.)
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`Respectfully, the quoted portion of Appellant’s remarks are taken out of context and do not support the
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`Examining Attorney’s stated position at all. Indeed, nothing in the quoted portion of Appellant’s remarks
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`mentions anything about “particular ways in which its box design provides features and a consistency of
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`performance unmatched by other boxes for the same goods”. Appellant has never stated on the record
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`that the applied-for trade dress is in any way functionally “superior” to any other design on the market.
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`Instead, Appellant has consistently explained that the box described in the applied-for trade dress
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`provides no utilitarian advantages over other competitive box designs in the market. Indeed, the correct
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`context of the above-quoted statement was to highlight the fact that there are many equally feasible,
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`efficient, and competitive designs in the marketplace other than Appellant’s applied-for trade dress, and,
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`therefore, since Appellant’s trade dress is but one of many of such equally feasible designs it may be
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`registrable pursuant to In re Morton-Norwich Products. See In re Morton-Norwich Prods., Inc., 671 F.2d
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`1332, 213 USPQ 9 (CCPA 1982).
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`Accordingly, for at least the foregoing reasons, Appellant has provided the requisite competent
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`evidence of the applied-for mark’s nonfunctionality and has satisfied Appellant’s burden of proof in
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`rebutting the Examining Attorney’s prima facie case. See In re Becton, Dickinson & Co., 675 F.3d 1368,
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`1374, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ
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`1, 3 (Fed. Cir. 1984); TMEP §1202.02(a)(iv).
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`B. The Mark Should Not Be Refused Under Sections 1, 2, and 45 as being a Non-Distinctive
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`Configuration of Packaging for the Goods
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`It should be noted at the outset, that the goods of concern for the applied-for trade dress are not
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`goods that the average person buys or consumes regularly. The goods are specialized and are known and
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`used in the field of packaged electrical cabling. The facts noted above support Appellant’s position that
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`those in the field of packaged electrical cabling industry have come to recognize Appellant as the source
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`of the applied-for trade dress for coils of cable and wire.
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`The Examining Attorney concedes that Appellant’s evidence successfully shows marketing, sales
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`success, length of use, and unsolicited media coverage. However, the Examining attorney takes the
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`positions that Appellant has not provided evidence supporting exclusivity of use of the applied-for mark
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`and no evidence linking the applied-for mark to a source. See Nov. 8, 2018 Office Action, TSDR p. 7.
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`Appellant respectfully disagrees with these positions.
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`With regard to exclusivity, the Examining Attorney states “There is no evidence that establishes
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`the applied-for mark as a recognizable source indicator absent the REELEX mark. That is, applicant
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`presents no evidence that, absent the REELEX mark, the configuration mark has inherent or acquired
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`distinctiveness in the field of product packaging.” See Nov. 8, 2018 Office Action, TSDR p. 7.
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`(Emphasis added.) Respectfully, the Examining Attorney is incorrect on the state of the record.
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`Appellant has thrice cited a product listing (POSGlobal.com) for CAT5 cable that shows a picture
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`of a box that contains cable extending from a payout hole and which is described as “CAT5e Plenum
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`1000’ Reelex-Box Blue” in the absence of the REELEX mark in at least four (4) separate locations on the
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`webpage. See Dec. 30, 2016 Specimen, TSDR p. 1; Oct. 3, 2017 Response to Office Action, TSDR pp.
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`58-59; and May 24, 2018 Response to Office Action, TSDR p. 15. The box shown in the picture clearly
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`shows Appellant’s trade dress without the REELEX trademark. Moreover, in the POSGlobal.com
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`webpage, item for sale is described as being a “Reelex-Box”. Thus, it is clear that those in the field of
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`packaged electrical cabling associate the Appellant as the source of the trade dress (as well as the coiled
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`configuration of the goods inside the box) shown in the POSGlobal.com listing. Also, Applicant has
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`submitted additional evidence showing websites of Jamell Cables and Pacific Cabling Solutions Ltd.,
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`which both show images of boxes having the applied for trade dress and that are referred to as REELEX
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`boxes. See Mar. 6, 2019 TEAS Request Reconsideration after FOA, TSDR pp. 1 to 4. In those images,
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`the boxes themselves do not bear any logo or word mark of the Appellant. Thus, it is clear that those in
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`the field of packaged electrical cabling associate the Appellant as the source of the trade dress (as well as
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`the coiled configuration of the goods inside the box) shown in the POSGlobal, Jamell Cables, and Pacific
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`Cabling Solutions Ltd listings.
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`Moreover, the above evidence also should dispense with the Examining Attorney’s statement that
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`because “the outward appearance of the packaging is so basic, it cannot be determined that the
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`configuration on its own is anything but a commonly used packaging configuration for coiled cable and
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`wire.” See Nov. 8, 2018 Office Action, TSDR p. 7. Clearly, the foregoing evidence shows that this
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`position is untenable. The trade dress is well known to those in the relevant field and those in that field
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`associate the Appellant as the the source of the trade dress. See Facts P and Q, above.
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`The Examining Attorney also states:
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`“Applicant argues that the Copp Declaration ‘shows that over the years, in excess
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`of $2 million was spent to promote awareness of the product. The manner of such
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`promotion particularly promoted the product’s trade dress.’ The tra