throbber

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`This Opinion is Not a
`Precedent of the TTAB
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`Hearing: August 14, 2019
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`Mailed: October 23, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Reelex Packaging Solutions, Inc.
`_____
`
`Serial Nos. 87285383 and 87285412
`_____
`
`David P. Gordon and Christian Mannino of Gordon & Jacobson, P.C.
`for Reelex Packaging Solutions, Inc.
`Suzanne Blane, Trademark Examining Attorney, Law Office 114,
`Laurie Kaufman, Managing Attorney.
`_____
`
`
`Before Iancu, Under Secretary of Commerce for Intellectual Property and Director of
`the U.S. Patent and Trademark Office, Thurmon, Deputy Chief Administrative
`Trademark Judge and Kuhlke, Administrative Trademark Judge.
`
`Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
`
`
`
`

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`Serial Nos. 87285383 and 87285412
`
`In these consolidated appeals,1 Reelex Packaging Solutions, Inc. (“Applicant”)
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`seeks registration on the Principal Register of the two box designs shown below for
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`“electric cables and wire” in International Class 9.2
`
`
`Application Serial No. 87285383
`(the ’383 trade dress)
`
`
`Application Serial No. 87285412
`(the ’412 trade dress)
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`
`
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`
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`The Examining Attorney refused registration, finding Applicant’s trade dress
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`functional, nondistinctive, and does not function as a mark to indicate the source of
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`the goods identified in the applications. 15 U.S.C. §§ 1051, 1052, 1127. We affirm the
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`refusal to register.
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`
`1 We consolidate the appeals because they involve common issues of law and fact with similar
`records. See In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1102 (TTAB 2018); In re
`Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). The briefs and evidence in the two appeals
`are nearly identical. Citations are to the record in Application Serial No. 87285383 unless
`otherwise noted. The specific trade dress is different in each application and where it is
`necessary to refer specifically to one design or the other, we do so below.
`2 Application Serial No. 87285383 was filed on December 30, 2016, based upon Applicant’s
`claim of first use anywhere and use in commerce since at least as early as January 1, 1980.
`Application Serial No. 87285412 was filed on the same day, but is based upon Applicant’s
`claim of first use anywhere and use in commerce since at least as early as January 1, 2000.
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`Serial Nos. 87285383 and 87285412
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`I. The Trade Dress
`Applicant is trying to register two box designs, as shown in the drawings above.
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`The first design, the ’383 trade dress, includes the following description:
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`The mark consists of trade dress for a coil of cable or wire,
`the trade dress comprising a box having six sides, four
`sides being rectangular and two sides being substantially
`square, the substantially square sides both having a length
`of between 12 and 14 inches, the rectangular sides each
`having a length of between 12 and 14 inches and a width
`of between 7.5 and 9 inches and a ratio of width to length
`of between 60% and 70%, one, and only one rectangular
`side having a circular hole of between 0.75 and 1.00 inches
`in the exact middle of the side with a tube extending
`through the hole and through which the coil is dispensed
`from the package, the tube having an outer end extending
`beyond an outer surface of the rectangular side, and a
`collar extending around the outer end of the tube on the
`outer surface of the rectangular side of the package, and
`one square side having a line folding assembly bisecting
`the square side.3
`This description defines a box with square sides and rectangular front, back, top, and
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`bottom, just as the image shows. Boxes within the description may range in size from
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`12” x 12” x 7.5” (volume = 1080 in3) to 14” x 14” x 9” (volume = 1764 in3). The trade
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`dress has a relatively small circular hole in the center of the front of the box with a
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`payout tube and collar positioned with the hole. On its website, Applicant refers to
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`3 Serial No. 87285383.
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`Serial Nos. 87285383 and 87285412
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`this box as the REELEX I box.4 In addition, on its website it is listed for use with
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`smaller wire and cable, typically with coil diameters of 9-16 inches.5
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`The second design, the ’412 trade dress, is for the design shown on the right above.
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`This design includes the following description:
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`The mark consists of trade dress for a coil of cable or wire,
`the trade dress comprising a box having six sides, four
`sides being rectangular and two sides being substantially
`square, the substantially square sides both having a length
`of between 13 and 21 inches, the rectangular sides each
`having a length of the same length of the square sides and
`a width of between 57% and 72% of the size of the length,
`one, and only one rectangular side having a circular hole of
`4.00 inches in the exact middle of the side with a tube
`extending in the hole and through which the coil is
`dispensed from the package, one square side having a
`tongue and a groove at an edge adjacent the rectangular
`side having the circular opening, and the rectangular side
`having the circular opening having a tongue and a groove
`with the tongue of each respective side extending into the
`groove of each respective side at a corner therebetween.6
`This description defines a much wider range of box sizes, from 13” x 13” x 7.4” (volume
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`= 1,251 in3) to 21” x 21” x 15” (volume = 6,668 in3). That is a range of over five times
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`in volume. No range is given for the size of the circular hole.7 Applicant refers to this
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`design as the REELEX II box.8 On its website, it is listed for use with structured
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`4 Office Action of April 5, 2017, at 46-47. All citations to documents in the application records
`contained in the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system are to
`the downloadable .pdf versions of the documents. References to the briefs on appeal refer to
`the Board’s TTABVUE docket system.
`5 Office Action of June 29, 2018, at 19-20.
`6 Serial No. 87285412.
`7 ’412 Response to Office Action of October 3, 2017, at 23-24 (Frank Kotzur, Applicant’s
`longtime employee “Kotzur declaration”).
`8 Id. at 22.
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`Serial Nos. 87285383 and 87285412
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`networking cable (e.g., Cat. 5, 6, or 7 cable), coaxial cable, and other less-flexible wire
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`or cable.9
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`II. Refusal on the Basis of Functionality
`Under the statute, functional matter is unregistrable. 15 U.S.C. § 1052(e)(5) (“No
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`trademark by which the goods of the applicant may be distinguished from the goods
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`of others shall be refused registration on the principal register on account of its nature
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`unless it … (e) Consists of a mark which … (5) comprises any matter that, as a whole,
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`is functional”). Matter is functional if “it is essential to the use or purpose of the article
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`or if it affects the cost or quality of the article.” TrafFix Devices Inc. v. Marketing
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`Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted). “The
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`functionality doctrine prevents trademark law, which seeks to promote competition
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`by protecting a firm’s reputation, from instead inhibiting legitimate competition by
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`allowing a producer to control a useful product feature.” Qualitex Co. v. Jacobson
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`Prods. Co., 514 U.S. 159, 164-65, 115 S. Ct. 1300, 1304 (1995); see also J. THOMAS
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`MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:63 (5th ed.
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`2019).
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`These appeals go to the heart of the functionality doctrine, because Applicant
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`seeks trademark protection for two boxes used with its patented system for coiling
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`electric wire and cable. If these boxes provide important utilitarian advantages to
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`parties that wish to use the technology disclosed in the patents after the patents’
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`expiration dates, providing trademark protection to Applicant could, under certain
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`
`9 ’412 Office Action of June 29, 2018, at 19.
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`Serial Nos. 87285383 and 87285412
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`circumstances, impair free and fair competition. Cooper Indus. v. Leatherman Tool
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`Grp., Inc., 532 U.S. 424, 441, 121 S. Ct. 1678, 1688 (2001) (“copying of the functional
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`features of an unpatented product is lawful”). In addition, if the boxes provide
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`utilitarian benefits for dispensing electric wire and cable generally, regardless of the
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`coiling method, providing trademark protection could also impair free and fair
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`competition.
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`“To support a functionality rejection in proceedings before the Board, the PTO
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`examining attorney must make a prima facie case of functionality, which if
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`established must be rebutted by ‘competent evidence.’” In re Becton, Dickinson and
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`Co., 675 F.3d 1368, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) (quoting In re Teledyne
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`Indus., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982)). As we evaluate the two box
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`designs at issue here, we must determine whether the designs sought to be registered,
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`each taken as a whole, are functional. Becton, Dickinson, 102 USPQ2d at 1376
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`(consideration of “whether ‘an overall design is functional should be based on the
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`superiority of the design as a whole, rather than on whether each design feature is
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`‘useful’ or ‘serves a utilitarian purpose.’’”) (quoting Textron, Inc. v. International
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`Trade Commission, 753 F.2d 1019, 1026 (Fed. Cir. 1985)).
`
`The Board also uses the following factors to help determine whether a design or
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`feature is functional:
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`(1) the existence of a utility patent that discloses the utilitarian advantages of
`the design sought to be registered;
`(2) advertising by the applicant that touts the utilitarian advantages of the
`design;
`(3) facts pertaining to the availability of alternative designs; and
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`Serial Nos. 87285383 and 87285412
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`(4) facts pertaining to whether the design results from a comparatively simple
`or inexpensive method of manufacture.
`In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982);
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`Becton, Dickinson, 102 USPQ2d at 1377 (Fed. Cir. 2012) (using the Morton-Norwich
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`factors). These factors are not exclusive, however, for functionality “depends upon the
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`totality of the evidence.” Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
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`1422, 1424 (Fed. Cir. 2002) (same).
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`Before we analyze the record under the four Morton-Norwich factors, we need to
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`define the use and purpose of these boxes as gleaned from the identification of goods.
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`If the designs are “dictated by” the functions they perform, the boxes are very likely
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`functional. Morton-Norwich, 671 F.2d 1342; see also In re Bose Corp., 772 F.2d 866,
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`227 USPQ2d 1, 6 (Fed. Cir. 1985) (“the shape of a speaker enclosure which conforms
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`to the shape of the sound matrix is an efficient and superior design as an enclosure”
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`and therefore functional); Valu Eng’g, Inc. v. Rexnord Corp., 61 USPQ2d at 1425 (a
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`design is functional if it “has a particular shape because it works better in [that]
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`shape.”).
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`Certain features of these boxes are clearly dictated by utilitarian concerns. The
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`rectangular shape of the boxes allows for stacking which is useful for shipping and
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`storing. The boxes can be shipped without needing additional packaging. The ’412
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`design, the larger of the two, includes a built-in handle to make it easier to lift and
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`Serial Nos. 87285383 and 87285412
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`carry the box.10 These are all basic functions and thus utilitarian advantages
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`provided by the boxes. Applicant touts these advantages, as the image below from its
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`website illustrates:11
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`
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`There is one general consideration worth noting before we turn to the more specific
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`design elements of these boxes. Applicant touts that it is a leader in the figure 8
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`winding business and that its box designs have been the “standard” for many years.12
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`These claims suggest that competitors need to use boxes of the same general size and
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`shape in order to meet stacking needs and shelf spacing at warehouses, distribution
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`centers, and retail outlets. Using nonstandard packaging would place Applicant’s
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`10 While not specifically recited in the description of the trade dress, because the drawing
`does not depict the handle in dotted lines, it is part of the claimed trade dress. TRADEMARK
`MANUAL OF EXAMINING PROCEDURE (TMEP) §§ 807.08, 1202.02(c)(i) (2018).
`11 Office Action of June 29, 2018, at 23.
`12 Response to Office Action of October 3, 2017, at 33, 35 (exhibits to declaration of Timothy
`Copp, Applicant’s Vice President of Business Development “Copp declaration”).
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`Serial Nos. 87285383 and 87285412
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`competitors (or competitors of Applicant’s licensees) at a substantial disadvantage,
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`which suggests the standard box designs at issue here are functional.
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`The dimensions of the boxes and the size and placement of the payout tubes and
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`payout holes are dictated by the amount and size of the electric wire and cable placed
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`in the box.13 This is particularly demonstrated by Applicant’s use of these boxes in
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`conjunction with wire and cable wound into a figure 8 coil using Applicant’s winding
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`method. Applicant’s winding “technology dates back to World War II when the
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`REELEX figure-eight coil was first proposed to the military as a way to lay down field
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`wire while still allowing an infantryman free use of both hands.”14 Applicant obtained
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`patents for this technology.15 The technology proved particularly useful for small
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`gauge wire and cable and eventually led to what Applicant calls its REELEX
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`13 See Response to Office Action of October 3, 2017, at 24 (“If the box is too small for the coil,
`the box will bulge and either cause problems stacking, or threaten the structural integrity of
`the box itself. If the box is too big for the coil, the coil could slide or rotate within the package
`and cause unraveling and tangling issues. Many tangling problems in the field are caused by
`too large a box.) (packaging guide, exhibit to Kotzur declaration); Office Action of June 29,
`2018, at 14 (“REELEX II features a much larger payout hole to increase bending radius and
`payout performance of products that are too large, stiff or sensitive to bending for REELEX
`I.”) (Applicant’s website www.reelex.com).
`14 Response to Office Action of October 3, 2017, at 33 (Copp declaration, exhibit A).
`15 Id. See also Kotzur declaration ¶ 3 (“I have been involved in the design of packages for
`figure-eight coiled cable products that are wound using [Applicant’s] proprietary and
`patented coil winding technology.”) Response to Office Action of October 3, 2017, at 21; Reelex
`website www.reelex.com (“REELEX is a patented method of winding cable or any cord-like
`product in such a way as to result in a reel-less, self supporting coil.”); Office Action of
`November 8, 2018, at 21. We note that U.S. Patent Nos. 4,367,853, 4,406,419, 4,477,033,
`4,741,495 are referenced in Applicant’s advertising materials. Response to Office Action of
`October 3, 2017 at 28, 35 (Copp declaration exhibit A).We make no specific findings based on
`the content of these patents. The patents made of record are discussed below as part of the
`analysis under the first Morton-Norwich factor.
`Much of this early development was done by Applicant’s apparent predecessor, an entity
`known as Windings, Inc. Our references to Applicant include such predecessors.
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`Serial Nos. 87285383 and 87285412
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`system.16 Applicant licenses others to use its REELEX technology to wind and
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`package coils of cable and wire.17
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`When Applicant’s figure 8 winding system is used, the resulting coil has a roughly
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`diamond-shaped opening in the sidewall of the coil, unlike a coil wound using other
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`technology. The following illustration, using cut-away images, is taken from
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`Applicant’s website and helps show the difference:18
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`Applicant’s competitors have a right to use box designs that will work well with figure
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`8 wound coils no longer covered by patents. L.A. Gear, Inc. v. Thom McAn Shoe Co.,
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`988 F.2d 1117, 25 USPQ2d 1913, 1923 (Fed. Cir. 1993) (quoting Bonito Boats, Inc. v.
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`Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847, 1855 (1989)) (“Defendant
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`… may copy plaintiff’s goods slavishly down to the minutest detail: but he may not
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`represent himself as the plaintiff in their sale.”); New England Butt Co. v.
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`International Trade Commission, 756 F.2d 874, 225 USPQ 260 (Fed. Cir. 1985) (the
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`policy behind the functionality doctrine is “not the right to slavishly copy articles
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`
`16 Id.
`17 Applicant also licenses its know-how, which may be substantial and offer real benefits to
`its licensees. 4 TTABVUE 20. Its competitors, however, are free to use any expired patented
`technology and in so doing are likely to develop their own know-how over time.
`18 Office Action of April 5, 2017, 44.
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`Serial Nos. 87285383 and 87285412
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`which are not protected by patent or copyright, but the need to copy those articles,
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`which is more properly termed the right to compete effectively”). Applicant cannot
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`use trademark law to inhibit potential competitors from gaining the experience and
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`know-how needed to make high-quality figure 8 wound coils of cable and wire.
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`The figure 8 wound cable and wire sold by Applicant’s licensees, as shown below,
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`has a diamond-shaped opening that extends from the outer edge of the coil to its open
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`center.19
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`The cable or wire is wound in a figure 8 pattern in a manner that produces little or
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`no twisting. The coil is unwound from its center, with the leading edge of the cable or
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`wire threaded through the diamond-shaped opening as in the example above.
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`From this basic overview of Applicant’s figure 8 winding system, it is clear that
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`several features are useful in a box made for a figure 8 wound coil. First, a payout
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`hole is useful to allow users to take advantage of the easy and twist-free dispensing
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`possible from a properly-wound figure 8 coil. Second, a payout tube extending from
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`the payout hole to the center of the coil is useful to maintain the radial opening in the
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`coil and to maintain the coil in alignment with the payout hole.
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`19 Id. at 48.
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`Serial Nos. 87285383 and 87285412
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`Third, the payout hole should be located on one of the rectangular panels in order
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`to align it with the diamond-shaped radial opening in the coil. Fourth, it is useful to
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`position the payout hole in the front panel, to provide easy access and a more direct
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`path for dispensing the cable or wire. Fifth, it is useful to position the payout hole
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`near the horizontal center of the front panel, because the diamond-shaped opening in
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`the coil is near the horizontal center of the side of the coil, as shown in the comparison
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`of the REELEX coil and a so-called knockoff above.
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`Sixth, it is useful to position the payout hole near the vertical center of the front
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`panel for at least two utilitarian reasons. To begin with, this position leaves space for
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`a handle in the upper part of the front panel. The ’412 trade dress shows exactly this
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`configuration and the ’412 box is typically larger than the ’383, meaning a handle is
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`likely to be more useful with the ’412 box. Positioning a handle in the upper area of
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`the front panel is useful because it reduces how far a person must bend to reach the
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`opening and lift the box.
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`Another advantage to positioning the payout hole near the vertical center of the
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`front panel is that the circular outer surface of the coil will contact the rectangular
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`front panel near its vertical center. This result follows from simple geometry. A circle
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`that fills a square will touch the square at the center of each side. If the payout hole
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`is not near the vertical center of the front panel, there will be open space between the
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`payout hole and the outer surface of the coil. A longer payout tube may be needed,
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`and the fit between the outer surface of the coil and the payout hole/tube will not be
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`Serial Nos. 87285383 and 87285412
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`as close. These may be relatively minor disadvantages, but they are easily avoided by
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`positioning the payout hole in the vertical center of the front panel.
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`A seventh useful feature is a box with larger and generally square side panels and
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`rectangular front, back, top and bottom panels. The figure 8 wound coils shown in the
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`evidence have diameters that exceed their widths.20 Applicant’s packaging guidelines
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`state, “The box should always fit the finished REELEX coil snugly.”21 This
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`requirement means the rectangular panels will be narrower (i.e., distance between
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`side panels) than long.
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`The seven useful features described above combine to define a box with at least
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`the following characteristics:
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`• square side panels and rectangular front, back, top and bottom panels,
`where the rectangular panels are narrower than long;
`• a payout hole positioned near the center of the front panel;
`• a payout tube extending from the payout hole to the center of the coil; and
`• sizing that fits the coil snugly and a hole sizing that accommodates different
`sized cable and wire.
`These features are all present in the ’383 and ’412 boxes and show that the designs
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`were dictated by the utilitarian purpose they serve. In re Morton-Norwich Prods.,
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`Inc., 213 USPQ at 17 (trade dress is functional if the design is dictated by the
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`functions it must perform). For packaging a figure 8 wound coil of cable or wire, these
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`boxes are “the best, or at least one, of a few superior designs.” In re Bose Corp., 227
`
`
`20 Response to Office Action of October 3, 2017, at 29, 31-33.
`21 Id. at 25 (Exhibit to Kotzur declaration) (emphasis in original).
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`Serial Nos. 87285383 and 87285412
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`USPQ2d at 4. These combined features are “essential to the use or purpose of the
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`article or affect[] the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs.,
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`Inc., 456 US 844, 214 USPQ 1, 4 n.10 (1982). Though we find this analysis sufficient
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`to show that the boxes are functional, we will review the four Morton-Norwich factors
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`as well. It is not required that all four factors be proven in every case, nor do all four
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`factors have to weigh in favor of functionality to support a refusal. Nevertheless, in
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`reaching our decision, we will review all four factors. See AS Holdings, Inc. v. H & C
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`Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013).
`
`A. Do Applicant’s Patents Disclose Utilitarian Advantages of the
`Claimed Trade Dress?
` The existence of a utility patent “is strong evidence that the features claimed
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`therein are functional” and “[w]here the expired patent claimed the features in
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`question, one who seeks to establish trade dress protection must carry the heavy
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`burden of showing that the feature is not functional, for instance by showing that it
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`is merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix, 58
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`USPQ2d at 1005. The utility patent need not “claim the exact configuration for which
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`trademark protection is sought in order to undermine an applicant’s assertion that
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`an applied-for mark is not” functional. Becton, Dickinson, 102 USPQ2d at 1377.
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`Rather, “a patent’s specification illuminating the purpose served by a design may
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`constitute equally strong evidence of functionality.” Id. As noted by Professor
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`McCarthy in his discussion of TrafFix, “… while the Court continually talked about
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`the evidentiary weight of what appeared in the patent claims, in fact the Court did
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`not restrict the evidentiary use of a utility patent to its claims. The Supreme Court
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`Serial Nos. 87285383 and 87285412
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`used both disclosures in the specification and argument made in the prosecution
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`history as persuasive evidence of functionality.” MCCARTHY, at §7:89. Likewise,
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`McCarthy notes that “[i]t is proper to look to the disclosure (as distinguished from
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`the claims) in a utility patent as evidence of the functionality of a shape. The
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`Trademark Board has held that each embodiment of the invention described in a
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`utility patent is equally functional for purposes of trademark law.” MCCARTHY, at
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`7:89.1 (citing In re Bose, supra, and In re Edwards Ski Products Inc., 49 USPQ2d
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`2001 (TTAB 1999)).
`
`In response to the Examining Attorney’s request for
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`information and
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`documentation for any patent that has as its subject the applied-for mark or any
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`feature thereof, Applicant submitted five patents:22
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`U.S. Patent No. 5,810,272 for a Snap-On Tube and Locking
`Collar for Guiding Filamentary Material Through a Wall
`Panel of a Container Containing Wound Filamentary
`Material;
`U.S. Patent No. 6,086,012 for Combined Fiber Containers
`and Payout Tube and Plastic Payout Tubes;
`U.S. Patent No. 6,341,741 for Molded Fiber and Plastic
`Tubes;
`U.S. Patent No. 4,160,533 for a Container with Octagonal
`Insert and Corner Payout; and
`U.S. Patent No. 7,156,334 for a Pay-Out Tube.
`Many of the patents bear directly on the “tube extending through the hole” and
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`“the tube having an outer end extending beyond an outer surface of the rectangular
`
`
`22 Response to Office Action of September 26, 2017, at 13-62.
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`Serial Nos. 87285383 and 87285412
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`[front] side, and a collar extending around the outer end of the tube on the outer
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`surface of the [front] rectangular side of the package,” which are part of the ’383 trade
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`dress and “with a tube extending in the hole,” which is part of the ’412 trade dress.
`
`Some relevant excerpts from the patents are set forth below:
`
`Material from the core of the coil is drawn through a feed
`tube extending radially through the windings of the coil.
`The coil is packaged within a container provided with a
`window positioned for withdrawal of the material from the
`coil. … Claim 1 … and including a feedout tube inserted in
`said radial hole for feeding the inner end of the material
`and having opposing sides engaging the inner surfaces of
`the container, said feedout tube being aligned with said
`perforated hole; 23
`A payout tube assembly for unwinding filamentary
`material from a wound coil of filamentary material
`contained in a container having a wall panel with a hole for
`mounting a push-on tube and locking collar on the
`container wall panel, wherein a hollow payout tube having
`an end portion extends through the hole, the end portion
`including a flange extending around the periphery of the
`tube and having a surface engaging the inner surface of the
`wall panel surrounding the hole, and further including at
`least three segmented locking protrusions extending
`around the periphery of the end portion … a locking collar
`for engaging the outer wall of the wall panel … This
`invention relates to payout devices attached to containers
`for dispensing strand-like or filamentary material from a
`wound coil in the container, and more particularly to such
`payout devices comprising a hollow feed tube guide (payout
`tube) inserted through a hole in the wall panel of the
`container and pushed into locking engagement with
`locking collar so that the wall panel is retained between the
`locking collar and payout tube, whereby the strand-like or
`filamentary material can be withdrawn from the container
`through a central hole in the payout tube and the locking
`collar. … Thus, a primary object of the invention is to
`provide a two-piece, push-on payout tube comprising the
`
`23 U.S. Patent 4,160,533, Response to Office Action of September 26, 2017 at 16-17.
`
`
`
`- 16 -
`
`

`

`Serial Nos. 87285383 and 87285412
`
`payout tube and locking collar which can be snap-fastened
`together on opposite sides of the wall of a container, remain
`in a permanent locked position and provide a smooth
`radius between the edge of the payout tube and the locking
`collar to prevent a sharp bend in the filamentary material
`being withdrawn from the container and through the
`payout tube. … Claim 1 A payout tube assembly for
`unwinding filamentary material from a wound coil of
`filamentary material contained in a container having a
`wall panel with a hole for mounting in said push-on tube
`and locking collar on the container wall panel. Comprising:
`a hollow payout tube having an end portion extending
`through the hole, said end portion including a flange
`extending around the periphery of the tube …;24
`This invention relates to payout tubes for guiding
`filamentary material through a payout hole extending from
`the outer wind to the inner wind of a coil of filamentary
`material wound in a Fig. 8 wind, and in particular to such
`payout tubes made from corrugated fiber or plastic
`material and which have an oval, diamond, elliptical or
`round shape with an oversized opening to accommodate
`CAT 5, CAT 6, and CAT 7 cables for kinkless unwinding
`from the inner coil to the outer coil of the wound material.
`… It is another object of the present invention to provide
`an enlarged payout tube that engages with an enlarged
`payout hole to provide payout of wound flexible material
`having unusually stiff, flexible, hard, soft, prone to
`tangling, large or small characteristics. It is another
`feature of the payout tube of the present invention that an
`enlarged payout tube provides kinkless and tangle-free
`unwinding of filamentary material from a wound package.
`It is a further advantage of the payout tube of the present
`invention that wound flexible material having unusually
`stiff, flexible, hard, soft, prone to tangling, large or small
`characteristics may be unwound without tangling or
`kinking. … Claim 1 A payout tube … comprising: an
`entrance opening and an exit opening in coaxial and spaced
`relationship with one another; the size of said entrance and
`exit openings are sufficiently large to allow the filamentary
`material to be withdrawn from the inside of the coil and
`
`
`24 U.S. Patent 5,810,272, Response to Office Action September 26, 2018, at 18, 23, 26.
`
`
`
`- 17 -
`
`

`

`Serial Nos. 87285383 and 87285412
`
`through the payout tube without birdnesting or kinking;25
`and
`A pay-out tube adapted to be used in conjunction with a
`capable container for directing cable from a winding
`disposed within the container. The pay-out tube includes a
`molded tube for receiving and guiding cable from the
`interior of the cable container … Pay-out tubes are
`commonly used in the cable industry. … Fig. 1 … Pay-out
`tube 10 is basically of a two-piece construction and includes
`a tube indicated generally by the number 20 and a collar
`indicated generally by the numeral 12. … Turning now to
`collar 12, … Disposed on surface 11a, aligned with the
`minor axis 25b is a clip 13. … Turning now specifically to
`clip 13, in a preferred embodiment a wire or cable clip 13 is
`integrally molded into the collar 12.26
`The utility of a handle (present in the ’412 trade dress) is claimed in one patent:
`
`Claim 2 … A package as in claim 1 wherein said container
`further includes a cutout portion forming a handle for
`transporting the package.27
`The utility of a cable catch on the outer flange of the payout tube (present in the ’383
`
`trade dress) is disclosed in another patent.28
`
`
`
`
`25 U.S. Patent 6,341,741, Response to Office Action September 26, 2018, at 49, 53.
`26 U.S. Patent 7,156,334, Response to Office Action September 26, 2018, at 54, 60, 61.
`27 U.S. Patent 4,160,533, Response to Office Action of September 26, 2018, at 17.
`28 U.S. Patent 7,156,334 Figs 1, 6 (and accompanying description of those figures). The
`description of the ’383 trade dress does not mention this feature, but it is shown on the
`drawing and Applicant did not exclude any parts of the drawing from the trade dress. See
`Trademark Rule 2.52(b)(4) (“The applicant must also use broken lines to show any other
`matter not claimed as part of the mark.”). It is more clearly visible in the specimen of use.
`
`
`
`- 18 -
`
`

`

`Serial Nos. 87285383 and 87285412
`
`
`
`
`
`The 6,086,012 patent (’012) discloses and claims a version of the REELEX II box (the
`
`’412 trade dress).29 The claims in this patent are directed to a six-sided box made from
`
`twelve panels.30 The patent

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