Welcome to yet another edition of non-traditional trademarks, but instead of discussing brown paper bags for chips as trademarks, today we’re focusing on a U.S. trademark registration that surprisingly issued just a few weeks ago — a net bag package design for holding toy marbles:

ORC001As shown above, the claimed mark “consists of the three-dimensional configuration of packaging for marbles comprising the combination of a square round-cornered placard with a net bag retaining marbles, wherein the top of the net bag extends through a central hold in the bottom of the placard to secure the bag such that it hangs down from the placard in the shape of a pouch and wherein the square placard has a border extending around the perimeter of the placard.”

Although it is possible for some package designs to be so unusual that they are immediately protectable and inherently distinctive, the USPTO determined this one required evidence of acquired distinctiveness. What surprised me is the meager evidence satisfying the USPTO that the claimed package design had acquired distinctiveness: a five year declaration signed by counsel, a single customer declaration and a single distributor declaration.

The application drew five office actions refusing registration, but in the end, the USPTO registered the package design as a trademark, more than three years after the original filing date. The first and second office actions refused registration based on mere informalities. The third office action refused registration on substantive grounds, the usual suspects — failure to function as a mark, and functionality, but the Applicant overcame them rather easily with mere argument. The fourth office action invited the Applicant to show acquired distinctiveness. The fifth office action accepted the claim of acquired distinctiveness and raised more informalities, and the Applicant overcame them with an amended drawing — the one shown above.

Here is what the packaging looks like, as it would appear in a store, according to the specimen of use submitted by the claimed trademark owner Megafun USA:

MarbleBagTrademark

Do you really believe that it doesn’t matter what appears on the placard portion of the design? Is the placard and net combination really enough to perform as a trademark to identify, distinguish, and indicate source, without more? What if Mattel decided to sell marbles with the same package design, except it used its own artwork, name, and logo on the placard portion of the package design? Likelihood of confusion? Seems doubtful, at least to me, do you agree?

In the end, while the net bag packaging design might do a great job of preventing the loss of one’s physical and tangible marbles, my primary concern relates to the far more easily lost metaphorical and mental marbles in trying to comprehend how this registration issued based on the miniature record evidence of acquired distinctiveness.

  • James Mahoney

    So, just off the top of the head, if another marble maker came out with a triangular card holding a plastic bag of marbles, would that violate the trademark?

    What about a candy maker using similar rectangular-card-net-bag packaging for individually wrapped hard candies? Or ball-bearing maker? Or flower bulbs? Or a “team-size” package of ping-pong balls, baseballs, wiffle balls or just plain balls? Or…

    Given everything I’ve read on DuetsBlog about the bar that “function” sets, this trademark approval seems to be a point way off the curve. Maybe Dragon consulted with FIFA’s “negotiating” team to get this one through.

  • stevebaird

    James, great questions, assuming the registration is valid, your questions beg the additional question of the scope of rights covered by the registered non-traditional mark, and under what circumstances those rights would be infringed by a likelihood of confusion, thanks for sharing your thoughts!