US: TTAB expands generic inquiry to product packaging
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US: TTAB expands generic inquiry to product packaging

Sponsored by


In In re Odd Sox LLC, the Trademark Trial and Appeal Board (TTAB) issued a precedential ruling, holding that the term "generic name" as used in the Trademark Act encompasses product packaging, and that the generic inquiry is applicable to assessments of source identification capabilities of product packaging.


Odd Sox LLC sought registration on the Principal Register of the trade dress for use in connection with socks, described in relevant part as "a three-dimensional configuration of product packaging for displaying a single pair of socks hanging side by side… in a manner in which the toe of the sock is flattened and faces forward from an elongated rectangular packaging design." A lengthy prosecution ensued, involving multiple appeals and remands. The USPTO ultimately issued a final refusal to register the packaging trade dress under Sections 1, 2 and 45 of the Trademark Act, on the grounds that it "consists of a generic configuration of packaging, or, in the alternative, consists of a non-inherently distinctive configuration of packaging." After an examiner denied Odd Sox's request for reconsideration, the TTAB resumed proceedings and affirmed the refusal to register after reviewing Odd Sox's supplemental brief.

The first question addressed by the TTAB was whether the trade dress is generic packaging, noting precedent dictates that a product design may be deemed generic where it is so common in the industry that it cannot be said to identify a particular source. The TTAB then held that this standard applies equally to product packaging and "recognise[d] the beginning of the Abercrombie scale… generic, descriptive, suggestive, arbitrary, or fanciful," noting a similar analysis is used for determining the inherent distinctiveness of trade dress – the Seabrook test.

After establishing this standard for product packaging, the TTAB proceeded to apply a "similar" two-step inquiry applied to word marks, where first, the genus of goods is determined, and second, whether consumers primarily regard the matter sought to be registered as a category or type of trade dress for the genus of goods. With regard to the first inquiry, there was "no dispute regarding the relevant category of goods, which is defined by the identification, socks." As for the second inquiry, the TTAB deemed the relevant consumers as "those who purchase or wear socks." Relying almost entirely on website evidence consisting of various third party users and retailers of socks, the TTAB found that consumers of socks would regard Odd Sox's packaging as common for socks, rather than as a source indicator, and deemed the packaging trade dress to be generic.

For completeness, the TTAB assessed Odd Sox's arguments that its packaging is inherently distinctive, noting that while product design trade dress is never inherently distinctive, packaging trade dress may be. Applying the Seabrook factors, the TTAB did not accept Odd Sox's arguments that its packaging is unique and unusual in the field of socks, finding that "an elongated rectangle from which to hang a pair or pairs of socks is a common shape in the socks industry." The TTAB concluded that even assuming that no competitor used identical packaging to Odd Sox's, such a finding would not render its sock packaging inherently distinctive.

This decision provides interesting guidance with respect to what type of packaging would qualify (or would not qualify) for trademark registration.



Karen Artz Ash

Jerry Jakubovic

Katten Muchin Rosenman LLP 

575 Madison Avenue

New York, NY 10022-2585

United States

Tel: +1 212 940 8554

Fax: +1 212 940 8671

more from across site and ros bottom lb

More from across our site

Each week Managing IP speaks to a different IP practitioner about their life and career
Daniel Zohny, former head of IP at world football governing body FIFA, has joined Abion as its global head of brand protection
Lawyers explain how Colombia’s willingness to grant preliminary injunctions and a looming compulsory licence have affected their firms’ workloads
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Former Jenner & Block litigators say they plan to capitalise on a ‘huge uptick’ in life sciences work after joining Fish & Richardson’s newly formed life sciences industry team
Pravin Anand and Vaishali Mittal of Anand & Anand explain how they helped Swiss pharma company Vifor secure a landmark win against generic companies in India
Malisheia Douglas, who spent six years at Eaton Corporation, said she was attracted by the firm's global footprint
The European Parliament has voted in favour of overhauling the SEP framework, a proposal that has sparked deep division among patent owners and implementers
Daniel Poh talks about his journey to becoming managing partner and how firms can win new business from Chinese companies
Missing a deadline can have serious consequences but law firms should consider being lenient to those responsible
Gift this article