Federal Circuit Refuses to Register Pennzoil’s Clear Motor Oil Bottle as a Trademark

By John Ottaviani

I tend to like “non-traditional” trademarks, such as color, sound, buildings, furniture designs, etc. So while we are “waiting for Grokster,” I note that the Federal Circuit recently affirmed, per curium, the 2004 decision by the Trademark Trial and Appeal Board that Pennzoil is not entitled to register its clear plastic bottle for motor oil as a trademark. In its decision, the TTAB found that the use of the clear bottle was functional, and that, even if it was not functional, Pennzoil has not demontrated sufficent “secondary meaning” or “acquired distinctiveness” to warrant trademark protection.

In this case, the most damaging evidence to Pennzoil’s position that the clear container is not functional is that Pennzoil introduced its clear container after it determined that there was an obvious competitive advantage to displaying the colorization of its synthetic oils and blends in a transparent bottle. Because there were numerous non-reputation related reasons for adopting a clear container, and these were competitive reasons that should not be denied to Pennzoil’s competitors, the Board found that Pennzoil did not have a right to appropriate the use of a clear container exclusively for its motor oils.

Despite the fact that there are no other competing motor oils for four cycle gasoline engines for automobiles currently being sold in clear bottles, the Board looked at the “ubiquity” of nearly identical packaging for many related automotive products, such as two-cycle engine oil, maintenance fluids and other chemical products for automobile engines. The Board also found that, although there was an increase in the sales of Pennzoil’s motor oils and synthetic blends after it adopted the clear container, there is no evidence tying this sales increase to Pennzoil’s promotional efforts that highlighted the clear bottle.

Will this decision have implications for other products that are marketed in clear packaging and containers? The Board was careful to note that it did not want to set out a per se rule about whether or not there may be other circumstances under which a clear container could function as a source indicator. However, I cannot think of an example where a clear package would both be non-functional and have acquired secondary meaning. At least for now, then, the world is safe from those who would require us to purchase all of our products in opaque containers and packages.

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