Appeal No. 2006-1451
Application No. 08/802,472
As to prosecution history, there appears to be no discussion regarding the
standard for determining recognizability of an icon, but the appellant has generally relied
on an inconceivability standard regarding the “visually suggestive of an activity
associated with … in which the article is used” criterion, e.g. “nor can one imagine” [see
Brief at p. 18] and “no one could conceivably think of…” [see Applicant’s Amendment
and Response filed 10/21/2002].
The specification thus relies on circular logic as the standard for both
recognizability and being visually suggestive, as it teaches that the shape of the icon is
to suggest what is inside and what is inside is taught as something suggested by the
shape of the package. Thus there is no objective standard for either recognizability or
being visually suggestive taught in the specification. We note that the example of
raingear is of little assistance in forming a standard, for raingear is needed for any
activity in the rain, a far broader category of activity than a single sport or theme. We
can think of no way in which, absent foreknowledge of the contents and a conscious
personal mental linkage made between the contents and the package, such linkage
being personal and thus independent of any visual suggestive power of the icon,
anyone would find a sports play piece icon suggestive of rain gear.
We further note that the example of golf in the specification introduces the
linkage of an activity of playing golf between the icon and the contents, i.e. the icon of a
golf ball suggests playing golf which in turn suggests the need for rain gear. [See
Specification at p. 4] But raingear is not among the component parts suggested by the
rules of golf, nor is it a uniform or some ubiquitous manifestation, such as a golf cart, of
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