CLAAS KGaA mbH

Trademark Trial and Appeal Board

Feb 10, 2020

87112755 (T.T.A.B. Feb. 10, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re CLAAS KGaA mbH
_____

Serial No. 87112755
Serial No. 87112787
(Consolidated)
_____

Stewart J. Bellus of Collard & Roe, P.C.,
for CLAAS KgaA mbH.
April L. Rademacher, Trademark Examining Attorney, Law Office 108,1
Kathryn E. Coward, Managing Attorney.
_____

Before Zervas, Goodman, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
CLAAS KgaA mbH (“Applicant”) seeks registration on the Principal Register of
the proposed mark shown below for goods identified as a “forage harvester”:

1 The involved applications were initially examined by Trademark Examining Attorney Cory
Boone, who issued the first Office Actions in both cases before Trademark Examining
Attorney Rademacher was assigned to the applications. We will refer to them both as the
“Examining Attorney.”
Serial Nos. 87112755 and 87112787 (Consolidated)
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2
and the proposed mark shown below for goods identified as a “combine harvester”:
3

2 Application Serial No. 87112755 was filed on July 22, 2016 under Section 44(d) of the
Trademark Act, 15 U.S.C. § 1126(d), on the basis of Applicant’s German application No.
302016101104.1. The proposed mark is described as consisting of “a stylized letter ‘Y’
positioned on both lateral outer contours of the harvester cladding downstream from the
vehicle cab in the longitudinal direction of the harvester. The stylized ‘Y’ trademark is
positioned on an outer contour of the vehicle so that its long leg extends away from the
position of the vehicle cab in the longitudinal direction of the vehicle and the short leg
delimits the long leg on the side facing the cab so that one short leg of the stylized ‘Y’ is
oriented upward in the vertical direction and the other leg of the stylized ‘Y’ is oriented
downward in the vertical direction. The boundary lines of the adjacent legs meet and form
an obtuse angle in each case. The stylized letter ‘Y’ is colored in green.” The color green is
claimed as a feature of the mark.
3 Application Serial No. 87112787 was filed on July 22, 2016 under Section 44(d) of the
Trademark Act, 15 U.S.C. § 1126(d), on the basis of Applicant’s German application No.
302016101109.2. The proposed mark is described as consisting of “a stylized letter ‘Y’
positioned on both lateral outer contours of the harvester cladding downstream from the
vehicle cab in the longitudinal direction of the harvester. The stylized ‘Y” trademark is
positioned on an outer contour of the vehicle so that its long leg extends away from the
position of the vehicle cab in the longitudinal direction of the vehicle and the short leg
delimits the long leg on the side facing the cab so that one short leg of the stylized ‘Y’ is
oriented upward in the vertical direction and the other leg of the stylized ‘Y’ is oriented
downward in the vertical direction. The boundary lines of the adjacent legs meet and form
Serial Nos. 87112755 and 87112787 (Consolidated)
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The Trademark Examining Attorney has refused registration of both of
Applicant’s proposed marks under Sections 1, 2, and 45 of the Trademark Act, 15
U.S.C. §§ 1051, 1052, and 1127, on the ground that they are merely ornamental.
After the Examining Attorney made the refusals final in each application,
Applicant appealed and requested reconsideration in both cases, which was denied.
The appeals have been consolidated and are fully briefed.4 We affirm the refusals to
register.
I. Prosecution History and Record on Appeal5
We summarize below the lengthy prosecution histories of the involved
applications because they provide useful background to our analysis of the issues on
appeal.
The Examining Attorney initially refused registration of both proposed marks on
the Principal Register on the ground that each mark was a non-distinctive design of
the goods.6 The Examining Attorney also requested that Applicant provide certain
information and documentation directed to the possible functionality of the proposed

an obtuse angle in each case. The stylized letter ‘Y is colored in green.” The color green is
claimed as a feature of the mark.
4 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear. Unless otherwise indicated, citations are to the TTABVUE file in Application Serial
No. 87112755.
5 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
6 November 4, 2016 Office Actions at TSDR 1.
Serial Nos. 87112755 and 87112787 (Consolidated)
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marks pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b),7 and made of record
pages from Applicant’s website,8 one of which we reproduce below:
9
Applicant responded to both office actions by arguing that its proposed marks were
not product designs, but rather configurations applied to the respective goods, and
addressing the Examining Attorney’s information requests.10
The Examining Attorney then suspended the examination of both applications
pending receipt of the underlying foreign registrations of the proposed mark.11
Applicant subsequently made of record European Union Registration No. 015816077

7 Id.
8 Id. at TSDR 3-5.
9 Id. at TSDR 3 (Serial Nos. 87112755 and 87112787).
10 May 1, 2017 Responses to Office Actions at TSDR 1.
11 June 18, 2017 Suspension Notices at TSDR 1.
Serial Nos. 87112755 and 87112787 (Consolidated)
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in Application Serial No. 87112755,12 and European Union Registration No.
015612286 in Application Serial No. 87112787.13
When examination resumed, the Examining Attorney issued second Office Actions
in each case continuing the refusals to register on the ground that the claimed marks
were non-distinctive product designs and requiring amendments to the
identifications of the goods to conform to the identifications in the European Union
registrations,14 which amendments the Examining Attorney subsequently entered by
Examiner’s Amendments.15 Applicant responded to the second Office Actions by
reiterating that its proposed marks were not product designs.16
The Examining Attorney then issued third Office Actions withdrawing the
refusals based on the status of the proposed marks as non-distinctive product designs,
but refusing registration on the new ground that each of the proposed marks was
merely a decorative or ornamental feature of the goods.17
Applicant traversed the new refusals by arguing that the proposed marks were
unique and highly-visible designs that enabled viewers to identify the brands of the
goods.18 Applicant made of record promotional materials showing the use, on other of

12 November 2, 2017 Response to Suspension Notice at TSDR 1-5 (Serial No. 87112755).
13 November 2, 2017 Response to Suspension Notice at TSDR 1-5 (Serial No. 87112787).
14 December 31, 2017 Office Actions at TSDR 1.
15 June 18, 2018 Examiner’s Amendments at TSDR 1.
16 June 26, 2018 Responses to Office Actions at TSDR 1.
17 August 7, 2018 Office Actions at TSDR 1.
18 November 27, 2018 Responses to Office Actions at TSDR 1.
Serial Nos. 87112755 and 87112787 (Consolidated)
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products, of the green color that is claimed as part of both marks.19 We reproduce one
of those materials below:
20
The Examining Attorney then issued fourth Office Actions making final the
ornamentation refusal to registers.21 The Examining Attorney made of record
webpages from sellers of the goods identified in the application, which she claimed
showed that such sellers deploy their trademarks in a different size and placement
from those of Applicant’s proposed marks.22 We reproduce portions of three such
webpages below:

19 Id. at TSDR 2-5.
20 Id. at TSDR 3.
21 February 5, 2019 Final Office Actions at TSDR 1.
22 Id. at TSDR 82-85 (Serial No. 87112755).
Serial Nos. 87112755 and 87112787 (Consolidated)
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23
24

23 Id. at TSDR 82.
24 Id. at TSDR 83.
Serial Nos. 87112755 and 87112787 (Consolidated)
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25
The Examining Attorney also made of record numerous third-party registrations of
color marks for the involved goods, which either issued either on the Supplemental
Register or issued on the Principal Register following a showing of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).26
Applicant requested reconsideration of the final refusals. Applicant made of record
numerous pictures of harvesters, which it claimed showed that manufacturers of
harvesters brand their goods with marks that cover large portions of the goods and
that could be seen at a distance,27 pages from Applicant’s website showing its
harvesters,28 third-party registrations of marks that Applicant claimed were similar

25 Id. at TSDR 82 (Serial No. 87112787).
26 Id. at TSDR 2-82 (Serial No. 87112755), 2-81 (Serial No. 87112787).
27 May 1, 2019 Requests for Reconsideration at TSDR 2-36.
28 Id. at TSDR 37-41.
Serial Nos. 87112755 and 87112787 (Consolidated)
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in nature to its mark,29 and a copy of a June 16, 2017 decision of the Fourth Board of
Appeal of the European Union Intellectual Property Office (the “EUIPO Decision”)
reversing an examiner’s refusal to register a mark that appears to correspond to
Applicant’s claimed mark in Application Serial No. 87112787.30 We reproduce below
a few samples of the pictures of competitive products and the pages from Applicant’s
website:
31

29 Id. at TSDR 42-55.
30 Id. at TSDR 56-64.
31 Id. at TSDR 3.
Serial Nos. 87112755 and 87112787 (Consolidated)
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32
33

32 Id. at TSDR 10.
33 Id. at TSDR 18.
Serial Nos. 87112755 and 87112787 (Consolidated)
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34
The Examining Attorney denied the requests for reconsideration,35 and the
appeals resumed.
II. Ornamentation Refusal
A. Applicable Law
These cases present “the question of whether the public would perceive the
[proposed marks] as an indicator of source (i.e., a trademark) or, instead, merely as a
form of decoration or ornamentation.” In re Lululemon Athletica Canada, Inc., 105
USPQ2d 1684, 1686 (TTAB 2013).
Section 45 of the Trademark Act defines a “trademark” in
relevant part as ‘any word, name, symbol, or device, or any
combination thereof used by a person . . . to identify and
distinguish his or her goods . . . from those manufactured

34 Id. at TSDR 39.
35 June 3, 2019 Denials of Requests for Reconsideration at TSDR 1.
Serial Nos. 87112755 and 87112787 (Consolidated)
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or sold by others and to indicate the source of the goods,
even if that source is unknown.”
In re Fantasia Distribution, Inc., 120 USPQ2d 1137, 1138 (TTAB 2016) (quoting 15
U.S.C. § 1127). “The critical inquiry in determining whether a designation functions
as a mark is how the designation would be perceived by the relevant public.” Id.
(quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)). “Subject matter
that is perceived as merely decorative or ornamental does not identify source and
thus fails to function as a mark.” Id.
“In considering whether matter is ornamental, or whether it inherently functions
as a mark, relevant considerations include the commercial impression made by the
design, the relevant practices of the trade, and evidence of distinctiveness, if
applicable.” Lululemon, 105 USPQ2d at 1686. Because Applicant does not claim that
either mark has acquired distinctiveness,36 the pertinent factors here are the
commercial impression made by the designs and the relevant practices of the trade.

36 In its appeal brief, Applicant discusses its claimed use of “the combination of the unusual
shade of green (claimed in this mark) with CLAAS in large, thick, red letters,” 4 TTABVUE
9, but states that it “is not seeking registration of a color scheme based upon acquired
distinctiveness,” but rather “is seeking registration of a completely unique design in a specific
color green (which happens to be familiar to its customers) that will be displayed on the side
of its harvesters.” Id. In its reply brief, Applicant criticizes the Examining Attorney for
arguing that Applicant “has not proven distinctiveness or secondary meaning” because “such
proof is not needed when a logo or design mark is applied directly to the goods and functions
as a mark.” 9 TTABVUE 6.
Serial Nos. 87112755 and 87112787 (Consolidated)
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B. Applicant’s and the Examining Attorney’s Arguments
1. Applicant’s Arguments
Applicant states in its appeal brief that its Request for Reconsideration in each
case “compris[es] all the evidence upon which Applicant will rely during this appeal.”
4 TTABVUE 3. Applicant argues that “agricultural harvesters and other large farm
equipment are not products that typically are ornamented (unlike shirts, hats, bags,
jewelry, or other fashion items),” and that its “goods are not ‘consumer products’
where visual presentation is crucial to the decision-making of potential purchasers,”
but rather “expensive machines sold to a specific market (farmers and others engaged
in large scale agriculture).” Id. at 4. According to Applicant, “[t]hese items are
selected and purchased based solely on the capabilities and quality of the equipment
because that is what matters most to those engaged in agriculture: can the equipment
‘do the job’?” Id.
Applicant further argues that
the markings associated with these types of machinery are
more recognizable as trademarks than other types of
products because those markings are precisely how
purchasers distinguish one brand of harvester from
another, with all that means in terms of what matters to
their purchase, i.e., the quality or capabilities inferred from
and attached to the trademark or brand.
Id. Applicant criticizes the Examining Attorney’s examples of ornamentation on the
ground that they are “examples of inexpensive consumer goods that often are selected
exclusively for their ornamentation, style, color or decorative features, sometimes
with complete disregard for brand names.” Id. at 5. Applicant also criticizes the
Examining Attorney for “giv[ing] no weight to the fact that Applicant’s ‘green ‘Y’’ is a
Serial Nos. 87112755 and 87112787 (Consolidated)
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unique design, in a specific color, and not merely (as in examples given by the
examiner) a color ring around a sock, shapeless stripes on a sneaker, a typical flower
design or an ‘I LOVE YOU’ slogan, all of which are widely used for decorative
purposes.” Id. According to Applicant, its “‘green ‘Y’ design’ is not ornamental because
it is fanciful, having no significance other than as Applicant’s trademark” and “[i]ts
placement on the side of applicant’s harvester cannot be a refinement of a typical
ornamentation practice . . . because farm equipment is not ornamented (and the
examiner has not provided any evidence to the contrary).” Id.
With respect to the size, placement, and prominence of the proposed marks,
Applicant argues that the Examining Attorney’s own evidence shows that farm
equipment marks are displayed on the side of equipment, such that Applicant is using
its proposed marks “in the exact location as competitors . . . .” Id. at 6. Applicant
argues that “most manufacturers brand their equipment with names, logos, color and
other schemes that are large, often covering major portions of the side of the
harvester, tractor or other product,” id., and that such “marks can be seen from a
distance, specifically for the purpose of being able to distinguish one brand from
another.” Id. at 7. Applicant cites pictures of various farm equipment made of record
with its Requests for Reconsideration, which Applicant claims display “large lettering
and/or large designs.” Id. Applicant argues that “the display of ‘large marks’ on the
side to identify agricultural machinery brands is exactly the customary practice in
the industry” and that it “is merely following this practice by affixing its ‘Y’ trademark
to the side of its harvester.” Id. at 8.
Serial Nos. 87112755 and 87112787 (Consolidated)
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Applicant also argues that “for years Applicant has branded its own machines
with the combination of the unusual shade of green (claimed in this mark) with
CLAAS in large, thick, red letters,” id. at 9, and that it has used “the green/red color
scheme on the company website, in company promotional materials and as part of
the appearance of physical locations,” citing its Requests for Reconsideration. Id.
Applicant also points to third-party registrations of what it calls “marks similar to
that of Applicant . . . .” Id. at 10. In its reply brief, Applicant argues that these
registrations are “one indication that consumers have not been ‘conditioned’ to
perceive these types of designs as ornamentation.” 9 TTABVUE 3.
Finally, Applicant argues that the EUIPO Decision
reiterates some of the important points raised here: 1)
agricultural equipment typically is not ornamented; 2)
farmers are sophisticated consumers who make purchasing
decisions based on how well agricultural machinery
performs desired tasks, not based on style; and 3)
agricultural machinery commonly is marked with wording,
colors and designs, and as a result, Applicant’s “green ‘Y’”
will be seen by farmers as a trademark.
4 TTABVUE at 12.
In its reply brief, Applicant argues that the Examining Attorney has not met her
burden of showing that Applicant’s proposed marks “would not be perceived as a
trademark, but merely as ornamentation” because
there is 1) no evidence that large farm equipment
commonly is ornamented with arbitrary designs to enhance
its aesthetic appeal (though there is plenty of evidence
showing that these designs are registered as trademarks,
and do function as “source indicators”’); 2) no evidence that
relevant consumers (i.e., purchasers of large farm
equipment) who see large designs and logos on harvesters
and similar machinery assume those markings are merely
Serial Nos. 87112755 and 87112787 (Consolidated)
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ornamentation; or c) no evidence that relevant consumers
are likely to ignore the source indicator quality of
Applicant’s logo and design mark (instead, they see the logo
and know if comes from Applicant, which is the exact
purpose of a trademark). Stated simply, Applicant’s design
mark is a “trademark” and functions as a trademark, and
the examiner has not proven that this conclusion is wrong.
9 TTABVUE 6-7.
2. The Examining Attorney’s Arguments
The Examining Attorney argues that the Internet evidence of record shows that
“consumers have been conditioned to recognize small designs or discrete wording as
trademarks if placed on agricultural harvesters; however, consumers typically do not
perceive larger designs as trademarks.” 8 TTABVUE 6. She argues that Applicant’s
“marks are not small designs or discrete wording placed on the side of agricultural
products” but instead are “large designs that cover significant portion of the
products.” Id. She “submits that based upon the size and placement of the marks on
applicant’s goods, consumers will view the mark as a merely ornamental design on
the goods rather than an indicator of source.” Id.
With respect to the record evidence displaying third-party farm equipment, the
Examining Attorney “disagrees with applicant’s assertion that its marks are used in
a manner remotely similar to those of other manufacturers.” Id. She argues that the
“manner in which consumers are use [sic] to seeing trademarks for these types of
goods, including applicant’s own goods, is of lettering, which maybe [sic] large, but is
small when compared to the size of applicant’s goods.” Id.
The Examining Attorney also argues that Applicant’s proposed marks are not
inherently distinctive. She argues that “[t]here is nothing about the appearance of
Serial Nos. 87112755 and 87112787 (Consolidated)
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applicant’s proposed mark that is original, distinctive or peculiar.” Id. at 8. She
contends that “by applicant’s own admission harvesters are often ornamented by
different colors or designs,” id. (citing 4 TTABVUE 4), and that the record shows that
“manufacturers of such equipment frequently ornament their equipment with large
bright blocks of color, not dissimilar from the manner seen in applicant’s proposed
mark.” Id. at 9. She argues that “based on the size and the placement of the mark on
applicant’s goods, consumers would perceive the mark as mere ornamentation and
not as a source indicator, as it is a mere refinement of a typical practice of
ornamentation on similar equipment.” Id.
The Examining Attorney also rejects Applicant’s reliance on the third-party
registrations and the EUIPO decision. Id. at 7. She points to third-party registrations
that she made of record, which she claims “show that the Office has held similar
marks for color as a trademark on large areas of industrial and farm equipment to be
registrable only on the Supplemental Register or on the Principal Register under a
claim of acquired distinctiveness under Section 2(f).” Id. at 9. According to the
Examining Attorney, these registrations are “evidence that consumers are
accustomed to seeing large areas of agricultural and industrial equipment in solid
colors and that marks such as these are not viewed as inherently distinctive.” Id. She
also notes that “there is no evidence of secondary source” that might bear on the
distinctiveness of Applicant’s proposed marks. Id. at 10.
Serial Nos. 87112755 and 87112787 (Consolidated)
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C. Analysis of Ornamentation Refusal
We begin with the issue of whether to consider the EUIPO Decision on the
registrability of the mark shown below, which appears to correspond roughly with
the mark shown in Application Serial No. 87112787:

As Applicant acknowledges, “the rulings of trademark offices outside the US are not
binding on the US PTO,” 4 TTABVUE 12, and we must apply United States law, not
European Union law, to the issues on appeal. See Kohler Co. v. Honda Giken Kogyo
K.K., 125 USPQ2d 1468, 1479 (TTAB 2017) (sustaining objection to OHIM decision
regarding registration of US applicant’s mark). We have not considered the EUIPO
Decision beyond reviewing it to identify the involved mark.
We turn now to the issue of whether the proposed marks are ornamental. The
record is devoid of evidence of the commercial impression actually made by the
proposed marks, Lululemon, 105 USPQ2d at 1686, because there is no evidence of
Applicant’s use of either of them. The record is replete, however, with evidence that
“Applicant has branded its own machines with the combination of the unusual shade
of green (claimed in this mark) with CLAAS in large, thick, red letters.” 4 TTABVUE
Serial Nos. 87112755 and 87112787 (Consolidated)
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9. In addition to the uses of green on the equipment shown above, we reproduce below
other examples of such use:
37
38
39

37 November 27, 2018 Responses to Office Actions at TSDR 2.
38 Id. Other “Rollant” models, including the 455, 340, and 250 models, are shown in the record.
May 1, 2019 Requests for Reconsideration at TSDR 29, 31, 35-36.
39 Id. at TSDR 4.
Serial Nos. 87112755 and 87112787 (Consolidated)
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The record shows that Applicant’s equipment consistently displays the shade of
green that is claimed as part of the proposed marks, but the Federal Circuit has
observed that “color is usually perceived as ornamentation. While ornamentation is
not incompatible with trademark function, unless the design is of such nature that
its distinctiveness is obvious, convincing evidence must be forthcoming to prove that
in fact the purchasing public does recognize the design as a trademark which
identifies the source of the goods.” In re Gen. Mills IP Holdings, LLC, 124 USPQ2d
1016, 1018 (TTAB 2017) (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d
1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (internal quotation omitted)). Applicant’s
use of the green shade on its equipment, either in configurations other than those
shown in the proposed marks, or over most or all of the surface area of the goods, is
not “of such nature that its distinctiveness is obvious,” id. and instead appears to be
pure ornamentation.
“In determining whether a design is inherently distinctive or merely ornamental,
we have found it helpful to consider various aspects of designs and shapes, stating
repeatedly, ‘we must consider the size, location and dominance of the designs in
determining the commercial impressions of designs.’” Lululemon, 105 USPQ 2d at
1687 (quoting In re Right-On Co. Ltd., 87 USPQ2d 1152, 1156 (TTAB 2008)).
Applicant argues that its “‘green ‘Y’ is a unique design, in a specific color,” 4
TTABVUE 5, and “fanciful, having no significance other than as Applicant’s
trademark,” id., but we find that the designs, shown again below,
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are simple and nondescript, especially when compared to the design marks in the
third-party registrations that Applicant made of record to show that “marks similar
to that of Applicant have been registered often at the PTO.” Id. at 10. We reproduce
those marks below:
40
41
42

40 May 1, 2019 Requests for Reconsideration at TSDR 43 (Registration No. 5509889 for utility
vehicles and turf tractors).
41 Id. at TSDR 45-50 (Registration Nos. 3860895 and 3835700 for automobiles and
components).
42 Id. at TSDR 51-52 (Registration No. 3667614 for automobile dealership services).
Serial Nos. 87112755 and 87112787 (Consolidated)
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43
We find that Applicant’s “Y” designs, which serve as a carrier for its green color, are
“unlike the highly stylized marks depicted above.” Lululemon, 105 USPQ2d at 1689.
Applicant also positions the “Y” designs on its equipment in a manner that is no
more visually striking and source-identifying than the placement of the green design
on the product shown below:

The juxtaposition of the green design on this product with the color white bearing the
CLAAS mark appears to be purely aesthetic, and there is nothing in the record to
suggest that the placement of the green “Y” designs on the goods will serve any

43 Id. at TSDR 53-55 (Registration No. 3308221 for footwear).
Serial Nos. 87112755 and 87112787 (Consolidated)
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purpose other than ornamentation. Notwithstanding the elaborate geometrical
descriptions of the “Y” designs in the applications, we agree with the Examining
Attorney that “[t]here is nothing about the appearance of applicant’s proposed
mark[s] that is original, distinctive or peculiar.” 8 TTABVUE 8. Even if Applicant is
the only current user of the green “Y” designs for farm equipment, “this fact alone
does not imbue the design[s] with source-indicating significance where Applicant’s
design[s]” merely use “an ordinary shape in an unremarkable [way]” and are
positioned on the goods “in an unremarkable way.” Fantasia Distribution, 120
USPQ2d at 1141.
With respect to the relevant practices of the trade, Lululemon, 105 USPQ2d at
1686, Applicant argues that farm equipment marks are displayed on the side of
equipment, such that Applicant is using its proposed marks “in the exact location as
competitors,” 4 TTABVUE 6, and that the placement of the proposed marks “on the
side of applicant’s harvester cannot be a refinement of a typical ornamentation
practice . . . because farm equipment is not ornamented (and the examiner has not
provided any evidence to the contrary).” Id. at 5. The latter argument, as well as other
arguments regarding trade practices such as that “agricultural harvesters and other
large farm equipment are not products that typically are ornamented,” id. at 4, that
“the markings associated with these types of machinery are more recognizable as
trademarks than other types of products because those markings are precisely how
purchasers distinguish one brand of harvester from another,” id., and that equipment
“marks can be seen from a distance, specifically for the purpose of being able to
Serial Nos. 87112755 and 87112787 (Consolidated)
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distinguish one brand from another,” id. at 7, are based entirely on the arguments of
Applicant’s counsel. “Attorney argument is no substitute for evidence,” Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018), and
“there is no actual proof to support these statements in the record.” In re U.S.
Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014). See also In re Budge Mfg. Co.,
857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) (rejecting arguments of counsel
regarding consumer purchase expectations).
The same is true for Applicant’s arguments directed to how consumers perceive
the “names, logos, color and other schemes that are large, often covering major
portions of the side of the harvester, tractor or other product.” Id. at 6. Applicant
asserts, without supporting evidence, that “farm equipment is not ornamented,” id.
at 5, such that colors and designs on farm equipment are invariably not
ornamentation but rather would be viewed as marks, in the manner of accompanying
brand names such as CLAAS, New Holland, and Massey Ferguson. The record does
not support these positions. It shows that farm equipment commonly bears colors and
designs, but does not show that those combinations of colors and designs, such as
those shown below and elsewhere in the record, would automatically be recognized
as source-identifiers, not ornamentation:
Serial Nos. 87112755 and 87112787 (Consolidated)
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44
45
The third-party registrations made of record by the Examining Attorney indicate
that colors and designs appearing in various manners on farm equipment may be
capable of functioning as marks, and may thus be registrable on the Supplemental

44 May 1, 2019 Requests for Reconsideration at TSDR 7.
45 Id. at TSDR 14.
Serial Nos. 87112755 and 87112787 (Consolidated)
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Register,46 or may actually function as marks through the acquisition of
distinctiveness, and may thus be registrable on the Principal Register.47 Applicant
seeks Principal Register registrations based on the inherent distinctiveness of its
proposed marks, however, and we find, on the basis of the record as a whole, that
consumers are not likely to view Applicant’s green “Y designs” as marks rather than
as ornamentation.
Decision: The two refusals to register are affirmed.

46 February 5, 2019 Final Office Actions at TSDR 47-52 (Registration Nos. 4097371 and
4097372 for a combination of tan and ivory applied to various portions of agricultural
machinery) (Serial Nos. 87112755 and 87112787).
47 Id. at TSDR 2-34, 53-67 (Registration Nos. 3857088, 3857089, 3857090, 3857091, 3857095,
3854018, 3854019, 3854020, 3857098, 3877113, 3877114, 4084100, 4084101, 4084102,
4084104, and 4084105 for a combination of green and yellow applied to various portions of
tractors, harvesters, agricultural implements, mowers, and forestry machines); 35-46
(Registration Nos. 4030916, 4110890, 4027919, and 4170220 for a combination of orange-red,
black, and white applied to various portions of loaders and excavators) (Serial Nos. 87112755
and 87112787).