Gratnell's Limited

Trademark Trial and Appeal Board

Apr 8, 2009

No. 78450327 (T.T.A.B. Apr. 8, 2009)

Hearing: Mailed:
February 5, 2009 April 8, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gratnell’s Limited
________

Serial No. 78450327
_______

Jess M. Collen of Collen IP Intellectual Property Law, P.C.
for Gratnell’s Limited.

Nicholas Altree, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Zervas, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Gratnell’s Limited (“applicant”) filed an intent-to-
use application to register the design of a tray, shown
below, for “trays not of precious metals, namely storage
trays, trays of plastic for storage and stackable trays”
(hereinafter “trays”), in Class 20.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78450327
2
During the prosecution of the application, applicant
filed an amendment to allege use claiming October 1989 as
its date of first use anywhere and September 1992 as its
date of first use in commerce. The photograph below was
submitted when the application was filed and it is a clear
representation of applicant’s trays.

While there was no formal description of the “mark”
sought to be registered,1 the applicant has asserted,
The distinct presentation of
Applicant’s trays combines a number of
unique characteristics:

1) A recess in the top end of the
tray, defined by two downwardly and
inwardly sloping surfaces and
intermediate horizontal surface joining
the two downwardly and inwardly sloping
surfaces, all with somewhat rounded
corners and junctions.

2) A prominent lip and the end of the
tray following the tray’s contours.

1 If an acceptable statement describing the mark is not in the
record, the examining attorney must require the applicant to
submit a description to clarify what the applicant seeks to
register. See 37 C.F.R. §2.52(b)(5); TMEP §808 and 1202.02(d)
(5th ed. 2007). The description is printed in the Official
Gazette and on the registration certificate.
Serial No. 78450327
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3) A horizontally-extending
projection.

4) The outer edges of the projection
sloping downwardly and toward each
other.2

The Examining Attorney refused registration on the
grounds that the subject matter sought to be registered is
functional pursuant to Section 2(e)(5) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(5), and that the design sought
to be registered has not acquired distinctiveness.
Functionality
The design or trade dress of a product is functional
if it is essential to the use or purpose of a product or if
it affects the cost or quality of the product. Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844, 214 USPQ 1, 4 n.10 (1982). In analyzing whether the
subject sought to be registered is functional, we determine
whether the design of the trays is functional, not whether
applicant’s trays are functional. Accordingly, we must
determine whether the design of the trays is essential to
their use or purpose or if it affects the cost or quality
of the products (i.e., whether granting trademark
protection to the design will hinder competition). In re
Morton-Norwich Products, Inc., 213 USPQ at 12-15. In other

2 Applicant’s Brief, p. 8.
Serial No. 78450327
4
words, the issue is whether the design of the product works
better in the shape at issue. In re R.M. Smith, Inc., 734
F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
In determining whether the product design is
functional, we focus on the overall design of the product.
We cannot dissect the design into its individual elements
and analyze the utility of each feature separately. In re
Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9, 11
(Fed. Cir. 1982).
A determination of functionality normally involves
consideration of the following factors:
1. The existence of a utility patent that discloses
the utilitarian advantages of the design sought to be
registered;
2. Advertising by the applicant that touts the
utilitarian advantages of the design;
3. Facts pertaining to the availability of
alternative designs; and,
4. Facts pertaining to whether the design results
from a comparatively simple or inexpensive method of
manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (CCPA 1982).
A. Utility patent.
Serial No. 78450327
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The record does not contain any utility patents
referencing the utilitarian advantages of the design sought
to be registered.3
B. Applicant’s advertising.
The examining attorney argues that applicant’s
advertising touts the utilitarian advantages of the tray
design.
Among the utilitarian advantages touted
in these promotional materials are (1)
that users “can stack them in and on
top of one another,” (2) that the trays
“save space by fitting into one
another,” (3) that they “are designed
to fit directly into standard school
furniture,” (4) that “the front handle
cutout allows the contents to be seen,”
(5) that “the flat fronts create a
safer grip surface,” and (6) that “a
continuous ribbed edge keeps the tray
sides from squeezing in.”4

Applicant, on the other hand, contends that its
advertising is “standard statements of puffery.”5
The specimen of use submitted with applicant’s
September 12, 2005 response promotes applicant’s trays as
the only adjustable storage system for schools.6 It states:
Tray Design

3 Applicant stated that it “does not own a utility patent
disclosing the utilitarian advantages of the overall design of
the tray.” (Applicant’s Brief, p. 13). See also applicant’s
September 12, 2005 response.
4 Examining Attorney’s Brief, pp. 4-5.
5 Applicant’s Brief, p. 13; Applicant’s Reply Brief, pp. 3-6.
6 An excerpt from applicant’s website at gratnells.com.
Serial No. 78450327
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The only adjustable storage system for schools
The website also promotes the “special design” of the
trays, as shown below, including nesting, stacking, the
“Handle Cut Out for semi visual control” and the flange
“for maximum tray support on side runners.”7

Applicant’s Carolina website (Carolina.com), shown
below, also touts the “front handle cutout” that allows
contents to be seen and the flat front that creates a safer
grip surface.8

7 The “Handle Cut Out” is the recess described as one of the
distinct features of applicant’s design. The flange is the
“prominent lip and the end of the tray following the tray’s
contours” described as another of the distinct features of
applicant’s design. The “Handle Cut Out” and flange are also
described in applicant’s online catalog attached to the January
25, 2007 Office Action.
8 The flat front is the “horizontally-extending projection”
described as one of the distinct features of applicant’s design.
Serial No. 78450327
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These advertisements indicate that the tray design
featuring the recess in the front, the flat surface and the
flanged edges provide competitive advantages in terms of
monitoring content, handling and storage. We are not
persuaded by applicant’s argument that these claims are
mere puffery because they point to specific characteristics
of applicant’s product.
C. Alternative designs.
The availability of alternative designs is relevant to
show that the design sought to be registered will not
hinder competition. In re Morton-Norwich Products, Inc.,
213 USPQ at 16. In this regard, the Federal Circuit has
noted that the mere fact that other designs are available
does not necessarily mean that applicant's design is not
functional. In re Bose, 772 F.2d 866, 227 USPQ 1, 5-6 (Fed.
Cir. 1985) (“That another type of [design] would work
equally as well does not negate that this [design] was
designed functionally to enhance or at least not detract
from the rest of the system … If the feature asserted to
Serial No. 78450327
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give a product distinctiveness is the best, or at least
one, of a few superior designs for its de facto purpose, it
follows that competition is hindered. Morton-Norwich does
not rest on total elimination of competition in the goods.”
(emphasis in original)).
Applicant submitted two examples of alternative
designs shown below: Debcor trays and Tot Mate trays.

Serial No. 78450327
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These alternative designs highlight the superiority of
applicant’s design for monitoring content, handling and
storage because of the combination of the recessed front,
flanged edges and flat surfaces incoporated into
applicant’s design. See the discussion regarding
applicant’s advertising supra.
D. Ease or economy of manufacture.
As indicated above, a product feature or design is
functional if its affects the cost or quality of the
product. Applicant stated for the record that “its
features have not evolved as an improvement,
simplification, or cheaper method of manufacture as
compared with alternative designs.”9
E. Balancing the factors.
Our analysis of the Morton-Norwich factors, in
particular, applicant's advertising touting the functional
nature of its recessed front, flat surface and flanged
edges, and a comparison with the alternative designs,
supports a finding of functionality in this case. In other

9 Applicant’s September 12, 2005 response. Applicant stated that
its product “is stronger, with thicker sides and composed of a
stronger material than the competitor trays in the market place
(sic). Applicant’s trays are actually more expensive than the
competitors’.” However, the additional expense for manufacturing
applicant’s trays is associated with factors other than the
design of the product, and therefore not relevant to our
analysis.
Serial No. 78450327
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words, we find that applicant’s design provides the ability
to see content and improves handling and storage.
Acquired Distinctiveness
Our holding that the design sought to be registered is
functional bars registration, regardless of any showing of
acquired distinctiveness. However, in the event that
applicant appeals this decision, and applicant’s product
design is found not to be functional, we have taken the
alternative refusal under Section 2(f) of the Trademark Act
of 1946 under advisement.
Because the subject matter sought to be registered is
a product design, it is not inherently distinctive, and it
is registrable only with a showing of acquired
distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers,
Inc., 529 U.S. 205, 54 USPQ2d 1065, 1067 (2000). An
applicant faces a heavy burden in establishing the
distinctiveness of a product design. Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001,
1008 (Fed. Cir. 1988); In re Ennco Display Systems Inc., 56
USPQ2d 1279, 1284 (TTAB 2000).
The Examining Attorney’s position is quite simple:
applicant has failed to demonstrate that the product design
is recognized as a trademark. He contends that the sales
Serial No. 78450327
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figures submitted by applicant’s counsel fail to evidence
any degree of consumer recognition.10
On the other hand, applicant contends that the design
sought to be registered has acquired distinctiveness by
virtue of the following facts:
1. Applicant has made substantially exclusive and
continuous use of the design since 1992;
2. Applicant’s tray is the winner of the 1992
WorldDidac Silver Award for its design;
3. Applicant’s wholesale sales “for the last 6 (six)
years total $999,049.00;11
4. Applicant’s advertising demonstrates that
consumers recognize the design as a trademark; and,
5. The design has been registered in the European
Trademark Office.
In this case, we do not find applicant’s evidence to
be convincing. First, applicant’s 17 years of use of the
term in question is substantial but not necessarily
conclusive or persuasive considering the nature of the
subject matter sought to be registered. In re Ennco

10 The Examining Attorney notes that the sales figures were not
submitted by applicant through an affidavit or declaration:
rather, they merely set forth by counsel. Nevertheless, we will
consider the figures.
11 Applicant’s November 28, 2006 Response. Applicant’s counsel
asserted that the retail price would be four times the wholesale
price.
Serial No. 78450327
12
Display Systems Inc., 56 USPQ2d at 1286 (applicant’s use of
the product designs ranging from seven to 17 years is
insufficient to bestow acquired distinctiveness). See also
In re Bongrain International Corp., 894 F.2d 1316, 1317
n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1005.
Some of applicant’s advertising states that
applicant’s tray has won the WorldDidac award for its
design. There is no other information in the record
regarding the award. We do not know what the award means,
what criteria was used to determine the winner, why
applicant’s tray won the award, or what, if any,
significance the award has to consumers. Under these
circumstances, the award has little probative value.
Applicant contends that over the last six years its
wholesale sales of trays have totaled close to one million
dollars (an average of $166,666 per year) which translates
to four million dollars in retail sales (an average of
$666,666 per year). On their face, these figures do not
seem to be significant numbers. In addition, we do not
have any information regarding how many trays have been
Serial No. 78450327
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sold or how many different consumers have purchased them.12
Moreover, with respect to applicant’s sales, there is no
evidence to show whether this is a large number of sales
vis-à-vis the sales of competing trays.
With respect to applicant’s advertising, there were
numerous advertisements and websites made of record. The
advertising features photographs of the trays, and in some
instances the advertising describes the design features.13
However, because the discussion in the advertisements
regarding the design features point out the qualities of
applicant’s trays (e.g., “Handle Cut Out for semi visual
control,” “Flange 12mm for maximum tray support on side
runners,” etc.), consumers are not likely to view the
product design as a trademark: rather, they will view the
design elements as functional features. Finally, while the
product design is featured in every advertisement, there is
no evidence that potential purchasers would view the design
as anything more than a photograph of the products.
In this regard, we note that applicant argues that it
“has intentionally designed its tray to serve as a source-

12 In its November 28, 2006 Response, applicant provided an
excerpt from its January 2006 catalog which listed manufacturers
and catalog companies to whom applicant sells.
13 See the advertisements in the discussion regarding
functionality.
Serial No. 78450327
14
indicator.”14 Applicant contends that its tray design is
distinctive because it “is distinct from any competitor’s
product,” and the trays “are specifically designed to be
unlike anything produced by competitors.”15 As indicated
above, features of a product’s design can never be
inherently distinctive and are registrable only upon a
showing of acquired distinctiveness. Wal-Mart Stores, Inc.
v. Samara Brothers, Inc., 54 USPQ2d at 1069. The Supreme
Court noted that product design almost invariably serves
purposes other than source identification, and that
consumers are aware that even the most unusual product
design (such as a cocktail shaker shaped like a penguin) is
intended not to identify the source, but to render the
product itself more useful or appealing. Id. Accordingly,
it is not helpful for an applicant to argue that its
product design is unique and appealing unless it can
demonstrate that the unique and appealing product design is
recognized as a trademark.
Finally, applicant asserts that the European Community
Trademark Office found that the design of applicant’s tray
would be recognized as a trademark and authorized its
registration.

14 Applicant’s Brief, p. 8.
15 Applicant’s Brief, p. 8.
Serial No. 78450327
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Bearing in mind the niche market in
which appellant is operating and taking
account of the restrictions of the list
of goods to “trays of plastic for use
in schools,” the Board is satisfied
that in a substantial part of the
Community as a whole, a significant
portion of the relevant consumers are
likely to be familiar with the
appellant’s tray and to associate a
tray of that shape and appearance with
the appellant.16

Applicant contends that this decision is relevant to show
that applicant’s design is unique and functions as a
trademark.17
The decision by the European Community Trademark
Office has no probative value in this case. First,
applicant did not submit the decision by the European
Trademark Office, and therefore there is nothing for us to
consider.
Second, each application for registration of a mark
must be separately evaluated. Section 20 of the Trademark
Act of 1946, 15 U.S.C. §1070, gives this Board the
authority and duty to decide an adverse final decision of
the Examining Attorney. This duty may not be delegated by
adopting the conclusions reached by a foreign tribunal.
Suffice it to say that each case must be decided on its own

16 Applicant’s Brief, p. 7; applicant’s April 11, 2006 Response,
pp. 2-3. Applicant did not submit a copy of the European
Community Trademark Office decision from which it quotes.
17 Applicant’s Brief, p. 7.
Serial No. 78450327
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merits based on the evidence of record, and the issuance of
a registration in the European Community Trademark Office
cannot control the result in the U.S. Patent and Trademark
Office. See In re Sunmarks Inc., 32 USPQ2d 1470, 1472
(TTAB 1994).
Finally, assuming arguendo that applicant is asserting
that the decision by the Board in the European Community
Trademark Office should have the weight of stare decisis,
applicant’s argument still fails. Stare decisis is a
policy of courts to stand by precedent and not to disturb a
settled point. In other words,
. . . when a court has once laid down a
principle of law as applicable to a
certain set of facts, it will adhere to
that principle, and apply it to all
future cases, where the facts are
substantially the same, regardless of
whether the parties and properties are
the same.

In re Johanna Farms, 8 USPQ2d 1408, 1410 (TTAB 1988). The
decision by the European Community Trademark Office has no
precendential effect because that tribunal operates under a
different set of laws. Moreover, because applicant did not
submit the entire decision by the Board in the European
Community Trademark Office, there is no way to determine
whether the facts are the same.
Serial No. 78450327
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In considering the totality of the probative evidence
- - applicant’s use of the design sought to be registered
since 1992, wholesale sales of almost one million dollars
over the last six years, and applicant’s advertising - - we
find that the evidence is insufficient to show that the
design of applicant’s trays has acquired distinctiveness.
Decision: The refusal to register on the ground that
applicant’s product design is functional is affirmed. The
alternative refusal on the ground that, even if the design
is not functional, applicant’s evidence is insufficient to
demonstrate acquired distinctiveness under Section 2(f) is
also affirmed.