Heatcon, Inc.

Trademark Trial and Appeal Board

Feb 26, 2016

No. 85281264 (T.T.A.B. Feb. 26, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Heatcon, Inc.
_____

Serial Nos. 85281225
85281264
85281291
85281317
85281386
_____

John M. Janeway of Janeway Patent Law PLLC for Heatcon, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Kuhlke, Taylor and Shaw
Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
On September 30, 2015, the Board suspended further action on the fully briefed
appeals referenced above pending the appeal period and any appeal of the Board’s
decision which could have been filed in Application Serial No. 85281360. The appeal
period having expired with no appeal filed in Application Serial No. 85281360, and
the proceeding terminated on January 11, 2016, we remove these appeals from
Serial No. 85281225, et al.
- 2 -

suspension and consider them in a single decision.1 The issues presented in these
appeals are quite similar to those presented in Serial No. 85281360 wherein the
Board affirmed the Examining Attorney’s refusals based on (1) functionality of the
applied-for configuration under Trademark Act Sections 2(e)(5) and 23(c), 15 U.S.C.
§§ 1052(e)(5), 1091(c), and (2) the failure to comply with the drawing requirement.
In re Heatcon, Inc., 116 USPQ2d 1366 (TTAB 2015).
In the applications that are the subject of these appeals, Heatcon, Inc.
(Applicant) seeks registration on the Supplemental Register of the product
configurations shown below for, as amended, “Equipment for controlling and
recording the application of heat and pressure in a process for fabricating bonded
composite materials, namely, woven glass, aramid fibers and carbon fabric, and
adhesives bonds to composite or metallic components,” in International Class 9.
Application Serial No. 852812252

The mark is described as follows:

1 References to the record and briefs are to Application Serial No. 85281225 unless
otherwise noted.
2 The application was filed on March 30, 2011, based upon Applicant’s allegation of first use
on March 1, 2000 and first use in commerce on April 1, 2000 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 85281225, et al.
- 3 -

The mark consists of a three dimensional configuration of
the arrangement of the HCS9000B Composite Repair
Set's (Hot Bonder's) user interface components featuring a
display panel located in the left of the top half of the
interface, an input power receptacle right of the display
panel, an output power LED indicator right of the input
power receptacle, an output power receptacle right of the
output power LED indicator, an air input port below the
output power receptacle, a vacuum monitor port left of the
air input port, a vacuum out port right of the display
panel, a set of ten thermocouple jacks below the vacuum
ports and air input port, a vacuum control regulator below
the thermocouple jacks, a circuit breaker switch below the
vacuum control regulator, a power switch left of the
circuit breaker switch, a keypad left of the power switch
and below the display panel, an alarm left of the keypad
and also below the display panel, a printer exit left of the
alarm and below the display panel, a printer paper feed
pushbutton switch below the alarm and right of the
printer exit, and the face plate that these components are
located on. The broken lines depicting the case, handle
and latches indicate placement of the mark on the goods
and are not part of the mark.
Application Serial No. 852812643

The mark is described as follows:

3 The application was filed on March 30, 2011, based upon Applicant’s allegation of first use
and first use in commerce on April 1, 2000 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
Serial No. 85281225, et al.
- 4 -

The mark consists of a three dimensional configuration of
the arrangement of the HCS9000FL Composite Repair
Set's (Hot Bonder's) user interface components featuring a
display panel located in the left of the top half of the
interface, an input power receptacle right of the display
panel, an output power LED indicator right of the input
power receptacle, an output power receptacle right of the
output power LED indicator, a circuit breaker switch
below the input power receptacle, a ground-fault
interrupter (GFI) LED indicator right of the circuit
breaker switch, a GFI reset switch, a heating blanket
overheat supervisory circuit connector right of the GFI
LED indicator, an air input port below the heating
blanket overheat supervisory circuit connector, a vacuum
out port below the air input port, a vacuum monitor port
below the vacuum out port, a vacuum control regulator
left of the vacuum monitor port, a set of ten thermocouple
jacks below the vacuum control regulator and vacuum
monitor port, a keypad left of the set of ten thermocouple
jacks, an alarm above the keypad and below the display
panel, five LED indicators below the display panel and
left of the alarm, a power switch left of the keypad, a
printer exit left of the power switch and below the five
LED indicators, a printer paper feed pushbutton switch
below the power switch and right of the printer exit, and
the face plate that these components are located on. The
broken lines depicting the case, handle and latches
indicate placement of the mark on the goods and are not
part of the mark.
Application Serial No. 852812914

4 The application was filed on March 30, 2011, based upon Applicant’s allegation of first use
and first use in commerce on May 1, 2000 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
Serial No. 85281225, et al.
- 5 -

The mark is described as follows:
The mark consists of a three dimensional configuration of
the arrangement of the HCS9200B Composite Repair
Set's (Hot Bonder's) user interface components featuring a
display panel located in the middle of the top half of the
interface, an output power LED indicator left of the
display panel, another output power LED indicator right
of the display panel, an input power receptacle left of the
display panel, another input power receptacle right of the
display panel, an output power receptacle left of the
display panel, another output power receptacle right of
the display panel, an air input port left of the display
panel, an electric vacuum pump power receptacle right of
the display panel, a vacuum out port left of the display
panel, another vacuum out port right of the display panel,
a vacuum monitor port left of the display panel, another
vacuum monitor port right of the display panel, a set of
ten thermocouple jacks left of the display panel and below
the vacuum ports, another set of ten thermocouple jacks
right of the display panel and below the vacuum ports, a
power switch below the display panel, an alarm also
below the display panel and right of the power switch, a
vacuum control regulator below the thermocouple jacks
left of the display panel, another vacuum control
regulator below the thermocouple jacks right of the
display panel, a circuit breaker switch below the vacuum
control regulator left of the display panel, another circuit
breaker switch below the vacuum control regulator right
of the display panel, a keypad below the power switch and
alarm, a printer exit left of the keypad, another printer
exit right of the keypad, and the face plate that these
components are located on. The broken lines depicting the
case, handle and latches indicate placement of the mark
on the goods and are not part of the mark.
Serial No. 85281225, et al.
- 6 -

Application Serial No. 852813175

The mark is described as follows:
The mark consists of a three dimensional configuration of
the arrangement of the HCS9200FL Composite Repair
Set's (Hot Bonder's) user interface components featuring a
display panel located in the middle of the top half of the
interface, an output power receptacle left of the display
panel, another output power receptacle right of the
display panel, an input power receptacle left of the output
power receptacle on the left of the display panel, another
input power receptacle right of the output power
receptacle on the right of the display panel, an output
power LED indicator left of the display panel between the
output and input power receptacles, another output power
LED indicator right of the display panel between the
output and input power receptacles, a circuit breaker
switch left of the display panel and below the output
power receptacle, another circuit breaker switch right of
the display panel and below the other output power
receptacle, a ground-fault interrupter (GFI) LED
indicator between the display panel and the circuit
breaker switch on the right of the display panel, another
ground-fault interrupter (GFI) LED indicator between the
display panel and the circuit breaker switch on the left of
the display panel, a GFI reset switch below the GFI on

5 The application was filed on March 30, 2011, based upon Applicant’s allegation of first use
and first use in commerce on June 1, 1999 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
Serial No. 85281225, et al.
- 7 -

the right of the display panel, another GFI reset switch
below the GFI on the left of the display panel, a heating
blanket overheat supervisory circuit receptacle right of
the circuit breaker switch on the right of the display
panel, another heating blanket overheat supervisory
circuit receptacle left of the circuit breaker switch on the
left of the display panel, an air input port left of the
display panel and below the heating blanket overheat
supervisory circuit receptacle, a case vent port right of the
display panel and below the heating blanket overheat
supervisory circuit receptacle, a vacuum monitor port
below the air input port, another vacuum monitor port
below the case vent port, a vacuum out port left of the
display panel and below the vacuum monitor port,
another vacuum out port right of the display panel and
below the other vacuum monitor port, a vacuum control
regulator left of the display panel and right of the vacuum
out port, another vacuum control regulator right of the
display panel and left of the other vacuum out port, a
power switch below the left corner of the display panel, an
alarm below the right corner of the display panel, six LED
indicators below the display panel and between the power
switch and the alarm, a keypad below the middle two of
the six LED indicators, a printer exit left of the keypad,
another printer exit right of the keypad, a set of ten
thermocouple jacks left of the printer exit left of the
keypad, another set of ten thermocouple jacks right of the
printer exit right of the keypad, a printer paper feed
pushbutton switch below the thermocouple jacks left of
the keypad, another printer paper feed pushbutton switch
below the thermocouple jacks right of the keypad, and the
face plate that these components are located on. The
broken lines depicting the case, handle and latches
indicate placement of the mark on the goods and are not
part of the mark.
Serial No. 85281225, et al.
- 8 -

Application Serial No. 852813866

The mark is described as follows:
The mark consists of a three dimensional configuration of
the arrangement of the HCS9200N Composite Repair
Set's (Hot Bonder's) user interface components featuring a
display panel located in the middle of the top half of the
interface, an output power receptacle left of the display
panel, another output power receptacle right of the
display panel, an input power receptacle left of the output
power receptacle left of the display panel, another input
power receptacle right of the output power receptacle
right of the display panel, an output power LED between
the two power receptacles left of the display panel,
another output power LED between the two power
receptacles right of the display panel, a circuit breaker
switch below the output power receptacle left of the
display panel, another circuit breaker switch below the
output power receptacle right of the display panel, an air
input port below the power input receptacle left of the
display panel, an alarm also below the power input
receptacle right of the display panel, a vacuum out port
below the air input port, another vacuum out port below
the alarm, a ground-fault interrupter (GFI) LED indicator
right of the vacuum out port left of the display panel,
another GFI LED indicator right of the display panel and
below the circuit breaker switch, a GFI reset switch left of

6 The application was filed on March 30, 2011, based upon Applicant’s allegation of first use
and first use in commerce on August 1, 2005 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
Serial No. 85281225, et al.
- 9 -

the display panel and right of the GFI LED indicator,
another GFI reset switch right of the GFI LED indicator
right of the display panel, a vacuum control regulator
below the GFI LED indicator and GFI reset switch left of
the display panel, another vacuum control regulator
below the GFI LED indicator and GFI reset switch right
of the display panel, a power switch below the display
panel, a printer access door below the power switch, a
keypad right of printer access door, below the power
switch and alarm, a printer paper feed pushbutton switch
below the keypad, a set of eight thermocouple jacks right
of the keypad, another set of eight thermocouple jacks left
of the printer access door. The broken lines depicting the
case, handle and latches indicate placement of the mark
on the goods and are not part of the mark.
Color is not claimed as a feature of any of the marks.
Issues on Appeal
The Examining Attorney has refused registration of Applicant’s proposed marks
on the ground that they are functional, under Sections 2(e)(5) and 23(c) of the
Trademark Act, 15 U.S.C. §§ 1052(e)(5) and 1091(c).7 In addition, the Examining
Attorney has refused registration in each application based on the requirement to
submit an amended drawing depicting all functional features of the configurations
in dotted lines.8 We affirm the refusals to register in each application.

7 The prosecution history in each of the applications on appeal addressed by this decision is
very similar to the one in Application Serial No. 85281360. See In re Heatcon, Inc., 116
USPQ2d 1366, 1368-69 (TTAB 2015).
8 If the entirety of Applicant’s claims for the marks, including the arrangement, is
functional, then the drawing refusals would be moot. The drawing requirement is relevant
only to the extent that the descriptions of the marks claim the arrangement of the user
interface components that are individually functional, and the arrangements of those
functional components are found to be not functional, i.e., more than the sum of their parts.
Serial No. 85281225, et al.
- 10 -

Functionality
Under the statute, functional matter is unregistrable on the Principal and
Supplemental Registers. 15 U.S.C. § 1052(e)(5) (“No trademark by which the goods
of the applicant may be distinguished from the goods of others shall be refused
registration on the principal register on account of its nature unless it … (e)
Consists of a mark which … (5) comprises any matter that, as a whole, is
functional”) and 15 U.S.C. § 1091(c) (“For the purposes of registration on the
supplemental register, a mark may consist of any … configuration of goods … that
as a whole is not functional … but such mark must be capable of distinguishing the
applicant’s goods or services”) (emphasis added).
Matter is functional if “it is essential to the use or purpose of the article or if it
affects the cost or quality of the article.” TrafFix Devices Inc. v. Marketing Displays
Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted). “To support a
functionality rejection in proceedings before the Board, the PTO examining attorney
must make a prima facie case of functionality, which if established must be
rebutted by ‘competent evidence.’” In re Becton, Dickinson and Co., 675 F.3d 1368,
102 USPQ2d 1372, 1376 (Fed. Cir. 2012) (quoting In re Teledyne Indus., 696 F.2d
968, 217 USPQ 9, 11 (Fed. Cir. 1982)). In making our determination of functionality
we apply the test first set forth in In re Morton Norwich Products, Inc., 740 F.2d
1550, 213 USPQ 9 (CCPA 1982). See Becton, Dickinson and Co., 102 USPQ2d at
1377, (citing Morton-Norwich, 213 USPQ at 15-16). These factors are not exclusive,
however, for functionality “depends upon the totality of the evidence.” Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1424 (Fed. Cir.
Serial No. 85281225, et al.
- 11 -

2002). Morton-Norwich identifies the following factors to be considered in
determining whether a particular design is functional: (1) the existence of a utility
patent disclosing the utilitarian advantages of the design; (2) advertising materials
in which the originator of the design touts the design’s utilitarian advantages; (3)
the availability to competitors of functionally equivalent designs; and (4) facts
indicating that the design results in a comparatively simple or cheap method of
manufacturing the product. Morton-Norwich, 213 USPQ at 15-16. It is not required
that all four factors be proven in every case, nor do all four factors have to weigh in
favor of functionality to support a refusal. Nevertheless, in reaching our decision,
we will review all four factors. See AS Holdings, Inc. v. H & C Milcor, Inc., 107
USPQ2d 1829, 1833 (TTAB 2013).
Before applying these factors to the facts of these cases, we first must define
what Applicant intends to claim as trademarks. Similar to the case in In re Heatcon,
Inc., 116 USQP2d 1366, the dispute regarding the absence of dotted lines in the
drawing, could lead to the interpretation that the drawings claim as marks the
shape of each of the functional features as well as their placement on the devices.
We will address the drawing requirements infra; however, for purposes of the
functionality analysis we follow the descriptions of the marks and Applicant’s
representation in its briefs that it only claims the arrangement or placement of each
of the specific functional features of the user interfaces but not the individual
functional features per se.
Serial No. 85281225, et al.
- 12 -

Utility Patent
With regard to the first factor, the existence of a utility patent “is strong
evidence that the features claimed therein are functional” and “[w]here the expired
patent claimed the features in question, one who seeks to establish trade dress
protection must carry the heavy burden of showing that the feature is not
functional, for instance by showing that it is merely an ornamental, incidental, or
arbitrary aspect of the device.” TrafFix, 58 USPQ2d at 1005. In addition, third-
party utility patents may be relied upon as evidence; ownership of the utility patent
is not relevant. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046 n. 22
(TTAB 2013); In re Mars Inc., 105 USPQ2d 1859, 1861 (TTAB 2013); In re Virshup,
42 USPQ2d 1402, 1405 (TTAB 1997).
The Examining Attorney relies on United States Patent No. 6976519 (’519),
owned by a third party, for a “Portable Curing System for Use with Vacuum Bag
Repairs and the Like” as shown in the drawing below.9

9 September 20, 2012 Office action, TSDR pp. 99-111. The Examining Attorney also
references another third-party patent for an “In Situ Pipe Repair Controller and System”
that arranges the ports around the upper periphery of the instrument panel for easy and
unencumbered connection of cables and hoses. However, we focus our attention on the more
relevant patent.
Serial No. 85281225, et al.
- 13 -

The Examining Attorney observes that the claims include “a carrying case, a
controller with a microprocessor, a vacuum pump, at least one heater connector for
receiving a lead of a thermocouple, and a touch screen display to view information
and input information to the controller.” Ex. Att. Br., 18 TTABVUE 9. It also has
power ports along the top with a printer beside a central display screen. Further,
the Examining Attorney points out that the patented device and Applicant’s devices
share various similarities. For example, the configurations in each of the
applications have a tilted display screen toward the user and the printer is placed
away from the power input port and vacuum connector ports and the “operator can
connect cords, cables and wires away from his position and avoid entangling the
connections or blocking access to the other features of the panel.” Id. at 9.
Applicant argues patent ’519 has no probative value as to whether or not the
specific arrangement as a whole is functional because the claims do not reference
how the components are arranged and figures 1 and 2 simply show “one possible
Serial No. 85281225, et al.
- 14 -

arrangement of a virtually infinite number of possible arrangements.” App. Br., 16
TTABVUE 14. However, as noted by the Examining Attorney, the utility patent
need not “claim the exact configuration for which trademark protection is sought in
order to undermine an applicant’s assertion that an applied-for mark is not …
functional.” Becton, Dickinson and Co., 102 USPQ2d at 1377. Rather “a patent’s
specification illuminating the purpose served by a design may constitute equally
strong evidence of functionality.” Id.
Claim 20 of patent ’519 is set forth below:
A portable curing system comprising, in combination: a
carrying case; a controller located within the carrying
case and having a microprocessor; a vacuum pump located
within the case and having at least two vacuum ports for
connection of vacuum lines; at least two vacuum sensor
connectors located within the carrying case for receiving
leads of vacuum sensors; at least two heater connectors
located within the carrying case for receiving leads of
electrical heaters; at least two temperature sensor
connectors located within the carrying case for receiving
leads of thermocouples; wherein the controller is operably
connected to the vacuum pump, the vacuum sensor
connectors, the heater connectors, and the temperature
sensor connectors; a touch-screen video display mounted
within the carrying case and operably connected to the
controller to display information from the controller and
input information to the controller; and wherein the video
display is pivotable between a stowed position and a
viewing position.10
The patent claim includes the boundaries of any arrangement, i.e., portable
carrying case, and specifically claims the ability of the touchscreen video to be in a
raised position. The patent further discloses the “preferred embodiments” that

10 September 20, 2012 Office action, TSDR p. 106.
Serial No. 85281225, et al.
- 15 -

include “for example, specific dimensions, orientations, and shapes of the portable
curing system components” which “will be determined in part by the particular
intended application and use environment.” In addition, the patent discloses
(emphasis added) that:
The illustrated vacuum pump 40 is secured to the upper
panel 24 below the upper panel 24 and at the right side of
the carrying case 12 (as viewed in Fig. 1). The air supply
port 42 is connected to an air inlet of the vacuum pump 40
and is adapted for receiving an air input line to connect a
source of compressed air to the vacuum pump 40. The
illustrated air supply port 42 extends through the upper
panel 24 so that an inlet end of the port 42 is located
above the upper panel 24 and an outlet end of the port 42
is located below the upper panel 24 at a front end of the
vacuum pump 40. Mounted in this manner, the air
input line can be easily connected to the port 42
when the lid 16 of the carrying case 12 is in its open
position. The air exhaust port 44 is connected to an
outlet of the vacuum pump 40 for exhausting fluids from
the vacuum pump 40. The illustrated air exhaust port 44
extends through the upper panel 24 so that an outlet end
of the port 44 is located above the upper panel 24 and an
inlet end of the port 44 is located below the upper panel
24 at a rear end of the vacuum pump 40. Mounted in
this manner, air or other fluid can be easily
discharged to the surrounding environment when
the lid 16 of the carrying case 12 is in its open
position. … The illustrated control valve 50 is provided
with an adjustment knob 52 so that the operator can
manually adjust the level of vacuum provided through the
vacuum lines by the vacuum pump 40. The illustrated
control valve 50 extends through the upper panel 24 so
that the adjustment knob 52 is located above the upper
panel 24 and the valve portion located below the upper
panel 24 at a right side of the vacuum pump 40 in the line
between the vacuum pump 40 and the vacuum ports 46,
48. Mounted in this manner, the adjustment knob 52
can be easily adjusted when the lid 16 of the
carrying case 12 is in its open position. It is noted
that the adjustment knob 52 can alternatively be any
Serial No. 85281225, et al.
- 16 -

other suitable operator control device. … Below the upper
panel 24, the outlet ends of the connectors 54, 56 are
suitably connected to the controller 36 as described in
more detail hereinafter. Mounted in this manner, the
vacuum sensor lines can be easily plugged into the
connectors 54, 56 when the lid 16 of the carrying
case 12 is in its open position. … Mounted in this
manner, the heater leads can be easily plugged into
the connectors 58, 60 when the lid 16 of the
carrying case 12 is in its open position.11
These references to the placement of various functional features in relation to
each other and within the confines of the portable carrying case clearly indicate the
utilitarian advantages of how the features are arranged. The importance and
benefit of the arrangement of the various functional features which enables the
device to operate optimally without, for example, cable entanglement, is illustrated
by the picture below showing one of Applicant’s devices when hooked up for
operation.
12

11 Id., TSDR p. 108-109.
12 July 23, 2014 Office action, TSDR p. 56.
Serial No. 85281225, et al.
- 17 -

We find the ’519 patent discloses the utilitarian advantages of the arrangement
of the various parts, e.g., vacuum ports and pumps, power ports, printers and
monitor, of an interface for a portable hot bonder. Given the strong weight to be
accorded patent evidence under TrafFix, we find that the patent is sufficient to
establish prima facie that the design is functional.
Advertising
Under this factor, we consider evidence regarding “advertising materials in
which the originator of the design touts the design’s utilitarian advantages.” Valu
Engineering v. Rexnord, 61 USPQ2d at 1426 citing Morton-Norwich, 213 USPQ at
15-16. The Examining Attorney argues that Applicant’s own advertising extols
specific utilitarian advantages of the applied-for configurations. For example,
Applicant’s brochure lists the following as “standard features”:
All aluminum, scratch resistant, anodized faceplate
Ergonomic design, convenient hookup of all accessories
Circuit breakers are on front panel, no fuses to replace13
and further “touts” the various configurations’ ease of use, compact size, and
portability with “a built-in vacuum system to allow easier mobility to the
repair site.”14
The Examining Attorney observes that the “‘ergonomic design’ reference is
immediately followed by ‘convenient hookup of all accessories’. The connections for

13 January 5, 2012 Response, TSDR p. 11.
14 Id., TSDR p. 10.
Serial No. 85281225, et al.
- 18 -

the accessories are arranged on the face of the interface panel in a manner that
makes hooking up the accessories convenient.” Ex. Att. Br., 18 TTABVUE 11.
We find that the references to “ergonomic design,” “convenient hook up” and
“circuit breakers on the front panel” directly address Applicant’s claim, namely the
arrangement of the features on the faceplate, and as such are probative on this
point. Ergonomic is defined as “2. Designed to minimize physical effort and
discomfort, and hence maximize efficiency.”15 In addition to the convenient hook up,
in the case of the configurations in Serial Nos. 85281291 and 8528131716 the
ergonomic design allows for dual zone applications, by allowing the user to operate
in the center entering data and monitoring from the center screen and providing
input and output ports and receptacles on either side.
Applicant’s other models that do not have the dual zone option do not have the
screen in the middle. See below:17

15 COLLINS ENGLISH DICTIONARY (www.collinsdictionary.com), July 23, 2014 Office
Action, TSDR pp. 87-88. We note this definition which the Examining Attorney made of
record is not from the COLLINS AMERICAN ENGLISH DICTIONARY but approximates the
definition in the MERRIAM-WEBSTER online dictionary (www.merriam-
webster.com/dictionary/ergonomic); “1. An applied science concerned with designing and
arranging things people use so that the people and things interact most efficiently and
safely – called also biotechnology, human engineering, human factors 2. The design
characteristics of an object resulting especially from the application of the science of
ergonomics.” The Board may take judicial notice of dictionary definitions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
16 The configuration in Serial No. 85281386 also appears to be dual zone, but it is listed in
the category “military” on the product comparison guide. January 5, 2012, Response, TSDR
p. 9.
17 January 5, 2012, Response, TSDR p. 10-11.
Serial No. 85281225, et al.
- 19 -

The Examining Attorney also points to third-party references to Applicant’s
configurations, touting the display “that lets mechanics monitor the cure cycle for
composites used in repairs, which is important for assuring that the resulting
component meets airworthiness requirements. Speed, rapid response and visually
assuring that cure cycles parameters are being followed are absolutely essential in
this whole process.”18
The Examining Attorney also relies on competitors’ advertising and promotional
materials touting the utilitarian aspects of their products. In re Van Valkenburgh,
97 USPQ2d 1757, 1763 (TTAB 2011). For example, third-party WichiTech
Industries “promotes the ease of operation and safety of its product … [which]
features a centralized input pad enabling the user to control the device and reach
the components from the center of the unit with minimal movement [and] the
overall unit retains its compact size.” Ex. Att. Br. 15 TTABVUE 12 (Application

18 September 20, 2012 Office action, TSDR p. 119.
Serial No. 85281225, et al.
- 20 -

Serial No. 85281291).19 See also Ex. Att. Br. 14 TTABVUE 13 (Application Serial
No. 85281317) and 17 TTABVUE 12 (Application Serial No. 85281386).
In the promotional materials, WichiTech Industries touts:
These twin features permit you to perform two
independently-programmed cures simultaneously. Fail-
safe protection is provided by the monitoring of multiple
thermocouples, and audible alarms guard against
temperature and vacuum conditions that could ruin the
repair.20
The reference to “failsafe protection” as a result of “monitoring of multiple
thermocouples” is also relevant to the single zone configurations in Application
Serial Nos. 85281225 and 85281264. In addition, these configurations are similar to
the WichiTech configuration in that “the power and vacuum connector ports are
along the top of the unit, with thermocouple jacks grouped together on the side
[and] the keypads are located in the center.” Ex. Att. Br. 18 TTABVUE 12
(Application Serial No. 85281225). See also 15 TTABVUE 12 (Application Serial No.
85281264).
Similarly, another competitor, Zimac Laboratories, touts that its dual zone hot
bonder can “Increase your productivity.”21 As noted by the Examining Attorney, this
hot bonder also has the power ports along the top and the thermocouple ports
arranged along each side.

19 July 26, 2014 Office Action, TSDR p. 60 (Application Serial No. 85281291).
20 January 6, 2012 Response, TSDR p. 19.
21 July 7, 2011 Office action, TSDR p. 25.
Serial No. 85281225, et al.
- 21 -

A competitor, BriskHeat, touts its product as “easier ● better” with an “easy-to-
use full-color HD Touch-Screen” and a “Fast Dual Vacuum System.”22 Again, this
product has a centered display with printers on each side and power ports at the
top.
Accordingly, we conclude that the advertising evidence supports a finding that
Applicant’s configurations are functional.
Alternative Designs
Applicant submitted the following third-party products as examples of
alternative designs.
23 24

___ ___ ___

22 February 10, 2012 Office action, TSDR pp. 5-6.
23 January 5, 2012 Response, TSDR p. 13. This is a single zone hot bonder with dual zone
capabilities by linking two bonders “via a communications cable to create a fully functional
Dual Zone Hot Bonder.” Id.
24 January 5, 2012 Response, TSDR p. 19.
Serial No. 85281225, et al.
- 22 -

25

___ ___ ___
26

___ ___ ___

27

25 July 7, 2011 Office action, TSDR p. 25.
26 February 10, 2012 Office Action, TSDR p. 11.
Serial No. 85281225, et al.
- 23 -

___ ___ ___
28

Applicant argues these examples show the “availability of numerous alternative
configurations” and “strongly support[ ] a finding of non-functionality.” App. Br., 16
TTABVUE 17. However, as explained by the Examining Attorney, the third-party
examples relied on by Applicant, i.e., WichiTech, BriskHeat, Applied Heat,
Aeroform France, ATACS and Zimac, do not necessarily evidence alternative
configurations that provide the same utilitarian benefit as “[h]ot bonders are often
designed to be compliant with the repair specifications of the industries in which
they operate.” Ex. Att. Br. 18 TTABVUE 14. Moreover, with regard to the dual zone

27 February 5, 2012 Office action, TSDR p. 5.
28 February 5, 2012 Office action, TSDR p. 17.
Serial No. 85281225, et al.
- 24 -

configurations, the Examining Attorney asserts that Applicant’s configurations
“appear[] safer [than the Aeroform France product] as [they] lessen[] the likelihood
of connecting the thermocouples to the wrong zone” and “Applicant’s user-interface
arrangement provides the dual zone capability in one compact package without the
expense of additional equipment and accessories” as required in the Applied Heat
product. Ex. Att. Br. 15 TTABVUE 16 (Application Serial No. 85281291).
The examples of hot bonders that do not include a raised display screen are not
examples of alternatives for hot bonders that include a raised display screen and
are not strong evidence of alternative designs.
While we find that the third-party examples do not strongly support Applicant’s
argument regarding the availability of other designs, we also observe that once
functionality is found based on other considerations, there is “no need to consider
the [third Morton-Norwich factor regarding] availability of alternative designs,
because the feature cannot be given trade dress protection merely because there are
alternative designs available.” Becton, Dickinson and Co., 102 USPQ2d at 1378. See
also TrafFix, 58 USPQ2d at 1006 (“Where the design is functional … there is no
need to proceed further to consider if there is a competitive necessity for the
feature.”) The fact that other competitive alternatives may exist does not alter the
initial finding that the configuration is functional and, thus, unregistrable. See also
In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985).
Serial No. 85281225, et al.
- 25 -

Accordingly, we conclude that the evidence of alternative designs does not
support a finding of non-functionality.29
Cost of Manufacturing
The information regarding the comparative costs of manufacturing for different
designs resides with the Applicant and Applicant did not provide more than the one
statement in its January 5, 2012 Response that “the three-dimensional
configuration of the arrangement of the HCS9000B Composite Repair Set’s user
interface components does not appear to be simpler or less expensive.”30 This
unsupported statement is not sufficient for us to make a determination on this
factor and we consider it neutral in our analysis. Moreover, even if Applicant’s
interfaces are not “comparatively simple or cheap” to manufacture, this does not
mean that the design is not functional. In re American National Can Co., 41
USPQ2d 1841, 1844-45 (TTAB 1997).
Analysis
As noted above, the statute prohibits registration of a configuration that, “as a
whole, is functional.” 15 U.S.C. §§ 1052(e)(5) and 1091(c). Applicant argues that “the
existence of functional elements or components in the specific arrangement does not
establish functionality of the specific arrangement, as a whole.” App. Br., 16
TTABVUE 8. It is Applicant’s contention that the “Examining Attorney has not

29 We further note that when viewed together, including the configuration that was the
subject of Application Serial No. 85281360, Applicant’s various configurations would
eliminate several options for competitors.
30 January 5, 2012 Response, TSDR p. 6. A similar statement is found in each of the other
applications.
Serial No. 85281225, et al.
- 26 -

made out a prima facie showing of functionality … [and] [Applicant’s] specific
arrangement, as a whole, of user-interface components for the HCS9000B hot
bonder is not essential to the use or purpose of the hot bonder, and there is no
evidence that protecting [Applicant’s] specific arrangement, as a whole, will
disadvantage [Applicant’s] competitors.” App. Br., 16 TTABVUE 18.31
However, contrary to Applicant’s argument, the USPTO may satisfy its burden
of establishing that a configuration is functional by showing the functionality of
various aspects of the configuration. In fact, “one object of the Morton-Norwich
inquiry is to weigh the elements of a mark against one another to develop an
understanding of whether the mark as a whole is essentially functional and thus
non-registrable.” Becton, Dickinson and Co., 102 USPQ2d at 1376. As the Court of
Appeals for the Federal Circuit explains, “functionality precedent indeed mandates
that the Board conduct such an assessment [weighing the functional and non-
functional factors] as part of its determination of whether a mark in its entirety is
overall … functional.” Becton, Dickinson and Co., 102 USPQ2d at 1376. See also In
re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ2d 1, 2 (Fed. Cir. 1984) (“[the board]
proceeded to initially review the six features claimed by Smith to comprise its mark.
Upon consideration of the entire design, the board found that not only were those
features themselves highly functional, except perhaps for the ribs, but that the
drawing as a whole included various other highly functional elements … Based on
the functionality of the individual features comprising the design, the board

31 Applicant makes the same assertion in its briefs in each of the other applications on
appeal.
Serial No. 85281225, et al.
- 27 -

concluded that the design as a whole was de jure functional. We agree with the
board that the PTO attorney established a prima facie case of de jure
functionality.”).
Here, the arrangements are composed entirely of functional parts but Applicant
asserts that the arrangements by themselves are non-functional and therefore are
registrable on the Supplemental Register. Because Applicant has not depicted the
individual features in broken lines they are collectively (if not individually) part of
the mark and part of the analysis. Therefore, the functional features far outweigh
any non-functional aspect of the arrangements which is incidental and hardly
discernible as a separate element from the functional parts in each configuration.
While we do not foreclose the possibility, it is difficult to imagine a situation where
the sum of a configuration’s entirely functional parts adds up to a design capable of
indicating the source of the product. In any event, the configurations in these
applications present no such exception.
Even if we accept that the functional parts collectively are not intended as part
of Applicant’s claims for its proposed marks, that is, they fall into the exception
where functional features may be depicted in solid lines, the same analysis would
apply in these proceedings because without considering them there are no marks.
Finally, even if we do not weigh the functional features against the asserted non-
functional arrangements, the record establishes the utilitarian nature of the
arrangements themselves. The record shows in each application that the
arrangement of significant functional features is directed by utilitarian concerns to
Serial No. 85281225, et al.
- 28 -

make operation of the devices easier, safer and more efficient. Becton, Dickinson
and Co., 102 USPQ2d at 1376. Applicant’s interfaces provide specific utilitarian
advantages in that they prevent entanglement of cables (placement of the power
receptacles and vacuum hoses at the top edge of the unit), create safer
configurations of the various components (e.g., placement of thermocouple
connection ports at opposite positions on the panel to prevent dual zones from
connecting to each other), and afford an efficient and ergonomic arrangement by,
inter alia, providing for convenient hookup of accessories and, in the case of the dual
zone interfaces, allowing the user to engage in two processes by placing the monitor
in the center with the keyboard in front and keeping the dual zones visually and
physically separate. See In re Bose Corp., 227 USPQ 1 (shape of loudspeaker system
enclosure that conforms to the shape of the sound matrix held functional); In re
Dietrich, 91 USPQ2d 162 (TTAB 2009) (spoke arrangement of bicycle wheel more
stable with better performance than wheels with other spoke arrangements).
In short, the Examining Attorney has satisfied her burden in making a prima
facie case and Applicant has not rebutted it with “competent evidence,” defined as
“proof by preponderant evidence.” Becton, Dickinson and Co., 102 USPQ2d at 1379.
Applicant’s reliance on certain case law does not persuade us of a different
result. In In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988), the Board held that
the round thermostat cover configuration was not functional based in part on the
finding of no “evidence of use by competitors … for so many years, despite
applicant’s apparent lack of any patent and trademark protection for it.” The Board
Serial No. 85281225, et al.
- 29 -

concluded that “the number of alternative designs available to competitors,
although limited, is sufficient for this product.” Id. at 1604. In that case, the
drawing and description included only a rounded cover; the inner workings and face
plate were not part of the applied-for mark. By contrast, here Applicant’s
configurations are created by the arrangement of specific functional features.
In Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217
(S.D.N.Y. 2004), the court found the watch “trade dress as a whole” was not
functional. However, in that case the watch trade dress incorporated elements not
essential to the function of the watch, such as “Roman numerals, a cabochon, an
octagonal winding stem, a minute track, a particular face shape, a particular shape
of a watch case and its extensions connecting the face to the strap and a particular
bracelet link formation or shape.” Id. at 225. Here, as the Examining Attorney
explains, “applicant’s goods incorporate essentially all functional elements” and is
not “decorative.” Ex. Att. Br., 18 TTABVUE 21. Each part is essential to the
function of the hot bonder and each part is placed in such a way as to make
operation easier, safer and more efficient.
Finally, in In re Cheseborogh-Pond’s, Inc., 224 USPQ 967 (TTAB 1984), the
Board stated there was nothing to indicate that the design has superiority over
other possible designs. Here, the number of possible designs for a portable hot
bonder is limited by, at a minimum, industry specifications, ease of use and space
constraints. Where all or substantially all of an applicant’s overall design is dictated
by the function it performs, it is functional. In re Vico Products Mfg. Co., Inc., 229
Serial No. 85281225, et al.
- 30 -

USPQ 364, 370 (TTAB 1985) (configuration of whirlpool jets for bathtubs held
functional because “the appearance of the body is adapted to the function it
performs”).
In making our determination, we keep in mind the guidance from the Supreme
Court that “[t]he functionality doctrine … protects competitors against a
disadvantage (unrelated to recognition or reputation) that trademark protection
might otherwise impose, namely their inability reasonably to replicate important
non-reputation-related product features.” Qualitex Co. v. Jacobson Products Co.,
Inc., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995). To afford registration to
functional designs would inhibit legitimate competition by, in effect, granting a
monopoly to a non-reputational, or non-source-identifying, feature of a product. Id.,
34 USPQ2d at 1163-64. As emphasized in Morton-Norwich, which sets out the four
analytical factors, “the effect on competition ‘is really the crux of the matter,” and a
balance must be struck “between the ‘right to copy’ and the right to protect one’s
method of trade identification.” Morton-Norwich, 213 USPQ at 15-16.
Based on all of the record evidence and arguments in relation to the Morton-
Norwich factors, we find that the overall design of each of Applicant’s configurations
is “essential to the use or purpose of the article.” TrafFix, 58 USPQ2d at 1006.
Thus, we find that the configurations as a whole are functional and are not
registrable on that basis.
Serial No. 85281225, et al.
- 31 -

DRAWING
Although we have found the configurations as a whole to be functional which
renders the drawing requirements moot, for completeness we address the drawing
refusals directed to the individual functional user-interface components. A drawing
depicts the mark sought to be registered. Trademark Rule 2.52, 37 C.F.R. § 2.52.
Product configuration marks require special form drawings and must depict matter
not claimed as part of the mark in broken lines. Broken lines must also be used to
indicate placement of the mark. Trademark Rule 2.52(b)(4), 37 C.F.R. § 2.52(b)(4).
The Examining Attorney argues that the functional elements of the marks may not
be registered and “to show that they are not part of the mark, functional elements
must be depicted in broken or dotted lines on the drawing to show the position or
placement of the claimed portion of the mark.” Ex. Att. Br., 18 TTABVUE 21.
Further, because “applicant asserts that the proposed mark is for the arrangement
of the components … the functional components themselves must be shown in
dotted lines to show their position.” Id. at 22.
Applicant argues:
[T]he components of the user interface currently shown in
solid lines should remain in solid lines because each of
these components is an element of the specific, three-
dimensional arrangement, as a whole, of the user-
interface components of the HCS9000B Composite Repair
Set. … Because the mark is the specific, three-
dimensional arrangement, as a whole, of the user-
interface components of the HCS9000B, the whole user
interface should be shown in solid lines. And although the
mark includes elements that should be shown in broken
Serial No. 85281225, et al.
- 32 -

or dotted lines because they are functional, if doing so
would result in an unclear depiction of the mark, the
applicant may use solid lines to show the elements. … If
the drawing of the mark, … were amended to show each
component of the whole user interface in broken or dotted
lines, then the drawing of the mark would not include any
solid lines. And thus, the specific arrangement, as a
whole, of the user-interface components of the HCS9000B
Composite Repair Set would not be clearly depicted in the
drawing.
App. Br., 16 TTABVUE 19.32
The Examining Attorney responds that where dotted lines would result in an
unclear depiction of the mark and an applicant uses solid lines, an applicant must
“insert a statement in the description of the mark identifying these elements and
declaring that these elements are not part of the mark and that they serve only to
show the position of the mark on the goods … [and here] applicant claimed the
elements as a part of the overall configuration and failed to insert a statement to
the contrary.” Ex. Att. Br., 18 TTABVUE 23.
The TMEP provides:
In rare instances where it is impractical to render certain
elements of a mark in dotted or broken lines – for
example, if those elements are proportionally so small as
to render dotted lines illegible – or if dotted lines would
result in an unclear depiction of the mark, the applicant
may use solid lines. However, the applicant must insert a
statement in the description of the mark identifying these
elements and declaring that these elements are not part
of the mark and that they serve only to show the position
of the mark on the goods, as appropriate.
TMEP § 1202.02(c)(i) (October 2015).

32 Applicant makes a similar argument in the briefs in each of the applications on appeal.
Serial No. 85281225, et al.
- 33 -

Without the benefit of examples of the drawings with the functional features in
dotted lines, it is difficult to tell whether the drawings required by the Examining
Attorney would be unclear depictions, although none of the functional features is so
small as to create difficulty and the scope of the marks are clearly explained in the
description. However, Applicant did not include a statement in the descriptions of
the marks indicating these elements remaining in solid lines in the drawing are not
part of the marks. In fact, Applicant’s argument could be interpreted to mean
Applicant is including within its claims the shape of each functional feature in
addition to the specific location wherein it resides with other specific functional
features in specific locations. The Examining Attorney provided examples of
registrations wherein the drawing of the configuration, which included the
location/arrangement of certain functional features, depicted those features in
broken lines. For example, in Reg. No. 4058153 the mark is described as follows:33
The mark consists of a three dimensional configuration of
an RFID reader comprising a housing having a generally
quadrangular front face and a plurality of side surfaces
connected to the front face. The front face defines a
rounded peripheral edge which transitions into the
plurality of side surfaces, and further includes a generally
quadrangular groove. The front face additionally includes
five short grooves in vertical alignment with each other, a
generally quadrangular recess and an indicator light
disposed along a common horizontal axis with the
uppermost short groove. A pair of long grooves are
disposed on opposing ends of the short grooves. Six
rounded depressions are formed within the front face and
are aligned along a common vertical axis with the
indicator light and are horizontally aligned with
respective ones of the short and long grooves. The front

33 September 20, 2012 Office action, TSDR p. 77-79.
Serial No. 85281225, et al.
- 34 -

face additionally includes an offset keypad shown
in dotted lines. The matter shown in broken or
dotted lines is not part of the mark and serves only
to show the position or placement of the mark.
(emphasis added)
The drawing depicts the inclusion of a keypad in broken lines.

In view of the functionality of the individual components, the requirement to
depict them in broken lines is appropriate. We are not persuaded that such
depiction would be “unclear.” Moreover, to the extent it would be “unclear” the
requirement to insert a statement in the description of the mark identifying these
elements and declaring that these elements are not part of the mark and that they
serve only to show the position of the mark on the goods is also appropriate.
Decision: The refusals to register the configurations on the Supplemental
Register on the ground that the configurations are functional are affirmed in each
application. The refusals to register the configurations for failure to comply with the
drawing requirements are affirmed in each application.