Rolf Dietrich

Trademark Trial and Appeal Board

Jul 16, 2009

No. 78723912 (T.T.A.B. Jul. 16, 2009)

Oral Hearing: April 7, 2009 Mailed: July 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rolf Dietrich
________

Serial No. 78723912
_______

David C. Purdue of Purdue Law Offices for Rolf Dietrich.

Angela Micheli, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Holtzman, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Rolf Dietrich, has appealed from the final
refusal to register on the Principal Register the following mark
for "bicycle wheels" in Class 12:1

1 Serial No. 78723912, filed September 30, 2005, asserting a date of
first use and first use in commerce on June 30, 2003.
THIS OPINION IS
A PRECEDENT OF
THE TTAB
Ser No. 78723912
2

The mark is described in the application as follows:
The mark consists of a spoke pattern in a bicycle
wheel comprising a hub, shown in phantom lines in the
center of the drawing, and a rim, shown in phantom
line around the perimeter of the drawing, as viewed
from the side along the axis of rotation of the
wheel. The spoke pattern appears to consist of a
first set of pairs and a second set of pairs of
parallel spokes that are spaced apart, wherein each
pair of spokes from the first set appears to
intersect an adjacent pair of spokes from the second
set to define diamond shaped regions between the rim
and the hub of the wheel.

Issue on appeal
The application was filed under Section 2(f) of the
Trademark Act based on applicant's ownership on the Principal
Register of Registration No. 2720572 for the mark shown below for
"torque transmitting bicycle wheels" in Class 12.2

2 Issued June 3, 2003 under Section 2(f) of the Act; Sections 8 and 15
affidavits accepted and acknowledged.
Ser No. 78723912
3

The description of the mark in the registration (as
corrected), reads:
The mark consists of a spoke pattern in a bicycle
wheel comprising a hub, shown in phantom lines in the
center of the drawing, and a rim, shown in phantom
lines around the perimeter of the drawing, as viewed
from the side along the axis of rotation of the
wheel. The spoke pattern appears to consist of a
first set of pairs of parallel spokes that are spaced
apart approximately one to two centimeters and a
second set of pairs of parallel spokes that are
spaced apart approximately one to two centimeters,
wherein each pair of spokes from the first set
appears to intersect an adjacent pair of spokes from
the second set to define diamond shaped regions
between the rim and the hub of the wheel.

Applicant asserts that the mark in the registration is the
same basic design as the mark in the application, only with fewer
pairs of spokes. According to applicant, the registered mark
comprises 8 pairs of spokes (a total of 16 spokes), the crossed
pairs of which create the appearance of four diamond shaped
regions, while the mark in the application comprises 12 pairs of
spokes (a total of 24 spokes) and six diamond shaped regions.
Brief, p. 4.
Ser No. 78723912
4
The examining attorney refused registration on the ground
that the configuration is functional under Section 2(e)(5) of the
Trademark Act. In addition, the examining attorney rejected
applicant's 2(f) evidence, correctly stating that "[t]he
determination that a proposed mark is functional constitutes an
absolute bar to registration" regardless of the evidence of
acquired distinctiveness. Office action, January 16, 2007.
Applicant subsequently submitted additional 2(f) evidence,
including a declaration of five-years' substantially exclusive
and continuous use of the mark in commerce. The examining
attorney rejected this evidence, as well, again stating
essentially that no amount of 2(f) evidence would be sufficient
to overcome a refusal based on functionality.
However, at no time during examination did the examining
attorney specifically address whether the configuration, if
ultimately found not functional, would be registrable with an
appropriate 2(f) showing. Nor did the examining attorney ever
address the sufficiency of the 2(f) evidence in this case.3 To
the extent that the examining attorney attempted to refuse
registration on this basis for the first time in her appeal

3 As stated in TMEP § 1202.02(c), "if the examining attorney has
determined that a mark is functional and the applicant has made a claim
of acquired distinctiveness, the examining attorney must determine
whether the showing of acquired distinctiveness would be sufficient to
warrant registration if the examining attorney’s decision on the
functionality issue is reversed."
Ser No. 78723912
5
brief, the refusal is untimely and cannot be considered. Thus,
the sole issue on appeal is whether the mark is functional. We
find that the examining attorney has effectively conceded that,
assuming the mark is not functional, applicant's evidence is
sufficient to establish that the mark has acquired
distinctiveness.
Preliminary matter
We note applicant's statement that his existing Registration
No. 2720572 is incontestable, and his claim that the registration
"has substantial evidentiary significance." Reply Brief, p. 3,
n.2. To the extent that applicant is arguing that the refusal to
register in this case constitutes a collateral attack on this
registration, the argument is not well taken.
First, we point out that a mark is subject to cancellation
on the ground of functionality at any time, even if it is over
five years old. See Section 14 of the Act. In addition, the
incontestable status of a registered mark does not extend to a
different mark for broader goods. It is settled that a
"registered mark is incontestable only in the form registered and
for the goods or services claimed." In re Save Venice New York
Inc., 259 F.3d 1346, 59 USPQ2d 1779, 1782 (Fed. Cir. 2001),
citing, inter alia, In re Merrill Lynch, Pierce, Fenner and Smith
Inc. (incontestable registration for "cash management account"
did not automatically entitle applicant to registration of that
Ser No. 78723912
6
mark for broader financial services); and In re Bose Corp., 772
F.2d 866, 227 USPQ 1, 7 n.5 (Fed. Cir. 1985) (incontestable
status of registration for one speaker design does not establish
non-functionality of another speaker design with shared feature).
The two marks in this case, while visually similar, are not the
same;4 nor are the goods the same. The identification of goods
in the application, "bicycle wheels," is broader than the goods
in the registration, "torque transmitting bicycle wheels."
Thus, applicant's arguments in this regard are not
persuasive, and this case must be decided on its own merits.
The record
Applicant submitted copies of 10 utility patents in response
to the examining attorney's inquiry regarding the existence of
any patents relating to the configuration. The most relevant of
these patents are: Patent Nos. 5,445,439 (issued August 29,
1995); 5,931,544 (issued August 3, 1999); and 6,428,113 (issued
August 6, 2002); all owned by applicant and active, except for
5,445,439;5 and all relating generally to paired spoked bicycle

4 We also note that the description of the mark in the application,
stating that the pairs of spokes are "spaced apart" is broader than the
mark described in the registration which specifies that pairs of spokes
are "spaced apart one to two centimeters."

5 Applicant disclaimed all claims (nos. 1-10) in the '439 patent, and
the disclaimer was published in the Official Gazette on June 12, 2001.
The disclaimer effectively nullifies the patent and the patent is
"treated as though the disclaimed claims never existed." Vectra
Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 49 USPQ2d 1144, 1147 (Fed.
Cir. 1998). We recognize that expired patents and abandoned patent
Ser No. 78723912
7
wheels. Patent No. 6,679,561 (issued January 20, 2004) is owned
by a third party, Trek Bicycle Corporation ("Trek") and this
patent also relates to paired spoke wheels. Applicant has also
submitted three patents relating to hub assemblies and flanges,
Nos. 5,947,565 (issued September 7, 1999); 6,024,414 (issued
February 15, 2000); 6,244,667 (issued June 12, 2001); and
6,145,938 (issued November 14, 2000), which relates to both
spoked wheels and hub flanges.6
The record also includes the declaration of Rolf Dietrich
with exhibits including examples of applicant's print and website
advertisements by his licensee, Rolf Prima, for various models of
bicycle wheels having the subject spoking pattern or different
spoking patterns, as well as examples of advertisements for
bicycle wheels made by others with spoking arrangements that do

applications have evidentiary value in determining functionality. See
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422,
1429 (Fed. Cir. 2002). However, the evidentiary value of this patent
is questionable. We note that in previous litigation between applicant
and Trek Bicycle Corporation (Dietrich v. Trek Bicycle Corp. 297
F.Supp.2d 1122, 1125 [BNA cite not available] (W.D. Wis. 2003)), the
plaintiff, Rolf Dietrich (applicant herein) admitted that the '439
patent "is invalid." Under the circumstances, and although the
examining attorney focused her arguments on this patent and applicant
discussed it as well, we rely instead on the remaining active patents
which, in any event, as applicant notes, have disclosures regarding
paired spoking that correspond with the disclosures of the '439 patent,
and they also include additional disclosures, descriptions and
drawings. Brief, p. 13; Resp., October 13, 2006, p. 5.

6 The remaining patents of record, Nos. 6,497,042; 6,715,844; and
6,846,047, relate to certain functional aspects of the wheel, such as
the method for connecting a spoke and a rim in the '844 patent, but for
the most part, do not affect appearance of the involved design. Brief,
pp. 18-19; Resp., October 13, 2006, pp. 7-8.
Ser No. 78723912
8
not have the appearance of applicant's pattern design; and
additional pages from the Rolf Prima website submitted by the
examining attorney. Bicycle wheels produced by applicant, and
discussed infra, which feature the applied-for design include the
Elan (also referred to by applicant as Élan Aero), Aspin and
Apex.
Functionality
A product feature is functional and cannot serve as a
trademark "if the feature 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) citing Qualitex Co. v. Jacobson Products
Co, 514 U.S. 159, 34 USPQ2d 1161 (1995) quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214
USPQ 1, 4 n.10 (1982).
The Court in In re Morton-Norwich Products, Inc., 671 F.2d
1332, 213 USPQ 9 (CCPA 1982), set forth four factors to be
considered in determining whether a product design is functional:
(1) the existence of a utility patent that discloses
the utilitarian advantages of the design;

(2) the touting by the originator of the design in
advertising material of the utilitarian advantages of
the design;

(3) facts showing the unavailability to competitors
of alternative designs; and

Ser No. 78723912
9
(4) facts indicating that the design results from a
relatively simple or cheap method of manufacturing
the product.

Applicant explains that the subject mark "is the appearance
of a bicycle wheel design feature and, specifically, a particular
configuration of spokes in a torque transmitting bicycle wheel
such as a rear wheel or a wheel [such as a front wheel] with a
disk brake." Resp., October 13, 2006, p. 3. As set forth in
applicant's description of the applied-for design, the wheel
consists of pairs of spokes, where the two spokes in each pair
appear to be parallel when the wheel is viewed from the side, and
cross the spokes in the adjacent pair, as shown below. The
"diamond" shaped regions claimed by applicant as part of the mark
are formed at the tip of each point of what appears to be a six-
pointed star.7

7 Although the examining attorney, in her analysis, refers to the star
pattern formed by the design in the drawing, it is the diamond shaped
areas, not the star shape, that are claimed in the application as
features of the applied-for design.

Ser No. 78723912
10
Before discussing the utility patents, we believe some
background discussion is necessary for context and to aid
understanding of how the applied-for spoking pattern is formed.
A bicycle wheel generally comprises a tire, a metal rim to
retain the tire, and spokes under tension supporting the rim and
connecting the rim to a hub in the center of the wheel. The
spokes are laced, either radially or tangentially,8 around the
rim to corresponding holes around the perimeter of flanges on
opposing sides of the hub. "In order for a spoke wheel to work,
spokes connected to one hub flange have to pull the rim to the
left with the same force that spokes connected to the [other] hub
flange pull the rim to the right -- when this condition prevails,
you have a tensioned spoked wheel that works." Resp., July 16,
2007, p. 3.
As noted earlier, the subject spoke pattern is embodied in
several models of applicant's (rear) bicycle wheels, the Elan
(also referred to by applicant as Élan Aero), Aspin and Apex. A

8 Radial spokes run directly from the hub of the wheel to the rim in a
straight line, and are only used on a front wheel; tangential spokes
connect the hub and the rim at a slight angle, i.e., at a tangent, to
the hub, and cross one or more other spokes around the wheel. '565
pat., col. 1, ll. 59-60. Tangentially spoked wheels (which are
stronger) are used on a rear wheel or a front wheel with a disk brake.
'414 pat., col. 1; '565 pat., col. 1. ("Rear wheels and front wheels
with disk brakes are tangentially laced..."). We will focus our
discussion on tangentially laced spokes which cross one or more other
spokes and which therefore contribute to what appear to be the diamond
shaped areas that form part of applicant's applied-for design,
although, where necessary, radially spoked wheels may be used as visual
examples.
Ser No. 78723912
11
portion of a print advertisement for the Elan wheel is reproduced
on the left below. Another part of the same advertisement
appears on the right, and it displays applicant's Vigor model
wheel which embodies the similar spoke pattern appearing in
applicant's Registration No. 2720572.

Ser No. 78723912
12
A perspective view of the Elan (rear) wheel is shown in the
photograph below.9

It can be seen in the above photograph that the pairs of
spokes in the wheel are not actually parallel, which accounts for
the description of the mark that says the wheel appears to
utilize pairs of parallel, intersecting spokes. They only appear
to be parallel when the wheel is viewed from the side, as in the

9 We obtained this photograph directly from the Rolf Prima website
(rolfprima.com), since, as applicant notes, the submissions of record
did not reproduce well enough to display.
Ser No. 78723912
13
print advertisement for the Elan wheel. The subject design is
actually formed by a combination of features, i.e., tangentially
laced, offset "paired" spokes, that are connected to paired
groups of flange holes on the hub. Each feature falls within one
or more of the utility patents relating to spoking and those
relating to hub flanges.

(1) Utility patents(10)

As stated by the Supreme Court in TrafFix Devices Inc., 58
USPQ2d at 1005, "[a] utility patent is strong evidence that the
features therein claimed are functional" and "[w]here
the...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."
We turn then to the utility patents. In considering the
patents, we keep in mind that third-party patents may be relied
upon as evidence; a patent is potentially relevant if it covers
the feature at issue, regardless of the owner. See, e.g., In re
Virshup, 42 USPQ2d 1402, 1405 (TTAB 1997). Furthermore, we are
not limited to review of the claims in a patent in determining

10 As discussed infra, applicant asserts in certain advertising material
that it owns design patents. Whether or not this is so, applicant did
not make information regarding any such patents of record.
Ser No. 78723912
14
functionality, but we may also consider the disclosures in the
patent. See In re Bose, 772 F.2d 866, 227 USPQ 1 (Fed. Cir.
1985); and In re Howard Leight Industries LLC, 80 USPQ2d 1507,
1511 (TTAB 2006), quoting J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §7:89.1 (4th ed. 2006) that
"[i]t is proper to look to the disclosure (as distinguished from
the claims) in a utility patent as evidence of the functionality
of a shape. The Trademark Board has held that each embodiment of
the invention described in a utility patent is equally functional
for purposes of trademark law," citing, inter alia, In re Bose,
supra.

Paired spoking
Patent Nos. 5,931,544; 6,428,113; and 6,679,561

As general background for these inventions, a conventional
bicycle wheel typically has 32 to 48 spokes that are spaced
evenly, either radially or tangentially, along the circumference
of the rim around the wheel. '544 pat., col. 1, l. 47; Trek '561
pat., col. 2. The spokes are connected at the rim on one end to
alternating sides of the hub flanges attached to each end of the
hub. Examples of this conventional spoking arrangement, from
applicant's '544 patent, are shown as Figs. 8 and 9 below. The
two figures are different views of the same tangentially spoked
wheel.
Ser No. 78723912
15

The problem with this conventional, single spoke
arrangement, according to the patents, is that a high number of
spokes is required for stability of the bike and for support of
the rim. However, the more spokes the wheel has, the heavier and
slower the bike. '544 pat., col. 5, l. 5, et. seq. Fewer spokes
make for a lighter, more aerodynamic bike, but a reduced spoke
count can result in an unstable bike. Id. As stated in the '544
patent, col. 2, "[c]onventional tensioned wheels with spoke
counts below [16] have poor structural characteristics and become
dangerously unstable...." As the spoke count is reduced,
steering vibrations at high speed increase.11 Id., col. 41.
Moreover, as the number of spokes per wheel is reduced,
eventually "a point is reached at which conventional rims simply
can't hold up." A stronger, and thus heavier, rim can be used,

11 Steering vibrations "limit the lean angle which a cyclist can achieve
in a high speed turn...." Id., col. 3, ll. 21-24.
Ser No. 78723912
16
"but this almost necessarily involves additional mass, however,
and the goal of a reduced weight wheel is subverted in the
process." Id., col. 5, l. 5, et seq.
Of particular concern with conventional spoking is the
"extremely dangerous" condition known as speed wobble or shimmy
which occurs during high speed in bicycles having front wheels
that are conventionally spoked. Id., cols., 3, 10.
Thus, to address the problems associated with conventional
spoking, applicant invented the concept of pairing spokes at the
rim, where the outer end of a spoke from the left side of a
bicycle wheel hub is paired together with the outer end of a
spoke from the right side of the hub where the ends are attached
to the rim. Brief, p. 1. The '544 patent provides for a reduced
spoke count wheel (such as nine spokes) "which does not require a
super strong rim, and which provides for improved stability,"
including a front wheel that "is not susceptible to speed wobble
or shimmy." '544 pat., cols. 5, 10.
The pairing of spokes at the rim can be "exact" or "offset."
In exact pairing, each spoke pair is "exactly circumferentially
coincident" (Id., col. 15, l. 8) and is connected, at its outer
end, to the rim at two points, one on either side of the center
plane, that is, the holes in the rim are in a line that is
perpendicular to the center plane. Id., col. 7, ll. 28-30.
Ser No. 78723912
17
An example of a perspective and a side view of the same
tangentially spoked wheel with exact pairing is shown below in
Figs. 3 and 4, respectively, both from the '544 patent. Also
below (but not included in the patent) is an enlarged portion of
Fig. 3 to more clearly show the placement of the spoke holes in
the rim.

Fig. 3, detail

Ser No. 78723912
18
It can be seen in Fig. 4 above that "exact pairing" of
spokes results in the appearance of a single spoke when the wheel
is viewed from the side. In order for both spokes in the pair to
be visible from the side, the holes in the rim for each member of
the pair must be offset from one another.12 Significantly, there
is a functional advantage to offset pairing of spokes.
The Trek '561 patent explains that "[t]he arrangement of
spokes [in exact pairing] cannot conveniently be applied to a
narrower rim, as there is not room for the spokes to be placed
[directly] opposite each other." Id., col. 2. Furthermore, the
'544 invention notes that prior experience with "exact" pairing
of spokes at the rim of commercially available rims "can exceed
the capacity of such rims." '544 pat., col. 16, lines 22-25.
Again, a heavier rim could be used, but that would make the wheel
and ultimately the bicycle heavier.
An example of offset paired spoking in a radially laced
wheel from the '544 patent is shown in Fig. 19 below, with an
enlarged view of the spoke holes (not included in the patent) on
the right. As seen in this example, the two holes for each pair

12 We glean from the '544 and '561 patents, that pairs of holes in the
rim are either offset in the sense that they are placed a short
distance apart aligned along the center plane of the wheel (e.g., '544
pat., col. 16, ll. 49-51), or offset in the sense that they are placed
at a slight angle to the center plane, (e.g., id., col. 16, ll. 58-60;
'561 pat., col. 8, ll. 6-9). In any case, the two holes are not
perpendicular to the center plane as they would be in exact pairing,
discussed supra.
Ser No. 78723912
19
are "placed a short distance apart" (Id., col. 16, l. 26, et
seq.) and they are aligned along the center plane of the rim
rather than at the same point or on opposing sides of the center
plane as in the exact paired pattern in Fig. 3 above.
Fig. 19, detail
As explained in the summary of the invention in the '544
patent, "the [offset] spoking pattern [shown in Fig. 19] affords
virtually the same resistance to speed wobble and shimmy as the
[exact pairing] spoking pattern [shown in Figs. 3 and 4 above],
but is much easier to produce and puts far less strain on the rim
and the connection between the rim and the spokes. Accordingly,
in terms of wheels according to the present invention
incorporating commercially available rims, the embodiment
illustrated in [Fig. 19] is preferred." Id., col. 16, ll. 29-37.
(Emphasis added.)
Ser No. 78723912
20
The concept of offset paired spoking is embodied in, for
example, Claims 5 and 7 of the '544 patent which are set out in
part below.
Claim 5:

A bicycle wheel having a center plane and comprising:

...
a given number of pairs of first and second spokes...
circumferentially offset at least about 0.3 inch
...
Wherein each of said pairs of first and second points
on said rim are sufficiently close to each other so
that, when said wheel is mounted on a bicycle, that
bicycle wheel will have improved resistance to
speed shimmy or wobble or wheel induced steering
inputs or axle deflection by comparison with that
bicycle with a conventional wheel....

Claim 7:

The wheel claimed in claim 5 wherein said spokes are
oriented tangentially relative to said hub flanges.

Thus, the '544 patent covers, inter alia, tangentially
oriented, offset paired spokes, where the result is both spokes
are visible when viewed from the side, as in the applied-for
design.
Claim 1 of Trek's '561 patent contains similar claims, as
set forth in part below. The primary difference here, it seems,
is the amount of offset between each spoke in the pair.
A bicycle wheel having a center plane and comprising:
...
a given number of pairs of first and second spokes...
circumferentially offset from between 0.76 inch and less
than 1.1 inch....

Ser No. 78723912
21
Referring back to Fig. 19 above for purposes of comparison,
the Trek '561 patent includes an example of offset paired spoking
in a tangentially laced wheel in side view, as shown in Fig. 3
below.13

It can be seen in this drawing that when the wheel is viewed
from the side, each spoke in the pair is visible, in contrast to
the appearance of the spokes in Fig. 4 above. However, the lines
of the paired spokes do not appear parallel, as in the applied-
for design, but instead appear to converge as they approach the
hub. This is because the parallel spoke design in the applied-
for design is also created by the way in which the tangential
pairs of spokes are laced and connected to the hub flanges, that

13 This design is identified by applicant as a Bontrager model wheel
sold by Trek under a patent license from applicant. Req. for Recon,
April 15, 2008, Decl. ¶ 5. As stated in applicant's October 13, 2006
response, p. 6, "Drawings that are representative of rear wheels in the
Bontrager/Trek wheel line can be found in the ['561 patent]." See also
id., pp. 9, 11.

Ser No. 78723912
22
is, at holes which are "grouped into pairs."14 This feature is
also covered by one or more of applicant's patents, as discussed
below.
Hub flanges
Patent Nos. 5,947,565; 6,024,414; 6,244,667; and 6,145,938

Applicant's '565 patent, for example, explains that "[r]ear
wheels and front wheels with disk brakes are tangentially laced
so that, between the hub flange and the rim, the spokes will
cross at least one or two and usually three other spokes,
depending on the number of spokes and the lacing geometry." The
patent notes, however, that in conventional wheels, where spoke
bores are evenly spaced around the flange, "there is contact
between the spokes where they cross and this can lead to problems
ranging from noise to spoke failure." Id., col. 1, ll. 57-63.
The '565 patent discloses that the holes in the hub flange
are "grouped into pairs" which, in comparison with a
conventionally laced wheel, results in "reduced spoke bending"
and "reduced spoke stress" at the cross-over points in a rear

14 The involved patents also contemplate hubs with either equal-sized
flanges or, as embodied in the Elan wheel, flanges of differing size,
(i.e., a left hub flange that is larger in diameter than the right hub
flange). It is clear that the paired flange holes contribute to the
applied-for design; however, the different size hub flanges is not
claimed by applicant as part of the subject spoke pattern (Brief, p.
15), and this feature apparently has no affect on the pattern.
According to applicant, the Trek patent, which we note does not require
different size flanges, could create the subject pattern. Brief, p.
14.
Ser No. 78723912
23
wheel, and results in "reduced dish"15 in a rear wheel or in a
front wheel with a disk brake. '565 pat., col. 2, ll. 24, 50-53,
57-59; col. 3, ll. 4-11, 16-18; abstract, ll. 1-5. (Emphasis
added.) "[T]his spoke bore pairing is preferably combined with a
spoke orientation which is nearly tangential, relative to the hub
flanges, for increased torque transmission." '565 pat., col. 2,
ll. 54-57. (Emphasis added.)
The paired arrangement of spoke holes in the flange is shown
in Fig. 1 of the '565 patent (at points 18 and 22) below.

According to this aspect of the invention, as described in
the "Preferred Embodiments" section of the patent, and as shown

15 "Dish" is defined generally as "the state of being concave or the
degree of concavity." Merriam-Webster Online Dictionary (2009) from
www.merriam-webster.com. The Board may take judicial notice of online
reference works which exist in printed format or have regular fixed
editions. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d
1581, 1590 n. 8 (TTAB 2008). Dish in a bicycle wheel is necessary to
provide clearance, for example, for a cogset on a rear wheel and brake
disks on a front wheel. See, e.g., '561 pat., col. 4, l. 29.
Ser No. 78723912
24
in Fig. 1 above, "spoke bores in each of the hub flanges [18] are
grouped into pairs [21] and the distance between adjacent pairs
is greater than the distance between bores in a given pair."
Id., col. 4, ll. 42-45. As shown in Fig. 1, "[t]he spokes 22
associated with a given pair 21 of spoke bores 18 on a given hub
flange do not cross each other but extend away from each other in
generally opposite directions, almost parallel to a tangent drawn
on the outer edge of the hub flange, at a point mid-way between
the spoke bores 18 in the spoke bore pair 21." Id., col. 4, ll.
7-12. (Emphasis added.)
The applied-for wheel design has 24 spokes, which is
included as a preferred embodiment in the '565 patent. As stated
in the patent, "A preferred wheel, according to this embodiment
[Fig. 1] of the present invention has no more than twenty-four
spokes." Id., cols. 4-5, ll. 63-69. "In the case of a twenty-
four spoke wheel (not shown), including a hub with six pairs of
spoke bores per hub flange and conventionally sized hub flanges,
and laced so that spokes in a pair of spoke bores extend in
opposite direction, each spoke will intersect another spoke just
twice between the hub and the rim." Id., col. 4, ll. 45-50.
As shown in the photograph of the Elan rear wheel, supra,
one of applicant’s wheels that embodies the applied-for design,
the spokes are laced at the hub flanges in accordance with the
'565 patent. The spokes in each pair of spoke holes extend in
Ser No. 78723912
25
opposite directions, and are oriented almost at a parallel
tangent to the flange, with each spoke intersecting another spoke
just twice. In other words, the design of the Elan rear wheel
minimizes spoke intersection, bending and stress.
There are a number of advantages to spoke bore pairing and
spoke lacing in accordance with the '565 invention, including the
following: "the (rear) wheel has reduced dish by comparison with
the same wheel laced in a conventional manner"; "cross-over
points for the spokes are further from the wheel axis of rotation
than they are in a [conventional] wheel with evenly spaced spoke
bores"; rear wheels have "reduced bending and spoked stresses at
spoke cross-over points [22]"; and a "front, tangentially laced
wheel including a disk [brake]" has "reduced dish and reduced
tension differential as between the proximate spokes and the
opposition spokes." '565 pat., cols. 2, ll. 57-68; col. 3, ll.
1-20. (Emphasis added.)
Discussion
Based on the foregoing, it is clear that each of the
features which combine to produce the design of the applied-for
wheel design, in particular, offset, tangentially laced, paired
spokes, and paired flange holes, are covered by one or more
utility patents, and that these features clearly "affect...the
quality" of applicant's bicycle wheel. Indeed, applicant admits
that a Rolf Prima wheel having the subject spoke pattern, such as
Ser No. 78723912
26
the Elan wheel, is covered by a claim in one or more of his
patents (Brief, p. 9); and also that Claim 1 in the Trek '561
patent covers applicant's design, along with other possible
design effects.16 Brief, p. 14. Further, Mr. Dietrich expressly
states in his declaration that the subject spoke pattern is
"within the scope of [his] patents." Recon., April 15, 2008,
Decl., ¶ 10. In fact, Mr. Dietrich acknowledges in his
declaration that one company, Shimano, at one time produced
paired spoke wheels "that had appearance, when viewed from the
side, that corresponded the appearance [sic] which is the subject
of this application or my registration no. 2720572." Id. Mr.
Dietrich "challenged" Shimano, and he "then granted it a patent
license." Id.
While admitting that the subject spoke pattern is covered by
a claim in one or more of the patents, applicant nonetheless
argues that there is no patent claim based on or reciting or
requiring that two spokes appear to be parallel when viewed along
the axis of rotation (Brief, p. 9); and that "the subject trade

16 In describing possible design variations covered by the Trek patent,
applicant notes that "As the spokes in a pair approach the center in a
wheel having this claimed feature, the spokes, when viewed along the
axis of the wheel, could (a) appear to converge as they approach the
hub at the center of the wheel, (b) appear to cross each other, (c)
appear to diverge as they approach the hub at the center of the wheel,
or (d) appear to be parallel, as in the subject design." (Brief, p. 14,
emphasis added). Applicant states that "Claim 1 of the Trek patent
covers all four possibilities and probably others that have not yet
been imagined."
Ser No. 78723912
27
dress is not identically disclosed in any of applicant's patents,
each of which is required to disclose the best mode known to
[applicant] for carrying out his various inventions." Reply
Brief, p. 6. Noting that all of the various drawing figures of
the patents "disclose spoke patterns that are different from [the
applied-for] spoke pattern" (Brief, p. 12), applicant contends
that, in fact, the preferred embodiment requires exact pairing,
where the design would appear as a single spoke when viewed from
the side. Resp., October 13, 2006, p. 5. According to
applicant, the applied-for design "stands in contrast to this
preferred embodiment because, in the subject spoke pattern, the
spokes in a given pair are spaced apart where they connect to the
rim." Id.
These arguments are not persuasive. First, the claims of a
patent are not limited in scope to the best mode for practicing
the invention or to any particular mode for practicing the
invention that is described in the specification or drawings.
Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 193 USPQ
449, 458 (Ct. Cl. 1977) (en banc). See also, e.g., Ortloff Corp.
v. Gulsby Engineering Inc., 8 USPQ2d 1873 (S.D. Tex. 1988) ("A
patent is not limited to the preferred embodiments shown in the
examples or drawings."), and cases cited therein.
Moreover, as stated in the '544 patent, it is "offset"
pairing (which refers to the spokes spaced "a short distance
Ser No. 78723912
28
apart" as shown in Fig. 19 above), rather than exact pairing that
is preferred for use on commercially available rims. '544 pat.,
col. 16, ll. 34-36. The patent states that this arrangement
"affords virtually the same resistance to speed wobble and shimmy
as the spoking pattern disclosed in ['544 Fig. 3 above, showing
exact pairing] but is much easier to produce and puts far less
strain on the rim and the connection between the rim and the
spokes." '544 pat., col. 16, ll. 26-37 (exact pairing "can
exceed the capacity of the rim."). See also Trek '561 pat., col.
2 ("there is not room [on the rim] for the spokes to be placed
[directly] opposite each other.")
Further, applicant's argument that "there may be innumerable
spoke patterns which are distinct from the [applied-for] spoke
pattern, which also fall within the scope of some of the claims
of some of the applicant's patents, just as there are infinite
spoke patterns which are not covered by any claim in any of
applicant's patents" is not compelling. The fact that the
patents may encompass a wide variety of spoking patterns means
only that the patents are broad in scope, not that applicant's
particular applied-for design is not functional.17

17 In this regard, applicant points out that the degree of pairing, or
circumferential offset, at the rim can vary widely from exact pairing
"to spacing in excess of 1 inch as in the Bontrager/Trek wheel as shown
in '561 patent." Resp., October 13, 2006, p. 6. Applicant also notes
that claim 1 in the '561 patent requires spacing from the other spoke
in the pair of at least .76 inch and not more than 1.1 inch. However,
the description of the mark in the involved application states only
Ser No. 78723912
29
Applicant also contends that while spokes are essential to
the use and purpose of a spoked bicycle wheel, and pairing spokes
together at the rim is essential to the use and purpose of a
paired spoke bicycle wheel, "constructing a bicycle wheel by
arranging the spokes so that, when the wheel is viewed from the
side, '...[t]he spoke pattern appears to consist of a first set
of pairs and a second set of pairs of parallel spokes that are
spaced apart...' (emphasis added) is not essential to anything
having to do with building a wheel for a bicycle or to how that
wheel will perform." Recon., April 15, 2008, p. 1. Applicant
maintains that the design is an arbitrary flourish "on the broad
concept of a paired spoke bicycle wheel, and the [visual] effect
is not the reason the wheel works."
The question is not whether the design when viewed from a
particular angle causes the wheel to work, but rather whether the
arrangement of the spokes that produces or results in the design
when viewed at that angle causes the wheel to work. The applied-
for design is dictated by the underlying functional aspects of
the physical design of applicant’s wheels, which clearly "affect

that the spokes are "spaced apart," without specifying any particular
amount of separation. In addition, the '561 patent also discloses that
the spacing of each spoke in the pair is not limited except to the
extent that the pairs must not be spaced so far apart as in
conventional wheels, or so close together that they stress the rim.
Trek pat. '561, col. 7 (requiring only "spacing neither too close,
because stress [to the rim] is increased, nor too far because wobble
will increase.").
Ser No. 78723912
30
the quality" of applicant's bicycle wheels. The spokes in the
wheel are laced that way because the wheel works better that way,
notwithstanding that the resulting pattern when viewed from a
certain angle may also happen to have visual symmetry or appeal.
In further support of his contention that the subject spoke
pattern is an arbitrary flourish, applicant argues that in order
to make the subject design appear when the wheel is viewed from
the side, it was necessary to compromise function, and that
because the design "comes with a penalty, that takes it out of
the realm of being functional, on the whole." Brief, p. 19;
Reply Brief, p. 5. Applicant explains that the subject design is
formed by a "L-L-R-R" spoking pattern rather than a "L-R-L-R"
pattern. These two patterns are illustrated in applicant's
exhibits "L-R-L-R" and "L-L-R-R" shown below.
The L-R-L-R pattern (left) is embodied in the Trek paired
spoke wheel as shown in Fig. 3 of the Trek '561 patent, supra,
and in applicant's Rolf Propel wheel.18 The L-L-R-R lacing
pattern (right) is used in the applied-for design, as well as
applicant's registered design which is the example below. The
registered design is embodied in applicant's Rolf Vector Pro

18 Applicant, in his declaration (¶ 4) identifies the Propel wheel as a
model "introduced" by Trek, but at various points in the record refers
to the model as a "Rolf Propel wheel" and also as the "Trek paired
spoke wheel." It is not clear whether it is applicant's or Trek's
technology that is embodied in the Trek wheel or the Propel wheel, but
in any event, that question is not before us and it does not affect our
decision herein.
Ser No. 78723912
31
wheel, now called Vigor, and is shown in the Rolf Prima
advertisement for the Vigor model, supra.

PROPEL VECTOR

Referring to the above exhibits, applicant describes the two
patterns as follows:19
L-R-L-R (Propel)

[S]tarting with a [second] spoke [in a pair]
connected to the right hub flange and moving around
the wheel at the rim, the next spoke is connected to
the left hub flange, the next spoke is connected to
the right hub flange, and so on [in a L-R-L-R spoking
pattern]. This creates a spoking pattern that is
totally different from the spoking pattern that is
the subject of this application AND it has a totally
different appearance, when viewed from the side.

L-L-R-R (Vector)

[S]tarting with a [second] spoke [in a pair]
connected to the right hub flange and moving around
the wheel at the rim, the next two spokes are
connected to the left hub flange, the next two spokes

19 Recon, April 15, 2008, Decl., ¶ 12.
Ser No. 78723912
32
are connected to the right hub flange, and so on, [in
a L-L-R-R lacing pattern] to create the distinctive
spoking pattern which is the subject of this
application.

Regarding the penalty associated with the L-L-R-R
pattern, applicant explains:
Frankly, the [Vector L-L-R-R] spoking pattern is
technically inferior, albeit ever so slightly so, to
the [Propel L-R-L-R] spoking pattern...[of
applicant's other rear wheels]. The Propel rear
wheel has a slight technical superiority because the
spokes which are connected to the right hub flange
are connected to the rim at points which are spaced
evenly around the rim and the same is true of spokes
that are connected to the left hub flange. In
contrast, in the [Vector] rear wheel, the spokes that
are connected to the right hub flange are connected
to the rim at points which are not evenly spaced
around the rim and the same is true of the spokes
that are connected to the left hub flange.

The resulting penalty or impairment according to applicant,
is that wheels with the subject spoke pattern, as in the Elan
wheel, and wheels with the registered spoke pattern, as in the
Vector wheel, "are more difficult to true" (i.e., to properly
adjust or align) than wheels with the other spoking patterns, as
in the Propel wheel. But it is not at all surprising that a
superior mechanical design may be more complex than existing
mechanical design and may therefore need more involved
maintenance.
This paired spoke arrangement, which we have found, and
applicant admits, is within the scope of one or more patents,
ultimately, still has the advantage of resulting in a wheel that
Ser No. 78723912
33
provides greater stability and delivers better performance than
conventionally laced wheels having the same or even more spokes.
'544 pat., col. 14. Thus, this slight increase in the possible
cost of maintenance is far offset by the functional benefits of
the wheel's paired spoke arrangement. Further, while a wheel
with this lacing pattern may be more difficult to true, there is
nothing to indicate that the wheel cannot be properly trued,20 or
that the wheel is ultimately less stable than a Propel wheel.
We find that the patents, which as discussed above disclose
and claim the utilitarian advantages of the underlying aspects of
applicant's applied-for design, show that the particular design
configuration clearly "affects the...quality" of applicant's
wheels. Given the strong weight to be accorded such patent
evidence under TrafFix, we find that the patents are sufficient
to establish, prima facie, that the design is functional.
(2) Touting of the utilitarian advantages of the design

The Rolf Prima website (rolfprima.com) promotes applicant's
paired spoke wheels, including the Elan (also referred to by
applicant as Élan Aero), Aspin and Apex wheels having the design
herein, in a manner that at least suggests the functional

20 We note in this regard that, according to the website advertising for
the Élan Aero which embodies the subject pattern, once the wheel is
trued, applicant's "Self-locking thread technology ensures wheels stay
true," and this may further offset any claimed disadvantage of the
spoking pattern.
Ser No. 78723912
34
advantage of applicant's design. Excerpts from the website are
as follows:
WELCOME TO ROLF PRIMA
Engineering icon Rolf Dietrich created the ingenious
paired spoke technology that changed the way people
think about bicycle wheels today. At Rolf Prima,
we're committed to developing the world's most
innovative wheel designs that deliver the lightest,
fastest wheels available anywhere. (Emphasis added.)

ABOUT US
...By late 1997, Rolf's unique and patented paired
spoke design came to fruition and rapidly gained
worldwide acceptance. Rolf and the newly formed
team, quickly began work on an extensive project list
to advance the development of his wheel designs. The
effort produced several new design patents(21) that
contributed to substantial improvements in strength,
weight and aerodynamics. (Emphasis added.)

Rolf Primawheel [sic] designs are protected by
numerous patents.... ... Current patent licensees
that license one or more Rolf's patents include:
Trek Bontrager, Shimano,....

Advertising for the Élan Aero wheel on the website promotes
the hub design and the "wheel systems" in general as protected by
various patents, including the '544 and '565 patents discussed
above:22
All Rolf Prima wheel systems are protected by one or
more of the following US Patents: 5,931,544;

21 Applicant did not identify any design patents in response to the
examining attorney's inquiry regarding the existence of design or
utility patents. In any event, we note that all of the patents listed
in the advertisements of record are utility patents.

22 Resp., October 13, 2006. Similar language is also used in
applicant's advertisements for other models embodying the present
design, the Aspin and Apex.

Ser No. 78723912
35
5,938,293; 6,024,414; 5,947,565; 6,244,667 and
6,497,042. ...

Applicant's "wheel systems" are also promoted in an
advertisement for the Élan Aero wheel in the August 2003 edition
of insideTRIATHLON magazine:23
High performance wheel systems from the inventor of
paired spoke technology.

We acknowledge, as applicant points out, that "none of the
advertising claims has anything to do with the fact that the
spokes, when viewed from the side, appear to consist of a first
set of pairs and a second set of pairs of parallel spokes."
Reply Brief, p. 6. However, the advertising specifically touts
applicant's paired spoking technology, regardless of the
particular pattern used. The clear implication of the
advertising is that applicant's entire "wheel system," including
the particular spoking arrangement, is covered by applicant's
patents. Moreover, in contrast to promotion of spoking patterns
for their functional superiority, there is no evidence of record
that either applicant or any third party promotes the spoking
pattern of a bicycle wheel for its visual appeal.
Thus, this factor is either neutral or it supports a finding
that the design is functional.

23 Id.
Ser No. 78723912
36
(3) Alternative designs

Applicant submitted examples of wheels made by four other
companies and points to several examples of different paired
spoking designs appearing in the various patents, arguing that
the record "is replete" with evidence of alternative designs,
i.e., paired spoke wheels that appear to have an appearance that
is strikingly different from the appearance of applicant's design
when viewed from the side. Applicant contends that TrafFix did
not render the availability of alternative designs irrelevant,
and that this factor can be a legitimate source of evidence to
determine whether a feature is functional in the first place,
citing Valu Engineering, supra.
Where, as here, a feature of the device is found to
"affect[]...the quality of the device," the Supreme Court has
said that "there is no need to proceed further to consider if
there is a competitive necessity for the feature." TrafFix,
supra at 1006, distinguishing the test as applied to cases
involving aesthetic functionality from the test in cases
involving functionality "under the Inwood formulation," that is,
"if it is essential to the use or purpose of the article or if it
affects the cost or quality of the article." See also Valu
Engineering, supra at 1427 (because these "other considerations,"
i.e., the disclosures and claims of the patent, establish the
functionality of the design, "there is no need to consider the
Ser No. 78723912
37
availability of alternative designs, because the feature cannot
be given trade dress protection merely because there are
alternative designs available.").
Thus, the fact that bicycle wheels may be produced with
different spoking arrangements does not detract from the
functional character of applicant's particular spoking design.
See In re Morton-Norwich Products, Inc., citing In re Honeywell,
Inc., 532 F.2d 180, 189 USPQ 343 (CCPA 1976).
That said, however, even considering this factor in our
determination, ultimately we would not rule in applicant's favor.
To begin with, the fact that at least one company, Shimano,
copied applicant's spoking design indicates that it provides a
functional advantage. There is nothing to indicate that the
design was copied by that company for its visual appeal. In
fact, applicant states that it granted Shimano a patent license,
not a trademark license.
Moreover, the question is not whether there are alternative
designs that perform the same basic function but whether the
available designs work "equally well." Valu Engineering, supra
at 1427. While other paired spoke designs might result in a well
performing wheel, applicant's design, which is protected by
various patents, apparently performs better, and it is at least
implicitly promoted that way. The clear import of applicant's
Ser No. 78723912
38
advertising is that applicant's "wheel designs" perform better
than other wheel designs.
Finally, although there may be numerous other spoke designs,
many of those designs may be functional as well. For example,
applicant admits that the Trek paired arrangement of the
Bontrager wheel is embodied in Trek's '561 patent. In addition,
the third-party advertisements submitted by applicant show that
at least one other bicycle wheel manufacturer specifically touts
the functional advantages of its particular spoking arrangement.
The following are excerpts of advertisements for various models
of bicycle wheels produced by Campagnolo (emphasis added):24
Medium-Profile Wheels: They are immediately
recognizable by the unmistakable Campagnoloâ„¢ G3â„¢
spoking that sets them apart. G3â„¢ spoking was
created to prove better transmission of driving
torque, better lateral stiffness and more balanced
spoke tension. Tests conducted at our laboratories
have shown that compared with competitors' products,
the G3â„¢ system provides more than 46% torsion
resistance and more than 34% resistance to flection.

Khamsinâ„¢ Black: The G3â„¢ spoking optimizes transfer
of the power generated by the athlete and improves
the wheel's lateral rigidity. The front has 24
spokes...and the rear 27...

Pistaâ„¢: ...our engineers created an extremely stiff
high-profile rim and a spoking pattern that yields
the utmost in power transmission.

24 From the 2007 Campagnolo wheel catalog; exh. to resp., October 13,
2006.
Ser No. 78723912
39
Accordingly, this factor weighs in favor of finding that
applicant's design is functional.
(4) Simple or cheap method of manufacturing
Applicant points to the statement on the Rolf Prima website
that “Every Rolf Prima wheel system is hand built in our Eugene,
Oregon Facility," arguing that "[t]here is simply no more
expensive way to make bicycle wheels." However, applicant does
not explain why he builds the wheels by hand; or why the wheels
are not, or cannot, be machined. We also note, for example, the
statement in the '544 patent (col. 16, ll. 29-37) that a wheel
embodying the subject design, i.e., with offset pairing, "is much
easier to produce" than a wheel with exact pairing.
Nevertheless, even if applicant's wheels with this design
are more costly to produce, and while a lower manufacturing cost
may be indicative of the functionality of a product feature, a
higher cost does not detract from the functionality of that
feature. As stated in TrafFix, supra at 1006, a product feature
is functional "when it affects the cost or quality of the
article." (Emphasis added.) Thus, even at a higher
manufacturing cost, applicant would have a competitive advantage
for what is essentially, as claimed in the patents, a superior
quality wheel.
In view of the foregoing, we find that the design is
functional, and is therefore not registrable.
Ser No. 78723912
40
Acquired distinctiveness
Although we have determined that the design is functional,
if applicant should ultimately prevail in any appeal of this
decision, we find in the alternative, as stated earlier, that the
examining attorney has waived any rejection of the 2(f) evidence
as insufficient, and we accordingly find that the mark is
entitled to registration under Section 2(f).
Decision: The refusal to register on the ground that the
configuration is functional under Section 2(e)(5) of the
Trademark Act is affirmed.