All Rite Products, Inc.

Trademark Trial and Appeal Board

Sep 26, 2001

No. 75260089 (T.T.A.B. Sep. 26, 2001)

9/26/01

Hearing: Paper No. 19
August 6, 2001 TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re All Rite Products, Inc.1
________

Serial No. 75/260,089
_______

Peter M. de Jonge of Thorpe, North & Western for applicant.

Karla Perkins, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______

Before Quinn, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by All Rite Products,
Inc. to register the configuration shown below

1 The original application identifies applicant as “All Right
Products, Inc.” In subsequent filings, however, applicant was
identified, both by applicant and the Office, as “All Rite
Products, Inc.”. In the event that applicant ultimately prevails
herein, it should file, if appropriate, a correction to the
spelling of its name as shown in the original application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/260,089
2
for “a carrier fork, sold as an integral component of a
utility carrier mounted on motorized vehicles used to hold
elongated objects.”2 Applicant has claimed acquired
distinctiveness under Section 2(f) of the Trademark Act.
The Trademark Examining Attorney has refused
registration under Section 2(e)(5) of the Trademark Act on
the ground that the configuration sought to be registered
is de jure functional and, thus, is incapable of
functioning as a source identifying mark.3 The Examining
Attorney further stated that in the event the configuration
is only de facto functional, the evidence of acquired
distinctiveness is sufficient to support registration on
the Principal Register. (Office action, March 2, 2000)
The Examining Attorney also made final a requirement to
submit an acceptable drawing.4

2 Application Serial No. 75/260,089, filed March 19, 1997,
alleging first use anywhere and first use in commerce at least as
early as July 15, 1985. The application includes the following
statements: “The mark consists of a configuration of a carrier
fork, a component part of a utility carrier for vehicles. The
lining in the mark is for shading purposes only and does not
indicate color.”
3 The final refusal was grounded on Sections 1, 2 and 45 of the
Trademark Act. However, as noted by the Examining Attorney in
her brief, the Act was recently amended to provide explicitly
that functionality is a ground of refusal if the mark “comprises
any matter that, as a whole, is functional.” Further, Section
2(f) of the Act was amended to exclude Section 2(e)(5) from the
provisions thereof.
4 The Examining Attorney has required that applicant submit a new
drawing that shows the threaded stem, which even applicant
concedes is functional, in dotted lines. Applicant has not
traversed this requirement. Therefore, in the event that
Ser No. 75/260,089
3
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs, and both
appeared at an oral hearing before the Board.
The Examining Attorney maintains that the proposed
mark is de jure functional as disclosed by a utility
patent. The Examining Attorney also points to applicant’s
advertising materials that, according to the Examining
Attorney, tout the utilitarian advantages of applicant’s
product design. The Examining Attorney further asserts
that applicant’s design is one of a few superior designs
and that, accordingly, the design should be freely
available to competitors. In connection with this
assertion, the Examining Attorney relied upon an excerpt
from a printed publication wherein applicant’s product was
referred to as “the only truly innovative” design among
similar carriers.
Applicant responded to the Examining Attorney by
asserting that in refusing registration on the basis of de
jure functionality, she improperly dissected applicant’s
configuration into its component design features.
Applicant argues that the configuration it seeks to
register is not de jure functional, but rather is, at
worst, de facto functional and is registrable under the

applicant ultimately prevails on the functionality issue, it must
Ser No. 75/260,089
4
provisions of Section 2(f). Applicant contends that the
design sought to be registered is not the subject of the
involved patent; according to applicant, the subject of the
patent is the entire rifle carrier system, particularly the
locking mechanism, not the configuration of the carrier’s
“holding member.” Applicant further asserts that none of
its advertisements touts the configuration as having a
utilitarian advantage. Applicant goes on to discuss, in
some detail, the availability of alternative designs, and
that the cost of manufacturing these alternative designs is
the same or less than that of applicant’s product.
In support of its position, applicant submitted the
declarations of Dennis Hancock and George Gates, both
officers of applicant. Also of record is a declaration
(with related exhibits) of James Schoudel, the owner of an
injection molding company that manufactures applicant’s
product. Applicant also introduced the form declarations
of distributors, retailers and consumers attesting to their
recognition of the distinctive shape of applicant’s
product. The other materials introduced by applicant are
as follows: the utility patent covering applicant’s
carrier, as well as a second patent; seventeen third-party
patents covering products that, according to applicant,

submit a new drawing before the mark can be published.
Ser No. 75/260,089
5
show the availability of alternative designs that are
equally efficient and no more costly; packaging for
applicant’s product; and advertising and promotional
materials for applicant’s product.
We should note, at the outset, that the prosecution of
this case, including the filing of the appeal briefs,
occurred prior to the issuance of the recent United States
Supreme Court case, TrafFix Devices Inc. v. Marketing
Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).
Although applicant’s and the Examining Attorney’s
arguments, of course, did not include reference to the
Supreme Court case, the Board, during the oral hearing,
questioned each about the ramifications of the case for the
present appeal. Applicant then filed, on August 31, 2001,
a supplemental appeal brief focusing on the applicability
of the Supreme Court’s decision to this appeal.
A product feature is functional and cannot serve as a
trademark if it is essential to the use or purpose of the
article or it affects the cost or quality of the article.
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34
USPQ2d 1161 (1995) and Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 214 USPQ 1 (1982). As
just mentioned above, we also have the benefit of the
TrafFix Devices Inc. case. In that case, the Supreme Court
Ser No. 75/260,089
6
confronted the issue of functionality of a product’s trade
dress and the probative value of a utility patent in
analyzing the issue. In determining the functionality of a
particular product design or trade dress, the Court noted
that a prior utility patent has “vital significance.” The
utility patent is “strong evidence” and adds “great weight”
to the presumption that the features claimed are
functional.
The principal question in this
case is the effect of an expired patent
on a claim of trade dress infringement.
A prior patent, we conclude, has vital
significance in resolving the trade
dress claim. A utility patent is
strong evidence that the features
therein claimed are functional. If
trade dress protection is sought for
those features the strong evidence of
functionality based on the previous
patent adds great weight to the
statutory presumption that features are
deemed functional until proved
otherwise by the party seeking trade
dress protection. Where 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.

Id. at 1005.
With respect to the availability of alternative
designs, the Court also stated that if a design is
Ser No. 75/260,089
7
functional, competitors need not explore whether other
designs could be used.
There is no need, furthermore, to
engage, as did the Court of Appeals, in
speculation about other design
possibilities, such as using three or
four springs which might serve the same
purpose. Here, the functionality of
the spring design means that
competitors need not explore whether
other spring juxtapositions might be
used. The dual-spring design is not an
arbitrary flourish in the configuration
of MDI’s product; it is the reason the
device works. Other designs need not
be attempted.

Id. at 1007.
We now turn to apply the law to the facts of this
case. There is a utility patent here, No. 4,607,772,5 that
covers a utility carrier for holding a rifle or other
elongated objects in a stable position on the handlebars of
a motorcycle, all terrain vehicle or similar vehicles. As
indicated above, the portion of applicant’s invention that
is sought to be registered as a trademark is the shape of
the “holding member coupled to the mounting stem and
configured to support and lock an object.” The summary of
the patent indicates, in pertinent part, that “an object of
the present invention [is] to provide a utility carrying
device in which an elongated member such as a rifle can be
Ser No. 75/260,089
8
laid and securely retained in place.” The utility carrier
“is capable of locking an elongated carried item in place
such that it does not jar free from vibrations or bumps
encountered by the motorcycle.” The abstract of the patent
reads as follows:
A utility holding device for carrying
elongated objects such as a rifle at
the handlebars of a motorcycle. The
device includes a clamp for attachment
to the handlebars, a support base
attached to the clamp, a mounting stem
which is adjustably attached in a
threaded opening in the support base
and a holding member coupled to the
mounting stem and configured to support
and lock an object in fixed position at
the handlebars.

The summary of the invention discloses that “[t]he
holding member is formed from a bar which is bent to a
partially closed configuration with the respective ends of
the bar forming an opening through which an object can be
inserted.” The patent goes on to state that “[t]he upper
half of the holding member may be adapted with an elbow or
cocked end which operates as a catch for gripping the
contained object and preventing it from sliding free from
the holding member.”
The “Detailed Description of the Invention” offers
even more specific information that, most pertinent to this

5 The patent is owned by George Gates and Dennis Hancock who, as
Ser No. 75/260,089
9
case, bears on the holding member: “Generally, the lower
half of the holding member starts at the horizontal line
where the contained area approaches its widest distance,
and converges as a tapered U shape down toward the point of
attachment of the stem...The lower half of the holding
member is generally configured as a tapered or converging
U-shape having upright arms and an intermediate base so
that a contained object nests in a secure position toward
the base of the V.” The details also include the
following: “At least one side of the holding member
extends above the horizontal line and is configured as an
elbow which bends toward the contained area. This
structure provides a cocked configuration which provides a
downward force for retaining the carried object in its
seated position as the holding member is rotated to lock
the object in place.” The description also notes that
rubber caps are mounted on the ends of the holding member
and that “various shapes and methods of attachment of such
flexible end caps can be applied.”
The patent makes the following pertinent claims
regarding the “holding member” that is depicted in
applicant’s drawing:
a holding member having an upper half
and a lower half, said lower half being

indicated above, are officers of applicant.
Ser No. 75/260,089
10
formed with a U-shape comprising two
upright arms and an intermediate base
which define a containment area, said
lower half being attached at its base
to an upper portion of the stem with
the stem and arms generally in common
upright orientation such that the lower
half can be rotated with the stem in
the support base about the longitudinal
axis to engage and lock the carried
object between the upright arms of the
lower half of the holding member;

the upper half including an extension
of at least one arm of the lower U-
shape which is configured as an elbow
which bends toward the containment area
and provides an upper cocked end to the
holding member for engaging an upper
part of the contained object and for
applying a counter, downward force
toward the base of the U-shape to grip
and restrain the contained object in a
locked position within the holding
member;

said upper half further including an
open section between opposing ends of
the holding member to enable insertion
of the elongated object there through
to the containment area.

As stated by the Supreme Court, a utility patent is
strong evidence on the issue of functionality. The utility
patent makes it clear that the configuration of the holding
member sought to be registered as a trademark is, as a
whole, de jure functional and, thus, unregistrable. The
patent sets forth, in detail, the functional aspects of the
holding member. There is nothing ornamental, incidental or
arbitrary about the specific design at issue. To the
Ser No. 75/260,089
11
contrary, as explained in the patent, the shape of the
holding member allows the carrier to function, that is,
“[t]his structure provides a cocked configuration which
provides a downward force for retaining the carried object
in its seated position as the holding member is rotated to
lock the object in place.” Clearly, the holding member,
and most especially the elbow-configured extension feature,
is a utilitarian part of the patented invention.
The rubber caps likewise are functional “to offer
protection against impact.” The patent discloses that
“various shapes and methods of attachment of such flexible
end caps can be applied” and that “the opening between the
ends can be closed off by flexible ends which extend across
the object opening between the ends of the bar and form a
gate through which the object can be pushed.” The “load
lock knobs” are described on applicant’s packaging as
“put[ting] a firm grip on your equipment” and “when
properly adjusted, load lock knobs allow for equipment to
be quickly snapped out with a firm pull.”
As clearly recognized by applicant, the threaded
mounting stem is functional, and is not intended to be part
of the mark as registered.
In sum, the configuration sought to be registered, in
its entirety, is de jure functional. The fact that the
Ser No. 75/260,089
12
configuration does not cover applicant’s entire invention
but, rather, is only a portion thereof, is of no moment;
the simple fact remains that, as demonstrated by the strong
evidence of the utility patent, the “holding member”
configuration is functional. Disc Golf Association Inc. v.
Champion Discs, Inc., 158 F.2d 1002, 48 USPQ2d 1132 (9th
Cir. 1998).
Accordingly, as instructed by the Supreme Court, we
need not examine whether or not there are alternative
designs available for such utility carriers. The
functionality of the holding member of applicant’s product
means that competitors need not explore whether other
holding member designs might be used. TrafFix Devices
Inc., supra at 1007.
Be that as it may, both applicant and the Examining
Attorney addressed the functionality issue in terms of the
factors set forth by our primary reviewing court in the
case of In re Morton-Norwich Products, Inc., 671 F.2d 1332,
213 USPQ 9 (CCPA 1982). As set out in that case, there
were factors which the court deemed useful in determining
whether a particular product design is utilitarian: (1)
the existence of a utility patent that discloses the
utilitarian advantages of the design; (2) advertising
materials in which the originator of the design touts the
Ser No. 75/260,089
13
design’s utilitarian advantages; (3) the availability to
competitors of alternative designs; and (4) facts
indicating that the design results from a comparatively
simple or cheap method of manufacturing the product. In
discussing the factors, applicant and the Examining
Attorney expended much effort with respect to the
availability of alternative designs.6
Even if we were to analyze applicant’s proposed mark
under the guidelines of Morton-Norwich, we would still find
it to be de jure functional and, thus, unregistrable.
Courts have often recognized the significant probative
value to be given utility patents that disclose the primary
functionality of a configuration. See, e.g., Best Lock
Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 USPQ 552
(CCPA 1969). See also: J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, §7:89 (4th ed. 2001).
This factor, before and even more so now, weighs in favor
of a finding of de jure functionality.
With respect to alternative designs, applicant
submitted seventeen patents covering various carriers and
racks, as well as examples of competing products. Although

6 Clearly, in the wake of the TrafFix Devices case, applicant’s
contention that this factor “is probably the most important”
(reply brief, p. 6) is not well taken.
Ser No. 75/260,089
14
other shapes exist, applicant’s design is one of only a
small number of superior designs. The fact that carriers
may be produced in other forms or shapes does not detract
from the functional character of the involved
configuration. In re Bose Corp., 772 F.2d 866, 227 USPQ 1
(Fed. Cir. 1985); In re Edwards Ski Products Inc., 49
USPQ2d 2001 (TTAB 1999); and Greenhouse Systems Inc. v.
Carson, 37 USPQ2d 1748 (TTAB 1995).
With respect to applicant’s advertising, we do not
share the Examining Attorney’s view that it shows touting
of the utilitarian advantages of applicant’s design.
Descriptions such as “universal,” “versatile,” “state of
the art modular design” and “innovative” vaguely suggest
the superiority of applicant’s product design. However,
these descriptions are somewhat amorphous and do not tout,
with any specificity, the utilitarian advantages of the
holding member of applicant’s product.
As to the fourth factor, cost of design, the only
evidence on this factor is the declaration of Mr. Schoudel
who, as indicated above, is the owner of an injection
molding company that manufactures applicant’s rack. Mr.
Schoudel states, in pertinent part, that the “alternative
designs either cost approximately the same or are less to
manufacture than applicant’s configuration.” Although this
Ser No. 75/260,089
15
factor tends to weigh in applicant’s favor, it is
outweighed by the clear utilitarian function of the product
configuration.
To summarize, the product design sought to be
registered is de jure functional under the guidelines of
the recent TrafFix Devices case decided by the Supreme
Court. In conformance with the teachings of that case, we
view applicant’s utility patent as strong evidence that the
design is functional. Accordingly, applicant’s burden to
establish that the design is not functional is heavy and,
here, applicant has not shown that the design is merely an
ornamental, incidental or arbitrary aspect of the design.
Further, under this case, in view of the utilitarian
functionality of the design, there is no need to explore
the availability of alternative designs. We go on to find,
however, that even if the functionality issue were analyzed
under the traditional Morton-Norwich factors, the same
result would pertain in this appeal.
Decision: The refusal to register is affirmed.