Backflow Prevention Device Inspections, Inc.

Trademark Trial and Appeal Board

Aug 31, 2004

No. 76016341 (T.T.A.B. Aug. 31, 2004)

Mailed: August 31, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Backflow Prevention Device Inspections, Inc.
________
Serial No. 76016339
Serial No. 76016340
Serial No. 76016341
_______
Stephen R. Winkelman of Fennemore Craig for Backflow Prevention
Device Inspections, Inc.
Eugenia K. Martin, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Quinn, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Backflow Prevention Device Inspections, Inc., has
filed applications to register the following marks for goods
identified as "enclosures for protection of backflow assemblies,
namely, a metal cage placed over backflow assemblies" in Class 6.
Each application contains a description of the mark as indicated
below.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76016339; 76016340; and 76016341
2
Serial No. 760163391
The mark consists of a configuration of an enclosure with no
sharp corners for the protection of backflow assemblies
consisting of a rounded pipe on each end bent in a radius
with expanded metal covering the open spaces within the
radius and between the rounded pipes.
Serial No. 760163402
The mark consists of a configuration of an enclosure with no
sharp corners for the protection of backflow assemblies
consisting of rounded angle iron on each end bent in a
1 Filed April 3, 2000, asserting a date of first use on December 14,
1992 and first use in commerce on September 15, 1993.
2 Filed April 3, 2000, based on an assertion of a bona fide intent to
use the mark in commerce.
Ser Nos. 76016339; 76016340; and 76016341
3
radius with expanded metal covering the open spaces within
the radius and between the rounded angle iron.
Serial No. 760163413
The mark consists of a configuration of an enclosure with no
sharp corners for the protection of backflow assemblies
consisting of a rounded pipe on each end utilizing two
radiuses with expanded metal covering the open spaces within
the radiuses and between the rounded pipes.
The examining attorney refused registration as to each
application on the grounds that the product design is functional
under Section 2(e)(5) of the Trademark Act and that, if the
product design is not functional, it is a product design that
does not function as a mark under Sections 1, 2, and 45 of the
Trademark Act and has not acquired distinctiveness under Section
2(f) of the Act.4
3 Filed April 3, 2000, asserting a date of first use on December 14,
1992 and first use in commerce on September 15, 1993. This design is
referred to in applicant's specimens as a "bench" model enclosure.
4 We note that neither the examining attorney nor the applicant raised
an issue as to whether the Section 2(e)(5) refusal or the alternative
Section 2(f) refusal was premature with respect to the product design
Ser Nos. 76016339; 76016340; and 76016341
4
When the refusals were made final, applicant appealed.
Briefs have been filed. An oral hearing was not requested.
These cases were consolidated by the Board, at applicant's
request, on November 25, 2003.
We turn first to the question of whether applicant's product
designs are functional.
Applicant describes the nature of backflow assembly devices
and the purpose of enclosures for those devices as follows
(Brief, p. 1):
"Backflow assemblies are devices that are used to stop the
backflow of substances through pipes in to [sic] the public
potable (drinking) water supply. The devices usually stick
up out of the ground. To prevent damage to the devices and
to those who might accidentally run into them, the backflow
devices are often enclosed."
In arguing that the designs of applicant's backflow assembly
enclosures are functional, the examining attorney points to
applicant's advertisements which, according to the examining
attorney, show that the product designs are safer because they
lack sharp edges and corners, and stronger because of the overall
design of the covers. The examining attorney contends that
although strength and safety may be features of all backflow
in the intent-to-use application and, moreover, they have both argued
the refusals on the merits. Under the circumstances, we will decide
the issues as they relate to the intent-to-use application on the
merits and accord the evidence thereon whatever probative value it may
have.
Ser Nos. 76016339; 76016340; and 76016341
5
assembly covers, the applicant's designs claim to improve upon
these features and are therefore more desirable and functional.
Applicant, on the other hand, maintains that the
configurations are only de facto functional for safety,
installation and strength, rather than de jure functional
because, in applicant's view, such characteristics have to do
with the nature of all backflow assembly covers, not applicant's
particular design. Applicant argues that neither the expanded
metal covering nor the round pipe or angle iron bent in a radius
is "essential to the use or purpose of" a backflow prevention
device cover and that many feasible alternative designs in other
various shapes and using a variety of materials are available
that perform the same function. Applicant further argues that
the design does not give the product a competitive advantage on
cost and that, in fact, applicant's designs make them more
expensive to produce. It is applicant's contention that if there
had been a cost advantage, competitors would have adopted the
less costly designs over the last 10 years.
In support of its position that the marks are not
functional, applicant has submitted the unverified statement of
its president, Jeff Keim, accompanied by examples of applicant's
print and website advertisements as well as examples of
advertisements for backflow assembly covers made by others.
Applicant has also submitted the unverified statements of a
Ser Nos. 76016339; 76016340; and 76016341
6
"specifier" of backflow assembly covers, three purchasers of
backflow assembly covers, four representatives, each of whom
represents various manufacturers in the irrigation industry, and
three distributors of backflow assembly covers.5
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) quoting Qualitex Co. v. Jacobson
Products Co, 514 U.S. 159, 34 USPQ2d 1161 (1995).
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
(4) facts indicating that the design results from a relatively
simple or cheap method of manufacturing the product.
5 Contrary to applicant's claim, none of the statements relied on by
applicant to support its position, including Mr. Keim's statement, is a
"sworn declaration" or for that matter, verified at all. The
statements do not qualify as declarations under 37 CFR 2.20, and they
are not sworn, as they are neither witnessed and notarized, nor
executed "under penalty of perjury" pursuant to 28 USC §1746.
Ser Nos. 76016339; 76016340; and 76016341
7
As to the first factor, the mark is not the subject of a
utility patent. Therefore this factor does not weigh in our
decision.
As to the second factor, applicant's advertisements, stating
that these units "are often used to cover dangerous, hard-to-see
pedestrian trip hazards," make it clear that pedestrian safety is
an important function of its enclosures. It is equally clear
from the advertisements that the special "no sharp corners,"
"rounded pipe" and "rounded angle iron" features of applicant's
particular designs are critical to this function.
The following statements in applicant's various
advertisements draw specific attention to this functional
advantage of applicant's designs:
"This unique enclosure is perfect for schools,
parks or anywhere people can come into physical
contact with a backflow assembly enclosure, since
all the sharp corners and edges of the typical
angle iron enclosure have been eliminated."
"No sharp corners or jagged edges"
"Never any sharp corners or edges so it's perfect
for schools, parks, and other meeting places where
people come into close contact with a backflow
assembly. ... All Coast GuardShackâ„¢ (CGS) enclosures
are constructed of 304 stainless steel, sandblasted
to remove all of the sharp edges and burrs typically
found on stainless steel expanded metal."
"Never any sharp corners or edges..."
"Entire unit sandblasted to remove all sharp edges
and burrs typically found on SS expanded metal"
Ser Nos. 76016339; 76016340; and 76016341
8
"ClockGuardâ„¢, with its clean, no-nonsense lines and
rounded corners for pedestrian safety, is available
in 2 sizes..." 6
Whether or not safety features are inherent in "the nature
of all backflow assembly covers" is not relevant. While other
designs might be safe, applicant's designs are apparently safer,
and they are explicitly promoted that way. The advertisements
directly attribute the safety of applicant's products to the
claimed "no sharp corners," "rounded pipe bent in a radius" and
"rounded angle iron bent in a radius" features of applicant's
designs. The clear import of applicant's advertising is that the
typical designs in the industry, that is, sharp, square-edged
angle iron cages, are less safe.7
Thus, the advertisements make it clear that the features of
applicant's designs are essential to the purpose of its products.
Accordingly, this factor weighs strongly in favor of finding that
applicant's designs are functional.
6 Applicant is not seeking registration for the design of this
particular unit. However, this unit does contain features which are
similar to those in the designs for which registration is sought.
7 On the other hand, the advertisements do not show that applicant's
devices are easier to install or stronger because of the particular
design features sought to be registered.
Ser Nos. 76016339; 76016340; and 76016341
9
As to the third factor, where, as here, a feature is found
to be essential to the purpose of the device, the Supreme Court
has said that there is no need to engage in speculation about the
availability of alternative designs. TrafFix Devices Inc. v.
Marketing Displays Inc., supra at 1006. Thus, the fact that
assembly enclosures may be produced in other forms and shapes
does not detract from the functional character of applicant's
designs. See In re Morton-Norwich Products, Inc., citing In re
Honeywell, Inc., 532 F.2d 180, 189 USPQ 343 (CCPA 1976).
That being said, even if we do consider this factor in our
determination, our findings would not weigh in applicant's favor.
According to applicant's president, Mr. Keim,
Applicant's product configuration marks are just one of many
equally feasible, efficient, competitive alternative designs
that are currently available on the market place for
backflow assembly device covers.
Our competitors include All-Spec, LeMeur, G&C Enclosures,
Strong Box, Dyer Fiber Glass, Golf Stream Products, Hot Box,
Safe-T-Covers, and others.
Similarly, the specifier, and the three distributors and four
representatives assert,
The backflow assembly cover industry is filled with numerous
competitors that offer equally feasible, efficient and
competitive alternatives to Backflow's products.
The enclosures advertised by other manufacturers appear to
consist essentially of rectangular shaped solid metal covers,
rectangular shaped metal covers with punched viewing ports,
Ser Nos. 76016339; 76016340; and 76016341
10
rectangular shaped expanded metal enclosures, rectangular shaped
insulated fiberglass enclosures, and rounded, pyramidal shaped
insulated fiberglass enclosures.
Mr. Keim, at one point in his statement, delineates
applicant's market as the "un-insulated, angle iron, expanded
metal enclosure" market.8 Elsewhere in his statement, however,
Mr. Keim identifies its competitors as those companies who make
not only expanded metal designs, but insulated and uninsulated
solid metal or fiberglass enclosures as well. Assuming the
relevant market is narrowly defined, then there is evidence of
only a single available alternative design in applicant's market,
and that is the rectangular shaped square-cornered sharp-edged
design with an expanded metal cage. The existence of any
alternative enclosures made of, for example, solid metal or
fiberglass, would not be relevant because those designs would not
be competing in applicant's market. Moreover, the one
"alternative" design is obviously not an equivalent or feasible
alternative as it contains the very features (squared, with sharp
corners and edges) which, according to applicant, make this
design less safe.
8 Mr. Keim states, "Applicant has approximately a 20% market share for
uninsulated, angle iron, expanded metal enclosure for backflow
assemblies." Consistent with this assertion, applicant argues on p. 2
of its brief that applicant "has...a 20% share of its marketplace." We
also note that in applicant's advertising, the cost of its designs are
compared to "ordinary, square unpainted angle iron cages."
Ser Nos. 76016339; 76016340; and 76016341
11
Even extending applicant's market to encompass all types of
assembly enclosures, the conclusory statements by Mr. Keim and
the other individuals that those designs are "equally feasible
alternatives" are not persuasive. The question is not whether
there are alternative designs that perform the same basic
function but whether those designs work "equally well." Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422,
1427 (Fed. Cir. 2002). There is no claim by any of these
individuals, nor any evidence, that these are equally "safe"
alternatives to applicant's design. There is no explanation as
to how any of these other products compare with or match
applicant's product in terms of safety.9 In fact, it appears
that for the most part they do not. Most of these alternative
designs consist of rectangular shaped square-cornered metal.
Certainly these would not be considered equal alternatives to
applicant's design.
Moreover, the views expressed by these individuals do not
even necessarily represent the views of competitors in the
industry as to whether applicant's design gives it a competitive
advantage.
9 Some of these other designs may include handles or other similar
features for ease and safety of handling and installation, but they do
not perform nor claim to perform the function of protecting the public
from injury.
Ser Nos. 76016339; 76016340; and 76016341
12
In any event, the availability of a few alternative, equally
safe designs, if they existed, would not detract from the
functionality of applicant's designs. If applicant's designs are
the best, or at least one, of a few superior alternatives, it
follows that competition is hindered. In re Lincoln Diagnostics
Inc., 30 USPQ2d 1817 (TTAB 1994) quoting In re Bose Corp., 772
F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985). Compare Morton-
Norwich, supra (where “an infinite variety" of container shapes
remained available to competitors).
Applicant's argument that if this design were "so essential,
then competitors would have been forced to adopt them" is not
well taken. If a product feature is essential to the use or
purpose of the device, it is not necessary to consider whether
the particular product configuration is a competitive necessity.
TrafFix Devices, Inc. v. Marketing Displays Inc., supra 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."). In any event, applicant claims that others have, in
fact, copied applicant's designs.
Turning to the fourth factor, Mr. Keim states that
applicant's product configurations are actually more expensive
to produce "than those of competitors."10 Assuming this is true,
10 Other information in the record seems to contradict this statement.
The distributors, representatives and purchasers all state that
Ser Nos. 76016339; 76016340; and 76016341
13
it is not clear whether any increased cost is due to factors
other than the product features sought to be registered, such as
the materials used in manufacturing the products, the process
used in applying the "powder-coated epoxy finish," the "tamper-
proof hardware" provided, or the hinged openings for the
products, none of which are claimed as part of applicant's marks.
Even if we assume that the product is more costly, 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 Devices Inc.
v. Marketing Displays Inc., supra at 1006, a product feature is
functional "if it is essential to the use or purpose of the
article or 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 touted
as a superior design.
In view of the foregoing, we find that the designs are
functional and are therefore not registrable.
Although we have determined that the designs are functional,
for purposes of a complete record, we will decide the issue of
"Backflow's products are not the most inexpensive or expensive covers,
but fall somewhere in the middle." Also, applicant's advertising copy
indicates that its designs are "Inexpensive” and “cost[] no more than
most ordinary, square, unpainted angle iron cages."
Ser Nos. 76016339; 76016340; and 76016341
14
whether, assuming the designs are not functional, the designs
have acquired distinctiveness.
In support of its claim of acquired distinctiveness,
applicant has submitted the unverified statement of Jeff Keim,
applicant's president, alleging exclusive and continuous use of
the design for nine years; total sales for this period exceeding
$1.5 million, and for the three-year period from 1998 to 2000 an
increase in sales from $200,000 in 1998 to $450,000 in 2000;
expenditures of approximately $20,000 year in advertising and
marketing; and a claim that applicant has a 20% market share "for
un-insulated, angle iron, expanded metal" enclosures. Mr. Keim's
statement is accompanied by examples of applicant's print and
Internet advertising materials.
Applicant has also relied on the unverified statements from
the same individuals identified earlier, namely a "specifier" of
backflow assembly covers; three purchasers of backflow assembly
covers; four representatives each of whom represents various
manufacturers in the irrigation industry; and three distributors
of backflow assembly covers.
Each individual indicates his or her familiarity with the
industry and makes the following statements:
One of the lines of backflow assembly device covers that I
am familiar with is the line made by [applicant]. Covers
made by Backflow have been around for years.
Ser Nos. 76016339; 76016340; and 76016341
15
Whenever I see a backflow assembly cover with no sharp
corners that consists of a round pipe or angle iron on each
end, bent in a radius (or double radius) with expanded metal
covering the open spaces, I know I am looking at a device
from Backflow.
This look is very unique in the industry. No one else uses
that look. ...
...
Backflow has always marketed its particular "unique" design.
Backflow's marketing materials have almost always emphasized
the beauty and uniqueness of its look and included a picture
of the product.
The statements of the specifier, the three distributors, and
the four representatives also include the following assertion:
When distributors, dealers, customers and others in the
industry see this look, they know the cover is coming from
one company, Backflow.
Applicant argues that its advertising through the years has
almost always provided a picture of its product that emphasizes
its "unique" and "beautiful" look, and that by doing so the
advertising directly associates the marks with applicant as the
source of the products. Applicant claims that this is as close
to "look for" advertising as it can be without using the words
"Look for." Brief, p. 3. According to applicant, the marketing
of its "unique" look has resulted in "tremendous" success for
applicant as shown by its advertising and sales figures, the fact
that applicant owns 20% of the market, and the "sworn
declarations" of those who recognize its design as a mark.
Ser Nos. 76016339; 76016340; and 76016341
16
The examining attorney contends that the evidence submitted
by applicant is insufficient to establish acquired
distinctiveness, asserting that applicant's form declarations are
entitled to little weight and that the length of use and
advertising and sales figures illustrate only the popularity of
the product but not an association of the design of the product
with applicant.
The examining attorney has made of record advertisements for
two enclosures for "rounded edge" designs which the examining
attorney claims are similar to applicant's enclosure design. One
advertisement is by StrongBox and the other is from LM Nelson &
Associates, Inc.
The enclosure shown in the advertisement by StrongBox
contains rounded-off metal frames and is covered with what
applicant refers to as a "wire mesh." The enclosure offered by
LM Nelson & Associates, Inc. contains rounded aluminum frames
and is covered with what applicant has described as
"thermoplastic sheeting."
Applicant argues that the designs submitted by the examining
attorney are not similar because neither contains "a cover that
consists of a round pipe or angle iron on each end bent in a
radius (or double radius) and with expanded metal covering the
open spaces." Brief, p. 8. Instead, as described by applicant,
"they are squared and are made using a wire mesh or solid cover
Ser Nos. 76016339; 76016340; and 76016341
17
rather than expanded metal." Brief, p. 8. Applicant
differentiates "the single" backflow assembly cover that is not
"squared" (by StrongBox) on the basis that is enclosed by solid
cover of "thermoclear sheeting" instead of expanded metal.
The burden is on applicant to show that its mark has
acquired distinctiveness, and the more descriptive the term, the
heavier that burden. Yamaha International Corp. v. Hoshino Gakki
Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). A design
that constitutes the appearance of the product is highly
descriptive of the goods. See Goodyear Tire and Rubber Co. v.
Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998). Thus,
applicant's burden in this case is substantial.
In making our determination, we are also mindful of the
Supreme Court's caution against the "over-extension of trade
dress protection" noting that "product design almost invariably
serves purposes other than source identification." TrafFix at
1005 quoting Wal-Mart stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205, 54 USPQ2d 1065, 1066 (2000) ("...almost invariably,
even the most unusual of product designs--such as a cocktail
shaker shaped like a penguin--is intended not to identify the
source, but to render the product itself more useful or more
appealing.")
Ser Nos. 76016339; 76016340; and 76016341
18
With these principles in mind, and after considering all the
evidence of record, we find that applicant has failed to meet its
burden.
To establish acquired distinctiveness, applicant must show,
through direct and/or circumstantial evidence, that the primary
significance of its product designs in the minds of relevant
purchasers is not the product but the producer. See In re Ennco
Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000). In order to
establish acquired distinctiveness based on circumstantial
evidence, the evidence must be sufficient to permit an inference
of wide exposure of the product designs to the relevant public
and an inference that the exposure has been effective in creating
distinctiveness. See In re Ennco Display Systems Inc., supra and
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). That is
not the case here.
To begin with, Mr. Keim's statement, including its claims
regarding applicant's length of use, market share, and amount of
sales and advertising, is unverified and therefore of little
probative value because the assertions contained therein cannot
be taken as established fact. See, e.g., In re Mehta, 347 F.2d
859, 146 USPQ 284 (CCPA 1965) and In re Grande Cheese Co., 2
USPQ2d 1447 (TTAB 1986). Even assuming the truth of these facts,
we do not find them persuasive on the question of whether the
designs have acquired distinctiveness.
Ser Nos. 76016339; 76016340; and 76016341
19
Applicant's marketing expenditures averaging $20,000 per
year do not seem remarkable, and applicant's yearly expenditures
have actually decreased over the identified three-year period
from $48,000 in 1998 to $31,000 in 2000. Moreover, applicant has
not identified the nature of the advertisements, or provided any
indication as to how, or to whom they are distributed, or the
extent of their distribution. Nor has applicant indicated the
length of time its products have been advertised on the Internet.
Applicant's raw sales figures do not seem particularly
impressive on their face and there is no context for these
figures. There is no information as to the cost per unit or how
many units have been sold or the number of customers they have
been sold to. Thus, there is no way of knowing whether there
have been substantial sales to the relevant purchasers. The
evidence regarding applicant's share of the market seems
inconsistent. Mr. Keim's claim that applicant has a 20% market
share is based on a narrowly defined market consisting only of
"uninsulated, angle iron, expanded metal" enclosures. Obviously,
by restricting its market to essentially one particular type of
cover, applicant would appear to have some market power. At the
same time, however, Mr. Keim has described applicant's
competitors as including companies that produce covers consisting
of materials other than "uninsulated, angle iron, expanded
metal." We have no information as to applicant's share of this
Ser Nos. 76016339; 76016340; and 76016341
20
larger market. Thus, the evidence of applicant's claimed market
share is of little use in determining the extent of exposure to
relevant purchasers.
The mere fact that applicant's products are pictured on its
advertising materials is, in itself, no indication the depictions
would be recognized as an indication of source or anything more
than simply a depiction of the products.11 See In re Pingel
Enterprise inc., 46 USPQ2d 1811 (TTAB 1998). In addition,
references in the advertising to the "unique" and "beautiful"
“look” of the products are not drawing attention to the source of
the designs but merely to the aesthetic and functional features
of the designs. Moreover, "the look" applicant refers to may be
attributed in part to features other than those sought to be
registered such as the finish and color of the products, or the
type of metal pipe used or the diamond pattern created by the
expanded metal, none of which is claimed as a feature of
applicant's designs.12
11 We note that although certain evidence, such as sales figures and
third-party statements, specifically pertains to use of the design in
the ITU application, there is a complete absence of any examples of
advertising for that design. The examining attorney and applicant have
treated the advertisements for the designs in the use-based
applications as equally representative of the manner of use of the
design in the ITU application. We decline to do so, however, and
instead find that the lack of advertising for the ITU design further
contributes to the insufficiency of the evidence as to this
application.
12 For example, in some advertisements, applicant's designs are compared
to "ordinary, square, unpainted angle iron cages" (emphasis added).
Ser Nos. 76016339; 76016340; and 76016341
21
In addition, it is not uncommon for other manufacturers in
the industry to promote "the look" of their designs, not as an
indication of source, but as a desirable feature of their
products. For example, StrongBox advertises that the
"[a]rchitectural lines of [its tube and wire] enclosure blend
beautifully into the landscape environment"; LeMeur describes one
of its enclosures as having "an attractive directional finish on
exposed portions of [the] angle frame"; Placer Waterworks touts
"good looks" as one of the "key benefits" of its design; and LM
Nelson & Associates, Inc. states that its Pro-Box enclosure
"blends in with the environment." None of these other companies
appear to be promoting "the look" of their designs as trademarks.
In fact, this evidence tends to show that the relevant customers
would not generally look to the design of an assembly device
enclosure to identify source. Compare Yamaha International Corp.
v. Hoshino Gakki Co., supra.
In short, there is simply nothing in applicant's advertising
to indicate that the design itself is promoted as a mark. We
also note, in this regard, that although applicant almost always
Other advertising copy states, "our eye catching design comes in a
desert tan enamel finish. Other finishes and colors are available for
your special needs"; or "Protecting your backflow assembly from
vandalism was never more beautifully done than with [applicant's]
GuardShackâ„¢ bench enclosure, now available in powder-coated or
stainless steel models"; or "Special colors and textures available"; or
"Standard colors include our High Gloss Forest Green and Woodland Tan
colors."
Ser Nos. 76016339; 76016340; and 76016341
22
uses the "TM" symbol in its advertisements in connection with the
names of its product designs (e.g., GuardShackâ„¢ and Coast
GuardShackâ„¢), the symbol is never used in connection with the
design itself.
To the extent, if any, that the depictions of the designs on
the advertising materials could be said to indicate source, as we
mentioned earlier, applicant has provided no evidence of the
amount or distribution of such materials. Thus, we cannot
determine what kind of exposure, or the extent of exposure and
hence impact on ultimate purchasers, these materials have had.
Applicant contends that the impact of its advertising has
been shown through the statements of the eight industry personnel
and three purchasers identified earlier. Not only are these
uniformly worded statements unverified, but they are conclusory
and unsupported and therefore substantively lacking as well.13
First, the perceptions of a few individuals in the industry
concerning acquired distinctiveness is of minimal value because
they are not the ultimate customers for applicant's products.
See In re Ennco Display Systems Inc., supra and In re Parkway
13 Each of these individuals states that "[c]overs made by Backflow have
been around for years." However, the mere fact that these individuals
might be aware that applicant has been making covers for years does not
necessarily mean that they have been familiar with the particular
covers that have been in use or the marks used in connection with those
covers. It is not even entirely clear whether the "line" of
applicant's products with which they are familiar refers to these
particular designs or some other "line" of applicant's enclosures.
Ser Nos. 76016339; 76016340; and 76016341
23
Machine Corp., 51 USPQ2d 1201 (TTAB 1999). Moreover, their
claims regarding customer perception are not convincing. There
is no indication as to the extent of their distribution of the
products (such as number of years, number of customers or number
of units sold) or, for that matter, whether they ever sold
applicant's products. With no supporting information, their
conclusory statements that customers recognize applicant's
product designs as marks are not particularly meaningful.
Thus, these statements, along with the three purchaser
statements, at best, establish that only a very small number of
people recognize the design as a mark. The evidence is far from
sufficient to demonstrate that the relevant purchasers in general
recognize it as a mark.
Further undercutting applicant's claim that the mark has
acquired distinctiveness, the evidence shows that at least three
companies including applicant use this overall shape for their
respective enclosures. Applicant's design, while not exactly
the same, is nevertheless quite similar in overall appearance to
the other two company's designs and particularly to the "tube and
wire" design of LM's enclosure. That design is very similar to
applicant's "bench" model enclosure shown in application Serial
No. 76016341. There is no evidence that any distinctions between
these designs and applicant's designs, such as the use of wire
mesh or plastic sheeting instead of expanded metal, would be made
Ser Nos. 76016339; 76016340; and 76016341
24
on the basis of the source of the product, rather than its
function.
We turn lastly to applicant's claim that its competitors
have recently begun copying applicant's trade dress and that
intentional copying is considered probative evidence of acquired
distinctiveness. Intentional copying supports a finding of
acquired distinctiveness only where the defendant intended to
confuse consumers. See Thomas & Betts Corp. v. Panduit Corp., 65
F.3d 654, 36 USPQ2d 1065 (7th Cir. 1995). Here, however, there is
no evidence, other than Mr. Keim's unverified, unsupported claim,
that the alleged copying was intentional. Moreover, there is no
evidence that any such copying, if intentional, was due to an
intent to confuse customers as to the source of the products
rather than to the functional advantages of applicant's products.
See Thomas & Betts Corp. v. Panduit Corp., supra.
In view of the foregoing, we find that the evidence
submitted by applicant, considered in its entirety, is
insufficient to establish that its product designs have acquired
distinctiveness.
Decision: The refusal to register is affirmed on the ground
that the product designs are functional, and even if they were
not functional, they do not function as marks.