Briles Rivet Corp.

Trademark Trial and Appeal Board

May 16, 2001

No. 75053459re (T.T.A.B. May. 16, 2001)

5/16/01 Paper No. 31
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Briles Rivet Corporation
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Serial No. 75/053,459
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Edward M. Prince of Alston & Bird and William W. Haefliger,
Esq. for applicant.
Chad M. Smith, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
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Before Walters, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
On January 31, 2001, the Board affirmed the refusal to
register in this case under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. 1051, 1052 and 1127, on the ground
that the subject matter of the application, shown below is
de jure functional in connection with “rivets.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/053,459
2
On February 28, 2001, applicant requested
reconsideration of the Board’s decision. Applicant
contends that the Board erred in reaching its conclusion
because it “incorrectly interpreted facts and overlooked
other facts.”
Applicant contends that the Examining Attorney erred
in concluding that “the mere existence of a patent on the
design feature forecloses any discussion of the other
Morton-Norwich elements, in particular, the existence of
alternative designs.” Applicant goes on to state that
because the Examining Attorney did not discuss the
alternative designs, “it appeared that the examining
attorney accepted applicant’s contention that there were
alternative designs”; and that “for the first time in the
prosecution of this case, the Board, in its decision,
challenges and discusses the alternative designs,
ultimately claiming that there was insufficient evidence to
satisfy the Board’s inquiry concerning these design[s].”
Applicant’s contention regarding the Morton-Norwich
factors considered by the Examining Attorney and the
consideration of those factors by the Board on appeal is
not well taken. While admitting that “the Board need not
find that the Examining Attorney’s rationale was correct in
order to affirm the refusal to register,” applicant
Serial No. 75/053,459
3
essentially argues that, because the Examining Attorney
based his decision principally on the existence of a prior
patent, before the Board can consider the other evidence in
the record, it must remand the application to the Examining
Attorney and ask him to consider the evidence differently.
Clearly, this is not the case. In affirming the refusal to
register, the Board considered only the evidence in the
record. Based on our own review of the evidence in the
record and the fact that our conclusion was based on more
than the existence of the utility patent, it was
unnecessary for the Board to consider the legal question of
whether the existence of a prior utility patent is, alone,
sufficient to warrant a finding of de jure functionality.
Nor did we find it necessary to remand the application to
the Examining Attorney during our consideration of the
appeal.
Finally, we find applicant’s additional arguments in
its request for reconsideration to be, essentially, a
rearguing of the case.
For the reasons stated in our opinion of January 31,
2001, we stand by our decision affirming the refusal to
register in this case on the ground that the subject matter
of the application is de jure functional under Sections 1,
Serial No. 75/053,459
4
2 and 45 of the Trademark Act. The request for
reconsideration is, accordingly, denied.