Briles Rivet Corp.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 75053459 (T.T.A.B. Jan. 31, 2001)

Oral Hearing:
November 3, 1998
Paper No. 26
CEW
1/31/01
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Briles Rivet Corporation
___________
Serial No. 75/053,459
___________
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).
____________
Before Walters, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Briles Rivet Corporation has filed a trademark
application to register the subject matter shown below for
“rivets.”1 Applicant submitted a description of this
subject matter as “a configuration of a toroidal head of a
rivet.” In this regard, we take judicial notice of the
1 Serial No. 75/053,459, in International Class 6, filed February 5,
1996, based on an allegation of use in commerce, alleging first use and
first use in commerce as of January 1, 1997. The application includes
a statement that the lining in the drawing is a feature of the mark and
is not intended to indicate color.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/053,459
2
definition, in Webster’s II New Riverside University
Dictionary (1984), of “toroid” as “a surface generated by a
closed curve rotating about, but not intersecting or
containing, an axis in its own plane.”
The Trademark Examining Attorney has finally refused
registration 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 is de jure functional.2
Applicant concedes that the subject matter is not
inherently distinctive, stating that, while the subject
2 Applicant also argues that the refusal on the ground of functionality
was prematurely made final in the second office action. Applicant
contends that the first office action, while refusing registration on
the ground of functionality, did not specify whether the basis was de
jure or de facto functionality. This issue is a matter for petition to
the Commissioner, although applicant did not timely file a petition in
this regard. See, Trademark Manual of Examining Procedure, Sections
1105.04(e) and 1501.01. Moreover, the term “functionality” encompasses
both de jure and de facto functionality; and applicant has had ample
opportunity, both prior to appeal and in its request for
reconsideration and supplemental materials filed prior to oral
argument, as well as in its briefs, to present its position regarding
the issue of de jure functionality.
Serial No. 75/053,459
3
matter is admittedly de facto functional, it has acquired
distinctiveness as a mark under Section 2(f) of the
Trademark Act, 15 U.S.C. 1052(f). The Examining Attorney
has, alternatively, accepted applicant’s claim of acquired
distinctiveness.3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and an oral hearing
was held.
Procedural Issue
This case was suspended pending the final outcome of
Allfast Fastening Systems, Inc. v. Briles Rivet Corporation
et. al., CV 97-8190, in the U.S. District Court for the
Central District of California. Applicant has submitted a
copy of that court’s stipulated order dismissing the action
with prejudice, entered February 16, 2000. Therefore, the
Board now proceeds with consideration of this appeal.
Drawing and Description of Mark
In its reply brief, applicant stated that its drawing
of its mark had been amended and that the drawing shown in
its main brief was incorrect. We do not find that such an
amendment has been made and, thus, we consider the proposed
3 In view of the Examining Attorney’s acceptance, in the alternative, of
applicant’s Section 2(f) claim, should the subject matter of the
application ultimately be determined not to be de jure functional, the
alternative question of whether this subject matter has acquired
distinctiveness is not before us in this appeal.
Serial No. 75/053,459
4
mark that is the subject of this application to be as shown
and described above.
The record reveals that, on November 22, 1996,
applicant submitted, via fax, a drawing like the one shown
in applicant’s reply brief. The fax cover sheet was signed
by applicant’s attorney and included the statement:
“Proposed revised trademark drawing. Please comment.” The
drawing was proposed to be modified to represent the outer
shape and depth of the head of the rivet in dotted lines
rather than solid lines, so that only the design of the
surface of the rivet head appeared in solid lines. We note
that applicant did not, at any time, propose an amendment
to its description of its mark. The Examining Attorney did
not respond at all to the November 22, 1996 filing, nor is
there any notation in the record regarding the proposed
amendment. Similarly, until its reply brief, applicant did
not refer again to its proposed amendment and, in fact,
continued to refer to its proposed mark as the
configuration of the head of a rivet, rather than as the
configuration of the surface of the head of a rivet.
Moreover, in its main brief, applicant depicted its
proposed mark as shown in its originally-filed drawing.
We can only conclude from the record that both
applicant and the Examining Attorney overlooked this
Serial No. 75/053,459
5
proposed amendment to the drawing until applicant’s reply
brief, where applicant has mischaracterized what occurred
as an entered amendment to the drawing, rather than a
proposed amendment requesting comment from the Examining
Attorney. We decline to remand the application sua sponte
at this point for consideration of the proposed amendment
because we view applicant’s lack of follow-up action on the
proposal during the period between the proposed amendment
and the reply brief as indicating its lack of interest in
pursuing the amendment. Thus, we conclude that the
proposed amendment was effectively withdrawn.
Furthermore, as discussed infra, such an amendment to
the proposed mark would not change our decision in this
case.
De Jure Functionality
1. Factual Record.
Only applicant submitted evidence. With its initial
filing, applicant submitted samples of its rivets; copies
of four utility patents owned by applicant - No. 5,129,771
(granted July 14, 1992) for a “Precision Ring Dome-Headed
Rivet,” No. 4,086,839 (granted May 2, 1978) for a “Dome
Headed Rivet and Workpiece Assembly,” and No. 4,051,592
(granted October 4, 1977) and No. 4,000,680 (granted
January 4, 1977), each for an “Expanding Head Riveting
Serial No. 75/053,459
6
Method”; and copies of two third-party utility patents -
No. 3,748,948 (granted July 13, 1973) for “Fatigue
Resistant Fasteners,” and No. 3,526,032 (granted September
1, 1970) for a “Riveting Method Employing Metal Flow in
Both the Manufactured Head and the Upset Head.”
During the prosecution of the application and in its
request for reconsideration, applicant submitted additional
evidence, including, a page entitled “Typical Solid Rivet
Configurations” containing pictures and names of thirteen
different rivets; five form affidavits from “employees” of
various third parties; promotional materials for rivets
from two third parties; and additional third-party patents,
namely, No. 2,991,858 (granted July 11, 1961) for a
“Rivet,” No. 3,747,467 (granted July 24, 1973) for a “Rivet
Fastener System and Method,” No. 3,936,205 (granted
February 3, 1976) for a “Crowned Head Riveted Joint,” Nos.
5,273,386 and 5,026,234 (granted December 28,1993 and June
25, 1991, respectively) for an “Expandable Rivet Head,” and
No. 5,332,349 (granted July 26, 1994) for a “Flush Rivet
with Compound Radius Domed Head.”
Additional evidence submitted by applicant to “fulfill
its duty of candor to the Office” has also been considered.
This evidence includes the affidavit of Frank Briles,
applicant’s president, attesting to certain facts; excerpts
Serial No. 75/053,459
7
pertaining to specifications for a rivet, “BACR15FV,” from
a submission entitled “Boeing Part Standard”; an excerpt
entitled “Military Standard” that describes standards for
rivets “intended for use in riveted structures where
flushness, fatigue life, static joint strength and
corrosion resistance are of primary design importance”; and
a copy of Trademark Registration No. 1,622,108 for a mark
described as “the configuration of a thermostat cover that
is circular and rounded in shape.”
In his affidavit, Mr. Briles made several statements
about applicant’s rivets and the relevant industry that are
paraphrased below:
Applicant competes with other rivet manufacturers
to supply rivets to Boeing Aircraft, including
for its military counterpart airplanes.
Boeing specifications for its rivet BACR15FV and
MIL14218, its military counterpart, include the
subject matter of this application.
Each airplane has a number of different rivets,
some of which include the subject matter of this
application; airplanes for which Boeing has
chosen the BACR15FV rivet include rivets not
supplied by applicant; each part used on an
airplane is depicted in a detailed specification
drawing; and rivets on the exterior of airliners
and military jets must be flush, whereas that is
not necessarily the case for rivets used on the
interior of these planes.
A number of rivets used on a variety of different
airplanes are designed to be flush after
installation; airplane manufacturers have
Serial No. 75/053,459
8
specified flush rivets other than applicant’s
rivet, e.g., Airbus.
The record reveals that the specifications of a rivet
may change depending on the material that is being riveted
and the use of the riveted structure; that an installed
rivet must be flush with the surface of the structure,
whether as installed, due to the rivet’s design, or by
shaving; and that the rivet head interference with the
cavity into which the rivet is installed (the countersink)
is critical to the performance of the rivet. A review of
the utility patents in this record indicates that there are
a number of problems being solved in the rivet designs or
systems, e.g., ensuring that the head is flush with the
surface; ensuring inspectibility to detect faulty rivet
installations; withstanding shear forces and avoiding drag;
preventing fatigue in either the rivet, the joint, or the
structure; preventing distortion to the structure; and/or
ensuring a good seal, so that matter does not leak around
the head and shank of the rivet and result in corrosion.
It is clear from the patents in the record that the
various rivet inventions of applicant and third parties aim
at solving all or some of the above-described problems. In
fact, the later-issued patents cite some or all of the
earlier patents, including several of applicant’s patents,
Serial No. 75/053,459
9
as prior art upon which the later patents are alleged to be
improvements.
2. Analysis.
The only question before us is whether the subject
matter of this application is de jure functional in
connection with the identified goods. In considering the
issue of de jure functionality, we have considered all of
the evidence in the record, including the evidence
submitted in connection with applicant’s Section 2(f) claim
of acquired distinctiveness.
The Board stated in In re Peters, 6 USPQ2d 1390, 1391
(TTAB 1988), that “[a] design configuration is considered
to be unregistrable when it has been determined to be de
jure, as opposed to de facto, functional. An item which is
de facto functional may be registrable, while one which is
de jure functional may never be registered even if it has
been shown to possess some recognition in the trade.” For
the design in question to be de jure functional, it must be
shown not just that the claimed elements of the
configuration of the goods are functional, but also that
the performance of that function is enhanced by the
particular configuration in which the design is executed.
In re R.M. Smith, 734 F.2d 1482, 222 USPQ 1 (Fed. Cir.
1984). A configuration which is so utilitarian as to
Serial No. 75/053,459
10
constitute a superior design for its purpose, so that
competitors need to copy it in order to compete
effectively, is de jure functional, and unregistrable. In
re Lincoln Diagnostics Inc., 30 USPQ2d 1817 (TTAB 1994).
As set out in In re Morton-Norwich Products, Inc., 671 F.2d
1332, 213 USPQ 9 (CCPA 1982), there are a number of factors
which are useful in determining whether particular product
designs are superior, including:
(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 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.
The subject matter of this application is applicant’s
configuration of the toroidal head of a rivet.4 With
reference to applicant’s utility patents of record, the
Examining Attorney contends that the toroidal, or ring-
shaped, surface of applicant’s rivet head is an essential
aspect of applicant’s patented rivet. The Examining
4 Applicant notes that the design of the surface of its rivet head
exists only until the rivet is installed. We add that this appears to
be the case with all rivet head designs in the record, as the goal is
an installed rivet that is flush with the structure surface.
Serial No. 75/053,459
11
Attorney contends, further, that no acceptable alternative
designs are available to competitors. He argues that rivet
designs in third-party patents submitted by applicant are
not actually alternatives to applicant’s rivet design
because applicant’s rivet design is superior to the third-
party rivet designs.
Applicant concedes that “the frusto-conical or
toroidal head of the rivet is described in applicant’s
patent and is one element, among many, in the claims of
this patent.” [Applicant’s Brief, p. 1.] Applicant
contends, however, that the evidence of record establishes
that the head of its rivet is merely de facto functional.5
Referring to the evidence of third-party patents and
alleging that, essentially, the Examining Attorney has
misconstrued the claims in the patents, applicant contends
that one patent, No. 5,273,386, describes its rivet as
“superior” to applicant’s rivet; that the Examining
Attorney has not demonstrated that the other third-party
rivet patents in the record are not satisfactory
alternatives to applicant’s rivet; and that applicant’s
5 Applicant and the Examining Attorney disagree about whether the
existence of applicant’s utility patent that includes a claim
describing the toroidal head of applicant’s rivet is dispositive of the
issue of de jure functionality in this case. Based on our decision,
infra, it is unnecessary for us to conclude that the existence of such
a utility patent is dispositive.
Serial No. 75/053,459
12
evidence of acceptable alternative designs is the most
important evidentiary factor in determining de jure
functionality [Applicant’s Reply Brief, p. 4].
Considering the Morton-Norwich factors, there is no
evidence in the record pertaining to the second factor,
portrayal of rivet design features in applicant’s
advertising materials, or to the fourth factor, cost or
ease of manufacture vis-à-vis other rivet designs. Thus,
these factors are neutral and contribute nothing to our
determination of the issue of de jure functionality.
With respect to the first Morton-Norwich factor, the
record includes several utility patents owned by applicant
for rivets and rivet systems, which each include as an
essential claim the toroidal shape of the head of a rivet,
which is precisely the subject matter of this trademark
application. Applicant states that “[t]he claims of the
Briles patents are not directed to the tapered frusto-
conical section located on the face of the head of the
rivet but rather to the combination of the rivet,
counterbore and volumetric or spatial relationship between
the two.” [Request for Reconsideration, June 10, 1997, pp.
9-10.] While we agree that applicant’s patents claim more
than just the shape of the rivet head, it is equally clear
from the patents of record, including applicant’s patents,
Serial No. 75/053,459
13
that the shape of the rivet head is an essential and
integral part of the invention; and that it is the shape of
the head surface, in relation to the rivet seat and shank
and to the shape and size of the countersink into which the
rivet is installed, that enables the specified rivet or
rivet “system” to avoid the above-described problems. The
fact that there are other aspects to applicant’s patented
rivet or rivet system that may also be important to the
utilitarian function of the rivet or rivet system does not
negate the importance of the particular claim with which we
are concerned herein. Clearly, this factor weighs strongly
in favor of a finding of de jure functionality.
We consider, next, the third evidentiary factor, the
availability to competitors of alternative rivet designs.
The evidence shows that there are many different rivet
designs. However, rivets are used in a myriad of different
applications and applicant’s president testified that, for
airplanes alone, there are many different rivet designs for
different applications. Applicant has not disclosed
whether the various different rivet designs submitted for
the record are competitive designs or whether they are
simply for different applications. Nor has applicant
disclosed the extent to which any of the different rivet
designs in the record may be superior to one another or to
Serial No. 75/053,459
14
applicant’s rivet. We do note that applicant has submitted
third-party product sheets showing numerous different
shapes of rivet heads. This could indicate either that a
single manufacturer offers various different rivets for a
single application depending upon preference, price and/or
quality or that a single manufacturer offers different
rivets for different applications. Because of the
ambiguity of this evidence, it is of little persuasive
value in our consideration of the availability to
competitors of alternatives to applicant’s rivet head
design for the same application.
On the other hand, applicant stated that it competes
with other manufacturers to provide rivets to airplane
manufacturers; and that the specifications for one
particular Boeing aircraft require a specific toroidal
rivet that, at least during the pendency of applicant’s
patent, can only be provided by applicant. With no
additional evidence regarding industry practice, we can
only conclude from this fact that at least one manufacturer
considers applicant’s toroidal head rivet design to be
superior; and that competitors are effectively barred from
competing with applicant to supply to Boeing rivets for the
same use.
Serial No. 75/053,459
15
Without additional evidence about practices in the
industry, the single example above wherein rivet
manufacturers are precluded from competing with applicant
is not dispositive of the question of competitive advantage
across the entire aircraft manufacturing industry.
However, for this particular application, it does
demonstrate the superiority of applicant’s rivet design and
the inability of other rivet manufacturers to compete.
In view of the evidence establishing the utilitarian
advantages of the elements of applicant’s configuration (as
shown in applicant’s utility patents), and the fact that in
the manufacture of at least one type of Boeing aircraft,
applicant’s toroidal headed rivet is required, we conclude
that the design herein is one of a very few superior
designs for its functional purpose. Thus, a registration
granted to applicant would seriously interfere with the
right to compete. In re Morton-Norwich, supra.
In summary, we find that the claimed configuration of
the toroidal head of applicant’s rivet is one of the best
designs to perform the desired function. Analysis of the
Morton-Norwich factors shows that the configuration is de
jure functional. Although there are points in applicant’s
favor, they are not persuasive of a contrary finding.
Serial No. 75/053,459
16
Accordingly, we find that the configuration sought to be
registered is de jure functional.
Decision: The refusal to register on the ground that
the subject matter of the application is de jure functional
is affirmed.