Darrell A. Igelmund

Trademark Trial and Appeal Board

Jul 29, 2004

No. 75516221 (T.T.A.B. Jul. 29, 2004)

Mailed: July 29, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Darrell A. Igelmund
________
Serial No. 75516221
_______
Michael J. Folise of Seed Intellectual Property Law Group
PLLC for Darrell A. Igelmund.
April Rademacher, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Hairston, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Darrell A. Igelmund
to register on the Principal Register the configuration
shown below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75516221
2
as a trademark for “security fixtures for personal
computers, namely shackle-like devices for securing
personal computer security cables.”1 The application
includes the following description: “The mark consists of
a security configuration having a substantially oval shape
in top plan view with a central cylindrical trough
surrounded by a curved archway having a central tunnel
axially aligned with the trough.” The application also
includes the following statement: The lining shown in the
drawing appears to indicate dimensions of the mark and is
not intended to indicate color.
The Trademark Examining Attorney has refused
registration under Sections 1, 2, and 45 of the Trademark
Act on the ground that the proposed mark consists of a
nondistinctive configuration of the goods or portion
thereof and applicant has failed to make a showing of
acquired distinctiveness.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
1 Application Serial No. 75516221, filed July 9, 1998, which
alleges January 22, 1998 as the date of first use anywhere and
January 29, 1998 as the date of first use in commerce.
Ser No. 75516221
3
At the outset, we observe that a product configuration
is not inherently distinctive, and is entitled to
registration on the Principal Register only upon a showing
of acquired distinctiveness under Section 2(f). Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 215,
54 USPQ2d 1065 (2000). Further, the burden of establishing
acquired distinctiveness is upon the applicant who must
establish acquired distinctiveness by a preponderance of
the evidence. Yamaha Int’l. Corporation v. Hoshino Gakki
Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
In support of his claim of acquired distinctiveness,
applicant submitted three of his own declarations; the
declaration of one of his customers, Ellen Taylor,
marketing manager/director of Dartek Computer Supplies; a
catalog advertisement for his product; and an instruction
sheet which is supplied with the product. Further,
applicant points to his ownership of Registration No.
1,980,331 for a mark also consisting of a security fixture
configuration for security fixtures for personal computers;
and a copy of the Board’s decision involving application
Serial No. 74326631 which ultimately matured into this
registration.
With respect to applicant’s ownership of Registration
No. 1,980,331 for a different product configuration, as
Ser No. 75516221
4
often noted by the Board, each case must be decided on its
own merits. As our primary reviewing court has stated,
“[e]ven if some prior registrations had some
characteristics similar to [applicant’s mark], the PTO’s
allowance of such registration does not bind the Board or
this court”). In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1565, 1566 (Fed. Cir. 2001). Further, we note that
the Board’s decision in connection with application Serial
No. 74326631 was rendered prior to Wal-Mart Stores, Inc. v.
Samara Brothers, Inc., when the law was such that a product
configuration could be inherently distinctive and, thus
registrable on the Principal Register without a showing of
acquired distinctiveness. Thus, neither applicant’s
ownership of Registration No. 1,980,331 nor the Board’s
prior decision is probative of whether the product
configuration now before us is entitled to registration.
We turn then to the evidence and begin with
applicant’s three declarations. In his April 5, 1999
declaration, applicant, Darrell A. Igelmund, states that
“in the first five months of this product configuration’s
introduction, Byte Brothers, Inc. has sold almost 30,000
units of this product. Thus, the public has come to
recognize the shape of the product as an indication of
Ser No. 75516221
5
source.” 2 Further, in his August 22, 2001 declaration,
applicant states that “the mark has been in continuous use
for well over five years, and over 450,000 units have been
distributed by Byte Brothers, Inc., the exclusive licensee
of the mark since well prior to January 25, 1996.”
Finally, in his June 4, 2002 declaration, applicant states
“[s]ince the date of my previous Supplemental Declaration
additional units of the goods have been sold, and now well
over a half million units have been distributed by Byte
Brothers, Inc., the exclusive licensee of the mark since
well prior to January 25, 1996.”
Applicant also submitted the declaration of a
customer, Ellen Taylor, marketing manager/director of
Dartek Computer Supplies, who states as follows:
I am knowledgeable with respect to adhesive
security kits for personal computers for attaching
a personal computer to a security cable or the
like, and I am knowledgeable with respect to the
products purchased by Dartek. In the last four
years, Dartek has purchased over five thousand “Two
Penny Plate” adhesive security plate kits from Byte
Brothers Inc. as shown on the drawing page of
United States Trademark Application Serial No.
75/516,221 attached hereto as Exhibit A. The
external configuration of Byte Brothers’ Two Penny
Plate security plate is visually distinct with
respect to other security plate products
manufactured by other vendors. Due to the
distinctive appearance of the Byte Brothers’
product, I can identify it as coming from Byte
2 We note that Byte Brothers, Inc. is applicant’s exclusive
licensee.
Ser No. 75516221
6
Brothers. I can distinguish Byte Brothers’ product
from security plates from other manufacturers
because the Byte Brothers product looks
distinctively different.
Further, applicant submitted a sample instruction
sheet that is supplied with applicant’s goods. The
instruction sheet displays the product configuration next
to two pennies along with the statement: “Features the
popular 2 Penny Plate. Tremendous holding power in the
footprint of 2 coins.” In addition, applicant submitted a
catalog advertisement that features a photograph of
applicant’s product next to two pennies. Finally,
applicant submitted a printout of information which appears
at the web site of applicant’s licensee Byte Brothers, Inc.
Again, this features a picture of applicant’s product next
to two pennies with the following statement: “Small
footprint makes it perfect for all computers and
peripherals.”
Based on the foregoing evidence, applicant argues that
its design configuration has acquired distinctiveness.
Applicant argues that his evidence must be viewed in the
context of the security fixtures for personal computers
industry and that the evidence indicates that sellers of
computer security products promote the configurations of
Ser No. 75516221
7
their devices and that consumers readily recognize
competing security devices based on their configurations.
The Examining Attorney, however, finds such evidence
to be inadequate and maintains that more probative evidence
of acquired distinctiveness is necessary.
After careful review of the evidence submitted in this
case, we are not persuaded that the configuration design
sought to be registered has become distinctive of
applicant’s security fixtures for personal computers and
serves to distinguish them from the security fixtures of
others. We recognize that applicant has enjoyed a certain
degree of success in terms of sales of its products.
However, sales figures are not determinative of acquired
distinctiveness. See for example In re International Spike
Inc., 190 USPQ 505, 507 (TTAB 1976). [“[L]arge volume
sales figures and advertising expenses are not conclusive
of the distinctiveness of a mark”].
In this case, applicant has offered no advertising
that demonstrates promotion of the product configuration,
i.e., “a security configuration having a substantial oval
shape in top plan view with a central cylindrical trough
surmounted by a curved archway having a central tunnel
axially aligned with the trough,” as applicant’s mark.
While the one sample advertisement draws attention to the
Ser No. 75516221
8
size of applicant’s product, i.e., it is the size of two
pennies, no emphasis or attention is directed to the
overall configuration itself.
Similarly, the pictures of applicant’s product next to
two pennies that appear in the instruction sheet and at the
web site of applicant’s licensee do not establish an
association in the consumer’s mind with the source of the
goods. The reference to the size of the goods in no way
serves to promote the specific features which applicant
claims as its mark, namely “a substantially oval shape in
top plan view with a central cylindrical trough surmounted
by a curved archway having a central tunnel aligned with
the trough.”
Applicant argues that the declaration of Ellen Taylor,
a retailer of applicant’s products, is sufficient to
establish how purchasers perceive applicant’s configuration
design. In this regard, applicant states that his products
are primarily sold to “direct mail catalogs, office and
computer wholesalers, superstores, security distributors
and locksmiths.” (Brief, p. 9). According to applicant,
in his industry, distributors are keenly aware of how the
ultimate purchasers view and recognize its configuration
design and that it would be prohibitive for applicant to
track the ultimate purchasers of its products.
Ser No. 75516221
9
The relevant purchasers of applicant’s security
devices for personal computers include not only retailers,
but the ultimate purchasers, namely businesses and
individuals who need to secure their personal computers.
In this case, the declaration of a single catalog retailer,
is insufficient to establish that the relevant class of
purchasers as a whole recognize this configuration as
applicant’s mark. In this regard, the record is devoid of
direct evidence that other kinds of retailers, e.g.,
computer wholesalers and locksmiths, view the matter sought
to be registered as a distinctive source indicator for
applicant’s goods. Further, as applicant acknowledges, the
record is devoid of evidence that the ultimate purchasers
of the goods, namely, businesses and individuals that need
to secure their personal computers, view the matter sought
to be registered as a distinctive source indicator for
applicant’s goods. We are not persuaded by applicant’s
contention that it would be prohibitive for him to obtain
declarations from such purchasers.
Finally, applicant argues that the evidence he has
submitted in this case is similar to the evidence submitted
by the applicants in two prior cases, namely Yamaha Int’l.
Corp. v. Hoshino Gakki Co., Ltd., supra, where the Court of
the Appeals for the Federal Circuit affirmed the Board’s
Ser No. 75516221
10
finding of secondary meaning with respect to the design of
guitar peg head; and In re Motorola, Inc., 3 USPQ2d 1142,
1143 (TTAB 1986), where the Board reversed the Examining
Attorney’s refusal of registration and found that
applicant’s evidence of acquired distinctiveness with
respect to the design of a microphone was sufficient.
We are not persuaded by applicant’s argument. The
applicants in Yamaha and Motorola presented considerably
more evidence than the applicant herein. The record in
Yamaha consisted of eight years use; evidence of
substantial sales and promotion activity for the eight-year
period; expert testimony and five trade treatise assertions
that peg head designs often identify the makers of guitars
and are so viewed; and trademark registrations of peg head
designs obtained by manufacturers of guitars, showing that
at the least, such producers consider the designs or
configurations to be source indicators capable of
registration. In Motorola, the record consisted of an
affidavit attesting to sales of nearly 2.8 million units
for a period of over twenty years; three declarations from
individuals involved in the repair, installation and
servicing of two-way radios; and four declarations of users
of the applicant’s radio equipment.
Ser No. 75516221
11
In sum, the evidence presented in this case is
insufficient upon which to base the conclusion urged by
applicant that the relevant purchasers perceive and
understand this product design as a distinctive source
indicator.
Decision: The refusal to register is affirmed.