Heatcon, Inc.

Trademark Trial and Appeal Board

Sep 29, 2015

No. 85281360 (T.T.A.B. Sep. 29, 2015)

This Opinion is a
Precedent of the TTAB

Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Heatcon, Inc.
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Serial No. 85281360
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John M. Janeway of Janeway Patent Law PLLC for Heatcon, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Kuhlke, Taylor and Shaw
Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Heatcon, Inc. (Applicant) seeks registration on the Supplemental Register of the
product configuration shown below for, as amended, “Equipment for controlling and
recording the application of heat and pressure in a process for fabricating bonded
composite materials, namely, woven glass, aramid fibers and carbon fabric, and
adhesives bonds to composite or metallic components,” in International Class 9.1

1 Application Serial No. 85281360 filed on March 30, 2011, based upon Applicant’s
allegation of first use and first use in commerce on November 1, 2010 under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 85281360
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The mark is described as follows:
The mark consists of a three dimensional configuration of
the arrangement of the HCS9200M Composite Repair
Set’s (Hot Bonder’s) user interface components featuring a
display panel located in the middle of the top half of the
interface, a vacuum out port above the upper left corner of
the display panel, another vacuum out port above the
upper right corner of the display panel, a vacuum monitor
port right of the vacuum out port above the left corner of
the display panel, another vacuum monitor port left of the
vacuum out port above the right corner of the display
panel, an output power receptacle left of the vacuum out
port above the upper left corner of the display panel,
another output power receptacle right of the vacuum out
port above the upper right corner of the display panel, an
input power receptacle left of the output power receptacle
left of the display panel, another input power receptacle
right of the output power receptacle right of the display
panel, an output power LED indicator left of the display
panel between the output and input power receptacles,
another output power LED indicator right of the display
panel between the output and input power receptacles, an
alarm below the input power receptacle left of the display
panel, an air input port below the input power receptacle
right of the display panel, a ground-fault interrupter
(GFI) LED indicator right of the alarm, another ground-
fault interrupter (GFI) LED indicator left of the air input
port, a GFI reset switch right of the GFI LED indicator
Serial No. 85281360
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and left of the display panel, another GFI reset switch left
of the GFI LED indicator and right of the display panel, a
set of ten thermocouple jacks left of the display panel,
another set of ten thermocouple jacks right of the display
panel, a vacuum control regulator below the set of ten
thermocouple jacks left of the display panel, another
vacuum control regulator below the other set of ten
thermocouple jacks right of the display panel, a power
switch below the left corner of the display panel, another
a power switch below the right corner of the display
panel, a keypad below the display panel, a printer exit left
of the keypad, another printer exit right of the keypad, a
printer paper feed pushbutton switch left of the printer
exit left of the keypad, another printer paper feed
pushbutton switch right of the printer exit right of the
keypad, and the face plate that these components are
located on. The broken lines depicting the case, handle
and latches indicate placement of the mark on the goods
and are not part of the mark.
Color is not claimed as a feature of the mark.
Prosecution History
Applicant filed the application seeking registration on the Principal Register.
The Examining Attorney initially refused registration under Section 2(e)(5), 15
U.S.C. § 1052(e)(5), on the ground that the proposed mark is functional, and
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-52 and 1127, on the
ground that the proposed mark is a nondistinctive product design and is not
registrable on the Principal Register without proof of acquired distinctiveness. The
Examining Attorney also, inter alia, requested an amended description of the mark
and an amended drawing. Applicant submitted an amendment of its application to
seek registration on the Supplemental Register, argued against the Section 2(e)(5)
functionality refusal and submitted an amended description of the mark and an
amended drawing, substituting for its original color drawing a black and white
Serial No. 85281360
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drawing wherein the case and handle are depicted in dotted lines. Notably,
Applicant did not: (1) seek amendment to the Supplemental Register “in the
alternative”; or (2) argue against the refusal under Sections 1, 2 and 45, which are
pertinent to possible registration on the Principal Register. The Examining
Attorney noted the amendment to the Supplemental Register was unacceptable
“pending submission of an acceptable drawing,” explaining that functional elements
of the equipment were not displayed in dotted lines.2 Applicant responded that the
proposed mark it “would like to register on the United States Patent and
Trademark Office’s Supplemental Register” is not functional and its initial amended
drawing is sufficient. The Examining Attorney issued a final Office action based on
the refusals under Section 2(e)(5), Sections 1, 2 and 45, the insufficiency of the
Section 2(f) claim, and the requirement for an amended drawing. After Applicant
filed its notice of appeal, the Examining Attorney requested remand to address
Applicant’s amendment to the Supplemental Register in order “to maintain
consistent action with the applicant’s prior pending Application Serial Nos.
85/281225, 85/281264, 85/281291, 85/281317, 85/281225 [sic] and 85/281386” and
noting that “[t]he Section 2(e)(5) refusal is now moot since the applicant has
amended to the Supplemental Register, and the functional refusal will now be
issued pursuant to Section 23.”3 The Board granted this request for remand. 10

2 February 10, 2012 Office Action, TSDR p. 1. Citations to TSDR refer to the USPTO’s
Trademark Status and Document Retrieval electronic file database.
3 Remand Request August 1, 2013, TSDR p. 1.
Serial No. 85281360
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TTABVUE 1.4 The Examining Attorney then issued a non-final Office action. In
light of Applicant’s amendment to the Supplemental Register, she withdrew the
refusal under Sections 1, 2 and 45, which only pertain to applications seeking
registration on the Principal Register.5 Instead, she issued the functionality refusal
under Trademark Act Section 23(c), 15 U.S.C. § 1091(c), which governs the
Supplemental Register and specifically prohibits registration of matter that is
functional.
In response, Applicant continued to assert that its proposed mark is not
functional and noted that “[m]oving the mark to the Supplemental Register would
make moot the Examiner’s refusal to register the mark on the Principal Register.”6
The Examining Attorney thereupon withdrew the refusal based upon the
insufficiency of the Section 2(f) claim, and made final the refusal under Section
2(e)(5) and the drawing requirement. Citing to Sections 2(e)(5) and 23(c), she
explained “that functional matter may not be registered on either the Principal or
Supplemental Registers, regardless of evidence of acquired distinctiveness.”7

4 Citations to TTABVUE refer to the Board’s electronic case file database, by entry and
page number.
5 At the end of the November 16, 2013 Office action the Examining Attorney noted that the
“Section 2(f) claim insufficiency and drawing requirement of the previous office actions are
continued.” November 16, 2013 Office action, TSDR p. 1. However, given the amendment to
the Supplemental Register and the withdrawal of the refusal under Sections 1, 2 and 45,
the refusal based on the requirement pertaining to any deficiencies for a potential Section
2(f) claim was moot at that point.
6 May 19, 2014 Response, TSDR at 1.
7 July 22, 2014 Office action, TSDR p. 1.
Serial No. 85281360
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Issues on Appeal
As noted above, the Trademark Examining Attorney has refused registration of
Applicant’s mark on the ground that it is functional, citing Sections 2(e)(5) and 23(c)
of the Trademark Act, 15 U.S.C. §§ 1052(e)(5) and 1091(c). In addition, the
Examining Attorney has refused registration based on the requirement to submit
an amended drawing depicting all functional features of the interface in dotted
lines.8
The Examining Attorney and Applicant filed briefs. We affirm the refusals to
register.
Functionality
Under the statute, functional matter is unregistrable on the Principal and
Supplemental Registers. 15 U.S.C. § 1052(e)(5) (“No trademark by which the goods
of the applicant may be distinguished from the goods of others shall be refused
registration on the principal register on account of its nature unless it … (e)
Consists of a mark which … (5) comprises any matter that, as a whole, is
functional”) and 15 U.S.C. § 1091(c) (“For the purposes of registration on the
supplemental register, a mark may consist of any … configuration of goods … that
as a whole is not functional … but such mark must be capable of distinguishing the
applicant’s goods or services”) (emphasis added).

8 If the entirety of Applicant’s claim for the mark, including the arrangement, is functional,
then the drawing refusal would be moot. The drawing requirement is relevant only to the
extent that the description of the mark claims the arrangement of the user interface
components that are individually functional, and the arrangement of those functional
components is found to be not functional, i.e., more than the sum of its parts.
Serial No. 85281360
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While the refusals continue to reference Section 2(e)(5), once Applicant amended
the application to seek registration on the Supplemental Register, without making
the amendment “in the alternative” to a continuing request for registration on the
Principal Register, the statutory authority for refusal is Section 23(c) in Title II of
the Trademark Act, which governs the Supplemental Register. Section 2(e)(5) does
not apply to the Supplemental Register. See Trademark Act §§ 23(a) and 26.
Instead, the registrability of functional matter on the Supplemental Register is
prohibited by Section 23(c). Cf. TMEP §1209.02(a)(i) (July 2015) (if an applicant
responds to a mere descriptiveness/genericness refusal by amending to the
Supplemental Register the statutory basis for such a refusal is § 23 of the
Trademark Act).
We further note a new nonfinal action generally would not be necessary where
the final Office action acknowledges the amendment to the Supplemental Register
and recites Section 23(c), inasmuch as Section 2(e)(5) already relates to functional
matter, and the two provisions are, to that extent, identical. See TMEP §
714.05(a)(i) (“…if registration is refused under … § 2(e)(5), an amendment to the
Supplemental Register … does not raise a new issue and does not preclude the
examining attorney from issuing a final refusal.” emphasis in original); and §
1202.02(a)(iii)(A) (“if an applicant responds to a functionality refusal under §2(e)(5)
… by submitting an amendment seeking registration on the Supplemental Register,
such an amendment does not introduce a new issue warranting a nonfinal Office
action). In this case, however, for the sake of clarity, it was appropriate to remand
Serial No. 85281360
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and issue an action clearly making the refusal under Section 23, as that is the
statutory authority governing the Supplemental Register, and the amendment to
the Supplemental Register was not addressed in the previous final Office action. To
be clear, when Applicant filed its amendment to the Supplemental Register and did
not preserve in the alternative that its asserted mark has acquired distinctiveness
under Section 2(f), the Examining Attorney could have withdrawn the Sections 1, 2
and 45 refusal and the requirement for evidence of acquired distinctiveness and
simply issued a final Office action based on the functionality of the proposed mark
under Section 23(c).9
While the application before us now seeks registration on the Supplemental
Register and the statutory authority for refusal is Section 23, the case law applying
Section 2(e)(5) and addressing functionality refusals prior to the 1998 amendments
to the Trademark Act, which added Section 2(e)(5) and amended Section 23(c),
remains equally applicable because the issue, functionality, is the same.10 See In re
Minnesota Mining and Mfg. Co., 335 F.2d 836, 142 USPQ 366, 368 (CCPA 1964),
(citing, In re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314 (CCPA 1961)).
Matter is functional if “it 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

9 Presumably in this case because the Examining Attorney did not accept the amendment
to the Supplemental Register based on a drawing requirement, the application technically
remained on the Principal Register and the Examining Attorney continued the other
refusals. As a better practice, the Examining Attorney should have allowed the amendment
to the Supplemental Register to overcome the nondistinctiveness refusal, but maintained
the drawing requirement and the functionality refusal to register, even on the
Supplemental Register.
10 We note that citation of an obviously incorrect statutory basis is not fatal to a refusal.
Serial No. 85281360
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Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted). “To support a
functionality rejection in proceedings before the Board, the PTO examining attorney
must make a prima facie case of functionality, which if established must be
rebutted by ‘competent evidence.’” In re Becton, Dickinson and Co., 675 F.3d 1368,
102 USPQ2d 1372, 1376 (Fed. Cir. 2012) (quoting In re Teledyne Indus., 696 F.2d
968, 217 USPQ 9, 11 (Fed. Cir. 1982)). In making our determination of functionality
we apply the test first set forth in In re Morton Norwich Products, Inc., 740 F.2d
1550, 213 USPQ 9 (CCPA 1982). See Becton, Dickinson and Co., 102 USPQ2d at
1377, (citing Morton-Norwich, 213 USPQ at 15-16). These factors are not exclusive,
however, for functionality “depends upon the totality of the evidence.” Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1424 (Fed. Cir.
2002). Morton-Norwich identifies the following factors to be considered in
determining whether a particular design is functional: (1) the existence of a utility
patent disclosing 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 functionally equivalent designs; and (4) facts
indicating that the design results in a comparatively simple or cheap method of
manufacturing the product. Morton-Norwich, 213 USPQ at 15-16. It is not required
that all four factors be proven in every case, nor do all four factors have to weigh in
favor of functionality to support a refusal. Nevertheless, in reaching our decision,
we will review all four factors. See AS Holdings, Inc. v. H & C Milcor, Inc., 107
USPQ2d 1829, 1833 (TTAB 2013).
Serial No. 85281360
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Before applying these factors to the facts of this case, we first must define what
Applicant intends to claim as a trademark. In view of the dispute regarding the
absence of dotted lines in the drawing, the drawing could be interpreted to claim as
a mark the shape of each of the functional features as well as their placement on
the device. We will address the drawing requirement infra; however, for purposes of
the functionality analysis we follow the description of the mark and Applicant’s
representation in its brief that it only claims the arrangement or placement of each
of the specific functional features of the user interface but not the individual
functional features per se.11
Utility Patent
With regard to the first factor, the existence of a utility patent “is strong
evidence that the features claimed therein are functional” and “[w]here 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.” TrafFix, 58 USPQ2d at 1005. In addition, third-
party utility patents may be relied upon as evidence; ownership of the utility patent
is not relevant. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046 n. 22
(TTAB 2013); In re Mars Inc., 105 USPQ2d 1859, 1861 (TTAB 2013); In re Virshup,
42 USPQ2d 1402, 1405 (TTAB 1997).

11 Supp. Br., 13 TTABVUE 19-20.
Serial No. 85281360
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The Examining Attorney relies on United States Patent No. 6976519 (’519),
owned by a third party, for a “Portable Curing System for Use with Vacuum Bag
Repairs and the Like” as shown in the drawing below.12

The Examining Attorney observes that the claims include “a carrying case, a
controller with a microprocessor, a vacuum pump, at least one heater connector for
receiving a lead of a thermocouple, and a touch screen display to view information
and input information to the controller.” It also has power ports along the top with a
printer beside a central display screen. Ex. Att. Br., 15 TTABVUE 9. Further, the
Examining Attorney points out that the patented device and Applicant’s device both
place “the display screen and printer opposite the power input port and vacuum
connector ports [so that] [t]he operator can connect cords, cables and/or wires away

12 September 20, 2012 Office action, TSDR pp. 99-111. The Examining Attorney also
references another third-party patent for an “In Situ Pipe Repair Controller and System”
that arranges the ports around the upper periphery of the instrument panel for easy and
unencumbered connection of cables and hoses. However, we focus our attention on the more
relevant patent.
Serial No. 85281360
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from the user and avoid entangling the connections or hindering access to the other
sensors, buttons and components of the panel.” Ex. Att. Br., 15 TTABVUE 10.
Applicant argues patent ’519 has no probative value as to whether or not the
specific arrangement as a whole is functional because the claims do not reference
how the components are arranged and figures 1 and 2 simply show “one possible
arrangement of a virtually infinite number of possible arrangements.” Supp. Br., 13
TTABVUE 15. However, as noted by the Examining Attorney, the utility patent
need not “claim the exact configuration for which trademark protection is sought in
order to undermine an applicant’s assertion that an applied-for mark is not de jure
functional.”13 Becton, Dickinson and Co., 102 USPQ2d at 1377. Rather “a patent’s

13 In general, the USPTO employs the terms “functional” and “nondistinctive,” and has
retired the terms “de jure” and “de facto.” As explained in the TMEP:
Prior to 2002, the USPTO used the terms “de facto” and “de
jure” in assessing whether “subject matter” (usually a product
feature or the configuration of the goods) presented for
registration was functional. This distinction originated with
the Court of Customs and Patent Appeals’ decision in In re
Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9
(C.C.P.A. 1982), which was discussed by the Federal Circuit in
Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61
USPQ2d 1422, 1425 (Fed. Cir. 2002).
Our decisions distinguish de facto functional features, which
may be entitled to trademark protection, from de jure
functional features, which are not. ‘In essence, de facto
functional means that the design of a product has a function,
i.e., a bottle of any design holds fluid.’ In re R.M. Smith, Inc.,
734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). De facto
functionality does not necessarily defeat registrability. Morton-
Norwich, 671 F.2d at 1337, 213 USPQ at 13 (A design that is de
facto functional, i.e., ‘functional’ in the lay sense ... may be
legally recognized as an indication of source.’). De jure
functionality means that the product has a particular shape
‘because it works better in this shape.’ Smith, 734 F.2d at 1484,
222 USPQ at 3.
Serial No. 85281360
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specification illuminating the purpose served by a design may constitute equally
strong evidence of functionality.” Id.
Claim 20 of patent ’519 is set forth below:
A portable curing system comprising, in combination: a
carrying case; a controller located within the carrying
case and having a microprocessor; a vacuum pump located
within the case and having at least two vacuum ports for
connection of vacuum lines; at least two vacuum sensor
connectors located within the carrying case for receiving
leads of vacuum sensors; at least two heater connectors
located within the carrying case for receiving leads of
electrical heaters; at least two temperature sensor
connectors located within the carrying case for receiving
leads of thermocouples; wherein the controller is operably
connected to the vacuum pump, the vacuum sensor
connectors, the heater connectors, and the temperature
sensor connectors; a touch-screen video display mounted
within the carrying case and operably connected to the
controller to display information from the controller and
input information to the controller; and wherein the video

However, in three Supreme Court decisions involving
functionality – TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532
U.S. 23, 58 USPQ2d 1001 (2001), Wal-Mart Stores, Inc. v.
Samara Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000), and
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d
1161 (1995) – the Court did not use the “de facto/de jure”
distinction. Nor were these terms used when the Trademark
Act was amended to expressly prohibit registration of matter
that is “functional.” Technical Corrections to Trademark Act of
1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998).
Accordingly, in general, examining attorneys no longer make
this distinction in Office actions that refuse registration based
on functionality.
De facto functionality is not a ground for refusal. In re Ennco
Display Sys. Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re
Parkway Mach. Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB
1999).
TMEP § 1202.02(a)(iii)(A).
Serial No. 85281360
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display is pivotable between a stowed position and a
viewing position.14
The patent claim includes the boundaries of any arrangement, i.e., portable
carrying case, and specifically claims the ability of the touchscreen video to be in a
raised position. The patent further discloses the “preferred embodiments” that
include “for example, specific dimensions, orientations, and shapes of the portable
curing system components” which “will be determined in part by the particular
intended application and use environment.” In addition, the patent discloses
(emphasis added) that:
The illustrated vacuum pump 40 is secured to the upper
panel 24 below the upper panel 24 and at the right side of
the carrying case 12 (as viewed in Fig. 1). The air supply
port 42 is connected to an air inlet of the vacuum pump 40
and is adapted for receiving an air input line to connect a
source of compressed air to the vacuum pump 40. The
illustrated air supply port 42 extends through the upper
panel 24 so that an inlet end of the port 42 is located
above the upper panel 24 and an outlet end of the port 42
is located below the upper panel 24 at a front end of the
vacuum pump 40. Mounted in this manner, the air
input line can be easily connected to the port 42
when the lid 16 of the carrying case 12 is in its open
position. The air exhaust port 44 is connected to an
outlet of the vacuum pump 40 for exhausting fluids from
the vacuum pump 40. The illustrated air exhaust port 44
extends through the upper panel 24 so that an outlet end
of the port 44 is located above the upper panel 24 and an
inlet end of the port 44 is located below the upper panel
24 at a rear end of the vacuum pump 40. Mounted in
this manner, air or other fluid can be easily
discharged to the surrounding environment when
the lid 16 of the carrying case 12 is in its open
position. … The illustrated control valve 50 is provided
with an adjustment knob 52 so that the operator can

14 September 20, 2012 Office action, TSDR p. 106.
Serial No. 85281360
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manually adjust the level of vacuum provided through the
vacuum lines by the vacuum pump 40. The illustrated
control valve 50 extends through the upper panel 24 so
that the adjustment knob 52 is located above the upper
panel 24 and the valve portion located below the upper
panel 24 at a right side of the vacuum pump 40 in the line
between the vacuum pump 40 and the vacuum ports 46,
48. Mounted in this manner, the adjustment knob 52
can be easily adjusted when the lid 16 of the
carrying case 12 is in its open position. It is noted
that the adjustment knob 52 can alternatively be any
other suitable operator control device. … Below the upper
panel 24, the outlet ends of the connectors 54, 56 are
suitably connected to the controller 36 as described in
more detail hereinafter. Mounted in this manner, the
vacuum sensor lines can be easily plugged into the
connectors 54, 56 when the lid 16 of the carrying
case 12 is in its open position. … Mounted in this
manner, the heater leads can be easily plugged into
the connectors 58, 60 when the lid 16 of the
carrying case 12 is in its open position.15
These references to the placement of various functional features in relation to
each other and within the confines of the portable carrying case clearly indicate the
utilitarian advantages of how the features are arranged. The importance and
benefit of the arrangement of the various functional features which enables the
device to operate optimally without, for example, cable entanglement, is illustrated
by the picture below showing another of Applicant’s devices when hooked up for
operation.

15 Id., TSDR p. 108-109.
Serial No. 85281360
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16
We find the ’519 patent discloses the utilitarian advantages of the arrangement
of the various parts, e.g., vacuum ports and pumps, power ports, printers and
monitor, of an interface for a portable hot bonder. Given the strong weight to be
accorded patent evidence under TrafFix, we find that the patent is sufficient to
establish prima facie that the design is functional.
Advertising
Under this factor, we consider evidence regarding “advertising materials in
which the originator of the design touts the design’s utilitarian advantages.” Valu
Engineering v. Rexnord, 61 USPQ2d at 1426 citing Morton-Norwich, 213 USPQ at
15-16. The Examining Attorney argues that Applicant’s own advertising extols
specific utilitarian advantages of the applied-for configuration. For example,
Applicant’s brochure lists the following as “standard features”:
All aluminum, scratch resistant, anodized faceplate
Ergonomic design, convenient hookup of all accessories

16 July 22, 2014 Office action, TSDR p. 56.
Serial No. 85281360
- 17 -

Circuit breakers are on front panel, no fuses to replace17
and further “touts” its ease of use, compact size, and portability with “a built-
in vacuum system to allow easier mobility to the repair site.”18
The Examining Attorney observes that the “‘ergonomic design’ reference is
immediately followed by ‘convenient hookup of all accessories’. The connections for
the accessories are arranged on the face of the interface panel in a manner that
makes hooking up the accessories convenient.” Ex. Att. Br., 15 TTABVUE 12.
We find that the references to “ergonomic design,” “convenient hook up” and
“circuit breakers on the front panel” directly address Applicant’s claim, namely the
arrangement of the features on the faceplate, and as such are probative on this
point. Ergonomic is defined as “2. Designed to minimize physical effort and
discomfort, and hence maximize efficiency.”19 In addition to the convenient hook up,
the ergonomic design allows for dual zone applications, by allowing the user to
operate in the center entering data and monitoring from the center screen and
receiving results from printers on either side.

17 January 6, 2012 Response, TSDR p. 11.
18 Id., TSDR p. 12.
19 COLLINS ENGLISH DICTIONARY (www.collinsdictionary.com), July 22, 2014, TSDR pp.
87-88. We note this definition which the Examining Attorney made of record is not from the
COLLINS AMERICAN ENGLISH DICTIONARY but approximates the definition in the
MERRIAM-WEBSTER online dictionary (www.merriam-webster.com/dictionary/ergonomic);
“1. An applied science concerned with designing and arranging things people use so that the
people and things interact most efficiently and safely – called also biotechnology, human
engineering, human factors 2. The design characteristics of an object resulting especially
from the application of the science of ergonomics.” The Board may take judicial notice of
dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 85281360
- 18 -

Applicant’s other models that do not have the dual zone option do not have the
screen in the middle. See below:
20
The Examining Attorney also points to third-party references to Applicant’s
configuration, touting the display “that lets mechanics monitor the cure cycle for
composites used in repairs, which is important for assuring that the resulting
component meets airworthiness requirements. Speed, rapid response and visually
assuring that cure cycles parameters are being followed are absolutely essential in
this whole process.”21
The Examining Attorney also relies on competitors’ advertising and promotional
materials. In re Van Valkenburgh, 97 USPQ2d 1757, 1763 (TTAB 2011). For
example, third-party WichiTech Industries “promotes the ease of operation and
safety of its product … [which] features an input pad centered between the dual

20 January 6, 2012, Response, TSDR p. 9 (product comparison guide showing HCS9000B
and HCS9000FL models as having 1 zone and HCS9200B, HCS9200FL, HCS9200M-04
(configuration of the subject application) and HCS9200N models as having 2 zones); p. 10,
11, 20 (pictures showing 1 zone models HCS9000B and HCS9000FL with the monitor on
the side and 2 zone models HCS9200B, HCS9200FL and HCS9200M with the monitor in
the middle); August 10, 2012 Response, TSDR p. 6 (showing 2 zone model HCS9200N with
monitor in the middle).
21 September 20, 2012 Office action, TSDR p. 119.
Serial No. 85281360
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zones to be able to operate each zone without the addition of a pad for each zone
[and] [t]he user can control and reach other valves and connectors from the center
with minimal movement, and the compact size of the overall unit is maintained. …
The interface products of both parties have dual zones with components mirrored on
the left and right. For both products, the power and vacuum connector ports are
along the top of the unit, with thermocouple jacks grouped together along each side.
The keypads are located in the center.” Ex. Att. Br., 15 TTABVUE 12-13.22 In the
promotional materials, WichiTech Industries touts:
These twin features permit you to perform two
independently-programmed cures simultaneously. Fail-
safe protection is provided by the monitoring of multiple
thermocouples, and audible alarms guard against
temperature and vacuum conditions that could ruin the
repair.23
Similarly, another competitor, Zimac Laboratories, touts that its dual zone hot
bonder can “Increase your productivity.”24 As noted by the Examining Attorney, this
hot bonder also has the power ports along the top and the thermocouple ports
arranged along each side.
A competitor, BriskHeat, touts its product as “easier ● better” with an “easy-to-
use full-color HD Touch-Screen” and a “Fast Dual Vacuum System.”25 Again, this
product has a centered display with printers on each side and power ports at the
top.

22 See July 22, 2014 Office action, TSDR pp. 53-54.
23 January 6, 2012 Response, TSDR p. 19.
24 July 7, 2011 Office action, TSDR p. 25.
25 February 10, 2012 Office action, TSDR pp. 5-6.
Serial No. 85281360
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Accordingly, we conclude that the advertising evidence supports a finding that
Applicant’s mark is functional.
Alternative Designs
Applicant submitted the following third-party products as examples of
alternative designs.
26 27

___ ___ ___
28

26 January 6, 2012 Response, TSDR p. 12. With this product two bonders can be linked “via
a communications cable to create a fully functional Dual Zone Hot Bonder.” Id.
27 January 6, 2012 Response, TSDR p. 19.
28 July 7, 2011 Office action, TSDR p. 25.
Serial No. 85281360
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___ ___ ___
29

___ ___ ___

30

29 February 10, 2012 Office Action, TSDR p. 11.
30 February 5, 2012 Office action, TSDR p. 5.
Serial No. 85281360
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___ ___ ___
31

Applicant argues these examples show the “availability of numerous alternative
configurations” and “strongly support[ ] a finding of non-functionality.” However, as
explained by the Examining Attorney, the third-party examples relied on by
Applicant, i.e., WichiTech, BriskHeat, Applied Heat, Aeroform France, ATACS and
Zimac, do not necessarily evidence alternative configurations that provide the same
utilitarian benefit. For example, the Applied Heat hot bonder is a single zone
bonder and “must be linked via a communications cable to create a fully functional
dual zone hot bonder.” Ex. Att. Br., 15 TTABVUE 16. As noted by the Examining
Attorney:

31 February 5, 2012 Office action, TSDR p. 17.
Serial No. 85281360
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[T]he dual zones of the applicant’s arrangement enable
the user to be able to handle two separate composite
repairs simultaneously. The attachment of the power
receptacle and vacuum hoses at the top edge of the unit
allows the user to freely connect to heat blankets or other
accessories. … The position of the display away from the
connecting ports also allows the user to actively monitor
the part being repair[ed] while viewing the display screen
and printouts. … The arrangement of applicant’s user
interface into two zones that mirror each other, places the
thermocouple connection ports at extreme opposite
positions on the panel [whereas] the thermocouple jacks
on the Aeroform France hot bonder are placed in a
continuous line across the top of the panel. The
applicant’s arrangement of the widely separated
thermocouple jacks appears safer as it lessens the
likelihood of connecting the thermocouples to the wrong
zone.
Ex. Att. Br., 15 TTABVUE 15-16.
The examples of hot bonders that do not include a raised display screen are not
examples of alternatives for hot bonders that include a raised display screen and
the single zone hot bonders that have a display screen on the side are not dual zone
hot bonders. In both circumstances, the examples are not strong evidence of
alternative designs.
The Examining Attorney also argues that “the infinite number of component
configurations may be severely hampered upon consideration of industry standards
and safety concerns. Hot bonders are often designed to be compliant with the repair
specifications of the industries in which they operate.” Ex. Att. Br. p. 14. Applicant’s
hot bonders are used by “Major Airlines, Repair Stations and the Military.”32 The
Examining Attorney submitted an online advertisement for a portable hot bonder

32 January 6, 2012 Response, TSDR p. 10.
Serial No. 85281360
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from a United Kingdom company describing its products as “Designed to be
compliant with Airbus Industrie, Boeing, Eurofighter, GKN Westland and MoD
composite repair specifications.”33 As noted by the Examining Attorney, Applicant
“provides ten thermocouple inputs per zone per aerospace manufacturers’
recommendations.”34 We further note that some of Applicant’s hot bonders are
“designed to meet the requirements of Class I, Division II, hazardous environment
operation per the U.S. National Electric Code (NEC), as promulgated by the
National Fire Protection Association (NFPA).”35
While we find that the third-party examples do not strongly support Applicant’s
argument regarding the availability of other designs, we also observe that once
functionality is found based on other considerations, there is “no need to consider
the [third Morton-Norwich factor regarding] availability of alternative designs,
because the feature cannot be given trade dress protection merely because there are
alternative designs available.” Becton, Dickinson and Co., 102 USPQ2d at 1378. See
also TrafFix, 58 USPQ2d 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.”) The fact that other competitive alternatives may exist does not alter the

33 February 10, 2012 Office action, TSDR p. 16. While this advertisement is from a foreign
website, Applicant’s products are used in the aerospace and rotor wing industries, and the
idea that such companies require specifications is not a territorial consideration. In fact,
Applicant’s promotional materials include a phone number in the United Kingdom.
January 6, 2012 Response, TSDR p. 10.
34 September 20, 2012 Office action, TSDR p. 42.
35 January 6, 2012 Response, TSDR p. 11.
Serial No. 85281360
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initial finding that the configuration is functional and, thus, unregistrable. See also
In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985).
Accordingly, we conclude that the evidence of alternative designs does not
support a finding of non-functionality.
Cost of Manufacturing
The information regarding the comparative costs of manufacturing for different
designs resides with the Applicant and Applicant did not provide more than the one
statement in its January 6, 2012 Response that “the three-dimensional
configuration of the arrangement of the HCS9200M Composite Repair Set’s user
interface components does not appear to be simpler or less expensive.”36 This
unsupported statement is not sufficient for us to make a determination on this
factor and we consider it neutral in our analysis. Moreover, even if its interface is
not “comparatively simple or cheap” to manufacture, this does not mean that the
design is not functional. In re American National Can Co., 41 USPQ2d 1841, 1844-
45 (TTAB 1997).
Analysis
As noted above, the statute prohibits registration of a configuration that, “as a
whole, is functional.” 15 U.S.C. §§ 1052(e)(5) and 1091(c). Applicant argues that “the
existence of functional elements or components in the specific arrangement does not
establish functionality of the specific arrangement, as a whole.” Supp. Br., 13
TTABVUE 9. It is Applicant’s contention that the “Examining Attorney has not

36 January 6, 2012 Response, TSDR p. 6.
Serial No. 85281360
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made out a prima facie showing of functionality … [and] [Applicant’s] specific
arrangement, as a whole, of user-interface components for the HCS9200M hot
bonder is not essential to the use or purpose of the hot bonder, and there is no
evidence that protecting [Applicant’s] specific arrangement, as a whole, will
disadvantage [Applicant’s] competitors.” Supp. Br., 13 TTABVUE 18-19.
However, contrary to Applicant’s argument, the USPTO may satisfy its burden
of establishing that a configuration is functional by showing the functionality of
various aspects of the configuration. In fact, “one object of the Morton-Norwich
inquiry is to weigh the elements of a mark against one another to develop an
understanding of whether the mark as a whole is essentially functional and thus
non-registrable.” Becton, Dickinson and Co., 102 USPQ2d at 1376. As the Court of
Appeals for the Federal Circuit explains, “functionality precedent indeed mandates
that the Board conduct such an assessment [weighing the functional and non-
functional factors] as part of its determination of whether a mark in its entirety is
overall … functional.” Becton, Dickinson and Co., 102 USPQ2d at 1376. See also In
re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ2d 1, 2 (Fed. Cir. 1984) (“[the board]
proceeded to initially review the six features claimed by Smith to comprise its mark.
Upon consideration of the entire design, the board found that not only were those
features themselves highly functional, except perhaps for the ribs, but that the
drawing as a whole included various other highly functional elements … Based on
the functionality of the individual features comprising the design, the board
concluded that the design as a whole was de jure functional. We agree with the
Serial No. 85281360
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board that the PTO attorney established a prima facie case of de jure
functionality.”).
Here, the arrangement is composed entirely of functional parts but Applicant
asserts that the arrangement by itself is non-functional and therefore is registrable
on the Supplemental Register. Because Applicant has not depicted the individual
features in broken lines they are collectively (if not individually) part of the mark
and part of the analysis. Therefore, the functional features far outweigh any non-
functional aspect of the arrangement which is incidental and hardly discernible as a
separate element from the functional parts. While we do not foreclose the
possibility, it is difficult to imagine a situation where the sum of a configuration’s
entirely functional parts adds up to a design capable of indicating the source of the
product. In any event, the case before us presents no such exception.
Even if we accept that the functional parts collectively are not intended as part
of Applicant’s claim for its proposed mark, that is, they fall into the exception where
functional features may be depicted in solid lines, the same analysis would apply in
this case because without considering them there is no mark.
Finally, even if we do not weigh the functional features against the asserted non-
functional arrangement, the record establishes the utilitarian nature of the
arrangement itself. The record shows the arrangement of significant functional
features is directed by utilitarian concerns to make operation of the device easier,
safer and more efficient. Becton, Dickinson and Co., 102 USPQ2d at 1376.
Applicant’s interface provides specific utilitarian advantages in that it prevents
Serial No. 85281360
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entanglement of cables (placement of the power receptacles and vacuum hoses at
the top edge of the unit), creates a safer configuration of the various components
(placement of thermocouple connection ports at opposite positions on the panel to
prevent dual zones from connecting to each other), and affords an efficient and
ergonomic arrangement, inter alia, allowing the user to engage in two processes by
placing the monitor in the center with the keyboard in front and keeping the dual
zones visually and physically separate. See In re Bose Corp., 227 USPQ 1 (shape of
loudspeaker system enclosure that conforms to the shape of the sound matrix held
functional); In re Dietrich, 91 USPQ2d 162 (TTAB 2009) (spoke arrangement of
bicycle wheel more stable with better performance than wheels with other spoke
arrangements).
In short, the Examining Attorney has satisfied her burden in making a prima
facie case and Applicant has not rebutted it with “competent evidence,” defined as
“proof by preponderant evidence.” Becton, Dickinson and Co., 102 USPQ2d at 1379.
Applicant’s reliance on certain case law does not persuade us of a different
result. In In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988), the Board held that
the round thermostat cover configuration was not functional based in part on the
finding of no “evidence of use by competitors … for so many years, despite
applicant’s apparent lack of any patent and trademark protection for it.” The Board
concluded that “the number of alternative designs available to competitors,
although limited, is sufficient for this product.” Id. at 1604. In that case, the
drawing and description included only a rounded cover; the inner workings and face
Serial No. 85281360
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plate were not part of the applied-for mark. By contrast, here Applicant’s mark is
created by the arrangement of specific functional features.
In Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217
(S.D.N.Y. 2004), the court found the watch “trade dress as a whole” was not
functional. However, in that case the watch trade dress incorporated elements not
essential to the function of the watch, such as “Roman numerals, a cabochon, an
octagonal winding stem, a minute track, a particular face shape, a particular shape
of a watch case and its extensions connecting the face to the strap and a particular
bracelet link formation or shape.” Id. at 225. Here, as the Examining Attorney
explains, the “configuration is comprised entirely of functional components such
that their arrangement would not be ‘non-functional’ or ‘purely ornamental.’” Ex.
Att. Br., 13 TTABVUE 20. Each part is essential to the function of the hot bonder
and each part is placed in such a way as to make operation easier, safer and more
efficient.
Finally, in In re Cheseborogh-Pond’s, Inc., 224 USPQ 967 (TTAB 1984), the
Board stated there was nothing to indicate that the design has superiority over
other possible designs. Here, the number of possible designs for a dual zone hot
bonder is limited by, at a minimum, industry specifications, ease of use and space
constraints. Where all or substantially all of an applicant’s overall design is dictated
by the function it performs, it is functional. In re Vico Products Mfg. Co., Inc., 229
USPQ 364, 370 (TTAB 1985) (configuration of whirlpool jets for bathtubs held
Serial No. 85281360
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functional because “the appearance of the body is adapted to the function it
performs”).
In making our determination, we keep in mind the guidance from the Supreme
Court that “[t]he functionality doctrine … protects competitors against a
disadvantage (unrelated to recognition or reputation) that trademark protection
might otherwise impose, namely their inability reasonably to replicate important
non-reputation-related product features.” Qualitex Co. v. Jacobson Products Co.,
Inc., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995). To afford registration to
functional designs would inhibit legitimate competition by, in effect, granting a
monopoly to a non-reputational, or non-source-identifying, feature of a product. Id.,
34 USPQ2d at 1163-64. As emphasized in Morton-Norwich, which sets out the four
analytical factors, “the effect on competition ‘is really the crux of the matter,” and a
balance must be struck “between the ‘right to copy’ and the right to protect one’s
method of trade identification.” Morton-Norwich, 213 USPQ at 15-16.
Based on all of the record evidence and arguments in relation to the Morton-
Norwich factors, we find that the overall design of Applicant’s configuration is
“essential to the use or purpose of the article.” TrafFix, 58 USPQ2d at 1006. Thus,
we find that the configuration as a whole is functional and is not registrable on that
basis.
DRAWING
Although we have found the configuration as a whole to be functional which
renders the drawing requirement moot, for completeness we address the drawing
Serial No. 85281360
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refusal directed to the individual functional user-interface components. A drawing
depicts the mark sought to be registered. Trademark Rule 2.52, 37 C.F.R. § 2.52.
Product configuration marks require special form drawings and must depict matter
not claimed as part of the mark in broken lines. Broken lines must also be used to
indicate placement of the mark. Trademark Rule 2.52(b)(4), 37 C.F.R. § 2.52(b)(4).
The Examining Attorney argues that the functional elements of the mark may not
be registered and “to show that they are not part of the mark, functional elements
must be depicted in broken or dotted lines on the drawing to show the position or
placement of the claimed portion of the mark.” Ex. Att. Br., 15 TTABVUE 21.
Further, because “applicant asserts that the proposed mark is for the arrangement
of the components … the functional components themselves must be shown in
dotted lines to show their position.” Id. at 16.
Applicant argues:
[T]he components of the user interface currently shown in
solid lines should remain in solid lines because each of
these components is an element of the specific, three-
dimensional arrangement, as a whole, of the user-
interface components of the HCS9200M Composite Repair
Set. … Because the mark is the specific, three-
dimensional arrangement, as a whole, of the user-
interface components of the HCS9200M, the whole user
interface should be shown in solid lines. And although the
mark includes elements that should be shown in broken
or dotted lines because they are functional, if doing so
would result in an unclear depiction of the mark, the
applicant may use solid lines to show the elements. … If
the drawing of the mark, … were amended to show each
component of the whole user interface in broken or dotted
lines, then the drawing of the mark would not include any
solid lines. And thus, the specific arrangement, as a
whole, of the user-interface components of the HCS9200M
Serial No. 85281360
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Composite Repair Set would not be clearly depicted in the
drawing.
Supp. Br., 13 TTABVUE 19-20.
The Examining Attorney responds that where dotted lines would result in an
unclear depiction of the mark and an applicant uses solid lines, an applicant must
“insert a statement in the description of the mark identifying these elements and
declaring that these elements are not part of the mark and that they serve only to
show the position of the mark on the goods … [and here] applicant claimed the
elements as a part of the overall configuration and failed to insert a statement to
the contrary.” Ex. Att. Br., 15 TTABVUE 23.
The TMEP provides:
In rare instances where it is impractical to render certain
elements of a mark in dotted or broken lines – for
example, if those elements are proportionally so small as
to render dotted lines illegible – or if dotted lines would
result in an unclear depiction of the mark, the applicant
may use solid lines. However, the applicant must insert a
statement in the description of the mark identifying these
elements and declaring that these elements are not part
of the mark and that they serve only to show the position
of the mark on the goods, as appropriate.
TMEP § 1202.02(c)(i).
Without the benefit of an example of the drawing with the functional features in
dotted lines, it is difficult to tell whether the drawing required by the Examining
Attorney would be an unclear depiction, although none of the functional features is
so small as to create difficulty and the scope of the mark is clearly explained in the
description. However, Applicant did not include a statement in the description of
the mark indicating these elements remaining in solid lines in the drawing are not
Serial No. 85281360
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part of the mark. In fact, Applicant’s argument could be interpreted to mean
Applicant is including within its claim the shape of each functional feature in
addition to the specific location wherein it resides with other specific functional
features in specific locations. The Examining Attorney provided examples of
registrations wherein the drawing of the configuration, which included the
location/arrangement of certain functional features, depicted those features in
broken lines. For example, in Reg. No. 4058153 the mark is described as follows:37
The mark consists of a three dimensional configuration of
an RFID reader comprising a housing having a generally
quadrangular front face and a plurality of side surfaces
connected to the front face. The front face defines a
rounded peripheral edge which transitions into the
plurality of side surfaces, and further includes a generally
quadrangular groove. The front face additionally includes
five short grooves in vertical alignment with each other, a
generally quadrangular recess and an indicator light
disposed along a common horizontal axis with the
uppermost short groove. A pair of long grooves are
disposed on opposing ends of the short grooves. Six
rounded depressions are formed within the front face and
are aligned along a common vertical axis with the
indicator light and are horizontally aligned with
respective ones of the short and long grooves. The front
face additionally includes an offset keypad shown
in dotted lines. The matter shown in broken or
dotted lines is not part of the mark and serves only
to show the position or placement of the mark.
(emphasis added)
The drawing depicts the inclusion of a keypad in broken lines.

37 September 20, 2012 Office action, TSDR p. 79.
Serial No. 85281360
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In view of the functionality of the individual components, the requirement to
depict them in broken lines is appropriate. We are not persuaded that such
depiction would be “unclear.” Moreover, to the extent it would be “unclear” the
requirement to insert a statement in the description of the mark identifying these
elements and declaring that these elements are not part of the mark and that they
serve only to show the position of the mark on the goods is also appropriate.
Decision: The refusal to register the configuration on the Supplemental
Register on the ground that the configuration is functional is affirmed. The refusal
to register the configuration for failure to comply with the drawing requirement is
affirmed.