M-5 Steel Mfg., Inc.v.O'Hagin's Inc.

Trademark Trial and Appeal Board

Sep 26, 2001

OPP (T.T.A.B. Sep. 26, 2001)

9/26/01
Hearing: Paper No.
29
February 2, 2001 RLS/CV

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

M-5 Steel Mfg., Inc.
v.
O’Hagin’s Inc.

_____

Oppositions Nos. 109,470, 109,471 and 109,741
to applications Serial Nos. 75/177,079, 75/177,082 and
75/177,081, filed on October 4, 1996.
_____

Jay S. Kopelowitz of Kopelowitz & Associates for M-5
Steel Mfg., Inc.

William J. Arnone, Jr. for O’Hagin’s Inc.
_____

Before Simms, Wendel and Bottorff, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

M-5 Steel Mfg., Inc. (opposer), a California
corporation, has opposed the applications of O’Hagin’s
Inc. (applicant), also a California corporation, to
register the following asserted product design marks for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 109,470, 109,471 and 109,741
2
“metal roofing tiles and metal ventilating ducts and
vents for tile or concrete roofs.”1

1 Applications Serial Nos. 75/177,079, 75/177,082 and
75/177,081, all filed Oct. 4, 1996, based upon allegations of
use and use in commerce since June 6, 1996. The applications
were allowed after applicant overcame functionality refusals
Opposition Nos. 109,470, 109,471 and 109,741
3

Applicant’s specimens of record show applicant’s roof
vents installed on a roof of tiles. See below.

and submitted a claim of acquired distinctiveness under Section
Opposition Nos. 109,470, 109,471 and 109,741
4

In all three notices of opposition, opposer asserts that
applicant’s designs are essentially the shape of its
goods, which by necessity mirror the shapes of the roof
tiles made and sold by various unrelated roof tile
manufacturers. Opposer alleges that applicant’s product
designs do not function as marks but rather are
essentially functional configurations consisting of
design features which serve utilitarian purposes, the
configurations being dictated by the function of the
goods. Opposer also asserts that it makes and sells
competing metal ventilating ducts and vents for tile and
concrete roofs, the shape of which products is also
dictated by the shape of the roof tiles made and sold by
various roof tile companies.
In its answers, applicant denies the allegations of
the notices of opposition, and claims that opposer’s
metal ventilating ducts and vents for tile and concrete
roofs infringe applicant’s trademarks. Moreover,
applicant asserts as an affirmative defense that opposer
is contractually estopped from opposing applicant’s
applications, that opposer has waived its rights to

2(f) of the Act, 15 USC §1052(f).
Opposition Nos. 109,470, 109,471 and 109,741
5
oppose and that opposer has breached an agreement by
filing these oppositions.
During the course of these proceedings, the Board
consolidated these cases. Both parties have filed
notices of reliance on discovery, have taken testimony
and submitted briefs. An oral hearing was held at the
Practising Law Institute California Center on February 2,
2001.
We sustain these oppositions.
Opposer’s Record
Douglas Linkon, opposer’s vice president, testified
that opposer makes sheet metal for the construction
industry, including roof vents in many different styles.
He stated that opposer manufactures vents that match the
shape and contour of various tile roofs.
Q. Do you know why the customer wants the
vent to match the tile?
A. For aesthetic reasons. Just for the
look of it.
Q. So it’s not as obtrusive on the roof?
A. Correct.

Linkon dep., 6.

Mr. Linkon further testified that opposer makes low-
profile tile vents which resemble the low-profile vents
made by applicant. In this regard, opposer makes so-
called S-style vents (resembling the shape of the letter
“S”), which look similar to the S-shaped roofing tiles
Opposition Nos. 109,470, 109,471 and 109,741
6
with which they are used. These vents “match the shape
and contour of the roof tiles so that they are not as
obvious from the ground looking at the roof.” Linkon
dep., 8.
Mr. Victor Ponto, an employee of Cedar Roofing, a
roofing company, testified about the manufacturers of so-
called S tiles and S-style vents, the contoured vent
subject of Application Serial No. 75/177,082 and
Opposition No. 109,471. According to Mr. Ponto, there
are many manufacturers of S-shaped roofing tiles, and
four manufacturers of S-style vents for those roofs. He
testified that the shape of the vent may be made to look
like the contoured tile in connection with which it is
used.
Starting with the flat vent, the subject of
Application Serial No. 75/177,079 and Opposition No.
109,470, Mr. Ponto testified, pp. 14-20, as follows:
Q. Mr. Ponto, I’m going to ask you to
look back at Exhibit 22 [flat vent
application]. I believe it’s this one.
I am going to ask you to look at the
drawing page again which has an image
in the middle. And when you see the
image that’s on Page 4 of Exhibit 22,
do you immediately equate this image to
a roof manufactured and sold by
O’Hagin’s [applicant].
A. Can [you] rephrase that, just the
last part ’cause it’s not too clear to
me.
Opposition Nos. 109,470, 109,471 and 109,741
7
Q. Okay. When you see that image,
okay, does that-–what comes to mind?
A. Well, it’s a vent.
Q. Does the manufacturer of the vent
immediately come to mind as well?
A. Not really. I wouldn’t be able to
tell what vent or what brand it is.
It’s just a vent to me so far.
Q. Okay. Now, you know this case is
about vents; right?
A. Yes.
Q. Okay. But when you see that image,
do you immediately think of that as a
vent or do you also think of that as a
tile?
A. Well, it reflects the tile. That’s
the whole purpose of the vent, I
believe, to make it appear as a tile, a
roof tile. Now, the flat vent does not
reflect the flat tile per se precisely
as the other two molds or the other two
vents do, but the low profile, the S
tile, perhaps they reflect the tile
more than the flat.
Q. Is that because the low profile and
the S have more contours in them?
A. Precisely.
Q. Okay. Whereas, the flat is just
that, flat?
A. It's just a flat piece of metal,
yes.
Q. When you see the image--I am looking
at Exhibit 23 [M-style vent shown on p.
3 above] now, the third page of the
drawing sheet where there’s an image in
the middle-— I think that you said
that’s a low profile?
A. That is correct.
Q. Okay. When you see that image, do
you –-as you see it here right now, are
you able to tell if that is an image of
a vent or tile?
A. I could tell it’s a vent at least
when it’s not-–when it’s not painted.
Once it’s on the roof, and it’s
painted, it’s very difficult to
identify them as either vent or tile.
Opposition Nos. 109,470, 109,471 and 109,741
8
To the untrained eye, you can’t really.
It would appear that is another tile.
Q. It looks like the tile?
A. It looks like a tile.
Q. Is that the purpose of the vent?
A. I believe that’s the purpose of the
vent.

*****

Q. Let’s take a look at Exhibit 24 [S-
shaped vent above]. I believe it’s the
fourth page, and that’s also the
drawing sheet which has an image in the
center, and I believe you’ve previously
said that you believe that’s an S
shape?
A. That is an S shape.
Q. It’s an S shape?
A. Yes.
Q. When you see that image as you see
it right here, without knowing that
this case is about roof vents, would
you immediately think that that is a
roof vent or would you think it’s a
tile or both?
A. It would make me think at first
glance that it would be two tiles
together as the ones I showed you in
the photographs. Once you establish a
close examination of it, then you know
that you can identify them as a vent.
Q. Are there an infinite variety of
ways or shapes, I should say, that can
be used to make a roof vent if the
purpose of the vent is to match the
shape and contour of the tile on the
roof?

*****

Q. …What I’m asking is, in your opinion
are there an infinite variety of shapes
that can be used to make a roof vent if
the purpose of that roof vent is to copy
the shape and contour of the roof tiles?

*****
Opposition Nos. 109,470, 109,471 and 109,741
9

A. Yes. I believe that there is [sic]
many shapes that could be used for the
purpose of matching the contours of the
tile. Perhaps it was desired to make
sheet type of vents just to match the tile
profiles.
Q. Let me ask you this. If I have a roof
that has S tiles on it, and I want a vent
that is going to match the shape and
contour of the S tiles, will the top
portion-–can that top portion of the vent
be any shape or does it have to be the
shape of the S tiles?

*****

THE WITNESS: Yes. You can use any-–any
shape basically. There is a good number
of dormer vents or roof vents, whichever
way you want to call them, that could be
used to ventilate the roofs or the attics.
Q. So you could use vents to ventilate?
A. Sure.
Q. But if your purpose is to match the
shape and contour of the tiles so that the
vent is not visible or noticeably visible
from the ground, does the shape have to
match the shape of the tile?

*****

THE WITNESS: The answer is yes.
Q. It does have to match the shape of the
tile?
A. Yes.
Q. If that’s the purpose of the vent?
A. Correct.

*****

Q. Do you know why O’Hagin roof vents
imitate the roof tiles on the roof onto
which they are installed?
MR. ARNONE: Objection. Calls for
speculation. That’s all.
THE WITNESS: I believe he’s trying to -–
O’Hagin is trying to match the contours of
Opposition Nos. 109,470, 109,471 and 109,741
10
the tiles, the shape of the tiles that
were used.
Q. So they’re less visible?
MR ARNONE: Objection. Leading.
THE WITNESS: Perhaps that is the purpose
of it.

In other words, Mr. Ponto testified that, by looking at
the vent designs sought to be registered by applicant, he
is not able to determine the manufacturer. Other
companies besides the two involved in this proceeding
make vents that resemble the ones in applicant’s
applications, according to Mr. Ponto. When asked if
there are differences in the appearances of the S-style
vents from one tile maker to another, Mr. Ponto said that
he could not tell any such differences.
Opposer also points to copies of Mr. Harry O’Hagin’s
rejected utility patent application filed in 1992,
included as evidence in applicant’s trademark
applications. In those patent applications, Mr. O’Hagin
indicated that one of the challenges faced by venting a
tile roof was to ventilate “without destroying the
integrity of the original roof design.” No known devices
ventilate properly “while still maintaining a desired
aesthetic consistency with the roof covering material.”
In the summary of the invention in the application, Mr.
O’Hagin stated:
The inventive apparatus is shaped like a
Opposition Nos. 109,470, 109,471 and 109,741
11
roof tile itself, and thus is inconspicuous
and unobtrusive when installed. The
inventive unit blends with the field and/or
ridgeline tile, has no lead flanges to solder
and will eliminate the cutting of tile for
fitting, thereby enhancing the beauty of a
tile roof while reducing labor costs and risks
of leaks. The “invisibility” and simple
procedure of installation allows the use of any
number of units to fill any requirement…
…The vent caps may be painted or otherwise
fused with color to match the surrounding
(standard) tiles…
The vent tiles of this invention are easy
to install and functional in design. They
blend so unobtrusively with the building,
preserving the beauty of the original design.
The tiles will not present a fire hazard, and
can be used on both new and restored buildings.
The cost is comparable with standard
ventilation systems, yet they are cheaper to
install.

In Claim 1 of the rejected application, Mr. O’Hagin
indicated that his method of ventilation includes
“placing a tile-shaped vent cap over the vent base to
blend with the installed roof tiles.” Finally, in the
“Abstract of the Disclosure,” the patent applicant states
that his roof vent “provides a vent tile shaped like a
roof tile itself, and thus is inconspicuous and
unobtrusive when installed, and blends with the field
and/or ridgeline tile.”
Promotional literature in this record indicates that
the “O’Hagin vents are made to fit the profile of all
clay and concrete roof tiles currently produced for the
roofing industry today.” Letters submitted from people
Opposition Nos. 109,470, 109,471 and 109,741
12
in the trade in support of applicant’s Section 2(f) claim
point to the fact that applicant’s vents “look… like a
piece of tile,” “go well with every tile profile,” and
“is the only vent that blends in with the tile so as not
to take away from the overall roof.”
Applicant’s Record
Mr. Harry O’Hagin, applicant’s president, testified
that applicant makes passive air metal ventilation
products for clay and concrete tile roofs. Although
opposer now also makes profile-specific vents for tile
roofs, Mr. O’Hagin testified that applicant was the first
company to develop such vents. Applicant does not sell
roof tiles themselves-—just the vents that are used with
roof tiles. Applicant sells its products through
distributors to roofing contractors.
When applicant’s S-style vent is installed on a tile
roof, the vents conform to the style and shape of the
remaining tiles.
The function is –- well, the function
of the vent is to vent a roof. The
function of our product is aesthetics,
aesthetically pleasing. That’s why we
called it the cloaked vent.

O’Hagin testimony dep., p. 21. In other words,
applicant’s profile-specific vents are designed to match
or blend in with the roof tile being used. See also
Opposition Nos. 109,470, 109,471 and 109,741
13
O’Hagin discovery dep., pp. 56, 93 and 96, and O’Hagin
testimony dep., p. 18.
Q. Is the O’Hagin profile specific roof
vent one of the best vents available
with respect to camouflaging the vent on
the roof?
A. I believe it is.
Q. Is it the best?
A. It is.

O’Hagin discovery dep., pp. 112-113.

Q. When you designed the profile
specific vent, was it your goal to make
a roof vent that was less visible by a
roof?
A. Yes.
Q. Is O’Hagin’s vent a superior design
to achieve that goal?
A. Yes.

O’Hagin discovery dep., pp. 74-75.
It is Mr. O’Hagin’s belief that applicant has
the right to exclude others from making competing
profile-specific vents. O’Hagin discovery dep.,
p. 95. He testified that other designs are
available.
A. Well, if you can make a
skeleton that fits the tile, then
you have a specific profile,
specific frame, then you can put
any kind of top on it. You can put
a square top on it, you can put a
pointed top on it. You can put a
different kind of material on it if
you wish. You can cover it with
another piece of tile. You can
choose any shape you want to cover
those two openings over the screen
which my covers take the place of.
Opposition Nos. 109,470, 109,471 and 109,741
14
That makes my tile a profile
specific. So, yes, there’s other
ways you can do it.
Q. Now, had you chosen one of those
other shapes, isn’t it true that it
wouldn’t match the contours of the
roof tiles that are up there so
that it would blend into the roof?
A. Of course not.

O’Hagin discovery dep., p. 102. Exhibits, including
applicant’s promotional materials made of record in
connection with O’Hagin’s discovery deposition, support
the testimony that applicant’s venting tiles are shaped
like roof tiles in order to blend in unobtrusively with
the roof tiles. See, for example, Exhibits 5 and 7,
“Suggested Architectural Specifications”:
The SECONDARY VENT is shaped like a roof
tile itself which makes it inconspicuous
and unobtrusive when installed. The
O’HAGIN VENT blends with the field tile,
has no soldered lead flanges and will
eliminate the cutting of tile for fitting
thereby enhancing the beauty of a tile
roof while reducing labor costs and risks
of leaks. The “invisibility” and simple
installation procedure allows the uses of
any number of units to fill any building
ventilation requirements.

A November 1992 article appearing in SF Homebuilder &
Remodeler (Exhibit 9) indicates that applicant’s tiles
are practically invisible to the naked
eye… The O’Hagin Cloaked Vent Tile is
also used in place of Dormer Vents
which are more labor intensive to
install. The cost is comparable with
standard ventilation systems and they
are cheaper to install.
Opposition Nos. 109,470, 109,471 and 109,741
15

See also Exhibit 16, an article entitled “Attic
Ventilation? YES!,” indicating that applicant’s roof
vents are “visually aesthetic” in that they are crafted
to match the appearance of the roofing material.
Further, Mrs. Carolina O’Hagin, applicant’s chief
executive officer and chief financial officer, testified
with respect to applicant’s profile-specific vents that,
“Once you put our vent on the roof, it blends in with the
tile if it’s painted properly and you can’t see the vent,
so therefore it’s cloaked.” O’Hagin dep., p. 10.
Applicant’s goods are advertised at trade shows, in
catalogues, magazines, in flyers, and on applicant’s Web
site. In applicant’s 1998-99 fiscal year, approximately
230,000 vents were sold.
In support of its affirmative defenses of
contractual estoppel, waiver and breach of agreement,
applicant submitted the testimony of William Daniels, an
attorney who represented applicant in a civil action
brought by applicant against opposer in the U.S. District
Court for the Central District of California. That
litigation involved applicant’s claim, as plaintiff, of
palming off by opposer. After a motion for summary
judgment was granted in that case, the parties settled
Opposition Nos. 109,470, 109,471 and 109,741
16
the litigation by an October 30, 1997 “deal memorandum”
(reproduced below).

In April 1998, the parties entered into a final
settlement of the civil litigation, more fully discussed
below.
Opposer’s Rebuttal
Opposition Nos. 109,470, 109,471 and 109,741
17
In rebuttal, Mr. Abelardo Lopez, the general manager
of a roofing distributor, who has purchased roofing
products from both parties, testified that both applicant
and opposer make profile-specific roof vents. He
testified that various manufacturers make roofing tile
that resemble the vents sold by applicant. Mr. Lopez
indicated that applicant’s vents are for ventilation as
well as aesthetics or “cosmetics.”
Q. When you say “cosmetics,” what do you
mean?
A. Just for the looks, so it doesn’t
look as bulky as like a passive dormer
vent. It has more of a nicer look when
it’s installed, more curb appeal. And
it also vents at the same time.
Q. You mentioned passive dormer vent. Can
you describe in words what a passive
dormer vent looks like and how it works?
A. They come in different dimensions, and they
are bulky, so they actually stick out of the
roof, and they provide ventilation also.
Q. So they are visible from the ground?
A. They’re visible, yes.
Q. This is an S-vent, right--
A. This is an S-vent.
Q. -–that we’re looking at in Exhibit 24
[applicant’s drawing sheet]. Is this also
visible when installed on a roof?
A. Very lightly. Very lightly.

Arguments of the Parties
Essentially, opposer argues that it has standing
because it competes with applicant by selling profile-
specific roof vents which copy the shape and contour of
roof tiles. It is opposer’s position that this record
Opposition Nos. 109,470, 109,471 and 109,741
18
demonstrates that applicant’s designs sought to be
registered are functional configurations under In re
Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9
(CCPA 1982). Opposer points to various admissions of
functionality made in applicant’s unsuccessful utility
patent application and elsewhere that its roof vents are
cheaper to install than other vents, to applicant’s
touting of the aesthetically pleasing design of its roof
vents which blend in with other roof tiles, to
applicant’s president’s admissions that he believes that
applicant’s roof vents are superior designs, and to the
lack of alternative roof vent designs that are profile-
specific. It is opposer’s position that the functional
advantages of applicant’s designs, if exclusively
appropriated by applicant as a result of trademark
registrations, will deprive others of rights and will
substantially hinder competition. Opposer argues that,
if registrations are permitted, applicant would be able
to exclude others from making roof vents that match the
shape and contour of roof tiles, and that applicant will
have an unlimited monopoly on profile-specific vents that
far exceeds the benefits that a utility patent would have
conferred. According to opposer, logic dictates that the
shape of a roof vent which conforms to the shape of a
Opposition Nos. 109,470, 109,471 and 109,741
19
roof tile made by others is an efficient and superior
design.
With respect to the so-called “deal memo,” upon
which applicant’s affirmative defenses are based, opposer
argues that that agreement is not binding for several
reasons. First, opposer argues that under California
law, as interpreted by California courts, only the
parties themselves rather than their attorneys may settle
or compromise a claim.2 Because the parties did not sign
the deal memo and because opposer’s attorney must have
been specifically authorized to settle and compromise a
claim, which he was not, according to opposer, the deal
memo is not binding. Even if the deal memo is construed
as a settlement agreement, opposer argues that it is not
enforceable because of the lack of consideration.
Opposer’s attorney states that nearly one-half year after
the attorneys signed the deal memo, applicant had not yet

2 See Section 664.6 of the California Code of Civil Procedure:

If parties to pending litigation stipulated,
in a writing signed by the parties outside
the presence of the court or orally before
the court, for settlement of the case, or
part thereof, the court, upon motion, may
enter judgment pursuant to the terms of the
settlement. If requested by the parties,
the court may retain jurisdiction over the
parties to enforce the settlement until
performance in full of the terms of the
settlement.
Opposition Nos. 109,470, 109,471 and 109,741
20
shipped vents or paid opposer in accordance with the
memo. Finally, opposer argues that the integration
clause of the formal settlement agreement executed by the
parties in April 1998 makes the deal memo irrelevant. In
this regard, opposer points to the following language of
the final settlement agreement:
The parties acknowledge that there is
[sic] pending three (3) trademark
opposition proceedings before the
Trademark Trials [sic] and Appeals
[sic] Board, and that this Settlement
Agreement and Mutual General Release
does not extend to those proceedings.

Paragraph 4.2. This agreement also states:
This agreement constitutes the entire
agreement between the parties with
respect to the subject matters referred
to herein and supersedes all prior or
contemporaneous understandings or
agreements.

Paragraph 8.
Applicant, for its part, argues that its marks are
not primarily functional. Rather, applicant’s designs,
although aesthetically pleasing, serve the function of
venting tile roofs. Merely increasing the aesthetic
appeal of a product, according to applicant, does not
make its asserted marks de jure functional.

Opposition Nos. 109,470, 109,471 and 109,741
21
In support of its position, applicant argues that
opposer has misapplied the Morton-Norwich factors.
Applicant argues that it has no patent, expired or
otherwise, describing the utilitarian advantages of the
appearance of its roof vents. Applicant’s unsuccessful
patent application claimed only the method of ventilating
a roof, according to applicant. While applicant admits
that the patent application describes the appearance of
its goods as being inconspicuous and unobtrusive,
applicant argues that the functionality of its products
does not rest in the visual appearance. While applicant
concedes that the appearance of its vent caps is stated
to be aesthetically pleasing, applicant argues that it
does not tout any utilitarian functions of the appearance
of its designs. Applicant points to Mr. O’Hagin’s
testimony concerning the numerous alternative designs
available to competitors, and argues that registration to
applicant will not hinder competition unfairly or prevent
other manufacturers from selling their own styles of roof
vents which perform the same function. Also, applicant
contends that there is no advantage of cost or ease of
manufacturing. Rather, the cost and difficulty in
producing applicant’s goods are greater, according to
applicant’s attorney.
Opposition Nos. 109,470, 109,471 and 109,741
22
Because applicant’s marks are not de jure
functional, applicant argues, they are registrable upon a
showing of acquired distinctiveness. Applicant contends
that its shapes have become distinctive by substantially
exclusive and continuous use of its goods since June
1992. This, according to applicant, is prima facie
evidence of acquired distinctiveness. Applicant also
points to its promotional material and advertising
expenditures.
Finally, applicant argues that, aside from the lack
of substantive merit of opposer’s case, opposer is
contractually barred from contesting applicant’s right to
register. Applicant relies upon the “deal memo” which
was signed by attorneys for these parties in the
unrelated federal lawsuit. Because opposer initially
agreed not to object to applicant’s applications,
applicant argues that these oppositions should be
dismissed. Contrary to opposer’s contentions, applicant
argues that opposer’s counsel had authority to bind
opposer to the terms of the agreement because a client is
bound under the doctrine of apparent or ostensible
authority. Applicant argues that the final settlement
agreement, signed after these oppositions were filed,
expressly excluded the pending oppositions from the
Opposition Nos. 109,470, 109,471 and 109,741
23
effect of the integration clause in that agreement.
Thus, according to applicant, the final agreement was not
intended to speak to the issues under the jurisdiction of
the Board or to dispose of applicant’s affirmative
defenses of contractual estoppel and waiver.
Opinion
There is no question but that opposer, a competitor
of applicant in the roof vent business, has standing to
oppose applicant’s attempt to register these marks for
roof vents. The real issues before us are whether
opposer is contractually barred from bringing these
oppositions; whether, if not, applicant’s product designs
are functional, as asserted by opposer; and whether, if
not functional, applicant’s product designs (which cannot
be inherently distinctive as a matter of law, as
explained below) have acquired distinctiveness so that
they may be registered on the Principal Register under
the provisions on Section 2(f) of the Act.
(1) Contractual Estoppel
We turn first to the issue of contractual estoppel,
asserted as an affirmative defense. Our primary
reviewing court, the Court of Appeals for the Federal
Circuit, has discussed the place that claims of breach of
contract play in Board proceedings. “[I]n the present
Opposition Nos. 109,470, 109,471 and 109,741
24
case, although other courts would be the proper tribunals
in which to litigate a cause of action for enforcement or
breach of the contract here involved, that is not
sufficient reason for the board to decline to consider
the agreement, its construction, or its validity if
necessary to decide the issues properly before it in this
cancellation proceeding, including the issue of
estoppel.” Selva & Sons, Inc. v. Nina Footwear, Inc.,
705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983). The
Federal Circuit has made it clear that an agreement may
be relevant and must be considered in Board proceedings.
That Court’s predecessor court, the Court of Customs and
Patent Appeals (CCPA) held that the Board did not err
when it held that a party was estopped from opposing an
application to register the mark DANSHEER. Danskin, Inc.
v. Dan River, Inc., 498 F.2d 1386, 182 USPQ 370, 372
(CCPA 1974) (“Since DANSHEER is not one of the marks
appellee agreed not to use (paragraph 11 of the
agreement) and appellee is not precluded from enforcing
the settlement agreement, appellee is entitled to a
judgment as a matter of law”). See also Vaughn Russell
Candy Co.
v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n. 6
(TTAB 1998). There, the Board noted that “[w]hile it
Opposition Nos. 109,470, 109,471 and 109,741
25
does not lie within the jurisdiction of the Board to
enforce the contract between the parties, agreements to
cease use of a mark or to not use a mark in a certain
format are routinely upheld and enforced.”
The final settlement agreement specifically exempts
these proceedings from its terms. Suffice it to say that
because this final settlement agreement, by its terms,
constitutes the entire agreement between the parties and
supersedes all previous agreements including the so-
called “deal memo,” we believe that this letter agreement
stating that opposer would not oppose these applications
is no longer in effect.3 We therefore find no
contractual estoppel of opposer’s claims.
(2) Functionality4
Concerning the central issue in these cases-—that of
functionality--we discuss first some basic legal
principles with respect to functionality as well as
recent Supreme Court and Federal Circuit cases dealing
with this issue.

3 Opposer’s argument concerning the ineffectiveness of the deal
memo because of the lack of consideration is unsupported.
There is simply no evidence in this record of the failure of
any consideration.
4 The Trademark Act has recently been amended to provide
explicitly that functionality is a ground of refusal if the
mark “comprises any matter that, as a whole, is functional.”
See Section 2(e)(5) of the Act, 15 USC §1052(e)(5).
Opposition Nos. 109,470, 109,471 and 109,741
26
A product feature is functional and cannot serve as
a trademark if it is essential to the use or purpose of
the article or it affects the cost or quality of the
article. Qualitex Co. v. Jacobson Products Co., 514 U.S.
159, 165, 34 USPQ2d 1161 (1995) and Inwood Laboratories,
Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.
10, 214 USPQ 1 (1982). In the context of a trademark
infringement suit
brought to protect unregistered trade dress, the Supreme
Court has recently stated that the plaintiff in such a
case must establish the non-functionality of the design,
a showing that may involve consideration of its aesthetic
appeal. Wal-Mart Stores Inc. v. Samara Brothers Inc.,
529 U.S. 205, 54 USPQ2d 1065, 1069 (2000). And even more
recently, in a case decided after these oppositions were
argued, the Court observed:
This burden of proof gives force to the
well-established rule that trade dress
protection may not be claimed for
product features that are functional…
And in Wal-Mart, supra, we were careful
to caution against misuse or over-
extension of trade dress. We noted that
“product design almost invariably serves
purposes other than source
identification”…

Trade dress protection must subsist with
the recognition that in many instances
there is no prohibition against copying
goods and products. In general, unless
Opposition Nos. 109,470, 109,471 and 109,741
27
an intellectual property right such as
patent or copyright protects an item, it
will be subject to copying. As the
Court has explained, copying is not
always discouraged or disfavored by the
laws which preserve our competitive
economy…

TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.
___, 58 USPQ2d 1001, 1005 (2001). Further, in TrafFix
Devices, 58 USPQ2d at 1007, the Court noted:
The Lanham Act does not exist to reward
manufacturers for their innovation in
creating a particular device; that is the
purpose of the patent law and its period
of exclusivity. The Lanham Act,
furthermore, does not protect trade dress
in a functional design simply because an
investment has been made to encourage the
public to associate a particular
functional feature with a singular
manufacturer or seller.

Consumers should not be deprived of the benefits of
competition relating to the utilitarian and aesthetic
purposes that product design ordinarily serves by a rule
of law that facilitates plausible threats of suit against
new entrants based upon alleged distinctiveness. Wal-
Mart Stores, supra, at 1069.
In determining the functionality of a particular
product design, the Supreme Court has noted that a prior
patent has vital significance. It is strong evidence and
adds great weight to the presumption that the features
claimed are functional. TrafFix Devices, supra, 58
Opposition Nos. 109,470, 109,471 and 109,741
28
USPQ2d at 1006. Moreover, it is not only the specific
claims made in the patent which are relevant; statements
made in a patent application and in the course of
procuring a patent also may demonstrate the functionality
of the design. Id. See also In re Bose Corp., 772 F.2d
866, 227 USPQ 1 (Fed. Cir. 1985); New England Butt Co. v.
International Trade Commission, 756 F.2d 874, 225 USPQ
260 (Fed. Cir. 1985); Morton-Norwich, supra; In re Visual
Communications Co., Inc., 51 USPQ2d 1141 (TTAB 1999); In
re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999);
and In re Oscar Mayer & Co. Inc., 189 USPQ 295 (TTAB
1975).
This case seems to involve elements of both
utilitarian and aesthetic functionality. Here, for
example, there is evidence of utility in applicant’s
patent application, as well as statements touting the
superiority of applicant’s design in applicant’s
promotional literature, and statements that applicant’s
design results in reduced costs of installation. On the
other hand, there is no question that applicant’s roof
designs which match the appearance of surrounding roof
tiles are more pleasing in appearance because the venting
tiles in each case are unobtrusive.
Opposition Nos. 109,470, 109,471 and 109,741
29
In this regard, the Supreme Court noted in TrafFix
Devices, 58 USPQ2d at 1006-7:
As explained in Qualitex, supra, and Inwood,
supra, a feature is also functional when it
is essential to the use or purpose of the
device or when it affects the cost or quality
of the device. The Qualitex decision did not
purport to displace this traditional rule.
Instead, it quoted the rule as Inwood had set
it forth. It is proper to inquire into a
“significant non-reputation-related
disadvantage” in cases of aesthetic
functionality, the question involved in
Qualitex. Where the design is functional under
the Inwood formulation there is no need to
proceed further to consider if there is a
competitive necessity for the feature. In
Qualitex, by contrast, aesthetic functionality
was the central question, there having been no
indication that the green-gold color of the
laundry press pad had any bearing on the use or
purpose of the product or its cost or quality.

And in Qualitex, the Court had approved of a statement
from Restatement (Third) of Unfair Competition, Section
17, Comment c, 176 (1995), that the “ultimate test of
aesthetic functionality is whether the recognition of
trademark rights would significantly hinder competition.”
In Brunswick Corp. v. British Seagull Ltd., 35 F.3d
1527, 32 USPQ2d 1120 (Fed. Cir. 1994), the Court of
Appeals for the Federal Circuit reaffirmed the
proposition that there is a fundamental right to compete
through imitation of a competitor’s product, which right
can only be temporarily denied by the patent or copyright
Opposition Nos. 109,470, 109,471 and 109,741
30
laws. Id., 32 USPQ2d at 1122. If a feature asserted as
a trademark is the best, or at least one of a few
superior designs for its purpose, competition is
hindered. See also Bose Corp., supra, 227 USPQ at 6, and
In re Teledyne Industries Inc., 696 F.2d 968, 217 USPQ 9
(Fed. Cir. 1982).
In the Brunswick case, applicant sought to register
the color black for outboard engines. We believe that
what the Court said in that case has applicability to
applicant’s attempt to register its roof vent designs in
these cases:
The color black, as the Board noted,
does not make the engines function
better as engines. The paint on the
external surface of an engine does not
affect its mechanical purpose. Rather,
the color black exhibits both color
compatibility with a wide variety of
both colors and ability to make objects
appear smaller. With these advantages
for potential customers, the Board found
a competitive need for engine
manufacturers to use black on outboard
engines. Based on this competitive
need, the Board determined that the
color was de jure functional. This
court discerns no error in the Board’s
legal reasoning and no clear error in
its factual findings.
….
…All outboard engine manufacturers color
their products. These manufacturers
seek colors that easily coordinate with
the wide variety of boat colors. The
Board found that the color black served
this non-trademark purpose. In
Opposition Nos. 109,470, 109,471 and 109,741
31
addition, the Board found that the color
black serves the non-trademark purpose
of decreasing apparent object size. The
record showed that these features were
important to consumers. Unlike the pink
color in Owens-Corning [774 F.2d 1116,
227 USPQ 417 (Fed. Cir. 1985)], the
Board found a competitive need for the
color black. Thus, the Board concluded
that registration of Mercury’s proposed
mark would hinder competition. This
court discerns no clear error in the
Board’s findings.

Brunswick Corp., supra, 32 USPQ2d at 1122-23.
The Federal Circuit has made clear that traditional
trademark principles govern the registrability of a
proposed mark’s aesthetic features. The test for
functionality hinges on whether registration of a
particular feature hinders competition and not on whether
the feature contributes to the product’s commercial
success. Id., at 1124. That is, “[a]esthetic
ingredients to commercial success are not necessarily de
jure functional.” Id. In the Brunswick case, color
compatibility and the ability to decrease apparent engine
size were not said to be mere aesthetic features.
Rather, these features supplied a competitive advantage.
See also Deere & Co. v. Farmhand, Inc., 560 F.Supp. 85,
217 USPQ 252 (S.D. Iowa 1982), aff’d, 721 F.2d 253 (8th
Cir. 1983) [per curiam] (color green was held to be
“aesthetically functional” in that purchasers wanted
Opposition Nos. 109,470, 109,471 and 109,741
32
their farm equipment to match); and In re Ferris Corp.,
59 USPQ2d 1587 (TTAB 2000)(pink or flesh color held
functional for wound dressings).
Upon careful consideration of the legal precedent,
this record and the arguments of the attorneys, we agree
with opposer that applicant’s product designs are
functional in the sense that these configurations blend
in or match the roof tiles with which they are used
better than alternative products. As in Brunswick, these
configurations do not make the roof vents work better
because they are in these shapes. Rather, like the
advantages of color compatibility and reduction in
apparent engine size afforded by the color black,
applicant’s designs are compatible with the roof tiles
with which they are used and supply applicant with a
competitive advantage in each case. Because applicant’s
vents match the contours of the roof vents with which
they are used, alternatives will not have this advantage.
Applicant’s patent application and other evidence of
record, including applicant’s promotional literature and
applicant’s own testimony, tout the designs’ unobtrusive
appearance, state that they are “functional in design,”
camouflage the existence of the vents and are
aesthetically pleasing. Applicant also represents in its
Opposition Nos. 109,470, 109,471 and 109,741
33
promotional material that its vents are cheaper to
install. We conclude that applicant’s product designs
are, as a whole, functional, and that registration by
applicant would hinder competition by placing competitors
at a substantial competitive disadvantage.
(3) Acquired Distinctiveness
Because applicant’s designs are functional, any
evidence of distinctiveness is of no avail to applicant
in support of registration. See Section 2(f) of the Act;
TrafFix Devices, supra, 58 USPQ2d at 1007; R. M. Smith,
supra, 222 USPQ at 3; and In re Deister Concentrator Co.,
289 F.2d 496, 129 USPQ 314, 321 (CCPA 1961). Therefore,
we logically need not reach the issue of acquired
distinctiveness. However, for the sake of completeness,
we offer our opinion on this question as well. It is our
view that, if applicant’s product designs were not
adjudged functional, then applicant has nevertheless
failed to establish that its asserted marks have acquired
distinctiveness.
First, we observe that, under Wal-Mart, supra,
product designs are unregistrable (and unprotectable)
unless they have acquired distinctiveness (or secondary
meaning). In that case, the Court observed, 54 USPQ2d at
1069:
Opposition Nos. 109,470, 109,471 and 109,741
34
In the case of product design, as in the case
of color, we think consumer predisposition to
equate the feature with the source does not
exist. Consumers are aware of the reality
that, almost invariably, even the most unusual
of product designs—-such as a cocktail shaker
shaped like a penguin—-is intended not to
identify the source, but to render the product
itself more useful or more appealing.

See also In re Ennco Display Systems, 56 USPQ2d 1279
(TTAB 2000).
In the case before us, the record shows that there
are at least three companies including opposer that
produce roof vents substantially similar to applicant’s
vents. This alone would make it difficult for applicant
to establish acquired distinctiveness. The record
includes the testimony of an experienced roofer who was
unable to distinguish applicant’s vents from those of
others. We infer from this testimony that the use by the
other companies of similar designs was of a sufficient
nature to have an impact on the market. Cf. L.D. Kichler
Co. v. Davoil Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed.
Cir. 1999). Applicant cannot be said to have
substantially exclusive use of these designs. Further,
applicant has not submitted evidence that it has promoted
the asserted product designs as trademarks, and we have
no trial evidence that consumers have come to recognize
applicant’s designs as indications of origin. Also,
Opposition Nos. 109,470, 109,471 and 109,741
35
while applicant’s sales may demonstrate popularity or
commercial success for its roof vents, such evidence
alone does not demonstrate that the vents’ designs which
applicant seeks to register have become distinctive of
its goods and thus function as source indicators. See,
e.g., In re Bongrain International (American ) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990) [growth
in sales may be indicative of popularity of product
itself rather than recognition of a term as denoting
origin].
We conclude that applicant has not satisfied the
burden it has of demonstrating acquired distinctiveness
of its asserted marks.
Decision: The oppositions are sustained and
registration to applicant is refused in each case.