McGowen Precision Barrels, LLCv.Proof Research, Inc.

Trademark Trial and Appeal Board

May 20, 2021

92067618 (T.T.A.B. May. 20, 2021)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: May 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

McGowen Precision Barrels, LLC

v.

Proof Research, Inc.
_____

Cancellation No. 92067618
_____

Timothy J. Monahan of Monahan & Company LLC,
for McGowen Precision Barrels, LLC.
Antoinette M. Tease of Antoinette M. Tease P.L.L.C.,
for Proof Research, Inc.
_____

Before Goodman, Larkin, and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Respondent, Proof Research, Inc., owns a registration on the Principal Register
for the following trade dress configuration for “Component parts for rifles; Field guns;
Firearms; Gun barrels; Guns; Hunting rifles; Rifle barrels; Rifles; Rifles and parts
thereof; Sporting rifles,” in International Class 13 (“the Registration”):
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1
The Registration includes the following description of the mark:
The mark consists of trade dress applied to gun barrels formed with a
mottled pattern of irregularly-sized, rippled patches, resembling a quilt
having striated patches of varying shapes and reflectivity depending on
the ambient light source and viewing angle. The dotted lines in the
drawing show the shape of the gun to which the applicant’s trade dress
is applied, are intended to show the position of the mark on the gun, and
are not part of the mark. Color is not claimed as a feature of the mark.

Petitioner, Monahan & Company LLC, filed a petition for cancellation of the
Registration on five grounds, namely, that (1) the mark “comprises matter that, as a
whole is functional, in violation of the Trademark Act § 2(e), 15 USC § 1052(e)”; (2) the
Registration “encompasses more than one mark, in violation of the Trademark Act §§
1 and 45, 15 USC §§ 1051 and 1127”; (3) the “trade dress encompassed in [the]
Registration … is generic, in violation of the Trademark Act §§ 1, 2 and 45, 15 USC
§§ 1051, 1052 and 1127”; (4) the Registration “is invalid on the ground that the trade
dress encompassed by the registration is aesthetically functional”; and (5) the
Registration “was obtained by fraud and is invalid … pursuant to Trademark Act
§ 14(3), 15 USC § 1064(3).”2

1 Registration No. 4390533, issued August 27, 2013, based on Respondent’s allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging a date of
first use in commerce and anywhere of January 31, 2003; combined Section 8 and 15
declaration of use and affidavit of incontestability accepted/acknowledged.
2 1 TTABVUE (Petition for Cancellation). Citations to the record or briefs in this opinion are
to the publicly available documents on TTABVUE, the Board’s electronic docketing system.
The number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry. Page
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The case is fully briefed. After carefully reviewing all of the evidence and
arguments in this case, we grant the petition to cancel on the ground that the trade
dress comprising the mark in the Registration is, as a whole, functional under Section
2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5). We do not reach the other claims.
I. Evidentiary Record
The evidentiary record in this case is voluminous, comprising more than 3,300
pages of testimony, exhibits, and other documentary evidence. It consists of the
pleadings, the file of the Registration by operation of Trademark Rule 2.122(b)(1), 37
C.F.R. § 2.122(b)(1), and various types of evidence made of record by the parties
during their respective testimony and rebuttal periods.
Most of the parties’ evidentiary submissions, as well as their briefs, have been
filed in both a redacted (public) version, and an unredacted (confidential) version
under seal, because they contain material that the parties designated as
“Confidential” or “Confidential - Attorneys’ Eyes Only” (“AEO”) under the Board’s
Standard Protective Order, which is automatically in place for all inter partes
proceedings unless modified by the Board. Trademark Rule 2.116(g), 37 C.F.R.
§ 2.116(g). The obligation to maintain the confidentiality of the parties’ submissions
presents a significant challenge in discussing the evidence in a publicly accessible
opinion.

references herein to the trademark registration record in this proceeding refer to the online
database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system. All
citations to documents contained in the TSDR database are to the downloadable .pdf versions
of the documents in the USPTO TSDR Case Viewer.
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The difficulty is compounded by the extensive and, in many instances,
indiscriminate, designation of portions and even entire deposition transcripts and
other materials as Confidential or AEO without any apparent basis for the
designation, as perhaps revealed by the fact that some testimony and materials
designated as Confidential have been discussed, quoted, or cited by one or both of the
parties in their publicly accessible briefs. Additionally, certain information deemed
confidential in some testimony is not treated as confidential in other testimony.3
Under Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), “[t]he Board may treat as
not confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.” Confidentiality designations thus
do not provide absolute immunity from the public disclosure of materials so
designated. See Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118

3 Because proceedings before the Board are public, all papers should be available to the
public, except for information that is truly confidential. It is clear that not everything the
parties designated as confidential fits that description. For example, while the parties agreed
between themselves to divide depositions into confidential and public portions (open
sessions), the confidential portions are replete with non-confidential questions and answers
mixed into the testimony, as well as entire exhibits that include non-sensitive information.
Other examples are seen in several footnotes herein, where we have cited confidentially
designated portions of the record for non-confidential information. While sensitive
information, such as trade secrets, sales figures, and other similar information typically
designated as confidential in Board proceedings may be shielded from the public, non-
sensitive information is not protected. The parties are allowed until 60 days after the issue
date of this decision to file amended redacted copies of all previously designated “confidential”
evidence submitted during their respective testimony periods that contains evidence that is
not truly confidential, as well as amended confidential and redacted briefs corresponding to
the amendments, failing which the testimony and briefs in their entirety will become part of
the public record. Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101 USPQ2d
1731, 1736 n. 12 (TTAB 2012). To facilitate this procedure given the magnitude of the record,
the parties are ordered to meet and confer prior to filing the redactions.

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USPQ2d 1413, 1416 n.21 (TTAB 2016) (the Board must be able to discuss the record
evidence in its opinions unless there is an overriding need for confidentiality).
Accordingly, while we will give appropriate consideration to the parties’ designations
of evidence as Confidential or AEO, we will not be bound by inappropriate
designations and “in this opinion, we will treat only testimony and evidence that is
truly confidential or commercially sensitive as such.” Id.
A. Petitioner’s Trial Evidence
1. Notice of Reliance on:
o U.S. Patent No. 5,804,756 and U.S. Patent Application No.
2016/0209143 A1.4
o Respondent’s answers to Petitioner’s interrogatories,5 and responses to
Petitioner’s requests for production of documents.6
o Portions of the discovery deposition of David Curliss, Ph.D., General
Manager of Performance Polymer Solutions d/b/a Proof Research
Advanced Composites Division, a wholly-owned subsidiary of
Respondent, and exhibits (“Curliss Disc. Dep.”).7

4 36 TTABVUE 14-38.
5 35 TTABVUE 47 (Confidential).
6 36 TTABVUE 39-53 (Public). Written responses to requests for production of documents
introduced through a notice of reliance are admissible solely for the purpose of showing that
a party has stated that there are no responsive documents, as Respondent did in certain of
its responses. See City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d
1668, 1674 n.10 (TTAB 2013); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1038 n.7
(TTAB 2012). We have not considered Respondent’s additional statements contained in those
responses, which are not properly of record.
7 36 TTABVUE 54-215 (Petitioner’s Notice of Reliance (or “NOR”)). Dr. Curliss is, one of the
inventors of Respondent’s ’117 Patent. Ordinarily, a discovery deposition may be used at trial
if the deponent, at the time of the deposition, was an officer, director or managing agent of a
party, or a person designated by a party pursuant to Fed. R. Civ. P. 30(b)(6) or 31(a).
Trademark Rule 2.120(k)(1), 37 C.F.R. § 2.120(k)(1). However, the discovery deposition of a
non-party witness may be offered in evidence by stipulation of the parties, approved by the
Board. Trademark Rule 2.120(k)(2), 37 C.F.R. § 2.120(k)(2). Because Dr. Curliss is not one of
the persons designated in Trademark Rule 2.120(k)(1) and there was no stipulation by the
parties to allow the discovery deposition into evidence, the Board initially granted
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o Portion of the discovery deposition of Kristopher Jense, Respondent’s
President (“Jense Disc. Dep.”).8
2. Trial Testimony
o Testimony declaration of Ronald Duplessis, Owner of Petitioner and
Hunters Run Gun Club, LLC d/b/a CarbonSix, and exhibits (“Duplessis
Test. Decl.”).9

o Testimony deposition of Jason E. Lincoln, Ph.D. Vice President of
Engineering and Product Development of Performance Polymer
Solutions Inc. d/b/a Proof Research Advanced Composites Division, a
wholly-owned subsidiary of Respondent, and exhibits (“Lincoln Test.
Dep.”), including Respondent’s U.S. Patent No. 10,168,117 B2 (the “’117
Patent”).10
B. Respondent’s Trial Evidence
1. Notice of Reliance on
o Discovery deposition of Mr. Duplessis and exhibits (“Duplessis Disc.
Dep.”).11

o Discovery deposition of Gene Gordon, Director of Sales for CarbonSix,
and exhibits (“Gordon Disc. Dep.”).12

o Discovery deposition of William Guidry, Digital Marketing Manager for
Ron Duplessis Companies and the Marketing Manager for CarbonSix,

Respondent’s motion to strike the portion of Petitioner’s NOR relying on Dr. Curliss’s
deposition testimony. 53 TTABVUE 8-11. Subsequently, however, the parties stipulated
“that any depositions taken in the proceedings may be offered in evidence by a party during
its testimony period,” 54 TTABVUE, and both parties have referred to Dr. Curliss’s
deposition testimony in their briefs. The Board hereby approves the stipulation and vacates
the portion of its previous order striking Dr. Curliss’s deposition testimony.
8 36 TTABVUE 216-230.
9 37 TTABVUE.
10 47 TTABVUE (Public); 48 TTABVUE (Confidential). Dr. Lincoln is, along with Dr. Curliss,
a co-inventor on Respondent’s ’117 Patent. 47 TTABVUE 17.
11 56-59 TTABVUE.
12 60 TTABVUE. CarbonSix is not a party to this proceeding. However, the deposition is
properly of record under the parties’ stipulation approved by the Board. See note 7.
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and exhibits (“Guidry Disc. Dep.”)13

o Discovery deposition of Travis Horzelski, an employee of Duplessis
Buick GMC and CarbonSix as its IT person (“Horzelski Disc. Dep.”).14

o Discovery deposition of Nick Niblick, a gunsmith and Operations
Manager for Duplessis Rifles, LLC, another company owned by Mr.
Duplessis, and he also does work for CarbonSix (“Niblick Disc. Dep.”).15

o Discovery deposition of Daniel Wynne, Petitioner’s Operations Manager
(“Wynne Disc. Dep.”).16
2. Trial Testimony
o Testimony declaration of Respondent’s expert witness, Wayne C. Van
Zwoll, Ph.D, and exhibits (“Van Zwoll Test. Decl.”).17

o Testimony declaration of Respondent’s expert witness, Chad Van Brunt
(“Brunt Test. Dep.”).18

o Testimony declaration of David Curliss and exhibits (“Curliss Test.
Decl.”).19

o Supplemental testimony declaration of David Curliss and exhibits
(“Curliss Suppl. Test. Decl.”).20

o Testimony declaration of Kristopher Jense and exhibits (“Jense Test.
Decl.”).21

13 61 TTABVUE 2-12. Although he is not a party witness, the deposition is properly of record
under the parties’ stipulation approved by the Board. See note 7.
14 63 TTABVUE. Although he not a party witness, the deposition is properly of record under
the parties’ stipulation approved by the Board. See note 7.
15 64 TTABVUE. Although he not a party witness, the deposition is properly of record under
the parties’ stipulation approved by the Board. See note 7.
16 65 TTABVUE. Although he is not a party witness, the deposition is properly of record under
the parties’ stipulation approved by the Board. See note 7.
17 66 -67 TTABVUE.
18 81 TTABVUE (Confidential).
19 68-72 TTABVUE (Public); 82 TTABVUE (Confidential).
20 84 TTABVUE.
21 73-77 TTABVUE.
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o Testimony declaration of Dr. Lincoln and exhibits (“Lincoln Test.
Decl.”).22

o Testimony declaration of Dale Robinson, a dealer and distributor of
Respondent’s rifles and rifle barrels, and exhibits (“Robinson Test.
Decl.”).23

o Testimony declaration of Evan Ranz, a purchasing agent for Bill Hicks
& Co., Ltd., a distributor of firearms and firearms components, and a
customer of Respondent (“Ranz Test. Decl.”).24

o Testimony declaration of Justin Giarusso, a principal of H & G
Marketing, Inc., an independent sales representative for various
manufacturers in the firearms industry including Respondent.25

o Testimony declaration of Paul Mazzarella, a senior buyer at Optics
Planet Inc., an online retailer in the sporting goods and shooting sports
industry.26

o Testimony declaration of Bill Rapier, the owner of American Tactical
Shooting Instructions LLC, who owns and uses rifles with Respondent’s
barrels.27

o Testimony declaration of Erik Van Woerkom, a hunter who owns rifles
with Respondent’s barrels and is sponsored by Respondent.28

o Testimony depositions of Paul Mazzarella,29 Evan Ranz,30 and Dale
Robinson,31 and exhibits.

22 78 TTABVUE.
23 79 TTABVUE.
24 80 TTABVUE 2-5.
25 Id. at 6-10.
26 Id. at 11-15.
27 Id. at 16-19.
28 Id. at 20-22.
29 121 TTABVUE (Deposition); 122 TTABVUE (Exhibits).
30 124 TTABVUE (Deposition); 125 TTABVUE (Exhibits).
31 126 TTABVUE (Deposition); 127 TTABVUE (Exhibits).
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o Cross-examination testimony depositions of

o Erik Van Woerkom (“Van Woerkom Cross Test.”) and exhibits;32

o Wayne Van Zwoll, Ph.D. (“Van Swoll Cross Test.”) and exhibits;33

o David Curliss (“Curliss Cross Test.”) and exhibits;34

o Chad Van Brunt (“Van Brunt Cross Test.”) and exhibits, filed under
seal;35

o Jason Lincoln, Ph.D. (“Lincoln Cross Test.”) and exhibits;36

o Justin Giarusso (“Giarusso Cross Test.”) and exhibits;37 and

o Kristopher Jense (“Jense Cross Test.”) and exhibits.38

32 103 TTABVUE. Petitioner elected to take the oral cross-examination of this witness and
the other witnesses of Respondent cited in notes 33-38 infra as permitted by Trademark Rule
2.123(c), 37 C.F.R. Section 2.123(c), which provides that “[w]hen a party elects to take oral
cross-examination of an affiant or declarant, the notice of such election must be served on the
adverse party and a copy filed with the Board within 20 days from the date of service of the
affidavit or declaration and completed within 30 days from the date of service of the notice of
election.”
33 105 TTABVUE (Public); 106 TTABVUE (Exhibits); 107 (Confidential).
34 108 TTABVUE.
35 109 TTABVUE.
36 110 TTABVUE (Confidential); 111 TTABVUE (Public); 129 TTABVUE (Confidential).
37 112 TTABVUE.
38 114 TTABVUE (Confidential); 115 TTABVUE (Public); 116-119 TTABVUE (Exhibits).
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C. Petitioner’s Rebuttal Evidence
1. Rebuttal Notice of Reliance39 on
o U.S. Patent No. 6,230,429 B1.40

o Excerpts from several publications, including technical publications and
manuals.41

o Webpages printouts from Respondent’s website, Respondent’s social
media pages, and third-party websites.42

o Portions of the file history of the Registration;43

o Portions of the discovery deposition of David Curliss and exhibits
(“Curliss Disc. Dep.”) filed under seal.44

o Portions of the discovery deposition of Kristopher Jense (“Jense Disc.
Dep.”).45

39 In addition to the other evidence listed in this section, Petitioner’s rebuttal Notice of
Reliance purports to rely on certain documents produced by Respondent during discovery,
including correspondence between Respondent’s counsel and Respondent’s witnesses, and
portions of Respondent’s privilege log. 87 TTABVUE 105-139 (Confidential); 88 TTABVUE
2-35 (Confidential); 89 TTABVUE 170-185 (Public); 90 TTABVUE 6-12 (Public). In the
absence of authentication, those documents are not admissible by notice of reliance alone and
we have not considered them. See Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii);
Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107
USPQ2d 1930, 1932 n.7 (TTAB 2013) (documents produced in response to a request for
production of documents may not be introduced under notice of reliance).
40 89 TTABVUE 12-23.
41 Id. at 24-122.
42 Id. at 123-163; 90 TTTABVUE 3-5.
43 89 TTABVUE 164-169. This was unnecessary because the file of the Registration is
automatically of record. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1); Hiraga v. Arena,
90 USPQ2d 1102, 1105 (TTAB 2009) (respondent’s registration file is automatically part of
the record of the proceeding and need not be introduced under a notice of reliance).
44 88 TTABVUE 36-64 (Confidential).
45 88 TTABVUE 65-95 (Confidential); 90 TTABVUE 32-55 (Public).
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2. Rebuttal Testimony
o Testimony declaration of Travis Horzelski (“Horzelski Test. Decl.”).46

o Testimony declaration of Daniel Wynne and exhibits (“Wynne Test.
Decl.”) filed under seal.47

II. Preliminary Issues
A. Petitioner’s Motion to Exclude Testimony
Petitioner, in an appendix to its main brief, objects to the testimony of several of
Respondent’s witnesses on various grounds and requests that we exclude that
testimony.48 Specifically, Petitioner objects to the testimony of
o Respondent’s expert witnesses, Wayne Van Zwoll, Ph.D and Chad Van
Brunt, on the claims of utilitarian functionality; that the registration
encompasses multiple marks; genericness; and aesthetic functionality;
and

o Respondent’s fact witnesses, Paul Mazzarella, Justin Giarusso, Evan
Ranz, Dale Robinson, Bill Rapier, and Erik Van Woerkom, on the claim
of utilitarian functionality.49

Dr. Van Zwoll provided testimony and opinions related to the claims of utilitarian
functionality, genericness, aesthetic functionality, and that the mark embodied in the
registration encompasses more than one mark.50 However, Respondent asserts that
Petitioner’s objections to his testimony regarding the first three issues are moot

46 98 TTABVUE.
47 99 TTABVUE.
48 130 TTABVUE 57-62 (Petitioner’s Brief).
49 Id.
50 66 TTABVUE 3 (Van Zwoll Decl.).
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because Respondent “has not relied” on his testimony.51 In light of Respondent’s
stated position, we consider the objections moot and give no consideration to his
testimony specifically related to those issues.
As to the claim of “multiple marks,” Respondent asserts that Petitioner’s
objections are also moot “because the only cited testimony is based on Dr. Van Zwoll’s
personal review of [Respondent’s] advertisements.”52 While we agree with Petitioner
that the testimony lacks a proper foundation,53 Petitioner’s objections are moot
inasmuch as we do not reach the issue of whether the Registration encompasses
multiple marks.
Similarly, because Respondent does not rely on the testimony of Paul Mazzarella,
Justin Giarusso, Evan Ranz, Dale Robinson, Bill Rapier, or Erik Van Woerkom, with
regard to Petitioner’s claim of functionality,54 and that is the only claim we reach on
the merits, Petitioner’s objection to the testimony of these witnesses is also moot.
For the same reasons, Petitioner’s objection to the expert testimony of Chad Van
Brunt beyond the issue of functionality is moot as well. Regarding functionality,
Respondent objects to Mr. Van Brunt’s testimony “on the ground that he is admittedly
not an expert on carbon fiber composite technology.”55 However, Respondent states

51 132 TTABVUE 57 (Respondent’s Brief, Appendix).
52 Id.
53 130 TTABVUE 57 (Petitioner’s Brief, Appendix).
54 132 TTABVUE 57 (Respondent’s Brief, Appendix).
55 131 TTABVUE 62 (Petitioner’s Brief) (Confidential). The entirety of Petitioner’s objections
to Mr. Van Brunt’s testimony is redacted from the public version of its brief. However, it is
unclear why any of the objections are considered confidential. See note 3.
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that “Van Brunt is not being offered as an expert in composites. Rather, Van Brunt
is an expert in evaluating the performance characteristics of carbon fiber rifle
barrels.”56 Petitioner’s objection to the testimony of Mr. Van Brunt on the issue of
functionality is therefore overruled. To the extent Mr. Van Brunt’s testimony
concerning the performance characteristics of carbon fiber rifle barrels is relevant to
our determination of functionality, we will give it the weight we think it deserves.57
B. Respondent’s Pending Motions to Strike
Following the close of Petitioner’s testimony period, Respondent filed a motion to
strike the portion of paragraph 21 of the declaration of Petitioner’s and CarbonSix’s
owner, Ronald Duplessis, on the basis that the testimony was based on “information
and belief,” and not based on Mr. Duplessis’ personal knowledge.58 The Board
deferred the motion to strike until final decision and advised Respondent that if it
wished to maintain the objection, it must renew that objection in its trial brief.59
Because Respondent did not renew the objection in its final brief, it is waived. See,
e.g., Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (objection

56 132 TTABVUE 58 (Respondent’s Brief).
57 Fed. R. Evid. 702, made applicable to Board proceedings by Trademark Rule 2.116(a),
provides that “[a] witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s
scientific, technical, or other specialized knowledge will help the trier of fact to understand
the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles and methods; and (d) the expert
has reliably applied the principles and methods to the facts of the case.”
58 44 TTABVUE.
59 53 TTABVUE 11-12. A substantive objection to declaration testimony “may be raised by a
motion and maintained in the brief.” Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124
USPQ2d 1160, 1167 (TTAB 2017).
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to testimony waived when not renewed in trial brief).
Additionally, following the close of Petitioner’s rebuttal period, Respondent filed
a motion to strike the rebuttal testimony declaration of Daniel Wynne “on the
grounds that (a) it is untimely in that the referenced invoices were not included in
Petitioner’s Rebuttal Notice of Reliance and (b) [the] invoices [attached as exhibits to
the declaration], and the issues addressed in the Wynne declaration, have no
relevance to the present case.”60 According to Respondent, the sole purpose of the two-
page declaration is to introduce certain invoices into evidence.61
Respondent’s objections are not well-taken and are overruled. The objection based
on timeliness is misplaced, since declaration testimony need not be provided under a
notice of reliance. See Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1) (“The
testimony of witnesses in inter partes cases may be submitted in the form of an
affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal
Rules of Evidence, filed during the proffering party’s testimony period….”).
As to the objection on relevance, we find that, at a minimum, the declaration
includes Mr. Wynne’s testimony regarding his position and responsibilities with
Petitioner, the manufacturing process of Petitioner’s barrels, and the parties to whom
sales of Respondent’s goods are made, which are relevant background in this case.
“Suffice it to say, ‘we simply accord the evidence whatever probative value it deserves,
if any at all ... Ultimately, the Board is capable of weighing the relevance and strength

60 101 TTABVUE 3.
61 Id. at 2-3.
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or weakness of the objected-to testimony and evidence in this specific case, including
any inherent limitations, and this precludes the need to strike the testimony and
evidence.’” Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at
*3 (TTAB 2019) (quoting Hunt Control Sys. Inc. v. Koninkijke Philips Elecs. N.V., 98
USPQ2d 1558, 1564 (TTAB 2011)). The objection is therefore overruled and the
motion to strike is denied.
III. Entitlement to a Statutory Cause of Action62
Even though Respondent did not challenge Petitioner’s entitlement to invoke the
statutory cause of action for cancellation, such entitlement must be proven in every
inter partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc.
v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may petition for cancellation of a registered mark
where such cancellation is within the zone of interests protected by the statute, 15
U.S.C. § 1064, and the party has a reasonable belief in damage that is proximately
caused by continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d
1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020).
Petitioner “manufactures steel rifle barrels for firearms,” as well as “barrel blanks

62 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
Cancellation No. 92067618
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or liners, which its customers wrap with a composite.”63 Petitioner’s customers
include its sister company, Hunters Run Gun Club, LLC d/b/a CarbonSix, which
“purchases blanks exclusively from [Petitioner] and applies a continuous-filament
carbon fiber and epoxy resin composite,”64 and unrelated companies Fierce Firearms,
LLC and Primary Weapons Systems, Inc.65
Ronald Duplessis, the sole owner of both Petitioner and CarbonSix,66 testified that
prior to the institution of this proceeding, Respondent “filed a complaint in US
District Court, District of Montana, naming [Petitioner] as the defendant,” and
alleging “that barrels being manufactured and sold by CarbonSix infringe [the
Registration].”67 The federal suit has been stayed pending the Board’s disposition of
this proceeding.68 In addition, CarbonSix, Fierce Firearms, and Primary Weapons
Systems have each “been threatened by [Respondent] with a trade dress infringement
law suit. Primary Weapons Systems no longer purchases barrel blanks from
[Petitioner].”69
Based on the foregoing, Petitioner has demonstrated that its interest in
cancellation of the Registration falls within the zone of interests protected by the
Lanham Act and that Petitioner has a reasonable belief that damage is proximately

63 37 TTABVUE 2 (Duplessis Test. Decl., ¶¶ 2-3).
64 Id. at 3 (¶ 4).
65 Id. at 4 (¶ 11).
66 Id. at 2-3, (¶¶ 1, 4).
67 Id. at 4 (¶ 9).
68 130 TTABVUE 8 (Petitioner’s Brief); 132 TTABVUE 6 (Respondent’s Brief).
69 37 TTABVUE 4-5 (Duplessis Test. Decl., ¶ 11).
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caused by continued registration of the mark. See Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (Cuban cigar
manufacturer entitled to seek cancellation of competitor’s trademark registrations);
Domino’s Pizza Inc. v. Little Caesar Enters. Inc., 7 USPQ2d 1359, 1363-64 (TTAB
1988) (entitlement to a statutory cause of action established by the opposer’s position
as a defendant in a civil action brought by the applicant alleging trademark
infringement); Tanners’ Council of Am., Inc. v. Gary Indus., Inc., 440 F.2d 1404, 169
USPQ 608, 609 (CCPA 1971) (“It seems clear enough that registration of the mark as
applied for could weaken the sales positions of appellants’ members and hence reduce
the income of appellant. We think this last factor is alone sufficient to bring appellant
within the category of ‘any person who believes he would be damaged’ by the
registration.”).
Petitioner has thus established its entitlement to petition for cancellation of the
Registration.
IV. Background
A. Respondent
Respondent (Proof Research, Inc.) is the successor-in-interest to Jense Precision,
a company that started in 2006 as a sole proprietorship owned by Kristopher Jense,
which he converted to an LLC in 2008.70 “Jense Precision purchased rifle parts,
assembled them, and then sold the finished rifles.”71

70 73 TTABVUE 3 (Jense Test. Decl., ¶ 2).
71 Id.
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In or about 2008, the company began purchasing carbon fiber composite rifle
barrels from Advanced Barrel Systems (“ABS”).72 According to Mr. Jense, the rifle
barrels he purchased from Advanced Barrel Systems “had a very unique look to them.
This ‘look’ is the same mottled finish that is the subject of [the Registration]. From
[his] first exposure to these rifle barrels to the present, it has been [his] mission to
maintain this same look so that consumers would associate it with [Respondent’s]
barrels.”73
In 2011, Xtreme Precision Armaments, Inc. acquired Jense Precision and
subsequently changed its name to Proof Research, Inc. (Respondent).74 In 2012,
Respondent “purchased the assets of ABS, including its trade dress.” During that
year, Mr. Jense decided to register the trade dress that is the subject of the
Registration.75 Mr. Jense testified that since obtaining the Registration in 2013, he
has “insisted that [Respondent] maintain the trade dress ‘look’ on the outer surface
of its carbon fiber wrapped barrels, regardless of the interior engineering of the
barrel,” which he urges “is important because customers associate the unique mottled
pattern with the quality and superior performance of [Respondent’s] rifle barrels.”76
Respondent “makes barrels for some of the largest rifle manufacturers in the

72 Jense testified in his declaration that he started purchasing rifle barrels from Advanced
Barrel Systems in 2006. Id. (¶ 3). However, on cross-examination, he testified that he only
became aware of, and began purchasing rifle barrels from, that company in or around 2008.
115 TTABVUE 4 (Jense Cross Test., pg. 5:2-19).
73 73 TTABVUE 3-4 (Jense Test. Decl., ¶ 3).
74 Id. at 4 (¶ 4).
75 Id. (¶ 5).
76 Id. at 7 (¶ 13).
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United States, including Remington, Savage, Weatherby, Nosler, and Kimber. Rifles
with [Respondent’s] carbon fiber rifle barrels are used by competitive shooters, the
military, and hunting and shooting enthusiasts around the world.”77 According to Mr.
Jense, “[Respondent’s] trade dress is our ‘signature’ and is more recognizable than
the name ‘Proof’ or ‘Proof Research’ on the barrel. When consumers see the unique
mottled pattern on the rifle barrel, they assume it to be [Respondent’s] barrel.”78
Several “images of rifle barrels displaying [Respondent’s] registered trade dress”
are shown below:79

77 Id.
78 Id. at 8 (¶ 16).
79 Id. at 4, 13-15 (¶ 6 and Exhibit A); 66 TTABVUE 11-12, 31 (Van Zwoll Test. Decl., ¶ 18 and
Exhibit B).
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Cancellation No. 92067618
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B. Petitioner and its Sister Company, CarbonSix
Petitioner (McGowen Precision Barrels, LLC) was formed in 2006 in Kalispell,
Montana.80 As noted, Petitioner manufactures steel rifle barrels.81 In addition, the
company manufactures and sells barrel blanks (or liners),82 which are further
processed by its customers by wrapping the blanks with a composite that is typically
“a combination of carbon fibers and epoxy resin.”83
Hunters Run Gun Club, LLC, which was formed in 2004 in Baton Rouge,
Louisiana, began doing business as CarbonSix in 2016 (hereinafter referred to as
CarbonSix), and is one of Petitioner’s barrel blank customers.84 CarbonSix purchases
barrel blanks exclusively from Petitioner; it then wraps the barrel blanks with a
continuous-filament carbon fiber and epoxy resin composite.85 In early 2017,
CarbonSix began selling its carbon fiber wound barrels for bolt action rifles to
sportsmen, including precision rifle shooters and the general public.86 Several images
of CarbonSix’s carbon composite rifle barrels, manufactured using Petitioner’s barrel
blanks, are shown below:87

80 37 TTABVUE 2 (Duplessis Test. Decl., ¶ 1-2); 56 TTABVUE 4-5 (Duplessis Disc Dep.).
81 37 TTABVUE 2 (Duplessis Test. Decl., ¶ 2).
82 The terms “barrel blanks” and “barrel liners” are used interchangeably throughout the
evidence.
83 37 TTABVUE 2 (Duplessis Test. Decl., ¶ 3).
84 56 TTABVUE 4 (Duplessis Disc Dep., pgs. 8:10-16, 12:2-5).
85 37 TTABVUE 3 (Duplessis Test. Decl., ¶ 4).
86 56 TTABVUE 8-9 (Duplessis Disc. Dep.).
87 37 TTABVUE 3-4, 24, 28-29 (¶¶ 7, 9, and Exhibits 5, 7).
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Cancellation No. 92067618
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C. Carbon Fiber Composites, Generally
As explained in a treatise by F.C. Campbell titled “Structural Composite
Materials” (2nd Ed. 2019), “[a] composite material can be defined as a combination of
two or more materials that results in better properties than those of the individual
components used alone” because “[i]n contrast to metallic alloys, each material
retains its separate chemical, physical, and mechanical properties.”88 It further
explains that there are two constituents of a composite: a matrix (or continuous)
phase, and a reinforcement phase.89 “The matrix (continuous phase) performs several
critical functions, including maintaining the fibers in the proper orientation and

88 89 TTABVUE 29, 31 (Petitioner’s Rebuttal NOR). Printed publications made of record by
notice of reliance and without witness testimony generally cannot be considered for proving
the truth of the matters discussed therein, but may have some relevance for what they show
on their face. See, e.g., Ricardo Media, 2019 USPQ2d 311355, at *2 (unaccompanied by
testimony, articles from printed publications may not be considered for the truth of the
matters asserted but are admissible for what they show on their face). Although Respondent
asserts in its brief that Petitioner relies on this publication “without citing any witness
testimony as to whether this article is relevant, whether the authors are credible, or whether
the conclusions set forth in this article are distinguishable from the present case,” 132
TTABVUE 23, Respondent does not dispute any of the statements therein, many of which
are corroborated by Respondent’s ’117 Patent. Additionally, Dr. Curliss, a co-inventor of
Respondent’s ’117 Patent, appears to have used several of the drawings (Figs. 1.4, 1.5, and
1.8) from Chapter 1 of this publication, “Introduction to Composite Materials,” 89 TTABVUE
34-35, 37, in his declaration in support of the ’117 Patent (corresponding to drawing figs. 1A,
1B, and 2 in the declaration), 36 TTABVUE 164-67. We find it appropriate to take judicial
notice of this standard reference work as it relates to carbon fiber composites generally and
to background information that is not in dispute. The Board may take judicial notice of facts
that are either ‘generally known’ or ‘accurately and readily [discernible] from sources whose
accuracy cannot reasonably be questioned.’” Fed. R. Evid. 201(b). See also Sprague Elec., Inc.
v. Elec. Utils. Co., 209 USPQ 88 (TTAB 1980) (“[I]t is recognized that judicial notice may be
taken of any standard reference….” In re Hartop, 311 F.2d 249, 135 USPQ 419, 420 n.6
(CCPA 1952) (taking judicial notice of two standard reference works); In re Wiseman, 596
F.2d 1019, 201 USPQ 658, 661 (CCPA 1979) (judicial notice that “[w]hen water is present in
a brake disc assembly a substantial decrease in braking torque occurs” may be taken because
it is “a widely known phenomenon”). We hasten to add that our decision is not dependent on
any of the statements cited from this reference.
89 89 TTABVUE 29, 31 (Petitioner’s Rebuttal NOR).
Cancellation No. 92067618
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spacing and protecting them from abrasion and the environment.”90 The
reinforcement phase “provides the strength and stiffness” and “[i]n most cases … is
harder, stronger, and stiffer than the matrix.”91 It is further explained that “[t]he type
and quantity of the reinforcement determine the final properties.”92
According to the author, “the highest strength and modulus93 are obtained with
continuous-fiber composites.” Unlike continuous-fiber composites, discontinuous-
fiber composites “are normally somewhat random in alignment, which dramatically
reduces their strength and modulus,” but they “are generally much less costly.”
Accordingly, “continuous-fiber composites are used where higher strength and
stiffness are required (but at a higher cost), and discontinuous-fiber composites are
used where cost is the main driver and strength and stiffness are less important.”94
Both parties in this case use continuous-fiber carbon composites.95

90 Id.
91 Id.
92 Id. at 32.
93 “Modulus” is “a constant or coefficient that expresses usually numerically the degree to
which a body or substance possesses a particular property (such as elasticity).” MERRIAM-
WEBSTER DICTIONARY, https://www.merriam-webster.com/dictionary/modulus (accessed,
April 12, 2021). Petitioner explains without challenge that the “elastic modulus is the
measure of the stiffness of a material, in particular, it is the relationship between the load
applied to a material and the amount of deformation. 130 TTABVUE 15 (Petitioner’s Brief).
The Board may take judicial notice of dictionary definitions from online sources when the
definitions themselves are derived from dictionaries that exist in printed form or have regular
fixed editions. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013); In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); see also Gerson Co. v. United States,
898 F.3d 1232, 1236 n.4 (Fed. Cir. 2018).
94 89 TTABVUE 29, 32.
95 66 TTABVUE 13 (Van Zwoll Test. Decl., ¶ 22); 37 TTABVUE 3 (Duplessis Test. Decl., ¶ 4).
However, as discussed infra, Respondent’s composites are composed of seven layers wrapped
at different constant wrap angles varying from ±25° to ±85° relative to the center axis of the
barrel with the outer layer wrapped at ±45°, 78 TTABVUE 12 (Lincoln Test. Decl., ¶ 27),
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In addition, the materials used to form composites “can be classified as either
isotropic or anisotropic”:
Isotropic materials have the same material properties in all directions,
and normal loads create only normal strains. By comparison, anisotropic
materials have different material properties in all directions at a point
in the body. There are no material planes of symmetry and normal loads
create both normal strains and shear strains. A material is isotropic if
the properties are independent of direction within the material.96

The anisotropic nature of carbon fiber composites appears to be one of the primary
benefits of using them. As explained by Dr. Jason Lincoln, a co-inventor, along with
Dr. Curliss, of Respondent’s ’117 Patent,97 “[t]he most important design feature of the
composite materials results from their anisotropy.”98 Because “fiber constituents
themselves are often anisotropic, such as carbon fibers;” such “materials can be
tailored to provide strength or stiffness in directions in which they are needed.”99
D. Carbon Composite Rifle Barrels
The general benefits provided by carbon fiber composites carry over to their use
in the manufacture of rifle barrels. Indeed, “[c]omposite materials offer unparalleled
design space ideal for firearms barrels,” and provide “tailorable fiber stiffness,
strength, and thermal conductivity” as well as “tailorable resin mechanical and

whereas Petitioner’s composites are composed of one layer that is wrapped at a constant
angle of ±45° relative to the center axis of the barrel (monolithically wrapped), 37 TTABVUE
2-3 (Duplessis Test. Decl., ¶¶ 4-5, 7). “The term ‘monolithic’ has been used in this litigation
to mean a single layer of carbon fiber wrapped at a constant angle.” 132 TTABVUE 20 n.21
(Respondent’s Brief).
96 89 TTABVUE 34 (Petitioner’s Rebuttal NOR).
97 47 TTABVUE 17-32 (Lincoln Test. Dep., Exhibit 2).
98 48 TTABVUE 3, 6-8, 203 (Lincoln Test. Dep., and Exhibit 1) (Confidential).
99 Id. at 203.
Cancellation No. 92067618
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thermal performance.”100 “Most importantly,” they provide space for “integrated and
optimized design of [a] steel/composite barrel system.”101
In addition to providing the capability of tailoring the performance characteristics
of a rifle barrel to one’s desired specifications, the use of carbon composite barrels in
firearms provides the substantial benefit of reducing their weight. As explained in
the ’117 Patent,
Users have long desired lighter weight gun systems that remain durable
and reliably accurate. It is known to substitute relatively strong but
lightweight materials—such as unreinforced and reinforced polymers,
continuous glass fiber or carbon fiber composites—for various portions
of the gun commonly fabricated from steel, aluminum, or other metals.
Attention has focused on gun barrels, which constitute a large
percentage of a gun’s weight. It is known, for example, to fabricate a gun
barrel having an inner liner, typically a steel alloy, surrounded by a
continuous carbon fiber reinforced polymer matrix composite outer
shell. With the appropriate choice of materials and properly engineered,
this combination lightens the gun while retaining good barrel strength
and stiffness.102

Petitioner’s and CarbonSix’s owner, Ronald Duplessis, explains (and Respondent’s
General Manager of Respondent’s Advanced Composites Division and co-inventor of
the ’117 Patent, Dr. Curliss, confirms) that
When the outer portion of a steel barrel is removed and replaced with a
carbon fiber/epoxy resin composite, one obtains a weight reduction in
the ratio of approximately 4.8:1 (steel : composite). In other words, every
4.8 lbs. of steel removed to create the barrel blank is replaced with only
1 lb. of composite. This is because steel has a density of approximately
7.7 g/cm3 and the composite has a density of approximately 1.6 g/cm3. …
The weight reduction may be increased by removing more of the steel
and replacing it with an equal volume of the composite. Regardless of

100 Id. at 204 (emphasis in original).
101 Id.
102 47 TTABVUE 26 (Lincoln Test. Dep., Exhibit 2, col. 1, lines 15-28).
Cancellation No. 92067618
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the wrap angle relative to the axis of the barrel, the carbon fiber/epoxy
resin composite provides a useful function, that is, replacing the heavier
steel with a rigid, carbon fiber-reinforced epoxy composite.103

A “simplified representation” of “a barrel blank [or liner], before and after a carbon
fiber composite is applied” is shown below:104

Another example of a barrel blank is shown in the following excerpt from Fig. 1A of
Respondent’s published U.S. patent application number 2017/0205172 A1:105

As to the carbon fibers used in the outer shell of the barrel blank, they
may be any types that provide the desired stiffness, strength and
thermal conductivity. … The carbon fiber may be applied in a wet
filament winding operation, wherein dry carbon fiber strands or tows
are combined with a resin in a “wet” dip pan process, then wound around
the inner liner and processed. Alternatively, the shell may be fabricated

103 37 TTABVUE 5-6 (Duplessis Test. Decl., ¶ 14); 36 TTABVUE 61-62 (Curliss Disc. Dep.).
104 37 TTABVUE 2 (Duplessis Test. Decl., ¶ 3, and Exhibit 1).
105 Id. at 3 (¶ 3, and Exhibit 2).
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from carbon fiber tow, unidirectional tape, or fabric that was previously
impregnated with resin in a separate process (“towpreg” or “prepreg”),
or a textile preform wherein the resin is infused into the braided
preform, then applied to the inner liner in a process that cures the
prepreg into a hard thermally stable matrix and simultaneously bonds
the outer shell to the barrel inner liner. … The composite barrel may
then be cured (where relevant), finished, and attached to a receiver and
stock. Such carbon fiber reinforced composites can provide a suitable
balance of thermal properties, mechanical properties, and processing
characteristics for many common firearms applications.106

Notwithstanding the ability to tailor the optimization of a carbon composite barrel
to one’s needs, various considerations need to be addressed in their processing. As the
explained in the ’117 Patent,
[C]omposite gun barrels, however, can pose problems not encountered
with traditional steel barrels. First, the composite must be constructed
in a manner and quantity around and along the liner to ensure that the
barrel does not burst upon firing, to achieve satisfactory strength and
stiffness in the principal directions (e.g., axially and torsionally), to
provide adequate environmental durability, and to dampen the shock
wave that propagates when the projectile is fired. …

Most of the foregoing issues can be addressed by additional windings,
e.g., more circumferential “hoop wraps” to improve burst strength and
more axially oriented helical windings to improve axial tensile and
flexural strength and stiffness. … However, adding more layers of
windings can lead to manufacturing and curing complications, higher
material expense, more weight, and a bulkier barrel profile than desired.
Fiber selection can also address these problems to some extent.
Generally lower density, stronger and stiffer fibers are preferred
provided they do not exhibit other undesirable characteristics, such as
poor resin adhesion.

Second, thermal management is a significant concern, inasmuch as the
more common continuous fiber composite (“CFC”) outer shells are
relatively poor conductors of the heat generated by hot gasses within the
liner. Additional layers of CFC windings exacerbate the heat removal
problem. During operation, the barrel will heat up. …

106 47 TTABVUE 26 (’117 Patent, Lincoln Test. Dep., Exhibit 2, col. 1, lines 29-60).
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A third problem relates to stresses within the barrel arising from
thermal expansion differences between the composite and the inner
liner of the composite barrel. As the inner steel liner heats during
operation, it expands both radially and longitudinally. Composite
structures in the prior art have a substantially lower average effective
coefficient of thermal expansion (CTE)107 in the longitudinal direction
than steel and so when heated, the CFC outer shell expands
substantially less than the steel liner. This may increase or decrease
thermal stresses in the barrel depending on the state of thermal residual
stress from processing. The point is that as the temperature changes in
the barrel, due to operation or the environment, the state of residual
stress in the barrel also changes.108

As one can imagine based on the foregoing, not all carbon composite barrels are
equal. The physical properties and resulting efficiency of a carbon composite barrel
depend on a number of factors, including the angle at which the wrap of the carbon
filament composite is applied to the barrel. For example, as explained in the ’117
Patent,
To increase the burst strength of the barrel, it is known to be
advantageous to wind tows circumferentially about [the] inner liner in
helical hoops, e.g. ±85° (plus or minus about 5° relative to the
longitudinal axis of the barrel). For axial strength and stiffness, to
minimize [the] barrel from flexing due to shockwaves arising from
discharge of a bullet for example, it is preferable to have more
longitudinal helical wraps, e.g. ±25° (again plus or minus about 5°
measured relative to the longitudinal axis of barrel). To promote
maximum axial stiffness with the fewest tows, it is preferable to locate
the longitudinal helical wraps at or near the outer region of outer shell.
The surface of outer shell can be made more durable to wear and tear,
however, if the outer region of outer shell is wrapped at a less acute
angle, e.g. 45°.
…

107 We take judicial notice that the “coefficient of thermal expansion,” or “coefficient of
expansion” is “the amount of expansion (or contraction) per unit length of a material resulting
from one degree in change of temperature”
(https://www.thefreedictionary.com/Coefficient+of+thermal+expansion) (Collins Dictionary
accessed April 12, 2021). See, e.g., In re Wiseman, 201 USPQ at 661.
108 47 TTABVUE 26 (Lincoln Test. Dep., Exhibit 2, col. 1, lines 66-67; col. 2, lines 1-58).
Cancellation No. 92067618
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The average effective longitudinal CTE . . . of the CFC outer shell will
vary depending not only on wrap angle, but on a variety of other factors
including matrix composition (e.g., whether resin versus ceramic or
metal, type of resin, etc.), presence of matrix additives such as thermally
conductive heat dissipation additives, fiber type, tow tension during
wrapping, regional wrap angle sequence, and regional wrap angle
thicknesses. All of these factors must be considered when attempting to
match the average effective longitudinal CTE of the CFC outer shell to
the CTE of the steel liner. 109

Fig. 5 of Respondent’s ’117 Patent provides the following chart showing the
relationship between stiffness and CTE as a function of wrap angle:110

According to Mr. Duplessis, this table—“which is actually two graphs combined
into one, namely (i) CTE … as a function of wrap angle; and (ii) stiffness as a function
of wrap angle”—further evidences the relationship between the wrap angle of the
carbon filament composite and various physical properties of the barrel.”111 To

109 Id. at 29 (col. 7, lines 48-62; col. 8, lines 56-65, fig. numbers omitted).
110 Id. at 23.
111 37 TTABVUE 6 (Duplessis Test. Decl., ¶ 16).
Cancellation No. 92067618
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illustrate, he provided two marked-up versions of the same chart, the first showing
the coefficient of thermal expansion (CTE) as a function of wrap angle, the second
showing stiffness as a function of wrap angle, both with additions of the CTE of 416
stainless steel and illustrations of example filament wrap angles of 25°, 45° and 85°
(as discussed in the Patent) and where they would fall on the chart:112

112 Id. at 6-7, 34-37 (¶¶ 16-17, Exhibits 9-10).
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E. Respondent’s Carbon Composite Barrels
Respondent’s predecessor, ABS, “was the first rifle barrel company to offer a
helically wound and ground carbon fiber rifle barrel.”113 Respondent’s barrels “feature
a slim rifled core of 416R stainless steel in a shell comprising layers,”114 90% of them
being seven layers,115 “of continuous carbon fiber wrap.”116 The carbon filament layers
are applied using “a wet bath filament winding process”117 “wherein dry carbon fiber
strands or tows are combined with a resin in a ‘wet’ dip pan process, then wound
around the inner lining and processed.”118 “The outer region [of the shell], which
constitutes approximately 13 percent of the shell thickness, is wound at a 45-degree
angle, plus or minus 5 degrees.”119
Respondent, during prosecution of the trademark application that matured into
the Registration, further explained this process and how the resulting barrels come
to display Respondent’s claimed trade dress:
The mottled pattern of irregularly-sized, rippled patches that appears
on [Respondent’s] gun barrels results from a manufacturing process that
irregularly exposes various levels of carbon fiber winding at or near the
surface of the barrel. … After curing, the rifle barrel surface is rough
and slightly oversized, but is otherwise fully functional. [Respondent]
chooses to finish its barrels by removing the outer carbon fiber surface.
[Respondent] does this by rotating the barrel in a lathe, and using
grinding wheels to grind down the barrel surface to the desired

113 68 TTABVUE 6 (Curliss Test. Decl., ¶ 12).
114 66 TTABVUE 13 (Van Zwoll Test. Decl., ¶ 22).
115 68 TTABVUE 27 (Curliss Test. Decl., ¶ 61).
116 66 TTABVUE 13 (Van Zwoll Test. Decl., ¶ 22).
117 36 TTABVUE 13 (Petitioner’s NOR, Exhibit C-1, Curliss Disc Dep.).
118 47 TTABVUE 26 (’117 Patent, Lincoln Test. Dep., Exhibit 2).
119 66 TTABVUE 13 (Van Zwoll Test. Decl., ¶ 22).
Cancellation No. 92067618
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diameter. [Respondent] grinds down the surface in stages, progressing
from coarse to fine diamond-coating grinding wheels. This process
exposes different portions of the helical winding patterns of the carbon
fiber tows. The barrels are then wiped with a solvent but not coated with
any finish.120

F. CarbonSix’s Carbon Composite Barrels
“CarbonSix applies the composite to the exterior of the barrel blank[s]” it
purchases from Petitioner “as a ‘prepreg’ consisting of continuous-filament, carbon
fiber tow, which has been pre-impregnated with uncured epoxy resin.”121 CarbonSix
applies the prepreg, an “off-the-shelf, commercially available product,” at “a volume
ratio of carbon fiber to resin of approximately 60:40, respectively, for optimum
strength,” as purportedly recommended by the prepreg supplier.122 According to Mr.
Duplessis, “[a]n advantage of using a prepreg is that the target ratio of carbon fiber
to resin is already present in the tow. The prepreg is applied by the well-known
process of filament winding.”123
CarbonSix then cures the wrapped barrel in an oven, “which causes the resin to

120 Registration file, March 25, 2013 Response to Office Action, TSDR 10. Statements made
in an application during prosecution of a trademark registration are considered hearsay
when offered by the registrant and may not be relied on as evidence on its behalf. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.04 (2020).
TBMP Section 704.04 n.2 states, however, that under Rule 801(d)(2) of the Federal Rules of
Evidence, such statements are not considered hearsay when they are offered as admissions
of a party opponent. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD
RULES, 81 Fed. Reg. 69950, 69963 (Oct. 7, 2016) (statements falling under Fed. R. Evid.
801(d) do not constitute hearsay). There is some dispute regarding the meaning of the term
“finish” as used in Respondent’s ’117 Patent, which we discuss infra, and to that extent, the
statements may be construed as an admission. Respondents’ above statements are also
corroborated by other testimony in this proceeding and are not disputed.
121 37 TTABVUE 3 (Duplessis Test. Decl., ¶ 5).
122 Id.
123 Id.
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first soften. Then, a chemical reaction causes the resin to cross-link and harden into
a rigid matrix surrounding the carbon fibers.”124 Because “the surface of the barrel is
irregular and may be pitted where entrained air has migrated to the surface” after
curing, “[t]he outer diameter of the composite portion of the barrel is greater than the
desired profile of the barrel.”125 The composite must therefore “be ground down to the
target ‘profile’ on a lathe, for example, using a belt sander, and then hand-sanded to
a smooth finish before it can be sold. The ‘profile’ is the final, outer dimension of the
barrel.”126
CarbonSix currently offers two types of carbon fiber wound barrels that are
monolithically wound: (1) one that is helically wrapped at an angle of ±45°127 (helical
wrap), which comprises 90% of its sales, and (2) one that is hoop wrapped at an angle
of ±88° (hoop wrap), which comprises 10% of its sales.128 “All of CarbonSix’s barrels
employ a straight taper from chamber to muzzle.”129
Mr. Duplessis explains that “[d]uring the steps of shaping the composite to the
desired profile, excess material is removed, thereby revealing the carbon fiber and
epoxy resin composite underneath in approximately a 60:40 ratio by volume,

124 Id. (¶ 6).
125 Id.
126 Id. at 3-4 (¶ 7).
127 Petitioner refers to this ±45° angle as a “uniform wrap,” meaning that “[t]he wind angle of
the fiber tow on the barrel liner may be kept constant (uniform), as the various layers of the
composite are built up. By way of example, a uniform ±45° wrap angle includes tow oriented
at +45° and -45° relative to the axis of the barrel, as the carriage guiding the tow moves
laterally back and forth while the tow is paid out.” 130 TTABVUE 13.
128 56 TTABVUE 12 (Duplessis Disc Dep., pgs. 37:16-38:4, 38:17-25, 39:5-18, 40:12-19).
129 37 TTABVUE 3-4 (Duplessis Test. Decl., ¶ 7).
Cancellation No. 92067618
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respectively.”130 “The appearance of the finished barrel,” he asserts, “is a direct result
of the method of manufacture, which in this case means wrapping the steel barrel
with a continuous-filament, carbon fiber prepreg tow at a ±45° wrap angle. The dark
areas along the finished barrel are the carbon fibers, which have been exposed, and
the lighter areas are the cured epoxy resin matrix, which has been exposed.”131
G. Appearance of the Barrels Compared
“[Respondent’s] carbon fiber barrels have seven different layers of carbon fiber
composite materials” that are “wound at wrap angles that vary from ±25° to ±85°,”
including its “outermost layer with a ±45° wrap angle….”132 CarbonSix’s helically
wound carbon fiber barrels, in contrast, have a single, monolithically wrapped outer
layer that is wrapped at a constant angle of ±45°.”133 Notwithstanding the differences
in the way the parties structurally-engineer their respective carbon fiber composite
materials around the barrel blank, the outer appearance of their barrels look quite
similar, as shown below:134

130 Id. at 4.
131 Id.
132 79 TTABVUE 12 (Lincoln Test. Decl., ¶ 27).
133 37 TTABVUE 5 (Duplessis Test. Decl., ¶ 13).
134 66 TTABVUE 11-12, 30-31 (Van Zwoll Test. Decl., ¶ 18 and Exhibit B).
Cancellation No. 92067618
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[Respondent’s Barrel] [CarbonSix’s Barrel]
V. Utilitarian Functionality
Most of the evidence and argument in this case is directed to the issue of
functionality. With the necessary technical background out of the way, we can now
undertake our main task of determining whether Petitioner has met its initial burden
of presenting evidence sufficient to make out a prima facie case that Registrant’s
trade dress design as depicted in the Registration comprises matter that, as a whole,
is functional, within the meaning of Section 2(e)(5) of the Trademark Act. If so, then
the burden shifts to Respondent to prove nonfunctionality. See Poly-America, L.P. v.
Illinois Tool Works Inc., 124 USPQ2d 1508, 1514 (TTAB 2017), aff’d, No. 3:18-cv-
00443 (N.D. Tex. Sept. 26, 2019), appeal dismissed, No. 19-11180 (5th Cir. Feb. 4,
2020); Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1429 (Fed.
Cir. 2002) (citation omitted); In re Howard Leight Indus. LLC, 80 USPQ2d 1507, 1509
n.7 (TTAB 2006).
There is no dispute that carbon fiber composite barrels provide various functional
benefits to rifles. What the parties dispute is whether the particular appearance of
Cancellation No. 92067618
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Respondent’s carbon fiber composite barrels is functional because it is a natural by-
product of the manufacturing process that creates the barrels, as Petitioner claims,
or whether it is simply the result of Respondent’s cosmetic efforts to create a trade
dress that consumers associate with Respondent.
A. Applicable Law
“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.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d
1001, 1007 (2001). Nor does it protect trade dress in a functional design merely
because a party has made an investment to encourage the public to associate a
particular functional feature with a single manufacturer or seller. Id. Accordingly,
Section 2(e)(5) of the Trademark Act prohibits registration of “a mark which …
comprises any matter that, as a whole, is functional.” Such matter is “incapable of
serving as a trademark,” Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1202
(TTAB 2018), civil action filed, No. 1:18-cv-00599 (W.D.N.Y. May 24, 2018), and
cannot be registered, even with a showing that consumers recognize the proposed
mark as a source identifier. See TrafFix, 58 USPQ2d at 1007.
A product design or product feature is considered functional in a utilitarian sense
if: (1) it is “essential to the use or purpose of the article,” or (2) it “affects the cost or
quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). In TrafFix, the Supreme Court
confirmed the “Inwood formulation” as the “traditional rule” of functionality.
58 USPQ2d at 1006.
Cancellation No. 92067618
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In making our determination of functionality under the Inwood test, the Board
may consider the categories of evidence set forth in In re Morton-Norwich Prods, Inc.,
671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). See Valu Eng’g, 61 USPQ2d at 1426;
In re Change Wind Corp., 123 USPQ2d 1453, 1456 (TTAB 2017) (in determining
functionality under the Supreme Court’s standards, “we are also guided by the
analysis first applied in” Morton-Norwich).
Morton-Norwich identifies the following inquiries or categories of evidence that
may be helpful 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.
The Morton-Norwich categories “are not exclusive, however, for functionality
‘depends upon the totality of the evidence.’” In re Heatcon, Inc., 116 USPQ2d 1366,
1370 (TTAB 2015) (quoting Valu Eng’g, 61 USPQ2d at 1424). Therefore, in a given
case, not all of four Morton-Norwich factors are necessarily relevant to a finding of
functionality, nor do all four factors have to weigh in favor of functionality to support
a finding of functionality. Change Wind, 123 USPQ2d at 1456; Heatcon, 116 USPQ2d
at 1370. Moreover, other facts presented in the case may bear on our findings.
Notwithstanding, the Supreme Court has made clear that if functionality is
established under Inwood, further inquiry into facts that might be revealed by a full
Cancellation No. 92067618
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analysis of all types of Morton-Norwich evidence will not change the result―in
particular, the availability of alternatives―and is unnecessary. TrafFix, 58 USPQ2d
at 1006 (“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.”);
see also Becton, Dickinson, 102 USPQ2d at 1378 (quoting Valu Eng’g, 61 USPQ2d at
1428) (“[I]f functionality is found based on other considerations, there is ‘no need to
consider the availability of alternative designs, because the feature cannot be given
trade dress protection merely because there are alternative designs available.’”).
As we review the facts in this case, we bear in mind that “product design almost
invariably serves purposes other than source identification.” TrafFix, 58 USPQ2d at
1005 (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d
1065, 1069 (2000)).
B. Existence of a Utility Patent Disclosing Utilitarian Advantages of the
Design
The first Morton-Norwich inquiry is whether a utility patent discloses the
utilitarian advantages of the design at issue. “A prior [utility] patent … has vital
significance in resolving the trade dress claim” and “is strong evidence that the
features therein claimed are functional.” TrafFix, 58 USPQ2d at 1005. Where a
patent claims 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.” Id.
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Patent applications are also probative evidence under this inquiry. Valu Eng’g,
61 USPQ2d at 1429. Moreover, we are not limited to the claims in a patent in
determining functionality; we may also consider the disclosures in the entire patent.
See In re Becton, Dickinson & Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed. Cir.
2012) (statements in a patent’s specification may be “equally strong evidence of
functionality”) (citations and internal quotations omitted); In re Howard Leight
Indus. LLC, 80 USPQ2d 1507, 1511 (TTAB 2006) (quoting J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:89.1 (4th ed. 2006) (“It is
proper to look at the disclosure (as distinguished from the claims) in a utility patent
as evidence of the functionality of a shape.”)); see also TrafFix, 58 USPQ2d at 1006
(“These statements made in the patent applications and in the course of procuring
the patents demonstrate the functionality of the design.”).
Petitioner argues that “[t]he method used by Defendant to create its trade dress
follows well-known methods for manufacturing carbon fiber-resin matrix composite
barrels, pre-dating Defendant’s entry into the market.”135 In support, Petitioner cites
the “Structural Composite Materials” book discussed above, which refers to “filament
winding” as “a mature process, having been in continuous use since the mid-1940s,”136
and two third-party patents.137
Petitioner relies most heavily on Respondent’s ’117 Patent to show that the trade

135 130 TTABVUE 17 (Petitioner’s Brief).
136 89 TTABVUE 47 (Petitioner’s Rebuttal NOR).
137 130 TTABVUE 17-18 (Petitioner’s Brief).
Cancellation No. 92067618
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dress shown in the Registration depicts matter that, as a whole, is functional. In
particular, Petitioner highlights the “best mode” for practicing the invention, which
was indicated during prosecution of the underlying application for patent
(Application No. US 2016/0320156, hereafter “the ’117 Application”) as required by
Section 112 of the Patent Act, 35 U.S.C. § 112.138 According to the ’117 Application,
the “best mode” for practicing the invention involves the use of a seven-layer laminate
that includes an outermost layer wrapped (or wound) at an angle of ±45° and a radial
thickness of 8% to 18%, based on the total radial thickness of the composite
component of the barrel.139
Drawing Fig. 7 in the ’117 Patent, shown below, depicts an embodiment of the
invention with a cross-sectional cutaway view of the barrel construction comprising
seven layers, including the barrel liner, with an outer layer wrapped at a 45° angle:140

As Petitioner notes, “the seven-layer laminate is not only the best mode of the

138 130 TTABVUE 20 (Petitioner’s Brief).
139 36 TTABVUE 69, 136-137 (Curliss Disc. Dep., and Exhibit 6, ¶¶ [0044]-[0045]).
140 Id. at 69-70, 131, 137 (¶¶ [0046]-[0047]).
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invention, it is the only embodiment of the invention actually disclosed in the [] ‘117
[Patent].”141 The following exchange between Petitioner’s counsel and Dr. Curliss
regarding the best mode of the invention is illuminating:142

Q: So getting into the finishing process again, let me direct your
attention to paragraph 48 of your patent application. So back to the
patent application.

A: Okay.

Q: So it reads, “Following complete cure using techniques known in the
art, [the] barrel … is then ground down to a desired diameter on a lathe,
for example, with diamond abrasives, then polished and finished as is
known to those skilled in the art.” My question to you is, if I were to
practice the best mode of your invention, that is, with the outer layer
being a 45-degree wrap angle, and then I was to follow the instructions
in paragraph 48 of your patent application, would that result in a design
that fell under [Respondent’s] trade dress?

A: It would.
…

Q. … You’d indicated earlier the best mode for practicing the invention
included an outer layer with 45 degrees; is that correct?

A. Yes. According to the patent application.

Q. According to what you said?

A. Yes.

Q. You said it was the best mode; correct?

A. Well, yes, but I believe you were asking me about the description of
the best mode in the application.

Q. Correct. Yes, I was.

141 130 TTABVUE 21 (Petitioner’s Brief).
142 36 TTABVUE 71-75 (Curliss Disc. Dep.).
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A. Yes. So according to this application, the best mode is described in
here having an outer layer plus-minus 45.

Q: And if I practiced the best mode after the invention -- after the patent
expires and I finished it the way you described in paragraph 48, I would
be infringing the trade dress; correct?
…

A: After the expiration of the patent, if you manufactured a barrel
according to the best mode of this and then applied a surface finish, you
would have a different-appearing barrel.

Q: I’m not applying a surface finish. I’m doing it just like is described in
the patent.

A: It says “And finished.”

Q: What do you mean by that?

A: It says, turning on a lathe, diamond abrasives, polishing and finished.
So finishing to me means any finish that’s applied, polyurethane,
Cerakote, spray paint, rattle paint it with Krylon. I mean, finishing is
finishing. Do you do any woodworking?

Q: I would love to talk about -- answer your questions, but --

A: So finishing, to me, is finishing through to the final article’s
appearance.

Q: But you had indicated earlier that if it was ground down and polished
it would manifest the trade dress; correct?

A: With no further coatings applied to the external surface of a ground
barrel, it will exhibit the trade dress.

Notably, Dr. Curliss attempts to conflate the “finish” of the barrel described in
paragraph 48 of the ’117 Application (discussing the seven-layer preferred
embodiment of the invention) with the application of a commercial surface finish or
coating. However, as discussed in preceding paragraph [0047] of the application, the
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seven layers of the embodiment “vary significantly in radial thickness, expressed as
a percentage of the radial distance from the surface of the steel inner liner to the
exterior surface of the finished outer shell.”143 When pressed, Dr. Curliss admitted,
as he must, that Petitioner’s trade dress derives from the process of practicing the
invention itself, which has no finish.144
Petitioner also highlights Respondent’s statement to the examining attorney
during prosecution of the underlying application for the Registration145 that after
grinding and polishing, “[t]he barrels are then wiped with a solvent but not coated
with any finish.”146 Petitioner argues that Respondent “is claiming trade dress
protection in a barrel that is manufactured as is ‘known to those skilled in the art,’
without any postproduction coating.” “Consequently,” Petitioner asserts, “anyone
who practiced the best mode of the invention after expiration of the patent, in the
same way that [Respondent] practices the invention, i.e. grinding and polishing the
barrels without taking affirmative steps to conceal the appearance, would infringe
[Respondent’s] trade dress.”147

143 36 TTABVUE 137 (Curliss Disc. Dep., Exhibit 6, ¶ [0047]) (emphasis added).
144 Respondent, in answer to Petitioner’s interrogatory requesting the identification of each
layer of Respondent’s rifle barrels it claimed embodied the registered mark, stated that “the
trade dress at issue in this case is defined by the outer finished surface of the barrel.” 35
TTABVUE 42 (Petitioner’s NOR, Exhibit B-1, emphasis added) (Confidential). However, as
discussed, no “finish” is applied to the barrel, and the term “finish” is instead used to
represent the appearance of the completed barrel after sanding and polishing.
145 130 TTABVUE 17 (Petitioner’s Brief).
146 Registration file, March 25, 2013 Response to Office Action, TSDR 10 (Emphasis added by
Petitioner).
147 131 TTABVUE 21 (Petitioner’s Brief) (Confidential).
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In practical terms, the ’117 Patent teaches that the wrap angles of the carbon
filament winding can be varied in accordance with any number of performance
characteristics. Burst strength is increased by “wind[ing] tows circumferentially
about [the] inner liner in helical hoops, e.g. ±85° (plus or minus about 5° relative to
the longitudinal axis of the barrel),” while for “axial strength and stiffness … it is
preferable to have more longitudinal helical wraps, e.g. ±25° (again plus or minus
about 5° measured relative to the longitudinal axis of barrel).”148 But “[t]he surface
of [the] outer shell can be made more durable to wear and tear, however, if the outer
region of outer shell is wrapped at a less acute angle, e.g. 45°.”149 A wrap angle of 45°
also enhances torsional stiffness of the barrel, as explained in the ’117 Patent and
corroborated by Dr. Curliss in his testimony:150

Q: There are some references made in your patent application as to
torsional strength, torsional stiffness. For example, paragraph 0005,
middle of the paragraph, “Torsional stiffness is a significant design
factor important to medium- and large-caliber barrels having rifling.” Is
there a particular wrap angle that has better -- provides better torsional
stiffness than other wrap angles?

A: Plus-minus 45 is optimized for torsional stiffness.

An article from Composites World (compositesworld.com), titled “Carbon
composite driveshaft: Tailorable performance”151 and relied on by Dr. Curliss in his

148 47 TTABVUE 29 (Lincoln Test. Dep., Exhibit 2, fig. numbers omitted).
149 Id.
150 36 TTABVUE 87 (Curliss Disc. Dep.).
151 89 TTABVUE 128-32 (Petitioner’s Rebuttal NOR).
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testimony declaration,152 corroborates the understanding that enhanced torsional
stiffness is provided by wrapping fiber composites at or near a 45° angle:
Ultimately, the design process produces fiber winding patterns, tube
diameter and wall thickness for a customer’s specific requirements and
performance factors. Although winding patterns and ply sequence used
for each customer or market application are strictly proprietary,
generally, the following parameters apply: Axial (0-35°) fibers tend to
increase critical speed; helical winding angles of 35-55° tend to increase
torsional stiffness; high fiber angles of 55-90° (hoop) tend to increase
buckling torque.153

It is a 45° angle that Respondent has chosen for the outer layer of its rifle barrels.
While the manufacturing process is not a zero-sum game, it is clear that as one
enhances the mechanical and thermal properties of a composite through the use of
certain wind angles, one may decrease or sacrifice the maximum benefits of other
mechanical and thermal properties that are provided using different wind angles.
Hence, the wind angles of the composite are varied in accordance with the overall
objective of the final composite.
The ’117 Patent confirms this understanding in its explanation of the objective of
the invention:
Producing an optimized composite barrel must balance competing
considerations. What is needed is a carbon fiber composite barrel that
employs reasonably priced materials, that provides superior axial and
torsional strength and stiffness while minimizing weight and radial
bulk, that minimizes interlaminar stress, and that does not deform
when heated due to mismatched axial CTEs [coefficients of thermal
expansion] between the liner and outer shell [of the composite].154

152 68 TTABVUE 17-18.
153 89 TTABVUE 130 (Petitioner’s Rebuttal NOR).
154 47 TTABVUE 27 (Lincoln Test. Dep., Exhibit 2, col. 3, lines 49-50).
Cancellation No. 92067618
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And the ’117 Patent achieves that objective by matching the coefficients of thermal
expansion of the composite with the inner liner:
[T]he inventors have discovered that it is possible to match the average
effective axial CTE of a CFC outer shell to the CTE an inner liner by
using a plurality of wrapping regions, while also providing excellent
axial, radial, and torsional strength and stiffness, yet keeping bulk and
weight at a minimum.155

Providing more detail about how that matching occurs, Dr. Curliss explained in
his declaration in support of the ’117 Application that
6. … [T]he thermal expansion characteristics are the result of the unique
combination of materials and the helical angle layers of varying
orientation and thickness, which we discovered resulted in the superior
performance of the projectile barrel described in the [’117] published
application.

---

15. … In a multi-layer composite structure, such as a helically wound
projectile barrel with a multiplicity of layers of different angles as
described in the [’117] application (see, e.g., paragraph [0047]), the
mechanical and thermal properties, such as coefficient of thermal
expansion (CTE), are a complex engineered result of the angles of the
layers, the thickness of the layers, and the properties of the layers. In
such a cross-ply composite structure, the measured anisotropic
macroscopic properties may be homogenized; in this case, the measured
macroscopic properties of a cross-ply composite material are known as
its average effective properties.156

Paragraph [0047] in the ’117 Application, referenced by Dr. Curliss in his
declaration in support of the application, identifies the specific wrap angles and
thickness of each layer of the invention’s seven-layer preferred embodiment in a chart
reproduced below:

155 Id. at 30 (col. 9, lines 6-11) (drawing figure numbers omitted).
156 36 TTABVUE 162-163, 169 (Curliss Disc. Dep., Exhibit 12).
Cancellation No. 92067618
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157
The above chart corresponds to claim 22 in the ’117 Patent, shown below, which
comprises the inventors’ “unique solution to the governing equations that yields a
composite overwrap with an axial CTE matching that of 416R stainless steel:”158
159

157 Id. at 137 (Exhibit 6).
158 36 TTABVUE 170 (Curliss Disc. Dep., Declaration in support of the ’117 Application,
Exhibit 12, ¶ 17).
159 47 TTABVUE 31 (Lincoln Test. Dep., Exhibit 2, col. 11, lines 39-60).
Cancellation No. 92067618
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As noted by Dr. Curliss in his declaration in support of the ’117 Application, “[t]he
effective properties of a composite are different than those of the constituents and are
a complex result that depends highly on factors such as volume fraction and
orientation of the constituents.”160 And in his deposition testimony, Dr. Curliss
clarified what is meant by the term “effective properties” and how that is determined
by taking into account all layers in a multi-layer laminate:161

Q. Could you explain what you mean by effective properties when there
are different orientations?

A. Sure. It’s a term used in laminated plate theory to describe the
average or macroscopic performance of a plate that has multiple-angled
layers…. So the average effective are the properties of the assembly of
multiple layers of multiple directions.

Q. So when you figure out these effective properties, do you take all the
layers into account?

A. Yeah, you would.

Q. So in the case of your patent application -- I’m just referring to
paragraphs 45 and 47 again. So when you refer to the effective
properties, you would take all of those seven layers into account; is that
correct?

A. All seven layers are used in the analysis, yes.

Q. And when you used the analysis to determine the effective coefficient
of thermal expansion, you took all these layers into affect [sic]?

A. Yes.
…

Q: Back to your preferred method, though, your best mode. That involves

160 36 TTABVUE 164 (Curliss Disc. Dep., Declaration in support of the ’117 Application,
Exhibit 12, ¶ 10).
161 36 TTABVUE 83-84.
Cancellation No. 92067618
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carbon fiber wrapped at the angles indicated?

A: Yes. The angles of the layers in this engineered approach and the
thickness of the layers are specified in paragraph 47.

Q: When you engineered your multilayer composite and you inputted
information into your software program, did you input all of the layers
that are mentioned in your best mode?

A: Yes, they’re all in there.

Based on the foregoing, it is clear that the angles identified in Claim 22 of the ’117
Patent for each layer of the seven-layer laminate disclosed in the patent, including
the helically wrapped ±45° angle of the outer layer of the composite, are taken into
account in determining the average effective properties of a barrel engineered in
accordance with the disclosures in the patent. Indeed, this “best mode” of practicing
the invention results from “match[ing] the average effective CTE of an inner liner by
using a plurality of wrapping regions, while also providing excellent axial, radial, and
torsional strength and stiffness, yet keeping bulk at a minimum.”162
Considering that the outer layer of the carbon composite barrel wrapped at a ±45°
angle, with a radial thickness between 8% and 18% of the composite, is part of the
calculation of the average effective properties of the composite; that the composite
barrel is “more durable to wear and tear” when wrapped at an angle of ±45°;163 and
that angle is “optimized for torsional stiffness,”164 it appears undeniable that this
feature of the outer layer of the barrel in Claim 22 is both “essential to the use or

162 47 TTABVUE 27, 30 (Lincoln Test. Dep., Exhibit 2, col. 3, lines 49-50; col. 9, lines 6-11).
163 Id. at 29 (Lincoln Test. Dep., Exhibit 2, fig. numbers omitted).
164 36 TTABVUE 87 (Curliss Disc. Dep.).
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purpose” and “affects the … quality” of the barrel design disclosed in the ’117 Patent.
TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., 214 USPQ at 4 n.10).
The evidence also establishes that Respondent is practicing the patent in the
manufacture of its carbon composite rifle barrels. Although Respondent appears to
have tried to shield most of that evidence as a confidential trade secret, it has
nevertheless, disclosed that fact at other points in presenting its case. For example,
Respondent in its redacted brief explains that the ’117 Patent “describes a seven-
layer composite laminate in which the outer layer is wrapped at a 45-degree angle,
which is the same method [Respondent] uses to make most of its carbon fiber rifle
barrels today.”165 In addition, some of Respondent’s promotional materials that were
identified in exhibits attached to the public portion of Dr. Curliss’s discovery
deposition tout the use of Respondent’s patented technology, for example:166

165 132 TTABVUE 16 (Respondent’s Brief).
166 36 TTABVUE 188, 196, 199 (Curliss Disc. Dep., Exhibits 2 and 5) (emphasis added).
Cancellation No. 92067618
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Lest there be any doubt that, of its four patents, Respondent was referring to the
patented technology of the ’117 Patent, Respondent confirmed in its confidential-
designated discovery responses that “[t]he construction of the barrels currently
produced, beginning in late 2013 to present … is nominally set forth in [the ’117
Application], paragraph [0047],” which corresponds to Claim 22 in the ’117 Patent.167

167 35 TTABVUE 49-52 (Petitioner’s NOR, Exhibit B-2, Respondent’s Supplemental Answers
to Petitioner’s First Set of Interrogatories Nos. 2 and 4).
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We cannot treat that discovery response as confidential. To the extent
Respondent’s practice of the technology of the ’117 Patent was previously a trade
secret, it was extinguished by Respondent’s disclosure in the ’117 Patent. As the
Federal Circuit has explained, “a [t]rade secret is secret. A patent is not. That which
is disclosed in a patent cannot be a trade secret.” Atl. Research Mktg. Sys., Inc. v.
Troy, 659 F.3d 1345, 100 USPQ2d 1553, 1560 (Fed. Cir. 2011); see also Rototron Corp.
v. Lake Shore Burial Vault Co., 712 F.2d 1214, 220 USPQ 169, 170 (7th Cir. 1983)
(“[T]he grant of a patent automatically constitutes full disclosure of the patented
process” and “[t]he knowledge passes into the public domain, and thereafter the
patentee’s only protection is that afforded under the patent law.”).
The patent evidence is entitled to even greater weight where, as here, Respondent,
owner of the ’117 Patent, asserts entitlement to a trademark registration for the same
configuration claimed in its patent:
[T]his evidence is particularly entitled to great weight if the patent was
applied for by the same person who now asserts trademark significance
in the same configuration. A kind of estoppel arises. That is, one cannot
argue that a [design] is functionally advantageous in order to obtain a
utility patent and later assert that the same [design] is non-functional
in order to obtain trademark protection. Functional patent protection
and trademark protection are mutually exclusive.

Howard Leight Indus., 80 USPQ2d at 1510 (quoting J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 7:89.1 (4th ed. 2006)).
Respondent disputes Petitioner’s contention that Respondent owns any utility
patent disclosing the utilitarian advantages of Respondent’s trade dress.168 With

168 132 TTABVUE 14-16 (Respondent’s Brief).
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regard to Respondent’s four patents, Dr. Curliss testified that
Nothing in any of these patents addresses how the barrel is finished, nor
is there any language in any of these patents that discloses any
utilitarian advantages of PRI’s trade dress—because there are none. To
be clear, there are no functional advantages to PRI’s trade dress. … PRI
has maintained its trade dress over the years for branding purposes, not
because of an actual or perceived functional advantage.169

Dr. Lincoln similarly testified that the designs presented in Respondent’s patents
“represent the effective properties of the bulk composite” and are therefore
distinguishable from the “cosmetic surface layer.”170 Thus, according to Respondent,
TrafFix “is inapplicable because,” apart from not disclosing Respondent’s trade dress,
“[t]he only claim in the ’117 patent that mentions a 45-degree wrap angle is claim 22”
and that claim “says nothing about how a barrel is finished” but instead “addresses
the interior engineering of the barrel.”171
Respondent’s attempt to disassociate the overall structural engineering of its
continuous-filament carbon composite barrels with the surface “finish” of those
barrels claimed as its trade dress is unconvincing. Although we are told that “[t]he
surface finish has nothing to do with the structural barrel,”172 the evidence in this
case, including the ’117 Patent and Respondent’s own testimony, amply demonstrates
that Respondent’s claimed trade dress is the natural outcome of a carbon fiber
composite having an outer layer wrapped at an angle of ±45°, and then ground to

169 68 TTABVUE 9 (Curliss Test. Decl., ¶ 22) (emphasis in original).
170 78 TTABVUE 5 (Lincoln Test. Decl., ¶ 6).
171 Id. at 17.
172 108 TTABVUE 80 (Curliss Cross Test.).
Cancellation No. 92067618
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whatever profile is desired. Cf. Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425
(TTAB 2007) (finding functional the purple color of applicant’s sandpaper that was a
natural by-product of the manufacturing process). This effect is illustrated through
several photographs provided by Petitioner showing the appearance of a barrel with
a ±45° helically wrapped carbon filament at different stages:173
Photo of an
uncured
carbon
composite barrel
wrapped at ±45°
angle relative to
center axis of
barrel

Photo of the
same barrel
after curing

173 37 TTABVUE 3-4, 19-24 (Duplessis Test. Decl., ¶¶ 5-7, and Exhibits 3-5).
Cancellation No. 92067618
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Photo of the
same barrel
after being
ground and
polished, with
no coating
applied

As Petitioner notes, “[t]he final manufacturing step is one of subtraction – the
excess composite is removed by grinding and polishing, to expose the structural
engineering of the composite. The outermost surface of the barrel bears the
appearance of the outer region of the composite, because they are one and the
same.”174 That being so, it would be wholly artificial to draw a distinction between
the outer layer of Respondent’s structural engineering and its appearance. In other
words, the appearance of the barrel is dictated by its function. See Becton, Dickinson,
102 USPQ2d at 1379 (Linn, J., dissenting) (“[D]e jure functionality is directed to the
appearance of the design (not the thing itself) and concerned whether the design is
‘made in the form it must be made if it is to accomplish its purpose’—in other words,
whether the appearance is dictated by function” (internal citations omitted);
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531, 32 USPQ2d 1120, 1122
(Fed. Cir. 1994) (“de jure functionality rests on ‘utility,’ which is determined in light

174 134 TTABVUE 4-5 (Petitioner’s Reply Brief).
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of ‘superiority of design,’ and rests upon the foundation [of] ... ‘effective
competition.’”).
Respondent also contends that Petitioner’s reliance on the ’117 Patent and the
statements of its co-inventors, Dr. Curliss and Dr. Lincoln, are taken out of context:
All of Petitioner’s arguments concerning the ‘117 patent relate to the
seven-layer laminate, and all of the excerpts Petitioner cites from the
‘117 patent relating to the advantages of the invention apply to the
seven-layer laminate. Petitioner attempts to take these statements out
of context to support an argument that there are functional advantages
to a “helical pattern” finish….

Petitioner has not provided any evidence from its own fact witnesses or
from any expert witness … “that the 45-degree outer layer—separate
and apart from the other six layers in the seven-layer laminate—
possesses any functional advantages. … PRI’s trade dress is completely
independent of the performance of the rifle barrel.”175

The evidence belies Respondent’s contentions. Dr. Curliss declared during
prosecution of the ’117 Application that “the thermal expansion characteristics [of the
barrels] are the result of the unique combination of materials and the helical angle
layers of varying orientation and thickness, which [the inventors] discovered resulted
in the superior performance of the projectile barrel described in the [’117] published
application.”176 And he testified in this proceeding that all seven layers of the claimed
laminate were included in the ’117 Patent’s optimization of the barrel’s mechanical
properties, including the ±45°-wrapped outer layer.177 Accordingly, there is no need
for Petitioner to establish “that the 45-degree outer layer—separate and apart from

175 132 TTABVUE 16-17 (Respondent’s Brief) (citations omitted).
176 36 TTABVUE 162-63 (Curliss Disc. Dep., Exhibit 12).
177 36 TTABVUE 83-84 (Curliss Disc. Dep.).
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the other six layers in the seven-layer laminate—possesses any functional
advantages.”
Respondent also argues that “[n]othing in the [’117] patent dictates the use of the
trade dress or … specifies a particular finish. Instead, the patent leaves open the
possibility of finishing the barrel in any number of ways.”178 According to Dr. Curliss,
“[i]t is possible to practice the invention disclosed in the ‘117 patent with an
essentially infinite number of composite material and design variations without
infringing [Respondent’s] trade dress.”179 Both Dr. Curliss and Dr. Lincoln identify a
number of post-manufacturing coatings, i.e., “[h]igh temperature paints, Cerakote,
pigmented coatings (thermoplastic, ceramic, etc.), thermoplastic sleeves, decals,
carbon fabric, glass fabric, aramid fabric, and textile composites” that could be used
to conceal the wrap angle of the composite.180
Respondent’s argument is a red herring, since Respondent applies no finish.181
Additionally, as Petitioner points out, “[i]t is well established … that a competitor is
under no obligation to ‘hide’, ‘cover’, or ‘conceal’ the appearance of a functional
feature.”182 Because Respondent’s use of a ±45° wrap angle for the outer layer of its
laminate is functional, it is unnecessary for competitors to explore designs to hide

178 Id. at 17-18.
179 68 TTABVUE 14 (Curliss Test. Decl., ¶ 35).
180 68 TTABVUE 6-7 (Curliss Test. Decl., ¶¶ 14-17); 78 TTABVUE 7 (Lincoln Test. Decl., ¶
12).
181 Respondent’s “[grinding] process exposes different portions of the helical winding patterns
of the carbon fiber tows. The barrels are then wiped with a solvent but not coated with any
finish.” Registration file, March 25, 2013 Response to Office Action, TSDR 10.
182 130 TTABVUE 32 (Petitioner’s Brief).
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that layer. The helically wrapped angle of the outermost layer, in conjunction with
the angles used for the other layers of the laminate by Respondent, assures the user
that the device will work. “If buyers are assured the product serves its purpose by
seeing the operative mechanism that in itself serves an important market need. It
would be at cross-purposes to those objectives, and something of a paradox, were we
to require the manufacturer to conceal the very item the user seeks.” TrafFix,
58 USPQ2d at 1006.
Furthermore, “[t]he fact that the patent[] may encompass a wide variety of
[winding angles and radial thickness design variations] means only that the patent[]
[is] broad in scope, not that [Respondent’s] particular [registered] design is not
functional. In re Dietrich, 91 USPQ2d 1622, 1633 (TTAB 2009). Because the
durability of carbon composite rifle barrels is an obvious consideration in their
manufacturing, and helically wrapping the outer layer of the composites at an angle
of 45° affects their quality, the resulting appearance of that outer layer that comprises
the mark shown in the Registration is functional. TrafFix, 58 USPQ2d at 1006;
Inwood Labs., 214 USPQ at 1, 4 n.10.
For all of these reasons, Respondent’s contention that TrafFix “is inapplicable
because there is no claim in the ’117 patent that discloses the [Respondent’s] trade
dress”183 is unavailing. Moreover, even if Respondent’s trade dress did not follow the
exact configuration covered by the ’117 Patent, “statements in a patent’s specification
illuminating the purpose served by a design may constitute equally strong evidence

183 132 TTABVUE 17 (Respondent’s Brief).
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of functionality.” Becton, Dickinson, 102 USPQ2d at 1377. See also TrafFix, 58
USPQ2d at 1006 (“statements made in the patent applications and in the course of
procuring the patents demonstrate the functionality of the design”); Grote Indus.,
126 USPQ2d at 1205 (“We consider the entirety of a patent - both claims and
disclosures - and have found functional applied-for marks depicting the preferred
embodiment described in a utility patent.”); Change Wind, 123 USPQ2d at 1453. The
disclosures in the ’117 Patent make clear that the surface of the outer shell of a carbon
fiber composite barrel can be made more durable to wear and tear if it is wrapped at
an angle of 45°, which provides optimum torsional stiffness.
Respondent also argues that its trade dress is not functional because its
“engineering processes are constrained by the requirement that [it] maintain the
trade dress ‘look’ on the outer surface” of the barrels.184 This argument is unavailing.
Respondent’s trade dress—the result of a carbon composite rifle barrel whose
outermost layer is wrapped at a ±45° wrap angle and an integral component of
Respondent’s unique solution to enhance the mechanical and thermal properties of
the barrel—is functional not because it is the only way to design a composite barrel,
or even the best way, but because it represents one of many solutions to a problem.
See In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 5 (Fed. Cir. 1985) (“That another
type of [design] would work equally as well does not negate that this [design] was
designed functionally to enhance or at least not detract from the rest of the system.”);
Specialized Seating, Inc. v. Greenwich Indus., LP, 616 F.3d 722, 96 USPQ2d 1580,

184 68 TTABVUE 9 (Curliss Test. Decl., ¶ 22).
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1583-84 (7th Cir. 2010) (finding the plaintiff’s folding chair trade dress “functional
not because it is the only way to do things, but because it represents one of many
solutions to a problem” and that although multiple functional alternatives could
be derived “along the axes of weight, strength, kind of material, ease of setup … [a]
novel or distinctive selection of attributes on these many dimensions can be protected
for a time by a utility patent or a design patent, but it cannot be protected forever as
one producer’s trade dress” (emphasis added)). All such designs would be functional,
in the sense that they represent different compromises with regard to burst strength,
axial strength and stiffness, durability, and so on, and therefore affect the quality of
the barrel.185
As the Seventh Circuit succinctly put it in a similar situation involving personal
care kits (small bags containing small portable toiletries), where the plaintiff argued
that its bag was in fact inferior to competing options (such as those comprised of metal
tins that are cheaper and less easily damaged, or in other shapes making the
accessibility of the bag’s contents easier),
The question is not, as [Respondent] would have it, whether the claimed
trade dress has “less utility” than alternatives. Focusing on that
question would be contrary to our precedent and sound interpretation of

185 The evidence and testimony in this case, including Respondent’s discovery responses noted
above, consistently show that Respondent, as Dr. Curliss testified, “tries to have a consistent
quality finish and to maintain the 45-degree wrap angle on the outer surface of its rifle
barrels.” 68 TTABVUE 10 (Curliss Test. Decl., ¶ 26). Notwithstanding Respondent’s actual
practice of following the best mode of the ’117 Patent in its endeavor to maintain a ±45° wrap
angle on the outer layer of its barrels for consistency, Respondent claims that “[t]he trade
dress is the surface finish appearance of a wound-and-ground barrel with outermost surface
at approximately ±25° and ±65°.” Id.; 132 TTABVUE 32 (Respondent’s Brief). Respondent
does not argue that its trade dress is not functional because it can be reproduced over a wider
range of wind angles. That issue is not before us since Respondent does in fact use a ±45° for
its outer layer.
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the Lanham Act, offering unlimited monopolies for useful design
features. It would also encourage peculiar arguments by trade-dress
plaintiffs criticizing their own products, as [Respondent] did in this case.
Under TrafFix, . . . the right question is whether the design feature
affects product quality or cost or is “merely ornamental.” McAirlaids,
Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 312 (4th Cir. 2014).

Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017). See
also In re Bose Corp., 227 USPQ at 6 (Fed. Cir. 1985) (Where evidence shows that a
particular product feature is functional, the fact that it “may be produced in other
forms or shapes does not and cannot detract from the functional character of the
configuration here involved.”) (quoting In re Honeywell, Inc., 532 F.2d 180, 189 USPQ
343, 344 (CCPA 1976)).
Respondent’s trade dress is the result of a manufacturing process that follows
Claim 22 in the ’117 Patent. As Petitioner aptly summarizes, “(1) the mechanical and
thermal properties [of the invention] are a result of the contribution of each layer of
the multi-layer composite; (ii) the composite is a ‘unique solution’ to the optimization
goals sought by the inventors; and (iii) claim 22, [sic] recites the features of that
unique solution, which includes an outermost region wrapped at an angle of ±45° —
the trade dress.”186 Hence, notwithstanding Respondent’s argument that it “only uses
an outermost layer with a ±45° wrap angle to maintain its registered trade dress,”187
Respondent is practicing the best mode of its patented invention, which yields the
trade dress at issue when ground down with no coating applied. Once again, the
appearance of the barrel is dictated by its function.

186 134 TTABVUE 10 (Petitioner’s Reply Brief).
187 132 TTABVUE 32 (Respondent’s Brief).
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C. CarbonSix’s Past References to the “Cosmetic” Appearance of its
Rifle Barrels
We briefly address Respondent’s additional argument that its trade dress is not
functional because, “[b]y Petitioner’s own admission, CarbonSix’s ‘helical pattern’ is
purely cosmetic, simply a style preference, and there are no performance differences
among its helical, hoop and woven patterns.”188 Pointing to the statements of several
of Petitioner’s witnesses and Petitioner’s promotional materials, Respondent argues
that “[w]hen CarbonSix first started selling carbon fiber rifle barrels in 2017, it
offered consumers a choice of three different carbon fiber patterns: a woven pattern,
a hoop pattern, and a helical pattern” and “represented to consumers that these three
patterns were ‘purely cosmetic,’ ‘strictly cosmetic,’ ‘simply a style preference,’ and
that the specific pattern ‘in no way effects [sic] the performance of [its] barrel.”189
This argument does not get Respondent very far because we are not here to
determine the functionality of Petitioner’s trade dress, and since Petitioner has
taken the opposite position in this proceeding, we are perhaps relieved from ever
deciding it. In any event, Petitioner’s previous opinions about the lack of utility
comprised by the appearance of its rifle barrels carry little, if any, weight in our
evaluation of whether Respondent’s trade dress is, in fact, functional as a whole.
Mr. Duplessis confirmed in his testimony that when CarbonSix initially began
offering both helically wrapped (±45°) and hoop wrapped (±85°) composite barrels, its

188 Id. at 13.
189 132 TTABVUE 11 (Respondent’s Brief, quoting from Duplessis Disc. Dep. and exhibits, 56
TTABVUE 22, 28, 56, 65-68; 57 TTABVUE 2-8, 20-23).
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“evaluations indicated that the barrels were comparable — both barrels achieved a
significant weight reduction relative to an all steel barrel and both barrels were found
to provide the physical strength and stiffness for accurate shooting” notwithstanding
the difference in appearance due to wrap angle.190 However, he also testified that
based on knowledge that he gathered during the course of this proceeding, “namely,
the ‘anisotropic’ nature of continuous-filament carbon fiber composites,” he now
understands that “the contribution of the carbon fiber/epoxy resin composite to the
various physical properties of the resulting barrel will vary depending upon the wrap
angle relative to the barrel.”191 Indeed, the evidence has borne out that
understanding.192
D. Conclusion
In making our determination in this case, we have kept in mind the Supreme
Court’s guidance 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 Prods. Co., 514
U.S. 159, 34 USPQ2d 1161, 1165 (1995). To afford registration to functional designs

190 37 TTABVUE 8-9 (Duplessis Test. Decl., ¶ 21).
191 Id.
192 As discussed earlier, Respondent admits that its patented winding method is the best
method to attain composite barrel properties (e.g., weight, strength, etc.) it believes are
optimal, and that method results in the claimed trade dress when the barrel is ground and
polished. See, e.g., 36 TTABVUE 71-75 (Curliss Disc. Dep.). That other manufacturers may
choose to emphasize other attributes that work equally well does not negate that the outer
layer of Applicant’s barrel “was designed functionally to enhance or at least not detract from
the rest of the system.” Specialized Seating, Inc., 96 USPQ2d at 1583-84.
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would inhibit legitimate competition by, in effect, granting a monopoly over a non-
reputational, or non-source-identifying, feature of a product. Id. at 1163-64. As
emphasized by the Federal Circuit in Morton-Norwich, “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.
After careful consideration of all of the evidence and arguments in this case, we
conclude that the compelling evidence provided by the ’117 Patent and Respondent’s
manufacturing process demonstrates that Respondent’s trade dress, the subject of
the Registration, comprises matter that, as a whole, is functional, within the meaning
of Trademark Act § 2(e)(5), when used in connection with “Component parts for rifles;
Field guns; Firearms; Gun barrels; Guns; Hunting rifles; Rifle barrels; Rifles; Rifles
and parts thereof; Sporting rifles,” in International Class 13. “In fact, we view the
disclosures in the [’117] Utility Patent as so strong as to be sufficient, by [themselves],
to sustain the functionality refusal without consideration of the other Morton-
Norwich categories of evidence.” In re OEP Enters., Inc., 2019 USPQ2d 309323, *10-
11 (TTAB 2019). See also Grote Indus., 126 USPQ2d at 1203. Simply put, the patent
evidence, combined with the evidence regarding Respondent’s manufacturing
process, is dispositive on the issue of functionality.193

193 Both Petitioner and Respondent presented evidence and argument related to each of the
Morton-Norwich categories of evidence that are useful in determining whether trade dress is
functional in the first place, including the existence of advertising materials touting the
design’s utilitarian advantages; the availability to competitors of functionally equivalent
designs; and facts indicating that the design results in a comparatively simple or cheap
method of manufacturing; and we have carefully reviewed and considered all of it. However,
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Respondent’s trade dress is functional because the outer layer of Respondent’s
carbon fiber composite rifle barrels, helically wrapped at an angle of ±45° and
comprising 8% to 18% of the radial thickness of the composite is “essential to the use
or purpose” and “affects the … quality” of the barrel design disclosed in the ’117
Patent. TrafFix, 58 USPQ2d at 1006.194
Decision: The Petition for Cancellation is granted on the ground of
functionality,195 and Registration No. 4390533 will be cancelled in due course.196

because we find that the trade dress is functional, “further inquiry into facts that might be
revealed by a full analysis of all types of Morton-Norwich evidence will not change the result
… and is unnecessary.” TrafFix, 58 USPQ2d at 1006.
194 “[I]n general, if a proposed mark is functional for any goods encompassed by the
identification, the proposed mark is considered functional and must be refused accordingly.”
Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1717 n.21 (TTAB 2010). All of
the goods identified in the Registration either include or encompass rifle barrels and the
trade dress is thus functional with respect to all the identified goods.
195 In light of our decision on functionality, we do not reach the remaining grounds alleged in
the petition. See Multisorb Techs., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013)
(“[T]he Board’s determination of registrability does not require, in every instance, decision
on every pleaded claim”).
196 As noted in footnote 3, the parties are allowed until 60 days after the issue date of this
decision to file amended redacted copies of all previously designated “confidential” evidence,
as well as amended confidential and redacted briefs corresponding to said amendments,
failing which the testimony in its entirety will become part of the public record.