Nordson Corp.

Trademark Trial and Appeal Board

Mar 13, 2003

No. 75578830 (T.T.A.B. Mar. 13, 2003)

Paper No. 15
TJQ
Mailed: 3/13/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nordson Corporation
________
Serial No. 75/578,830
_______
Raymond J. Slattery III for applicant.
Sean W. Dwyer, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Nordson Corporation
to register the representation shown below
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/578,830
2
for “metal nozzles for hot melt adhesive guns; metal
nozzles for modules; and metal nozzles for dispensers, all
used for dispensing hot melt adhesives.”1 The application
includes the following description: “The mark comprises
two (2) rings or grooves which are spaced from one another
and encircle a substantial portion of the metal nozzle for
dispensing hot melt adhesive. The matter shown in the
drawing in broken lines serves only to show positioning of
the mark and no claim is made to it.” The application also
includes the following statement: “The stippling in the
drawing is for shading purposes only and is not indicative
of color.”
The Trademark Examining Attorney has refused
registration on the Principal Register under Sections 1,2
and 45 of the Trademark Act on the ground that the mark
sought to be registered is de facto functional and, thus,
lacks inherent distinctiveness.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Before turning to the merits of the appeal, we are
compelled to state that the examination of the application
1 Application Serial No. 75/578,830, filed October 28, 1998,
alleging a bona fide intention to use the mark in commerce.
Ser No. 75/578,830
3
by a previous Examining Attorney, up to and including the
final refusal, is hardly a model of clarity. In saying
this, it also should be noted that the current Examining
Attorney was not involved in this case until the briefing
stage of appeal. It is apparent, however, as applicant has
pointed out in its reply brief, that both Examining
Attorneys struggled with getting a grasp on the specific
ground of refusal. This, in turn, complicated applicant’s
prosecution of the application.
In the final refusal, the Examining Attorney refused
registration based on functionality and lack of inherent
distinctiveness. The Examining Attorney stated the
following:
Here the mark is not de jure functional
because the applicant has shown
evidence via the information in its
patent of other available and
competitive designs. It is however, de
facto functional and does serve some
purpose as a physical means of
identifying the size of the nozzle.
The mark is either “two rings or
grooves” which means that they are cut
into the metal nozzle. As such they
are part of the goods, and since they
serve an identifying function, it does
serve a utilitarian function.
The Examining Attorney also refused registration because
“the mark is a configuration of the goods which is not
inherently distinctive.” According to the Examining
Ser No. 75/578,830
4
Attorney, “the mark would not be readily perceived as a
distinctive source indicator, but rather as a
representation of the goods themselves or a part thereof.”
In his brief, the Examining Attorney asserts that the
applicant’s mark “is clearly product design” and that
“applicant’s drawing clearly shows that the mark is the
product design of a nozzle consisting of two grooves or
indented rings,” and that the “groove design is a product
design of a nozzle.” (brief, p. 4). After pointing out
that applicant failed to submit any evidence of acquired
distinctiveness, the Examining Attorney then states that
even if such evidence had been submitted, it would have
been to no avail because “applicant’s product design is
functional and is therefore unregistrable,” citing to the
recent Supreme Court decision in TrafFix Devices, Inc. v.
Marketing Displays, Inc., 532 U.S. 23, 121 S. Ct. 1255
(2001).2 The Examining Attorney then goes on to discuss the
mark in terms of utilitarian or functional features, that
is, de jure functionality.
Applicant has a point when it states, in its reply
brief, that the present Examining Attorney, in his brief,
2 Given that the representation of applicant’s nozzle is in
dotted lines and that the description of the mark specifically
indicates that the drawing shows positioning of the mark on the
nozzles, we fail to see how the mark is a configuration of the
goods or a product design.
Ser No. 75/578,830
5
appears to be impermissibly raising a new ground of
refusal. As noted above, in the final refusal, the
Examining Attorney specifically stated that “the mark is
not de jure functional.” Thus, we will decide this case
based on what also is stated in the final refusal, that is,
that the mark sought to be registered is de facto
functional in that it “does serve some purpose as a
physical means of identifying the size of the nozzle” and,
therefore, the mark is not inherently distinctive. (Office
action dated December 10, 2001). Despite the Examining
Attorneys’ somewhat inconsistent treatment of applicant’s
mark, there was no prejudice to applicant. The basis for
refusal was made clear in the December 26, 2000 Office
action and in the December 10, 2001 final refusal; thus,
applicant has been aware of the ground for refusal during
the prosecution of the application.
In arguing against registration, the present Examining
Attorney touchces on de facto functionality and lack of
inherent distinctiveness, contending as follows (brief, p.
3):
Specifically, the examining attorney
argues that the grooves, used in
connection with color codes and color-
coded rings, serves to identify the
size of applicant’s nozzle. The
examining attorney agrees with the
applicant that the grooves in and of
Ser No. 75/578,830
6
themselves don’t specify the size of
the nozzle. The examining attorney
argues that the grooves function as
indentations where color codes and
color-coded rings are placed to make
certain colors remain on a nozzle in a
lasting manner, thus, assisting in the
identification of the size of a nozzle.
In other words, the grooves help to
identify the size of the nozzle in that
the grooves ensure the color codes
remain on a nozzle after a nozzle has
been repeatedly tightened and loosened
with a wrench.
It is clear from the record that the two rings or
grooves are used for the placement of color (either by
paint or by colored rings), and that the rings or grooves
are functional in that they indicate the orifice diameter
and the engagement dimension of the particular nozzle.
Moreover, placing the color bands in the rings or grooves
prevents the color from wearing off when a wrench is used
to loosen or tighten the nozzle.
Applicant contends that the rings or grooves
comprising its mark are not functional, pointing to the
existence of design patents. Applicant asserts that the
mark by itself is not functional, and that something else,
as for example, color, is needed for the rings or grooves
to be functional. Without color, applicant argues, nothing
about the size of the nozzle is conveyed and, therefore,
the rings or grooves are not in and of themselves
Ser No. 75/578,830
7
functional. Applicant states that a number of competitors
sell nozzles which are similar in appearance to applicant’s
nozzles and that applicant placed the two rings or grooves
on its nozzles so as to distinguish them from others in the
trade. According to applicant, the rings or grooves are
arbitrary, serving as an indicator that applicant is the
source or origin of the nozzles.
The record includes various utility and design patents
covering applicant’s goods, including utility Patent No.
6,082,627 for “dispensing nozzle, gun and filter and method
using visual identifiers for orifice size and engagement
dimension.” The “Field of Invention” states that the
present invention “generally relates to fluid dispensing
systems for dispensing liquid materials, such as hot melt
adhesive, and, more specifically, manners of visually
indicating different orifice sizes and engagement
dimensions associated with the nozzles of such systems.”
The “Abstract” of the patent indicates that the nozzle
“includes a nozzle body having a dispensing orifice with a
diameter and an engagement dimension.” It goes on to
indicate that “[a] first visually identifiable indicium is
provided on the body portion to indicate the orifice
diameter and a second visually identifiable indicium is
provided on the body portion independently from the first
Ser No. 75/578,830
8
indicium to indicate the engagement dimension of the
nozzle.” The patent states that “both the orifice diameter
and the engagement dimension are necessary factors to
consider when determining the appropriate nozzle for a
given application under specific material, pressure and
temperature conditions.” A significant problem in the
industry with respect to these types of nozzles relates to
replacement of the nozzles with like nozzles during
maintenance and repair. Using the wrong nozzles adversely
affects application of the viscous liquid material being
dispensed. Thus, according to the patent, it “would be
desirable to provide nozzles and other dispensing hardware
having improved visual identification capabilities.” In
referring to the type of nozzle shown in the drawing of the
involved application, the patent states that “the rings are
affixed such that they do not interfere with the engagement
of a wrench” and that this is accomplished by “sufficiently
recessing [the] rings.”
Design Patent No. 420,024 shows several different
representations of applicant’s nozzles, including a
representation (Fig.-3) that shows the same nozzle depicted
in the drawing of the involved application. The claim of
the patent reads as follows: “The ornamental design for a
nozzle for dispensing adhesives and sealants.”
Ser No. 75/578,830
9
The distinction between de facto and de jure
functionality has been explained by the Federal Circuit as
follows:
Our decisions distinguish de facto
functional features, which may be
entitled to trademark protection, from
de jure functional features, which are
not. “In essence, de facto functional
means that the design of a product has
a function, i.e., a bottle of any
design holds fluid.” In re R.M. Smith,
Inc., 734 F.2d 1482, 1484, 222 USPQ 1,
3 (Fed. Cir. 1984). De facto
functionality does not necessarily
defeat registrability. In re Morton-
Norwich, 671 F.2d 1332, 1337, 213 USPQ
9, 13 (CCPA 1982) (A design that is de
facto functional, i.e., “‘functional’
in the lay sense...may be legally
recognized as an indication of
source.”). De jure functionality means
that the product has a particular shape
“because it works better in this
shape.” Smith, 734 F.2d at 1484, 222
USPQ at 3.
The existence of a design patent may be some evidence
of non-functionality. However, “the fact that a device is
or was the subject of a design patent does not, without
more, bestow upon said device the aura of distinctiveness
or recognition as a trademark.” In re R.M. Smith, supra at
3. See also: In re American National Can Co., 41 USPQ2d
Ser No. 75/578,830
10
1841 (TTAB 1997); and In re Caterpillar Inc., 43 USPQ2d
1335 (TTAB 1997).3
There is a functional aspect to the two rings or
grooves that comprise applicant’s mark in that the rings or
grooves will be used for placement of color codes which, in
turn, indicate orifice diameter and engagement dimensions.
As the utility patent indicates, the rings or grooves “are
affixed such that they do not interfere with the engagement
of a wrench,” and that this is accomplished by
“sufficiently recessing rings” into the surface of the
nozzle. Thus, the rings or grooves are functional in that
they prevent the color coding, whether by paint or rings,
from wearing off when a wrench is used to tighten or loosen
the nozzle. In saying this, we recognize that the present
mark is one step removed from showing colored rings or
grooves, that is, there is no color claimed as part of the
mark. The real question in the present case is whether
purchasers would view the rings or grooves, in and of
themselves, as a trademark, that is, whether the mark is
inherently distinctive. We think not.
There is nothing of record which convinces us that
3 We would add that even if the mark were not de facto
functional, but rather only incidentally ornamental, such
ornamentation, in our view, would lack inherent distinctiveness.
Ser No. 75/578,830
11
purchasers would immediately perceive the two rings or
grooves as a trademark. Rather, they will be viewed as
simply the place where the color coding appears. Thus,
purchasers will consider the rings or grooves, not as a
trademark, but merely as a functional part of applicant’s
nozzles where color bands are placed so that users can
easily and quickly identify orifice diameter and engagement
dimension.
Accordingly, we find that the mark sought to be
registered is not inherently distinctive, but rather would
be registrable on the Principal Register only upon a
sufficient showing of acquired distinctiveness under
Section 2(f) of the Act.
Decision: The refusal to register is affirmed.