Pelco Products, Inc.

Trademark Trial and Appeal Board

Sep 19, 2008

No. 78485818 (T.T.A.B. Sep. 19, 2008)

Mailed:
19 September 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pelco Products, Inc.
________

Serial No. 78485818
_______

Mary M. Lee, Esq. for Pelco Products, Inc.

Midge F. Butler, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Drost, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 18, 2004, Pelco Products, Inc.
(applicant) applied to register the design shown below on
the Principal Register for goods ultimately identified as
“brackets made of metal for attaching traffic signals to
mast arms” in Class 6.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 78485818
2

The application alleges a date of first use and first use
in commerce of June 1986. The application contains the
following paragraph description of the mark (punctuation in
original):
Color is not claimed as a feature of the mark. “The
mark consists of the three-dimensional configuration
of a two-part bracket (male and female members) for
attaching a traffic signal to a mast arm, presented in
the drawing in two views. The mark resides in the
contours of the opposing faces of the two members,
that is, the surfaces that are external and plainly
visible in the assembled, installed unit as shown.
The surfaces of the components that contact the
structures to which the bracket attaches, the bolt
holes, the band recesses, and the inner cylindrical
surfaces are not claimed as part of the mark."

The application sought registration on the Principal
Register under the provision of Section 2(f) of the
Trademark Act.
A picture of the goods is set out below:
Ser. No. 78485818
3

The examining attorney (Brief at 1) has refused
registration on the grounds that the “mark is functional
under Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§ 1052(e)(5)… and because there is a[n] insufficient
showing of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. §2(f).”
Applicant argues that its “mark is embodied in the
curvaceous contours of the surfaces of the bracket that are
exposed during the use of the assembled bracket.” Brief at
6. A photograph that emphasizes that section of the goods
follows.
Ser. No. 78485818
4

A photograph of applicant’s goods in use is also set
out below.

After the examining attorney made the refusals final,
this appeal followed. We will discuss the evidence and the
arguments as we address these issues in the case.
Functionality
The first question in this appeal is whether
applicant’s mark is functional under the Trademark Act.
Ser. No. 78485818
5
The Trademark Act, as amended, provides that an application
may be refused registration if it “comprises any matter
that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5).
The Supreme Court has addressed the issue of functionality
in several cases both before and after this statutory
change.
Discussing trademarks, we have said “‘[i]n general
terms, a product feature is functional,’ and cannot
serve as a trademark, ‘if it is essential to the use
or purpose of the article or if it affects the cost or
quality of the article.’” Qualitex Co. v. Jacobson
Products Co., 514 U.S. 159, 165 (1995) (quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456
U.S. 844, 850, n. 10 (1982)). Expanding upon the
meaning of this phrase, we have observed that a
functional feature is one the “exclusive use of
[which] would put competitors at a significant non-
reputation-related disadvantage.” 514 U.S., at 165.

TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S.
23, 58 USPQ2d 1001, 1006 (2001).
The Federal Circuit looks at four factors when it
considers the issue of functionality:
(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.

Ser. No. 78485818
6
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268,
61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16
(CCPA 1982).
We will analyze the issue of functionality using the
four factors set out in Valu Engineering.
(1) Existence of a Utility Patent
The existence of a utility patent for the feature for
which trademark protection is sought is often critical to a
determination that a feature is functional.
A prior patent, we conclude, has vital significance in
resolving the trade dress claim. A utility patent is
strong evidence that the features therein claimed are
functional. If trade dress protection is sought for
those features the strong evidence of functionality
based on the previous patent adds great weight to the
statutory presumption that features are deemed
functional until proved otherwise by the party seeking
trade dress protection. Where the expired patent
claimed the features in question, one who seeks to
establish trade dress protection must carry the heavy
burden of showing that the feature is not functional,
for instance by showing that it is merely an
ornamental, incidental, or arbitrary aspect of the
device.

TrafFix, 58 USPQ2d at 1005.

The examining attorney references applicant’s Patent
No. 4659046 and argues (Brief at unnumbered p. 8) that a
“review of the patent demonstrates that the shape of the
proposed mark has practical or functional value.” A
Ser. No. 78485818
7
drawing from that patent does not clearly show (see below)
the mark for which applicant now seeks registration.

The examining attorney also refers to “previously
attached printouts of other patents claimed by the
applicant for a traffic control device consisting of mast
arm brackets. Specifically note Patent No. 6,357,709,
handled by Mary Lee, the attorney of record in the present
application.” Brief at 8. General references to
“previously attached patents” without any specific
discussion of the feature that allegedly show that
applicant’s mark is functional are not very helpful.
Applicant’s declarant maintains that “[n]one of the
features comprising the Mark are contained in any of the
patents.” A. Parduhn dec. dated June 19, 2006 at 3. See
also S. Parduhn dec. dated October 31, 2005 at 4 (“[N]one
of these patents has claimed or even fully disclosed the
unique and attractive configuration of the exposed surfaces
found in the actual brackets. Since these contours were
Ser. No. 78485818
8
not relevant to the patented structures, there was no need
to depict them, even in the figures”). Even the ‘709
patent to which the examining attorney refers does not show
the allegedly relevant feature clearly. Reproductions of
three drawings from the ‘709 patent, in approximately the
size that they appear in the record, follow.

It would be sheer speculation on our part to conclude that
this patent claims the subject matter for which applicant
is now seeking trademark registration. Applicant argues
that a “comparison of the patent drawings to the trademark
drawing reveals that the features of Applicant’s mark are
not even shown in any detail in either of these patents.
This makes sense as the features being claimed in the
patent were unrelated to the features being claimed by
Applicant as a trademark.” Brief at 10. We cannot agree
with the examining attorney that the patents, whether they
are owned by applicant or a third party,1 demonstrate “that

1 The patents in the record identify the inventor as A. Philip
Parduhn and Alfred P. Parduhn. Applicant’s president is
identified as A. Philip Parduhn. In re Virshup, 42 USPQ2d 1403,
1405 (TTAB 1997) (“[T]he fact that the applicant is not the owner
of the utility patents submitted by the Examining Attorney is not
a proper basis for their exclusion as evidence in this appeal…
[T]he patents were submitted to show that the features of the
Ser. No. 78485818
9
the shape of the proposed mark has practical or functional
value.” Brief at 8.
(2) Advertising Materials Disclosing Utilitarian
Advantages

“If a seller advertises the utilitarian advantages of
a particular feature, this constitutes strong evidence of
functionality.” 1 McCarthy on Trademarks and Unfair
Competition § 7:74 (4th ed. 2008). The examining attorney
argues that the “advertising material previously provided
by the applicant clearly touts the utilitarian aspect of
the design. The advertising material indicates that the
bracket provides the most versatile and universal signal
mounting system available.” Brief at 9 (emphasis omitted).
It “touts that the clamp assembly, the upper and lower arms
and the vertical support tube allows for vertical,
horizontal and rotational adjustments that give complete
control to signal mounting and aiming not possible with
other types of rigid mounting.” Id. at 9-10 (emphasis
omitted). Applicant responds by arguing that the
advertising statements “refer to features not claimed as
part of Applicant’s mark” and that this case “is similar to

design configuration applicant seeks to register as a trademark
provide functional advantages”) and American Flange & Mfg Co. v.
Rieke Corp., 80 USPQ2d 1397, 1404 (TTAB 2006) (“Any expired
patent is potentially relevant if it covers the feature at issue,
regardless of the owner”).
Ser. No. 78485818
10
the case of In re Browning, [217 USPQ 933 (TTAB 1982], in
which the Board held that the design of the receiver
portion of a shotgun was not functional, noting that the
advertising touting sighting advantages did not relate to
that part of the design sought for registration.” Brief at
11. Applicant’s declarant said that: “Never, in any of
its patents or its advertisements, has Pelco ever referred
to any to the design features forming the Mark as having
functional advantages.” A. Parduhn dec. dated June 19,
2006 at 3. A sample of applicant’s advertising follows.

We agree with applicant when it argues that the
advertising does not address the features for which
applicant is seeking to registration. Undoubtedly, the
mounting bracket itself has utilitarian features that
applicant’s advertising touts. However, those features are
Ser. No. 78485818
11
not relevant to applicant’s design for which it is seeking
registration. We cannot find that applicant’s “advertising
touts the design for its desirable, superior utilitarian
qualities.” In re Caterpillar Inc., 43 USPQ2d 1335, 1340
(TTAB 1997).
(3) Alternative Designs

Regarding the third factor, the Federal Circuit has
explained that:
We did not in the past under the third factor require
that the opposing party establish that there was a
“competitive necessity” for the product feature.
Nothing in TrafFix suggests that consideration of
alternative designs is not properly part of the
overall mix, and we do not read the Court's
observations in TrafFix as rendering the availability
of alternative designs irrelevant. Rather, we
conclude that the Court merely noted that once a
product feature is found functional 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. But
that does not mean that the availability of
alternative designs cannot be a legitimate source of
evidence to determine whether a feature is functional
in the first place.

Valu Engineering, 61 USPQ2d at 1427 (footnote omitted).
The examining attorney “does not dispute the
applicant’s argument that there are alternative designs
available in the marketplace. However, there is nothing
that the applicant has submitted which indicates that the
features claimed are not utilitarian in nature.” Brief at
Ser. No. 78485818
12
11. Again, we cannot conclude that applicant’s design
makes applicant’s bracket work better. Therefore, we
conclude that the availability of other alternative designs
that appear to work “equally well” (Valu Engineering, 61
USPQ2d at 1427) does not support the examining attorney’s
argument that applicant’s mark is functional.
(4) Facts indicating that the design results in a
comparatively simple or cheap method of
manufacturing the product

There is no evidence that applicant’s design results
from a simple or cheaper method of manufacturing the
product and, thus this fact does not favor applicant or the
examining attorney. In re N.V. Organon, 79 USPQ2d 1639
(TTAB 2006) (“While evidence that a product feature makes
the product cheaper to manufacture may be probative in
showing functionality, evidence that it does not affect its
cost is not necessarily proof of non-functionality”).
Applicant has submitted evidence in an affidavit from its
vice president that discussed the manufacturing of
applicant’s brackets:
Today, modern computer technology would make the
formation of the molds to make the ASTRO-BRAC
practically as easy as a more conventional shaped
bracket. However, when this unique configuration
first was designed, it did make manufacturing more
complicated; the molds had to be hand made because the
surfaces were not simply planar or radiused, but
rather were free-formed.

Ser. No. 78485818
13
S. Parduhn dec. dated October 31, 2005 at 4-5.

Functionality Analysis
We must now consider whether applicant’s design as a
whole is functional. 15 U.S.C. § 1052(e)(5). The Supreme
Court has made it clear that a “functional feature is one
the exclusive use of which would put competitors at a
significant non-reputation-related disadvantage.” TrafFix,
58 USPQ2d at 1006 (internal quotation marks omitted). See
also Valu Engineering, 61 USPQ2d at 1425 (“De jure
functionality means that the product has a particular shape
because it works better in this shape”) (internal quotation
marks omitted).
Under the facts of this case, we cannot conclude that
the examining attorney has met her burden of establishing a
prima facie case of functionality. In re R.M. Smith, Inc.,
734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984). See also In
re Howard Leight Industries LLC, 80 USPQ2d 1507 (TTAB 2006
(“In ex parte proceedings before the Board, by contrast,
the Office has the initial burden of establishing a prima
facie case of functionality”). It is not clear what
utilitarian function the feature that is described by the
“curvaceous contours of the surfaces of the bracket”
performs. Therefore, the examining attorney’s refusal
under Section 2(e)(5) is reversed.
Ser. No. 78485818
14
Acquired Distinctiveness
We now turn to the issue of acquired distinctiveness.
The Supreme Court has explicitly held that product “design,
like color, is not inherently distinctive.” Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54
USPQ2d 1065, 1068 (2000). Furthermore, applicant, by
seeking registration under Section 2(f), has admitted that
its mark is not inherently distinctive. Yamaha Int’l Corp.
v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005
(Fed. Cir. 1988) (“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under
Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact”). Inasmuch as
applicant’s design is part of a product design for
applicant’s brackets, it is not registrable on the
Principal Register unless applicant shows that the design
has acquired distinctiveness.
Applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
“[L]ogically that standard becomes more difficult as the
Ser. No. 78485818
15
mark’s descriptiveness increases.” Yamaha Int’l, 6 USPQ2d
at 1008.
However, the statute is silent as to the weight of
evidence required for a showing under Section 2(f)
except for the suggestion that substantially exclusive
use for a period of five years immediately preceding
filing of an application may be considered prima facie
evidence.

As observed by our predecessor court, the exact kind
and amount of evidence necessarily depends on the
circumstances of the particular case, and Congress has
chosen to leave the exact degree of proof necessary to
qualify a mark for registration to the judgment of the
Patent Office and the courts. In general, the greater
the degree of descriptiveness the term has, the
heavier the burden to prove it has attained secondary
meaning.

Id. (quotation marks, brackets, and citations omitted).
Applicant argues that “[g]iven the unique design
features comprising Applicant’s mark, minimal actual
evidence is required.” Brief at 14. We cannot agree.
Applicant’s design is a feature of its product and, while
“there is no fixed rule for the amount of proof necessary
to demonstrate acquired distinctiveness, the burden is
heavier in this case because it involves product
configurations.” In re Ennco Display Systems Inc., 56
USPQ2d 1279, 1283-84 (TTAB 2000).
“In determining whether secondary meaning has been
acquired, the Board may examine copying, advertising
expenditures, sales success, length and exclusivity of use,
Ser. No. 78485818
16
unsolicited media coverage, and consumer studies (linking
the name to a source).” In re Steelbuilding.com, 415 F.3d
1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). To meet its
burden of showing that its mark has acquired
distinctiveness, applicant has submitted the following
evidence.
“Since at least 1985, all the ASTRO-BRAC mast arm
brackets sold by Pelco have embodied the design features
shown in the photographs attached.” S. Parduhn dec. dated
October 31, 2005 at 4.
Applicant’s sales of its brackets have averaged about
51,000 units between 2001 and 2005 and its gross revenues
over that period have averaged about $3.9 million dollars.
A. Parduhn dec. dated June 19, 2006 at 2. Applicant’s
advertising expenses for its products that include the
ASTRO-BRAC products varied during that period from between
$5,583 to $9,033. Id. Furthermore, the declarant
indicated that “about half [of] all mast arm brackets now
in service across the United States are AstroBrac brand
products.” Id.
Applicant has also submitted declarations from more
than 16 “independent distributors … installers, and … a
contractor.” See Corrected dec. of A. Parduhn dated August
25, 2006 and A. Parduhn dec. dated June 19, 2006
Ser. No. 78485818
17
(attachments). These declarants report that they “have
never seen another bracket with the free-formed curving
external surface found in the ASTRO-BRAC. The pawl-shaped
portions on the female component are especially unusual.”
See, e.g., Martz dec.
Applicant’s vice president maintains that its products
are sold almost exclusively to municipalities and other
government bodies responsible for roadway equipment and
maintenance and that “there are a relatively limited number
of potential customers for [its] mast arm brackets, as
compared to consumer products.” S. Parduhn dec. dated
October 31, 2005 at 6.
When we view all the evidence of record as a whole, we
do not find that it demonstrates that the design has
acquired distinctiveness. The mere fact that applicant has
sold products with the feature now claimed as a trademark
on it does not establish acquired distinctiveness. If that
was the case, virtually any non-functional feature on a
popular product would almost automatically have acquired
distinctiveness. This is not the test. See In re ic!
berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008)
(“After careful consideration of the evidence submitted in
this case, we are not persuaded that the earpiece design
sought to be registered has become distinctive of
Ser. No. 78485818
18
applicant's eyewear. The chief reason is the absence of
evidence of the advertising and/or promotion by applicant
of the earpiece design as a trademark”); In re Parkway
Machine Corp., 52 USPQ2d 1628 (TTAB 1999) (“Applicant has
not promoted the asserted mark herein as a trademark and
does not mention the asserted mark in its product catalogs.
While the product design in question may appear in
advertisements, there is nothing to indicate that
purchasers would view the features in question as more than
a part of the goods depicted”); Ennco Display, 56 USPQ2d at
1285 (In “a product configuration case, the critical
question is the effectiveness of the advertisements in
creating a consumer association between the product
configuration and the producer”); and In re Upper Deck Co.,
59 USPQ2d 1688, 1692 (TTAB 2001) (“Promotional and
advertising expenditures for the cards per se are similarly
unconvincing without concurrent evidence of promotion of
the hologram device as a trademark”). We add that this is
not a case where applicant has established that “look for”
advertising or promotion is not needed because there is an
industry practice of using flourishes on brackets by
manufacturers to distinguish their products. In re Black &
Decker Corp., 81 USPQ2d 1841, 1844 (TTAB 2006).
Ser. No. 78485818
19
Also, applicant’s sales figures alone are not enough
to show that its mark has acquired distinctiveness. See
Howard Leight, 80 USPQ2d at 1517 (“Moreover, although the
sales figures might demonstrate that applicant has been
successful in marketing its earplugs and that customers
find applicant's earplugs to be quality merchandise worth
purchasing, we cannot determine, from the sales figures,
that purchasers view the shape of the earplug as a mark”);
Upper Deck, 59 USPQ2d at 1692 (“While sales figures may be
indicative of the commercial success of applicant's
products, they do not demonstrate that the holograms used
thereon have acquired distinctiveness as an indication of
the source of the cards”); and In re Pingel Enterprise
Inc., 46 USPQ2d 1811, 1822 (TTAB 1998) (“[A]pplicant’s use
of such design for over 16 years and the general growth in
its annual sales figures and advertising expenditures
during that period simply do not suffice to establish that
the purchasing public for motorcycle fuel valves has come
to view applicant's petcock configuration as a trademark”).
Also, the mere fact that design appears in advertising
along with a display of the product does not translate into
acquired distinctiveness. Ennco Display Systems, 56 USPQ2d
at 1286 (“A number of other advertisements submitted by
applicant display the subject configurations attached to or
Ser. No. 78485818
20
encompassed within other designs. It is difficult to
imagine that consumers viewing these advertisements can
draw any distinction between the subject product
configurations and other miscellaneous designs, let alone
attribute trademark significance”).
Furthermore, the fact that applicant has claimed that
it has been selling its products with the design for
approximately twenty years does not by itself provide
significant evidence that its mark has acquired
distinctiveness. See Howard Leight, 80 USPQ2d at 1517 (15
years) and In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952
(TTAB 2001) (66 years). We have little evidence that would
permit us to conclude that customers have come to recognize
applicant’s design as a trademark for applicant’s goods.
Parkway Machine, 52 USPQ2d at 1633.
In addition, the fact that some distributors and
installers identify the feature as “especially unusual”
hardly shows that actual customers would view the feature
as a trademark. In re Soccer Sport Supply Co., 507 F.2d
1400, 184 USPQ 345, 348 (CCPA 1975) (“The affidavit of the
retailer, which states that he associates appellant’s
design only with appellant, should also be considered for
what might be inferred about consumer reaction. However,
we cannot agree with appellant that the affiants are
Ser. No. 78485818
21
equivalent to a large class of purchasers. Giving due
consideration to the four affidavits, they do not establish
an association of appellant's design with a single source
by other than a small number of purchasers”). As the
Federal Circuit has pointed out in a case involving the
question of acquired distinctiveness:
The affidavits of Petersen are devoid of facts from
which a conclusion of secondary meaning could be
drawn. No evidence came from consumers that they rely
on shape alone, rather than on the prominently
displayed word mark VISE-GRIP, to identify the source
of the product. More particularly, there was simply
no attempt by Petersen to show that consumers identify
the source of the tool by one or more of the features,
such as the curve of the raised portion surrounding
the teeth, which Petersen claims are arbitrary and
allegedly give the tool a unique appearance.

Petersen Mfg. Co., Inc. v. Central Purchasing, Inc., 740
F.2d 1541, 222 USPQ 562, 569 (Fed. Cir. 1984). See also In
re ic! berlin brillen GmbH, 85 USPQ2d at 2024 (The
“statements of ten retailers do not establish an
association of the earpiece design with applicant by other
than an extremely small number of the purchasing public”).
The statements by applicant’s distributors and
installers that a feature of its goods is “especially
unusual” or “unique and distinctive” does not establish
that purchasers will recognize the feature as a trademark.
Applicant has used its design for more than twenty
years but there is a lack of any evidence that the ultimate
Ser. No. 78485818
22
purchasers of its products rely on its claimed design as a
trademark. A trademark includes any “device … used by a
person … to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods.” 15
U.S.C. § 1127. When we consider each individual piece of
evidence and the evidence in its entirety, we conclude
that, while there is evidence that applicant has used the
mark, there is simply insufficient evidence that consumers
view applicant’s design as an indicator of the source of
applicant’s goods or that applicant has even encouraged
consumers to consider the design as its trademark. The
fact that applicant has sold and advertised its products
with the design does not indicate that any consumers
distinguish its goods based on the design. Therefore,
applicant has not met its burden of demonstrating that its
mark has acquired distinctiveness.

Decision: The examining attorney’s refusal to
register applicant’s design on the Principal Register on
the basis that it is functional is reversed. The examining
attorney’s refusal to register applicant’s mark on the
ground that it is non-distinctive and that it has not
acquired distinctiveness is affirmed.