Pelonis USA Ltd.v.Del-Rain Corp.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 91097864 (T.T.A.B. Sep. 25, 2001)

9/25/01
Hearing: Paper No.
41
July 18, 2001
TW/RLS

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pelonis USA Ltd.
v.
Del-Rain Corporation
_____

Opposition No. 97,864
to application Serial No. 74/564,120
filed on August 22, 1994
_____

Alex R. Sluzas of Paul and Paul for Pelonis USA Ltd.

R. Joseph Trojan of Trojan Law Offices for Del-Rain
Corporation.
______

Before Simms, Chapman and Bottorff, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

Pelonis USA Ltd. (opposer) has opposed the
application of Del-Rain Corporation (applicant) to
register the design mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 97,864
2

for portable electric heaters.1
During the time for taking testimony, both parties
submitted testimony and opposer filed a notice of
reliance upon various printed publications and official
records (patents). The parties have filed briefs and an
oral hearing was held.
In the notice of opposition, opposer asserts that
applicant’s mark, which we shall refer to as a circles
and star design, is a functional configuration of
applicant’s portable electric heaters because applicant’s
design duplicates the size, spacing and orientation of
the four disk-shaped heating elements along with the
star-shaped holder of those elements in applicant’s
goods. Opposer alleges alternatively that if applicant’s
mark is not found to be functional, it is “primarily
merely descriptive” because it is a representation of
applicant’s goods showing four heating disks separated by
a star-shaped holder, which are prominent visual features
of applicant’s electric heaters. Further, opposer
alleges that applicant has not shown that its descriptive
design has acquired distinctiveness. In this connection,
Opposition No. 97,864
3
opposer alleges that since 1992 it has been importing and
selling portable electric heaters similar to applicant’s
and that it has a right to describe its goods by the use
of a circles and star design. Finally, opposer has
pleaded that, if applicant’s mark is found neither
functional nor merely descriptive, then applicant’s mark
so resembles opposer’s circles and star design used since
1993 in connection with the sale of opposer’s portable
electric heaters as to be likely to cause confusion, to
cause mistake or to deceive.
With respect to this last ground of opposition, when
it was pointed out to opposer’s counsel at the oral
hearing that opposer’s brief contained no argument with
respect to this issue, counsel withdrew likelihood of
confusion as a ground for challenging registration of
applicant’s mark.
Applicant has denied the essential allegations of
the notice of opposition and has asserted in its answer
that its mark is an abstract design, which is only
suggestive of its goods. Applicant has also asserted
various affirmative defenses, which we need not discuss
because they are unsupported by any evidence.
Trial Record

1 Application Serial No. 74/564,120, filed August 22, 1994,
Opposition No. 97,864
4
Mr. Sam Pelonis, opposer’s president, testified that
opposer makes electric space heaters similar to those
sold by applicant, and has done so since 1992. According
to Mr. Pelonis, applicant’s design mark represents the
appearance of the front of applicant’s disk-style space
heater with four circular heating elements and the holder
assembly.
Mr. Jim Ronfeld, one of applicant’s founders,
testified that the design here sought to be registered
was first used by applicant on cooling fans. Applicant
began using this design on its portable heaters in 1992.
A portion of the specimen of applicant’s mark filed with
its application is reproduced below. According to Mr.
Ronfeld, applicant’s design mark is of “similar
configuration” to the four disks and star-shaped holder
of its heaters.

based upon allegations of use since July 1990.
Opposition No. 97,864
5

At one time, applicant was a distributor of
opposer’s goods as well as a licensee of opposer
authorized to use the mark “Pelonis” for heaters.
However, the license arrangement did not cover use of the
circles and star design, which applicant here seeks to
register. Applicant sells its portable electric heaters
to hardware retailers.
Arguments of the Parties
According to opposer, the four circular or disk
elements and star-shaped holder of applicant’s heaters
are prominent visual features of applicant’s goods.
Opposer points to the testimony of applicant’s witness
where he admitted that the four disk elements and the
star-shaped holder are of “similar configuration” to the
design mark applicant seeks to register. It is opposer’s
position that the four circles and the star-like design
of applicant’s mark depict the appearance of a
characteristic of applicant’s product. Because
applicant’s mark allegedly “duplicates” the size, spacing
and orientation of the circular heating elements and the
holder, and because a picture of a product that is merely
a representation of the goods is merely descriptive,
Opposition No. 97,864
6
opposer argues that applicant’s design is merely
descriptive. Opposer contends that the design
immediately conveys the idea of a feature of applicant’s
goods to a reasonably informed customer who is familiar
with the appearance of applicant’s goods. Opposer also
argues that applicant has not submitted any evidence of
acquired distinctiveness in the application file and
that, in view of use by opposer of a similar design,
applicant has not shown the degree of exclusive use
needed to attain acquired distinctiveness of its asserted
mark.
Concerning the issue of functionality, opposer
argues that the patents of record show four disk heating
elements held in place by a star-shaped holder. Because
the utility patent discloses the utilitarian advantages
of this configuration of applicant’s goods, it is strong
evidence of the functionality of a configuration showing
applicant’s product, according to opposer. It is
opposer’s position that applicant’s mark depicts the
appearance of functional elements of applicant’s goods so
that it is, in effect, a functional configuration of
applicant’s goods.
Applicant, on the other hand argues that opposer has
not established its burden of showing that applicant’s
Opposition No. 97,864
7
mark is merely descriptive. Applicant points to the lack
of evidence, such as consumer surveys or expert
testimony, demonstrating the mere descriptiveness of its
design mark. It is applicant’s position that its design
does not immediately and directly inform the average
purchaser of applicant’s goods of any feature or
characteristic of applicant’s goods, but rather is merely
a fanciful and stylized depiction of an aspect of its
portable heaters.
With respect to the issue of functionality,
applicant argues that it is not seeking to register the
appearance or shape of its product but rather a fanciful
and artistic rendition of an aspect of the product.
Moreover, applicant contends that opposer has offered no
proof of the elements of functionality, such as that
applicant’s design is a superior one or is less expensive
to manufacture.
Discussion and Opinion
Upon careful consideration of this record and the
arguments of the parties, we agree with applicant that
opposer has failed to prove that applicant’s design is
unregistrable.
Opposition No. 97,864
8
First, there can be no question that opposer has
established its standing, having used a similar design
and having sold similar heaters.
However, we agree with applicant that its mark is
only a somewhat fanciful and stylized representation of
an aspect of its heaters rather than an accurate drawing
of an element or feature of its product. In this regard,
we observe that a visual representation which consists
merely of an illustration of the goods, or of an
important feature or characteristic of the goods, is
regarded as merely descriptive of those goods. See, for
example, In re Society for Private and Commercial Earth
Stations, 226 USPQ 436 (TTAB 1985)(representation of a
satellite dish held merely descriptive of applicant’s
services) and In re Underwater Connections, Inc., 221
USPQ 95 (TTAB 1983)(representation of a compressed air
tank held merely descriptive of applicant’s travel tour
services involving underwater diving). Unlike those
cases involving relatively accurate representations of
products, we believe that this case falls into the
category of cases where the design sought to be
registered is only a somewhat fanciful or stylized
depiction of a product or a product feature. See, for
example, In re LRC Products Ltd., 223 USPQ 1250 (TTAB
Opposition No. 97,864
9
1984)(stylized hand design found not merely an
illustration of the goods—-gloves—-and thus not merely
descriptive) and cases discussed therein. Of particular
note are In re Curtiss-Wright Corp., 183 USPQ 621 (TTAB
1974)(design of rotary engine held to be a fanciful
representation suggestive of the goods) and In re Laitram
Corp., 194 USPQ 206 (TTAB 1977)(design mark held not an
actual representation of applicant’s goods but rather a
fanciful design only suggestive of those goods).
Applicant’s mark is not an exact representation of a
feature of its goods visible through the grill but only
bears a resemblance to a feature thereof.
Finally, with respect to the issue of functionality,
we are in complete agreement with applicant that it is
not here seeking to register trade dress in the nature of
a product configuration or product design. In other
words, applicant is not here claiming that a feature or
shape of a feature of its product is a registrable
trademark. Rather, applicant is here seeking to register
a design, which is at best only reminiscent of a feature
of its goods. Applicant’s design mark, as a whole,
cannot be said to be functional.
Decision: The opposition is dismissed.

Opposition No. 97,864
10