Rawlings Sporting Goods Company, Inc.v.Peter C. Birmingham

Trademark Trial and Appeal Board

Jul 26, 2011

No. 92051353 (T.T.A.B. Jul. 26, 2011)

THIS OPINION IS NOT A PRECEDENT
OF THE TTAB

BUTLER

Mailed: July 26, 2011

Cancellation No. 92051353

RAWLINGS SPORTING GOODS
COMPANY, INC.

v.

PETER C. BIRMINGHAM

Before Grendel, Holtzman and Wellington, Administrative Trademark
Judges.

By the Board:
Petitioner seeks to cancel respondent's registration for the
following mark

for a "baseball and softball training apparatus, namely a glove
used for catching practice."1 The following description of the
mark is of record:

1 Registration No. 3019645, issued on November 29, 2005, claiming a
date of first use anywhere and a date of first use in commerce of
1983; and claiming acquired distinctiveness pursuant to Trademark Act
§ 2(f).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92051353
2
The mark consists of the design/configuration of the
training apparatus/glove which is triangular in shape
with curve edges. Broken lines are not a part of the
mark. They are just shown to see a 3 dimensional view
of the glove/apparatus.

Applicant, thus, had made it clear that his mark consists only of
the triangular configuration of the glove.2
As grounds for cancellation, petitioner alleges that
respondent's mark, consisting of a glove design that is
triangular with curved edges, comprises matter that, as a whole,
is functional within the meaning of Trademark Act § 2(e)(5).
Petitioner alleges that the mark was the subject of U.S. Patent
No. 4802669 (now expired) for a "Baseball Training Device."
In his answer, respondent admits that the registered mark
was the subject of the expired patent but otherwise denies the
essential allegations of the complaint.
Petitioner's main testimony period was set to open on June
24, 2011.3 This case now comes up on petitioner's motion for
summary judgment, filed June 22, 2010. Respondent filed a
response thereto.
Background
As explained in the patent file record (introduced by
petitioner) and the parties' statements of undisputed facts, the

2 The lined portions within the triangular design are merely to show
location of thumb and finger loops on the goods. To hold the mitt
properly, the user inserts the thumb and fingers into the loops.
These loops, and the lined shadow of the triangular shape showing
dimension, are not features of the registered mark.

Cancellation No. 92051353
3
subject matter of the expired patent is a baseball (or softball)
training device worn upon a fielder's glove hand to aid the
wearer in developing proper fielding skills. The invention is
intended to teach a fielder better skills, namely, to receive a
ball in the heel of the glove hand and use two hands when
fielding or catching the ball.
The following drawings are set out in the patent:

The abstract of the patent explains the invention as
follows:
A baseball training device that is worn upon a
fielder's glove hand for aiding the wearer in
developing proper fielding skills. The device has a
thick triangular shaped pad that encompasses the entire
hand. Webbing on the back surface of the pad encircles
the thumb and first three fingers of the glove hand to
position the apex of the pad over the wearer's wrist
and the base leg of the pad extended beyond the

3 Petitioner served pretrial disclosures on the due date of June 8,
2010.
Cancellation No. 92051353
4
wearer's fingertips. The pad is comprised of a
resilient material that will deform upon being struck
by a ball over the heel region of the hand to provide
the ball sufficient residency time on the pad to enable
the wearer to bring his or her other hand over the ball
and thus complete the catch. Balls striking the pad in
other areas are provided little or no residency time
and are thus more difficult to field.

(Emphasis added.)

What is claimed is:

1. A baseball training device that is worn over the glove
hand of a player to aid the wearer in developing good
fielding skills that includes a triangular shaped uniformly
resilient pad having planar front and back surfaces, said
pad having hand attachment means on the back surface thereof
for encircling the thumb and first three fingers of the
glove hand which will align the middle finger along an axis
of the triangle with the apex of the pad being positioned
over the wrist, the edge of the pad extending outwardly
beyond the tips of the fingers and side edges of the user's
hand, said pad having a resilience such that when worn on
the hand of a player a ball striking said front surface
backed by a wearer's hand heel portion will deform to a
greater extent than the remaining portions of the pad and
will have a longer surface contact time on said pad than
balls striking the remaining portion of said pad whereby a
wearer is afforded greater time in which to place his other
hand over a ball when making a catch.

2. The training device of claim 1 wherein said attachment
means further includes a pair of thumb loops diagonally
disposed to each side of the finger loops whereby the device
can be worn on either hand.

3. The training device of claim 2 wherein attachment
members means is formed of an elastic material for biasing
the thumb and fingers against the back of the pad.

4. The training device of claim 1 wherein the pad is formed
of a high density foam material having closed cells whereby
the pad is impervious to dirt and water.

(Column 4, lines 13-42. Emphasis added.)
The parties' arguments
Cancellation No. 92051353
5
In support of its motion, petitioner argues that applicant's
mark is the functional shape of the goods and, pursuant to
Trademark Act § 2(e)(5), is not entitled to trademark protection.
Petitioner addresses the Morton-Norwich factors in advocacy of
its position. In re Morton-Norwich Products, Inc., 671 F.2d
1332, 213 USPQ 9 (CCPA 1982). Those factors are:
1) the existence of a utility patent that discloses the
utilitarian advantages of the design sought to be
registered;

2) advertising by the applicant that touts the
utilitarian advantages of the design;

3) facts pertaining to the availability of alternative
designs; and

4) facts pertaining to whether the design results from
a comparatively simple or inexpensive method of
manufacture.

Id. at 15-16.
Specifically, petitioner points out that respondent obtained
a utility patent (now expired) that disclosed and claimed the
functional advantage of the triangular shape of the training
glove; that respondent (as the patent applicant) distinguished
the shape of his invention over the prior art referenced by the
Patent Examiner; and that, before the patent expired, respondent
filed a trademark application on the same product shape.
Petitioner notes that, as reflected in the registration file
record, the Trademark Examining Attorney refused to register the
mark under Trademark Act § 2(e)(5) on the ground that the
configuration was functional for the identified goods; that the
Cancellation No. 92051353
6
refusal was subsequently withdrawn; but that respondent never
informed the Trademark Examining Attorney of the existence of the
utility patent.4 Petitioner argues, as supported by the
declaration of its category manager, Ryan Farrar, who states that
he is involved in product development and marketing, that the
shape of the training glove has utilitarian advantages because it
covers the fingers, thumb, and heel of the hand in proper
position (i.e., alignment), mimics the outer profile of an actual
glove, and protects all portions of the hand. Mr. Farrar states
further that altering the shape could detract from the
functionality of the product and be more expensive to make. More
particularly, Mr. Farrar explains that the shape of the pad is
important because the goal is to stop only those balls in the air
that would be stopped by a player's glove; and that, if the shape
were a rectangle or square, portions of the pad would extend
beyond the normal circumference of a glove and could stop or
block a ball in the air that would not normally be stopped by the
player wearing a glove. Mr. Farrar states that the shape has
cost advantages because it is less expensive to make and can be
made without excess material or complicated construction; that
the registered shape is needed for competition because it is a
relatively low cost training aid; and that other products

4 In response to the Trademark Examining Attorney's refusal to register
because the mark is the nondistinctive configuration of the goods,
respondent (as applicant) amended the application to seek registration
under Trademark Act § 2(f). Such amendment, with a declaration and
accompanying evidence, was eventually accepted.
Cancellation No. 92051353
7
available in the industry are functionally different and more
expensive to make because they are made of more expensive
material (e.g., leather or simulated leather), have a full pocket
for the hand, and require joining of several pieces. Mr. Farrar
provides examples from the Internet indicating that petitioner's
and respondent's products cost between $10-20 while alternative
training products cost between $20-60.5
Petitioner introduces a copy of respondent's now-expired
patent; the file record for the patent; the declaration of Mr.
Farrar and accompanying exhibits of Internet printouts featuring
the parties' products and third-party products; and a copy of the
registration file.
In response, respondent argues that he specifically
disclaimed any particular shape of his product, as reflected in
the patent at column 4, lines 4-11, which state as follows:
While this invention has been described in detail with
respect to a single preferred embodiment, it should be
recognized that the invention is not limited to that
embodiment, and that many modifications and variations
….

As a consequence, respondent contends that there is no basis to
determine that the shape of the product is essential to its
function.6 Respondent points out that he has sold his product in

5 At least one of these third-party products appears to be an item to
be inserted into the palm area of a player's glove as opposed to a
distinctly separate hand-held pad or training glove.

6 The Board notes in passing that a patent applicant is required to set
forth the best mode (i.e., the preferred embodiment) in the patent
Cancellation No. 92051353
8
the triangular configuration for 27 years but has never made any
claims in advertising relating to the superiority of the shape.
Respondent contends that the shape of the product does not mimic
a baseball glove but, instead, resembles a ping pong paddle or
hand-held fan. Respondent argues that the shape of the product
does not impact the cost. Specifically, respondent explains that
the product is manufactured by being cut from square blocks of
high density foam by a machine resembling a drill press with a
cookie-cutter attachment that cuts the foam in the desired shape;
that any shape could be cut in the same manner from the foam for
the same price; and there is no ability to use the excess foam
scraps. Respondent argues that the shape of the product may take
any form without compromising the ultimate purpose of securing a
baseball in the critical heel area of the hand, or "sweet spot,"
which provides sufficient residency time for the player to
successfully entrap the ball with the free hand. Respondent
indicates that players historically trained with flat, wooden
boards (which he surmises may have been rectangular or square in
shape) placed inside the glove and covering the player's palm.
Respondent explains that it is the foam material, not the
triangular shape, which provides the necessary resilience for the
success of the product in meeting its purpose.7 Respondent

application, if known at the time. 35 U.S.C. § 112. See also MPEP §
2165 (8th ed. rev. July 2010).

7 To be clear, respondent's arguments concerning the material from
which the gloves are made are directed only to the fourth Morton-
Cancellation No. 92051353
9
contends that the triangular shape is purely ornamental and
aesthetic; that his design mark has secondary meaning in the
market place;8 and that petitioner could choose a different
configuration, such as a fan shape, rather than making an exact
duplicate of his product.9
Summary judgment
In a motion for summary judgment, the moving party has the
burden of establishing that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(a). A genuine dispute with respect
to a material fact exists if sufficient evidence is presented
such that a reasonable fact finder could decide the question in
favor of the non-moving party. See Opryland USA Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992). Thus, all doubts as to whether any particular

Norwich factor, whether the design (emphasis added) results in
relatively simple or inexpensive method of manufacture. The material
itself from which the product is made is not considered in determining
whether respondent's mark is a functional configuration of the goods.
Thus, the material used for the product and for alternative products,
whether foam or leather or something else, cannot create a genuine
dispute of material fact with respect to the question of the
functionality of the mark.

8 A mark which is determined to comprise any matter that, as a whole is
functional, within the meaning of Trademark Act § 2(e)(5), is not
registrable under a showing of acquired distinctiveness. See also
Trademark Act § 2(f); and TMEP § 1202.02(a)(i) (7th ed. Oct. 2010).
However, a mark which is determined to be the nondistinctive
configuration of the goods may be registrable with a showing of
acquired distinctiveness. See TMEP § 1202.02(b)(i) (7th ed. Oct.
2010).

9 The Board notes in passing that respondent referred to the shape of
its product as "a hand-held fan."

Cancellation No. 92051353
10
factual issues are genuinely in dispute must be resolved in the
light most favorable to the non-moving party. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).
1. Standing
Petitioner, as a competitor now offering a baseball training
product using the same configuration as the one that is the
subject matter of respondent's registered trademark, has a real
interest in the outcome of this proceeding. See Ritchie v.
Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999). Accordingly, there is no dispute of material fact as to
petitioner's standing, and petitioner has standing in this case.
2. Functionality
Section 2(e)(5) of the Trademark Act precludes registration
of “any matter that, as a whole, is functional.” The Supreme
Court has clarified that a product feature is functional “if it
is essential to the use or purpose of the article or if it
affects the cost or quality of the article.” Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214
USPQ 1, 4 n.10 (1982). This “Inwood formulation” has been
referred to as the “traditional rule” of functionality. See
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58
USPQ2d 1001, 1006 (2001). Although the existence of alternative
designs may be considered in the determination of whether a
product design is functional in the first place, once it is
Cancellation No. 92051353
11
determined, based on all of the evidence of record (especially
the existence of a utility patent covering the product design),
that the product design is functional under the Inwood
"traditional rule," then the asserted existence of alternative
designs does not suffice to overcome that determination that the
product design is functional. That is, once a product feature is
found to be functional under this “traditional rule,” “there is
no need to proceed further to consider if there is competitive
necessity for the feature,” and consequently “[t]here is no need
… to engage … in speculation about other design possibilities….
Other designs need not be attempted." Valu Engineering Inc. v.
Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir.
2002). “The functionality doctrine prevents trademark law, which
seeks to promote competition by protecting a firm's reputation,
from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.” Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 164, 34 USPQ2d 1161, 1163
(1995). As both parties recognize, consideration of the factors
set out in Morton-Norwich, 671 F.2d 1332, 213 USQP 9, is
generally involved in determining functionality. See also Valu
Engineering Inc., 61 USPQ2d 1422, 1426.
The existence of a prior utility patent is of vital
significance. TrafFix, 58 USPQ2d 1001, 1005. A utility patent
is strong evidence that the features therein claimed are
functional. Id. In considering any patent, in addition to the
Cancellation No. 92051353
12
claims, the Board may consider any statements made in the patent
application record and in the course of procuring the patent,
including disclosures. See Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1920 (TTAB 2011)
and cases cited therein; and M-5 Steel Mfg., Inc. v. O'Hagin's,
Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) and cases cited therein.
Each embodiment of the invention described in a utility patent is
equally functional for purposes of trademark law. See Kistner
Concrete, supra; and In re Edward Ski Products, Inc., 49 USPQ2d
2001, 2003 (TTAB 1999).
There is no doubt that respondent owned a now-expired
utility patent for an invention which described the triangular
configuration of the product as the preferred embodiment, and
included it as an element of its independent Claim 1. Thus,
notwithstanding respondent's position that the shape was somehow
"disclaimed" in the patent, the shape is not considered
"disclaimed" in considering the features disclosed, claimed and
described and claimed in the patent to determine whether the
shape is functional for purposes of trademark registrability.
The triangular configuration, described in the patent as the
preferred embodiment, is now the subject of respondent's
Registration No. 3019645.
The expired utility patent demonstrates the utilitarian
advantages of the triangular design. The shape of the pad as
disclosed and claimed in the patent is not arbitrary or
Cancellation No. 92051353
13
ornamental, or incidental to the design and function of the
training glove. Instead, it performs an essential function for
the invention/product.10 Thus, the patent establishes that no
genuine dispute of material fact exists and that the design, as a
whole, is the functional configuration of the goods.
There is no evidence of record that respondent touts the
utilitarian advantages of his design. This factor is neutral and
does not raise a genuine dispute of material fact that would
defeat the conclusion of functionality raised by the patent.
As noted earlier, insofar as the disclosures and claims in
the expired patent establish the functionality of respondent's
design, there is no need to consider the availability (actual or
speculative) of other designs or if there is a competitive
necessity for the feature. Valu Engineering, 61 USPQ 1422,
1427. Specifically, neither the availability of other designs
nor the comparatively simple or inexpensive method of manufacture
raises a genuine dispute of material fact in this case.
3. Acquired distinctiveness
Respondent's design is functional. Thus, any evidence of
distinctiveness is of no avail to respondent in support of the
maintenance of his registration. See TrafFix, 58 USPQ2d 1001,
1007 (“Functionality having been established, whether MDI's dual-

10 The Board notes in passing that, even if the triangular shape were
not identified in the patent as the preferred embodiment, the claims
of the patent would still encompass the shape for the function of the
training pad/glove.
Cancellation No. 92051353
14
spring design has acquired secondary meaning need not be
considered”). See also M-5 Steel Mfg. Co., 61 USPQ2d 1086.
Accordingly, petitioner's motion for summary judgment is
granted; judgment is entered against respondent; the petition to
cancel is granted; and the registration will be cancelled in due
course.
***