West-Com Nurse Call Systems, Inc.

Trademark Trial and Appeal Board

Sep 13, 2007

No. 78438594 (T.T.A.B. Sep. 13, 2007)

Decision Mailed:
September 13, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re West-Com Nurse Call Systems, Inc.
________

Serial No. 78438594
_______

Dale Paul DiMaggio and Catherine Crush of Malin, Haley &
DiMaggio, P.A. for West-Com Nurse Call Systems, Inc.

Michael Tanner, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_______

Before Hohein, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

West-Com Nurse Call Systems, Inc. has filed an
application to register on the Principal Register the design
reproduced below,

which is described in relevant part as a "caricature of a
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78438594
2
toilet," as a mark for "electronic apparatus used in nurse call
systems, namely, an electronic device for automatically sending
communication transmissions between patients and predetermined
and/or specified health care or hospital personnel for use by
patients requiring bed pan or other nursing services" in
International Class 9.1
Registration has been finally refused on the ground
that the toilet caricature design mark, as used in the specimens
of record, does not function as a trademark to indicate the
source of applicant's goods as required by Sections 1, 2 and 45
of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.2

1 Ser. No. 78438594, filed on June 21, 2004, which alleges a date of
first use anywhere of September 30, 1994 and a date of first use in
commerce of November 30, 1994.

2 As noted by the Examining Attorney in his brief, registration has
also been finally refused "under Section 2(f) of the Trademark Act,"
15 U.S.C. §1052(f), and on the additional grounds that "the proposed
mark as used on the specimens of record is merely ornamental pursuant
to Trademark Act Sections 1, 2, and 45," 15 U.S.C. §§1051, 1052 and
1127, "and that the proposed mark is merely descriptive of a feature
or function of the goods under Trademark Act Section 2(e)(1)," 15
U.S.C. §1052(e)(1). Applicant, as indicated by the Examining Attorney
in his brief, submitted its claim of acquired distinctiveness under
Section 2(f) in response to the refusals to register on the grounds of
failure to function as a mark, ornamentation and mere descriptiveness.
Finding that applicant's initial showing with respect to such claim
"failed to adequately demonstrate that the mark had acquired
distinctiveness," the Examining Attorney recounts in his brief that he
"notified the applicant that its Section 2(f) claim would not overcome
a failure to function refusal, and maintained and continued the prior
failure to function, ornamentation, and merely descriptive refusals."
Although applicant then supplemented its Section 2(f) claim by
submitting, among other things, a declaration from an officer of
applicant and 28 dealer statements, the Examining Attorney indicates
in his brief that he "was not persuaded by the applicant's Section
2(f) arguments and evidence in support thereof" and issued the above-
mentioned final refusals.

However, the Examining Attorney also states in his brief that:
"Upon further review, the refusals to register the mark under Sections
1, 2, and 45 because the mark is merely ornamental and under Section
2(e)(1) because the mark is merely descriptive are WITHDRAWN."
Moreover, with respect to the refusal under Section 2(f), it is
Ser. No. 78438594
3
Applicant has appealed and briefs have been filed.3 We
affirm the refusal to register.
The specimens submitted by applicant are essentially
identical in relevant part in that they constitute facsimiles
showing, as in the example reproduced below, the following manner
of use:

pointed out that as indicated in, for example, In re Capital Formation
Counselors, Inc., 219 USPQ 916, 917 at n.2 (TTAB 1983), the
insufficiency of a showing pursuant to Section 2(f) is not itself a
statutory basis for a refusal of registration on the Principal
Register. Accordingly, the only refusal of registration presently and
properly before us is the final refusal on the ground of failure of
applicant's toilet caricature design to function as a mark as shown in
the specimens of record. Nonetheless, in connection therewith, while
the Examining Attorney is correct that a claim of acquired
distinctiveness under Section 2(f) is irrelevant to a refusal on the
ground of failure to function as a mark, since the issue is whether
the specimens show use of the applied-for designation as a mark, we
are obligated to consider any evidence properly of record which bears
upon the public perception of the purported mark. See, e.g., In re
Pennzoil Products Co., 20 USQP2d 1753, 1757 (TTAB 1991), citing In re
Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988). Consequently, we
have so considered applicant's evidence.

3 The Examining Attorney, in his brief, "notes that the applicant's
[main] brief improperly contains exhibits and product literature which
the applicant alleges are either specimens of record in this case or
evidence of acquired distinctiveness." Stating that "[i]nasmuch as
these additional documents have been submitted with the applicant's
appeal brief, the examining attorney objects to their [untimely]
submission and requests that the Board disregard these additional
documents pursuant to 37 C.F.R. § 2.142(d) and TBMP §1207.01."
Applicant, in its reply brief, is not only silent with respect to the
Examining Attorney's objection, but has attached thereto, in reference
to its claimed ownership of Reg. No. 3,078,614 (a copy of which
accompanied its main brief), an "attached copy of complete trademark
application ... [for such registration] submitted herewith." Inasmuch
as Trademark Rule 2.142(d) provides in relevant part that "[t]he
record in the application should be complete prior to the filing of an
appeal" and that the Board "will ordinarily not consider additional
evidence filed with the Board by the appellant ... after the appeal is
filed," the Examining Attorney's objection is sustained to the extent
that the evidence attached to both applicant's main brief and its
reply brief which was not made of record prior to commencement of the
appeal will be given no further consideration.

Ser. No. 78438594
4

Applicant's asserted mark in such example appears directly on its
product and is shown adjacent to the words "DIRECT REQUEST,"
under which appears the explanation that the two lowest buttons
on the device are "Buttons for Pain Med and Bed Pan" requests for
assistance by a patient. The other example includes the
following close-up partial views of applicant's product:
Ser. No. 78438594
5

In both examples, the toilet caricature design is shown in use on
applicant's "pillow speakers," as its "electronic device for
automatically sending communication transmissions between
patients and predetermined and/or specified health care or
hospital personnel" is more commonly known in the trade for goods
of such kind.
Applicant, referring in its main brief to its mark as
"a BED PAN DESIGN LOGO,"4 notes by way of background that:

4 It is noted, however, that in its reply brief, applicant refers
instead to its mark as a "BATH ASSIST/PAN DESIGN LOGO." Moreover, in
its reply brief, applicant appears to take umbrage at the Examining
Attorney's characterization of its mark in his brief as "the Toilet
Symbol" even though, as previously mentioned, applicant in its
application describes its mark in relevant part as a "caricature of a
toilet." Specifically, applicant bemoans the fact that:
Ser. No. 78438594
6
The Examining Attorney maintained his
final refusal ... because the Examining
Attorney believes that the proposed mark does
not function as [a] trademark, but rather is
merely a button depicting a toilet that a
patient presses to call for assistance when
help is needed going to the toilet. The
Examining Attorney in his Office Action dated
January 28, 2005 offered evidence of similar
designs used in architectural house plans to
indicate the location of toilets, which the
Examining Attorney offered as evidence that
the public would view the symbol as a toilet.

Applicant maintains, however, that its "proposed trademark design
is a unique artistic caricature" which "is distinct from the
toilet symbol used in housing plans in both appearance and the
fact that it is used in a completely different industry."
According to applicant, its purported mark "appears in both the
Applicant's printed advertising, on DVDs, and on website pages,
in addition to the Applicant's product." Such "manners of use,"
applicant insists, "serve as indicators of source" for its goods.
Moreover, applicant contends that "this design has a variety of

Throughout the Examining Attorney's Brief, the
Examiner uses the terms "Toilet Symbol" in a derogatory
fashion to refer to Applicant's Bath Assist/Bed Pan Design
Logo. The Examiner's references are intended to demean
Applicant's caricature as if Applicant was a manufacturer of
toilets or plumbing products, which of course is not the
case. Applicant's Logo is used in commerce with respect to
the manufacture and sale of components (speakers and
transmitters) of a sophisticated electronic nurse call
communication system for hospitals.

Simply put, we fail to see anything derogatory, demeaning or otherwise
improper in the Examining Attorney's manner of reference to
applicant's mark, which clearly is a stylized depiction of a toilet or
commode, and will use the term "toilet caricature design" in referring
to applicant's mark, given that applicant has so characterized its
mark in its application and in preference to the negative connotations
which are obviously associated with the use of the term "bed pan" as
in, for instance, applicant's use of the phrase "a BED PAN LOGO
DESIGN."
Ser. No. 78438594
7
meanings and interpretations regarding various forms of 'bathroom
assistance" and that, "to the Applicant's consumers, who are not
the patients, but rather the hospital and nursing care home
administrators, this symbol as it appears on the Applicant's
website, DVDs, and brochures, as well as on the products
themselves, functions as a mark."
Applicant, in this regard, points to Section 45 of the
Trademark Act, 15 U.S.C. §1127, which defines the term
"trademark" as including "any word, name, symbol, or device, or
any combination thereof--(1) used by a person, or (2) which a
person has a bona fide intention to use in commerce and applies
to register on the principal register established by this
chapter, 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, even if that source is
unknown." In view thereof and citing In re Swift & Co., 223 F.2d
950, 106 USPQ 286 (CCPA 1955), applicant argues that:
A trademark that is an artistic and
unique design or pattern may be constituted
as trademark "device" within the meaning of
the Trademark Act, if it is used primarily to
perform the function of a trademark and is,
in fact, by virtue of any distinctiveness it
may possess, capable of doing so. .... If
the symbol or devices on the object are more
readily apparent at such a distance where the
wording cannot, that symbol or device becomes
the means by which the object is identified
and the factor by which the impulse to
purchase it is induced. A significant
question therefore is whether or not the
symbol put on the goods enables a purchaser
to pick it out and distinguish it from the
goods of others, and is the purchaser able to
so identify the goods by means of this symbol
or device.

Ser. No. 78438594
8
Although ignoring the fact that, as shown in the specimen which
depicts its pillow speaker in its entirety, such terms as "West-
Com" and "TV" are as "readily apparent" at the same viewing
distance as any of the icons also shown thereon, including its
asserted mark, applicant "maintains that its trademark is ... a
trademark device which enables hospital and nursing home
administrators to pick it out and distinguish it from the
trademarks of others" and, "furthermore,[,] these sophisticated
purchasers are able to identify the goods by means of the
appearance of this trademark device."
That its "mark is unique and not commonly used on any
similar product," applicant argues, "can be evidenced by the fact
that the Examining Attorney found no similar pending or
registered design, or an example of similar designs on [a]
competitor's products." Applicant consequently contends that its
"design is inherently distinctive" and insists that, in view of
such fact alone, it is the case that applicant "uses this
trademark on its website pages, brochures, DVDs, and on the
product itself in a manner used to indicate the Applicant as the
source of the product" as shown by the specimens of record.
Applicant stresses, therefore, that its "trademark design is an
original work, a clever caricature, a unique and fanciful picture
symbol in the traditional trademark sense, [and] which is an
inherently distinctive commercially recognizable trademark
entitled to trademark protection on the federal register."
Lastly, in the alternative, applicant urges that it has
submitted sufficient evidence to establish that its toilet
Ser. No. 78438594
9
caricature design functions as a mark and is so recognized and
regarded. Such evidence, applicant states, consists of
"information regarding [the] nature of trademark use; advertising
expenditures; annual sales; consumer, product, and industry
descriptions; and a prior registration [by applicant] for
identical goods and a similar mark" and includes, in addition to
an unverified claim of substantially exclusive and continuous use
of its applied-for mark in commerce "for well over ten years," a
declaration of an officer of applicant and 28 essentially
identical dealer statements which attest to recognition of such
mark as an indicator of source for applicant's goods. According
to applicant:
The applicant's trademark appears on the
pillow speakers themselves which are part of
the Applicant's nurse call systems used in
hospitals and nursing homes, and on various
... kinds of advertising .... The
Applicant's consumers are very sophisticated,
[and are] made up of a committee of hospital
and nursing care staff who make financial and
purchasing decisions regarding the purchase
of sophisticated and expensive products used
for patient care. Once the nursing care home
or hospital has purchased these products, the
Applicant provides individual instructions
regarding the installation and use of these
highly sophisticated products. Furthermore,
this is a very small niche industry comprised
of only four major competitors and several
smaller companies. Thus, these very
sophisticated consumers become very familiar
with the Applicant's products and trademarks,
given the size of the industry, and the
nature of the goods. These hospital
administrators have come to recognize the
Applicant's trademark symbols in both
advertising, and on the buttons of the pillow
speakers as identifying the Applicant as the
source of the goods.

Ser. No. 78438594
10
In particular, with respect to the above mentioned
evidence, the record shows that applicant is the owner of Reg.
No. 3,078,614, which issued on the Principal Register on April
11, 2006 for a mark described as "a square with a sad face in the
middle," as illustrated below,

for a product listed as a "nurse call system comprising an
electrical apparatus for communication by and between patients
and health care or hospital personnel, for patients requiring
pain medications services" in International Class 9.
Further, with respect to the May 2, 2006 declaration of
Larry Peters, who is identified as "the C.E.O. of Applicant," the
declarant states among other things that "he is aware of the
history of our goods and of the use of the mark BED PAN DESIGN
LOGO"; that applicant "made first use of the mark BED PAN DESIGN
LOGO on the goods identified in the application at least as early
as September 1994 and in interstate commerce at least as early as
November 1994"; that "[s]ince 1994, Applicant has exclusively and
continuously used the mark BED PAN DESIGN LOGO in connection with
the goods Applicant seeks registration for"; that he is "not
aware that the mark has been used by any other company for any
similar goods"; that applicant's "mark BED PAN DESIGN LOGO is
typically displayed on the product itself"; that, "[i]n addition
to Applicant's existing customers, potential customers ... also
view on a daily basis ... the mark BED PAN DESIGN LOGO displayed
Ser. No. 78438594
11
on Applicant's website"; that such mark "is recognized in the
trade and by customers of the goods as being the mark of
Applicant's [sic] and denoting the goods of Applicant"; that
"Applicant's long term use of the mark for well over ten years,
Applicant's extensive marketing efforts, as well as the prominent
display of its trademark on Applicant's products at various
hospital and patient care locations, have caused customers,
potential customers and numerous other individuals to identify
Applicant's mark BED PAN DESIGN LOGO as the source of Applicant's
goods"; that applicant "generates over 12 million dollars ... a
year in sales for the goods provided under the mark BED PAN
DESIGN LOGO"; that the "amount of [such] sales continues to
increase each year"; and that "Applicant currently has a network
of approximately 60 dealers" (although the approximate number of
customers per dealer was left blank).5
In addition, as to the 28 essentially identical dealer
statements, which were signed between May 2, 2006 and May 4,
2006, while none has been verified, each provides in pertinent
part that:

5 While it is noted that applicant, in its main brief, also asserts
that "total sales for this industry are estimated by the Applicant to
be approximately one hundred fifty million dollars" and that applicant
"spent approximately one hundred thousand dollars ... on all means of
advertising in 2005," such figures find no verified support in the
Peters declaration or elsewhere in the record. Instead, they are
simply set forth in the supplement made to its unverified claim of
substantially exclusive and continuous use, in which applicant stated
initially only that it "has spent considerable sums on advertising and
marketing this trademark, specifically, the Applicant has spent
approximately Fifteen Thousand Dollars ... on printed advertising
materials and approximately Fifty Thousand Dollars ... on public trade
show materials in the past two years alone." Nonetheless, because the
Examining Attorney has discussed such amounts in his brief and has
therefore treated them as being part of the record, we have likewise
considered these figures to be of record for purposes of this appeal.
Ser. No. 78438594
12
The undersigned[,] through my company
with which I am employed, states that I am a
dealer in the nurse call systems and pillow
speaker industry. In the course of my
business, I have had occasion to become
familiar with many nurse call systems and
pillow speaker products, and am familiar with
such products marked with the BED PAN DESIGN
LOGO TRADEMARK produced by West-Com Nurse
Call Systems, Inc.

I believe that the BED PAN DESIGN LOGO
TRADEMARK on such products indicates products
produced by West-Com Nurse Call Systems, Inc.
and not any other company.

....

Many of my retail customers ask for
nurse call systems and pillow speaker
products by the BED PAN DESIGN LOGO
TRADEMARK, and expect that all products
marked with BED PAN DESIGN LOGO TRADEMARK
will come from the same source and are of
equal quality with all other products from
that source.

We agree with the Examining Attorney, however, that as
used in the specimens of record, applicant's toilet caricature
design fails to function as a mark for its goods. As he
accurately observes in his brief, "consumers would not interpret
the Toilet Symbol, which the specimens show is located on a
button on the applicant's device, to be an indicator of source,
but rather, an informational icon representing the purpose or
function of the button on which it appears." In this regard, the
Examining Attorney, after noting the statutory definition of the
term "trademark" in Section 45, correctly points out that:
It is well settled that matter may not be
registered unless it is used as a trademark,
namely, "in a manner calculated to project to
purchasers or potential purchasers a single
source or origin for the goods in question."
In re Remington Products Inc., 3 USPQ2d 1714,
1715 (TTAB 1987). See, e.g., In re Melville
Ser. No. 78438594
13
Corp., 228 USPQ 970, 970 n.2 (TTAB 1986) ("If
matter proposed for registration does not
function as a mark, it is not registrable in
accordance with Sections 1 and 2 of the Act
because the preambles of those sections limit
registration to subject matter within the
definition of a trademark"); In re
Whataburger Systems, Inc., 209 USPQ 429, 430
(TTAB 1980) ("[A] designation may not be
registered either as a trademark or a service
mark unless it is used as a mark, in such a
manner that its function as an indication of
origin may be readily perceived by persons
encountering the goods or services in
connection with which it is used"). A design
does not create a separate commercial
impression as a trademark, either as a result
of inherent visual distinctiveness or a
consequence of promotion and use leading to
public recognition and acceptance as
indication of source, is not regarded as [a]
trademark and is not registrable as such. In
re Kerr-McGee Corporation, 190 UQPS [sic]
204, 207-08 (TTAB 1976).

The decisive element in determining
whether matter sought to be registered is a
trademark is the impression the matter makes
on the relevant public. In re Brass-Craft
Mfg. Co., 49 USPQ2d 1849, 1853 (TTAB 1998).
In this case, the critical inquiry is whether
as used, the proposed Toilet Symbol would be
perceived by consumers as a source indicator
or merely as an informational design on one
of the many buttons of the applicant's
device. In re Volvo Cars of North America
Inc., 46 USPQ2d 1455 (TTAB 1998). To
properly assess the commercial impact created
by the proposed Toilet Symbol, the Office
must look to the specimens and other
materials which show how the proposed mark
is used in the marketplace. [Id.] .... As
is the case with any trademark, mere intent
that a word, name, symbol or device function
as a trademark or service mark is not enough
in and of itself. In re Morganroth, 208 USPQ
284 (TTAB 1980). .... In this case,
applicant's Toilet Symbol is used solely as
an informational design on a button of the
applicant's nurse paging device, a use which
would not be perceived by consumers to
indicate the source of the goods.

Ser. No. 78438594
14
The Examining Attorney, in support of his position, has
made of record both copies of numerous architectural floor plans,
in which symbolic designs very similar to applicant's toilet
caricature design are used to represent a toilet or commode in a
bathroom or restroom, to show that members of the general public,
including those who are purchasers of equipment for hospitals or
nursing homes, are accustomed to seeing and would readily regard
such symbolic designs as designating a toilet, commode, bathroom
or restroom and copies of website advertising by several of
applicant's competitors in the field of nurse call systems to
demonstrate, with respect to pillow speakers, that such
competitors "all use small, highly intuitive pictorial
representations as icons on buttons of nurse paging systems to
represent the function or purpose of the button" and that
customers for such goods are aware of the industry practice in
this regard. For instance, just as applicant's advertising for
its "GEN III PILLOW SPEAKERS" highlights their "[c]lear easy to
understand symbols and words [which] allow the patient to operate
desired functions" including buttons for "Nurse Call, TV, Lights,
Bed Pan, Pain Med, and Headphone," the Examining Attorney
accurately observes that, likewise, "several of the applicant's
competitors each use unique, artistically creative pictorial
representations of nurses, televisions, or light bulbs as icons
on buttons of their respective paging devices."
While, as the Examining Attorney acknowledges,
applicant's toilet caricature design, like its registered "square
with a sad face in the middle" mark, is indeed "unique," as
Ser. No. 78438594
15
contended by applicant, in the sense that applicant, as the
advertising for its goods touts, presently appears to offer
"[t]he only nurse call system that can direct the patient call to
the correct level of staff" with respect to a patient's specific
need "for PAIN MED or BATH ASSIST," that fact does not mean that
as used in the specimens of record the applied-for mark functions
as a mark for applicant's goods. As the Examining Attorney
correctly points out, "[e]ven assuming the applicant's mark is an
artistically creative, unique symbol, it is well settled that not
all unique symbols qualify for the Lanham Act['s] protection,"
citing In re Illinois Bronze Powder & Paint Co., 188 USPQ 459,
462 (TTAB 1975). Accordingly, while the fact that applicant's
applied-for design may be unique in the sense that it is a "one
and only," the record demonstrates that such design is not unique
in the sense that it has an "original, distinctive, and peculiar
appearance" which conveys only a trademark significance. See,
e.g., In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992).
Instead, as persuasively argued by the Examining Attorney, it is
the case that:
Given the industry-wide use of small, highly
intuitive decorative icons in this field,
consumers would be hard-pressed to realize
that the pictorial icon on any particular
button of a nurse paging system represents
the underlying manufacturer. In this case,
the relevant practices of the trade compel a
finding that the applicant's "artistic work"
is just that, a decorative picture that
consumers and users would immediately
recognize as a call button for bathroom
assistance, [and] not an indicator of source
for the communication device.

Ser. No. 78438594
16
We therefore concur with the Examining Attorney's conclusion that
applicant's toilet caricature design, as used in the specimens of
record, does not function as a mark for its goods because, "[a]s
used, the applicant's mark is no more source indicative than the
easy to understand pictorial representations of a light bulb,
television, or nurse appearing on other competing paging systems"
as well as on the pillow speakers for applicant's nurse call
systems.
With respect to the additional evidence of record, we
agree with the Examining Attorney that none is persuasive of a
finding that applicant's toilet caricature design, as used in the
specimens of record, nevertheless would be recognized as a mark
for its goods. In particular, neither its ownership of a
registration for a mark described as "a square with a sad face in
the middle" nor the declaration of applicant's C.E.O. or the
dealer statements singularly or collectively establish that
applicant's toilet caricature design, as actually used, functions
to identify and distinguish the source of applicant's goods. For
instance, even assuming that, in the case of applicant's
registration, the evidentiary record with respect thereto were to
show, as asserted by applicant in its main brief, that "the
Trademark Office has in fact held the exact same placement, size,
and appearance ... of a similar arbitrary and suggestive symbol
on the buttons of the Applicant's pillow speakers does in fact
function as a trademark," suffice it to say that applicant's
position is contrary to the longstanding, well-settled precedent
that prior decisions and actions of other trademark examining
Ser. No. 78438594
17
attorneys in registering different marks are without evidentiary
value and are not binding upon the Office. Each case, instead,
is decided on its own facts and each mark stands on its own
merits. See, e.g., AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re National Novice
Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); and In re
Consolidated Foods Corp., 200 USPQ 477, 481 (TTAB 1978). Thus,
as our principal reviewing court has observed in, for instance,
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001), "[e]ven if some prior registrations had some
characteristics similar to [applicant's] application, the ...
allowance of such prior registrations does not bind the Board or
this court." See also, In re Broyhill Furniture Industries Inc.,
60 USPQ2d 1511, 1514 (TTAB 2001); and In re Pennzoil Products
Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Applicant's prior registration, therefore, does not
justify allowance of the registration which it presently seeks.
As the Examining Attorney tellingly observes, "[o]ther than
noting [that] the Toilet Symbol is a unique, original work of
art, the applicant fails to state why consumers would view the
proposed mark as used as anything other than an icon on a button
of the applicant's paging system" which, unlike the button used
when pain medication is needed, "is used for summoning assistance
in going to the bathroom." The Examining Attorney, in
essentially reiterating his position, persuasively insists in
this regard that:
Ser. No. 78438594
18
The applicant posits that because its
consumers are not actually patients, but
rather, hospital and nursing home
administrators, this fact somehow transforms
the informational Toilet Design as it is used
on the goods into a non-informational source-
indicating symbol for the product. The
applicant is mistaken. The evidence of
record clearly shows that within this
industry small, highly intuitive
informational drawings are used as icons on
buttons of nurse paging systems so that users
readily understand [the] button's purpose or
function. Because they would naturally be
exposed to the various nurse paging products
produced by manufacturers in this field, and
because these manufacturers all use small,
highly intuitive informational drawings as
icons on button of these systems, it stand[s]
to reason that hospital [and nursing home]
administrators seeing the proposed Toilet
Symbol as used on the device would interpret
the image on the button no differently than
the patient would at their bedside--press
here for bathroom assistance.

As to the information contained in the declaration of
applicant's C.E.O., Larry Peters, concerning the nature and
extent of applicant's use of its toilet caricature design, we
agree with the Examining Attorney that such evidence fails to
establish that, as used in the specimens of record, applicant's
applied-for mark identifies and distinguishes the source of its
goods and thus functions as a mark. The asserted facts that
applicant has extensively, continuously and exclusively used its
toilet caricature design in connection with its nurse call
systems since at least as early as the autumn of 1994; that such
design is typically displayed on the product itself in addition
to its daily display on applicant's website; that such design is
recognized in the trade and by customers of the goods as being a
mark denoting the goods of applicant; that applicant has made
Ser. No. 78438594
19
extensive marketing efforts and has prominently displayed its
applied-for mark at various hospital and patient care locations;
that applicant has generated over 12 million dollars annually in
sales for the goods provided under such mark, with the amount of
its sales thereof continuing to increase each year; and that
applicant currently has a network of approximately 60 dealers are
not probative that its toilet caricature design is recognized as
a mark for its goods. This is because none of applicant's
demonstrated uses of such design, either as shown on the pillow
speakers in the specimens of record or in its advertising,
reflect use of the design in the manner of a mark which
identifies and distinguishes applicant's goods. Nothing,
moreover, in applicant's advertising indicates promotion of such
design as a mark. Rather, as used, the record consistently shows
that applicant's toilet caricature design, as repeatedly pointed
out by the Examining Attorney, is used solely as "an icon on a
button which is used to call for help in going to the toilet,
[and] not [as] a designation of the source for the identified
goods" (emphasis in original).6
In consequence thereof, applicant's evidence as to the
nature and extent of its use of its toilet caricature design

6 Likewise, for the same reasons, even when applicant's annual sales
figures of $12,000,000 are viewed in the context of its eight percent
share of total industry sales of approximately $150,000,000 and annual
advertising expenditures of $100,000 on all means of advertising in
2005, together with $15,000 spent on printed advertising materials and
around $50,000 spent on public trade show materials "in the past two
years alone" (see footnote 5), such amounts plainly are not probative
that the manner of use of its toilet caricature design as shown in the
specimens would be regarded by customers as a mark for its goods
instead of just a call button specifically for bathroom assistance.

Ser. No. 78438594
20
fails to persuade us that such design would be recognized as a
source indicator and, hence, that the deign functions as a mark
as used in the specimens of record. Although applicant, among
other things, argues in its main brief that, in "In re Owens-
Corning Fiberglass [sic] Corp.[,] 774 F.2d 1116[,] 227 U.S.P.Q.
417 (C.A.F.C. 1985) citing In re American Home Products Corp.,
226 U.S.P.Q. 327, 330 (T.T.A.B. 1985)," the Board "held that it
is not essential that evidence of advertising expenditures be
directed specifically to the promotion of an Applicant's mark,"
neither of such cases aids applicant herein. This is because,
unlike in Owens-Corning, in which advertising based on a general
theme of pink was used to promote the color pink as a mark for
fibrous glass residential insulation, none of the advertising of
record in this case in any way promotes applicant's toilet
caricature design as a mark for the pillow speakers of its nurse
call systems. Furthermore, contrary to applicant's contention,
in American Home Products the Board held that a triple-layered
design of the colors pink, white and yellow functioned as a mark
for an analgesic and muscle relaxant because:
The evidence submitted by applicant
clearly demonstrates sufficient length and
intensity of use and promotion as a mark to
[constitute a] prima facie showing that the
design functions as a mark. The advertising
materials ... clearly and unambiguously
promote trademark recognition of applicant's
tricolor design. Indeed, one of the product
file cards expressly and prominently refers
to the "Distinctive Tri-Colored Tablets"
(Exhibit B). Although we do not have before
us advertising expenditures specifically
directed to the promotion of applicant's
design, we do not find this flaw to be a
fatal one given the rather substantial
Ser. No. 78438594
21
evidence of applicant's vigorous promotional
efforts in this regard.

226 USPQ at 330. Here, in stark contrast, applicant has offered
no advertising or other marketing materials which "clearly and
unambiguously" or even otherwise promote recognition (e.g., "look
for" ads) of its toilet caricature design as a mark, much less
any evidence demonstrating "vigorous promotional efforts" in such
regard. Thus, as the Examining Attorney persuasively contends,
"this evidence is not enough to demonstrate that the proposed
Toilet Symbol has become a source-indicator for the applicant's
nurse paging device."
Finally, as to the 28 essentially identical dealer
statements submitted by applicant, we concur with the Examining
Attorney that "[t]here is no reason why" the Board "should give
much weight to unverified, self-serving statements made by the
applicant's own dealers who necessarily have a keen and vested
interest in maintaining a good relationship with the applicant."
In particular, as the Examining Attorney persuasively points out
(emphasis in original):
[I]t is well settled that the assertions
of retailers, who know full well from whom
they are buying, that they themselves
recognize a particular designation as a
trademark, or that they believe that their
customers consider it to be a mark, cannot
serve to establish that members of the
purchasing public, who come to the
marketplace without such specialized
knowledge, would in fact recognize the
designation as an indication of origin. In
re Semel, 189 USPQ 285 (TTAB 1975); Ex parte
Oshkosh Trunks and Luggage, 86 USPQ 321
(Comm'r Pat. 1950); Ex parte Hillerich &
Bradsby Co., 93 USPQ 73 (Comm'r Pat. 1952)[;]
and Ex parte The H. D. Lee Company,
Incorporated, 111 USPQ 445 (Comm'r Pat.
Ser. No. 78438594
22
1956). Dealers comprise a select population
of individuals who likely know the source of
this unique product. In re Edward Ski
Products, Inc., 49 USPQ2d 2001, 2005 (TTAB
1999) ("The assertions of buyers of the masks
for resale in sporting good stores or ski
shops, that is, persons who know the source
of the masks, cannot serve to establish that
the ultimate purchasers would recognize the
product design as an indication that it
originates from applicant.") Given these
individuals' intimate relationship with the
applicant, their [statements] ... play only a
minor role in determining public perception
of the proposed Toilet Symbol. .... More
telling is the absence of declarations from
actual purchasers of the goods or any direct
evidence bearing on the perception of the
proposed Toilet Symbol by the ultimate
purchasers of the goods.

Moreover, and aside from the absence of any indication
that the dealers know or are so well versed in trademark law that
they could independently form a reliable opinion on whether a
designation like applicant's toilet caricature design is a mark
or as used on applicant's pillow speakers functions as a mark, it
would appear on this record that the dealers' belief that "the
BED PAN DESIGN LOGO TRADEMARK on such products indicates products
produced by West-Com Nurse Call Systems, Inc. and not any other
company" is due to the fact that apparently, as stated in its
advertising, applicant is the only producer and/or seller of
nurse call systems which feature a specific call button for
summoning nursing assistance when a patient needs to use a toilet
(just as its goods also exclusively have a call button for a
patient to request nursing aid in connection with administering
pain medication). Such fact would also seem to explain the
dealers' assertion that "[m]any of my retail customers ask for
Ser. No. 78438594
23
nurse call systems and pillow speaker products by the BED PAN
DESIGN LOGO TRADEMARK" inasmuch as applicant's goods would seem
to be the only available products with a specific nurse call
button for a patient needing to request toilet assistance.
Stated otherwise, even if the dealer statements are regarded as
literally true, the non-trademark manner of use demonstrated by
the specimens of record and the absence of any materials which
promote applicant's toilet caricature design as a mark for its
goods are simply more convincing as evidence bearing on the
public perception of such design than are the opinions of
applicant's dealers. See, e.g., In re Pennzoil Products Co., 20
USPQ2d 1753, 1759 (TTAB 1991).
Accordingly, we concur with the Examining Attorney's
conclusion that customers "are likely to perceive the Toilet
Symbol merely as an informational icon on a button of the
applicant's product" inasmuch as:
[T]he Trademark Examining Attorney has
established an evidentiary record showing
that the proposed Toilet Symbol fails to
function as a trademark and is merely a
pictorial representation of an important
feature or function of the goods. Given the
nature of the [purported] mark and its manner
of use, the applicant has not submitted
sufficient evidence to show that consumers
recognize the proposed Toilet Symbol as an
indicator of source.

Decision: The refusal under Sections 1, 2 and 45 is
affirmed.