AS Holdings, Inc.v.H & C Milcor, Inc., f/k/a Aquatico of Texas, Inc.

Trademark Trial and Appeal Board

Aug 6, 2013

No. 91182064 (T.T.A.B. Aug. 6, 2013)

Mailed:
August 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

_____

AS Holdings, Inc.

v.

H & C Milcor, Inc., f/k/a Aquatico of Texas, Inc.
_____

Opposition No. 91182064
to application Serial No. 76461157
_____

Terence J. Linn, Esq. of Gardner Linn Burkhart & Flory LLP for
AS Holdings, Inc.

Dillis V. Allen, Esq. for H & C Milcor, Inc., f/k/a Aquatico of
Texas, Inc.

_____

Before Quinn, Taylor, and Wellington, Administrative Trademark
Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, H & C Milcor, Inc. (hereinafter “applicant”), is
the owner of an application to register a product configuration
mark on the Principal Register for goods identified, as amended,
as “non-metal building materials, namely, pipe flashing for use
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91182064
2

in sealing openings for pipes” in International Class 19.1 We
hereinafter refer to the mark as the “pipe boot design.”
As originally filed, the mark in the application drawing
page appeared as follows:

During prosecution of the application, the following
amended drawing was filed and was accepted by the examining
attorney:

In conjunction with the filing of the amended drawing page,
the following figure representing a close-up view of a section

1 Serial No. 76461157, filed on October 18, 2002, under Section 1(a) based on
a claimed date of first use anywhere and in commerce on April 30, 1982.
Portal Plus, Inc. filed the application and, on June 16, 2005, an assignment
to applicant was recorded with the Office (reel/frame nos. 3106/0669).
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Opposition No. 91182064
4

distinctiveness, and that applicant’s amendment to its mark
constitutes an impermissible material alteration to the mark as
originally filed. Specifically, opposer pleaded that the pipe
boot design is “a functional configuration of the goods that is
not distinctive, has not acquired secondary meaning or acquired
distinctiveness, and does not operate as a trademark”
(Opposition, para. 70); the applied-for mark is “a configuration
of a design feature that is functional and serves a utilitarian
purpose or purposes” (id., para. 74); and that the original
drawing has been “materially altered” (id., para. 78-79).4
Applicant, in its answer, made several admissions regarding
the prosecution of the application as well as admissions
concerning its, or its predecessor-in-interest’s, marketing of
goods with the pipe boot configuration. Applicant otherwise
denied the salient allegations that its pipe boot configuration
is functional, lacks distinctiveness, and that the amendments
made to the original drawing were improper.5

4 Opposer also asserted a fraud ground. Not. of Opp., para. 88. However,
opposer did not pursue this claim in its trial briefs, and therefore we
consider this claim to be waived.

5 Applicant also asserted a number of affirmative defenses, namely, that
opposer failed to state a claim upon which relief could be granted (para.
89), that the Board lacks subject matter jurisdiction or personal
jurisdiction over the applicant (para. 96-97), that opposer lacks standing
(para. 98), that opposer’s claims are barred by the doctrines of waiver,
estoppel, and/or laches (para. 101), and that opposer is an “intermeddler and
comes to this Board with unclean hands” (para. 102). These defenses were not
pursued at trial or argued in applicant’s trial brief, and therefore we
consider these defenses to be waived.
Opposition No. 91182064
5

The Record
By rule, the record includes the involved application file.
Trademark Rule 2.122(b), 37 C.F.R. 2.122(b). Of particular
relevance to this proceeding, the application includes
applicant’s evidence in support of its claim of acquired
distinctiveness submitted during the prosecution of the
application. Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 1357-58 (Fed. Cir. 2009). The pleadings
are also automatically of record. The parties have also agreed
that “either party may use any and all discovery depositions” as
testimonial depositions.6
During its testimony period, opposer submitted the
testimony of Sean Steimle, Vice President of Operations of the
Commercial Products Group, and General Manager, of Hart &
Cooley; Christopher C. Kintzele, Chief Financial Officer of AS
Holdings, Inc.; and Michael J. Hubbard, Senior Development
Chemist at Alpha Systems. Opposer also filed a notice of
reliance on the following materials comprising exhibits from one
or more of the aforementioned depositions:7

6 Opposer filed a consented motion to such effect on June 19, 2009, which is
hereby granted. Trademark Rule 2.127.

7 We note that several of these listed exhibits are not materials that may be
properly introduced by notice of reliance alone. However, because they were
introduced through the testimony depositions, they are properly of record.
The exhibits included in the notices of reliance have been numbered using the
following format “ALP00###”. When an exhibit is cited, we will use these
page numbers. When a patent is cited, the following format will be used to
indicate the specific column and row within the patent: “ALP00###, Col. #,
Opposition No. 91182064
6

1. Portals Plus product catalog;

2. Technical product information for the Portals Plus
“Medium Pipe Boot” (two copies, with one containing
hand-drawn additions), “pipe flashings,” and “adapter
rings” taken from http://www.portalsplus.com;

3. An advertisement of the Commercial Products Group of
Hart & Cooley, Inc.;

4. Installation instructions for applicant’s pipe boot
taken from http://www.portalsplus.com;

5. Various webpages from http://www.milcorinc.com,
http://www.rpscurbs.com, http://www.portalsplus.com,
and http://www.genflex.com;

6. A listing of goods taken from the Portals Plus website
under the title “Product Selection”;

7. A copy of the applicant’s amended drawing and mark
description;

8. U.S. Patent No. 4,211,423 (“Roof Seal Device”)
(expired) and various other patents, including patents
specifically naming Michael J. Hubbard as an inventor;

9. “Installation instructions for pipe boots” by Portals
Plus, Inc.;

10. A hand-drawn sketch made by applicant’s attorney of a
hypothetical pipe boot design, and a second sketch
showing hand-drawn additions made by opposer’s
attorney;

11. Photographs of various pipe boots; and

12. Technical information sheets for Firestone pipe
flashing.

Applicant has submitted the testimony of David V. Smith,
Jr., President and Chairman of the Board of AS Holdings, Inc.;

line(s) ##-##”. Moreover, the exhibits are labeled as either “Opposer’s” or
“Applicant’s” exhibits, and since there are overlapping exhibit numbers, when
we cite to a specific exhibit, we will note to which we are referring (i.e.,
“Opposer’s” or “Applicant’s”).
Opposition No. 91182064
7

David V. Smith, III, Sales for AS Holdings, Inc.; Joseph W.
Merryman, Chemist in New Product Development for Alpha Systems;
Sean Steimle;8 and Larry Devitt, Marketing Manager for the
Commercial Products Group of Hart & Cooley.
Applicant’s Request for Review of Interlocutory Order
Applicant requests in its brief that the Board “revise” its
order of December 20, 2010, wherein certain exhibits, namely,
16, 20, and 21, submitted by applicant were stricken from the
record, either in whole or in part, as was the testimony
corresponding to these exhibits. Brief, p. 46. Applicant
sought reconsideration of this order on January 24, 2011, and
said request was denied by the Board.
TBMP Section 518 (3d ed. rev. 2 2013) explains that “at
final hearing, the Board panel to which the case is assigned for
decision may review an interlocutory ruling and reverse it, if
appropriate.” In this matter, we see no basis for reversing the
Board attorney’s previous decision. Accordingly, the relevant
exhibits with corresponding testimony remain stricken from the
record. Any arguments applicant made in its brief that rely on
these exhibits or the related testimony have not been
considered.

8 This second deposition of Mr. Steimle, taken on November 12, 2009, is
hereinafter cited as “Steimle Dep. (II) [page]:[line(s)],” in order to
distinguish it from the first Steimle deposition (taken on October 3, 2008,
transcript filed by opposer).
Opposition No. 91182064
8

Standing
Opposer must prove its standing as a threshold matter in
order to be heard on its substantive claims. See, e.g., Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(C.C.P.A. 1982). To do so, opposer must meet the liberal
threshold for proving standing as discussed by the Court of
Appeals for the Federal Circuit, namely, whether an opposer’s
belief in damage has a “reasonable” basis in fact and reflects a
“real interest” in the case. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999); see also Jewelers
Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7
USPQ2d 1628 (Fed. Cir. 1988).
Opposer has demonstrated that it is in the commercial
roofing product business, including the manufacture of pipe
boots similar to those depicted in the drawing page of the
subject application. Specifically, David Smith, Jr., testified
that opposer manufactures pipe boots sold under the name “Alpha
Systems,” and has made these goods for a third party.9 He states
that these are the type of goods that opposer will sell as part
of its commercial roofing business,10 and that opposer has “been
asked by several companies to make pipe boots for them.”11

9 Smith, Jr., Dep. 13:17-20.

10 Id. at 27:4-6.

11 Id. at 27:24-25.
Opposition No. 91182064
9

Based on the above and the entire record, it is clear that
opposer is not a mere intermeddler and has established a
reasonable basis for its belief in damage resulting from
applicant’s registration of the proposed mark, and therefore has
a real interest in this case. See Ritchie v. Simpson, supra;
see also TBMP §309.03(b) and the authorities cited therein.
Accordingly, opposer has standing to bring the opposition
proceeding.
We now address the grounds for opposition.
Amendment to Application
We turn first to opposer’s contention that the amendment by
applicant to the original drawing, during the prosecution of
this application, represents a material alteration of the
original drawing. Such allegations do not constitute a valid
ground for opposition. The Federal Circuit, the Board's
principal reviewing court, has determined that a “valid ground”
for denying registration must be a “statutory ground which
negates the appellant's right to the subject registration.”
Young v. AGB Corp., 152 F.3d 1377, 1380, 47 USPQ2d 1752 (Fed.
Cir. 1998) (quoting Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 1026, 213 USPQ 185, 187 (CCPA 1982)).
Determinations by the examining attorney with regard to
examination requirements, such as the acceptability of the
identification of goods or services, or of the drawing do not
Opposition No. 91182064
10

constitute statutory grounds for refusal of registration; thus,
any alleged error by the examining attorney in this regard
cannot form the basis of an inter partes challenge to the
registrability of the mark. Saint-Gobain Abrasives, Inc. v.
Unova Indus. Automation Sys., Inc., 66 USPQ2d 1355 (TTAB 2003)
(“It would be manifestly unfair to penalize defendant for non-
compliance with a requirement that was never made by the
Examining Attorney.”).
Accordingly, we give no further consideration to opposer’s
allegations regarding any impropriety of the amendment to the
drawing.
As we now turn our attention to the functionality and
distinctiveness grounds, we do so in the context of the mark as
last amended and shown in the drawing page ultimately accepted
by the examining attorney.
Functionality
A product 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 Prods. Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-
1164 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456
U.S. 844, 214 USPQ 1, 4 n.10 (1982)). Functional matter cannot
receive trademark protection.
Opposition No. 91182064
11

At its core, the functionality doctrine serves as a balance
between trademark and patent law. As the Supreme Court
explained in Qualitex:
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.
It is the province of patent law, not trademark law, to
encourage invention by granting inventors a monopoly over
new product designs or functions for a limited time, 35
U.S.C. §§154, 173, after which competitors are free to use
the innovation. If a product’s functional features could
be used as trademarks, however, a monopoly over such
features could be obtained without regard to whether they
qualify as patents and could be extended forever (because
trademarks may be renewed in perpetuity).

34 USPQ2d at 1163.

In making our determination as to whether a proposed mark
is functional, the following four factors are considered:
(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.

In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372,
1377 (Fed. Cir. 2012) (citing In re Morton-Norwich Prods., Inc.,
671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982)). Upon
consideration of these factors, our determination of
Opposition No. 91182064
12

functionality is ultimately a question of fact, and depends on
the totality of the evidence presented in each particular case.
Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
1422, 1424 (Fed. Cir. 2002); In re Caterpillar Inc., 43 USPQ2d
1335, 1339 (TTAB 1997). Furthermore, it is not required that
all four factors be proven in every case, nor do all four
factors have to weigh in favor of functionality to support a
refusal; nevertheless, in reaching our decision, we will review
all four factors. See Valu Eng’g, Inc. v. Rexnord Corp., 278
F.3d at 1276, 61 USPQ2d at 1427; In re Udor U.S.A. Inc., 89
USPQ2d 1978, 1979 (TTAB 2009).
Regarding the first factor, a utility patent claiming the
design features at issue is strong evidence that those features
are functional. TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton,
Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377. Portals
Plus, Inc. (the original applicant for this application) owned
the now-expired U.S. Patent No. 4,211,423 (hereinafter “patent
‘423”) for a pipe boot that appears in the patent drawing as
follows:12

12 Applicant notes on page 18 of its trial brief that this is a configuration
for a “stepped pipe boot.”
Opposition No. 91182064
13

Patent ’423 contains the following claim with respect to
the goods:
6. In a device as defined in claim 4 for use with a
cylindrical object, said split boot having a plurality
of annular step portions in vertically spaced planes
and tubular portions of progressively smaller
diameters joining the inner edge of each step portion
and the outer edge of the next higher step portion,
said boot being severable along the top edge of a
selected tubular portion having a diameter matching
that of said object.13

In the “Summary of the Invention” for patent ’423, the
severable, stepped design is described as the “most
preferabl[e]” configuration for this device.14 Patent ’423
describes the purpose of the stepped configuration as allowing
for the accommodation of “pipes or other cylindrical objects of

13 Opposer’s Notice of Reliance, Opposer’s Exhibit 12, p. ALP00215, Col. 8,
lines 51-58 (claim 6).

14 Id. at p. ALP00212, Col. 2, line 2.

Opposition No. 91182064
14

various larger sizes.”15 Mr. Steimle explained in his testimony
that the pipe boot is a cone shape designed to fit 1” to 6” pipe
and could be cut, at the appropriate step, to fit the size of
the pipe at issue.16 In other words, the steps are designed to
“fit particular pipe sizes.”17
A number of third-party utility patents have also been
submitted to show that the stepped design of the pipe boot
configuration is functional. A third-party utility patent may
be relevant evidence of functionality when it discloses the
utilitarian advantages of the applied-for product configuration
sought to be registered. See, e.g., Kistner Concrete Prods.
Inc. v. Contech Arch Techs., Inc., 97 USPQ2d 1912, 1921 n.7
(TTAB 2011); In re Dietrich, 91 USPQ2d 1622, 1627 (TTAB 2009).
Of the third-party patents of record, the following further
demonstrate that the stepped configuration feature of
applicant’s pipe boot design is functional:
U.S. Patent No. 3,807,110 (claiming a severable,
stepped configuration of a pipe boot);18 and

U.S. Patent Nos. 5,826,919 and 5,988,698 (claiming a
stepped configuration of a pipe penetration fitting

15 Id. at p. ALP00212, Col. 2, lines 3-4.

16 Steimle Dep. (I) 20:2-7, 30:9-15.

17 Id. at 32:1-7.

18 Opposer’s Notice of Reliance, Applicant’s Exhibit 13, p. ALP00284, Col. 6,
lines 10-18 (claims 3 & 4)

Opposition No. 91182064
15

“for receiving a plurality of different sizes of
pipes”.19

The walls of the steps of applicant’s pipe boot design are
tapered, or “frusto-conical” as applicant refers to them. As
Mr. Steimle testified, this feature allows for the pipe boots to
cover a range of pipe diameters falling within the different
steps.20 In other words, the pipe boots are stepped at standard
diameter sizes, but they will still accommodate pipes with
diameters falling within those steps. The conical shape further
allows the user to cut the pipe boot to a size smaller than the
size of the pipe so that the pipe boot securely seals around the
pipe as the pipe boot is fitted onto the pipe.21 This is a
functional feature disclosed in U.S. Patent No. 5,176,408 for a
weather seal device having tapered walls similar to those in the
applied-for design.22 In that patent, it is noted that the upper
end of the cone is open and “of a diameter to require
enlargement thereof by stretching it to fit a particular sized
elongate member. As a result of the stretching, the sleeve

19 Id. at p. ALP00246, Col. 8, lines 54-56 (claim 3), p. ALP00231, Col. 8,
lines 54-56 (claim 3).

20 Steimle Dep. (I) 51:20-24. See also Devitt Dep. 33:20-24, 37:10-22.

21 Steimle Dep. (I) 20:2-7.

22 See also U.S. Patent No. 4,664,390 (Opposer’s Notice of Reliance,
Applicant’s Exhibit 13, p. ALP00252, Col. 7, lines 15-18 (claim 9, claiming
tapered walls of a weather seal device)).
Opposition No. 91182064
16

establishes a sealing contact with the elongate member.”23
Consequently, the tapered, or “frusto-conical,” walls of the
applied-for design are also functional.
We turn our consideration now to the remaining features of
the applied-for design, which consist of a circular rib near the
top or beginning of each step in applicant’s pipe boot design
followed by a short, nearly vertical surface. Both Mr. Steimle
and Mr. Devitt testified that the rib acts as a cutting guide,
allowing the user to better cut the vertical wall between the
rib and the horizontal ledge of the next step.24 Mr. Hubbard
also testified that the rib prevents clamps from sliding off the
pipe boot.25 These functional features are disclosed in third-
party patents. See:
U.S. Patent No. 4,664,390: “Spaced along the tapered
portion 18 are a plurality of external ridges 14
denoting where the sleeve may be cut off to suit
elongate members of different diameters.”;26

U.S. Patent No. 5,176,408: “Spaced along the tapered
portion 18 are a plurality of external circumferential
ridges 14 denoting where the sleeve may be cut off to
suit larger elongate members of different
diameters.”;27

23 Opposer’s Notice of Reliance, Applicant’s Exhibit 13, p. ALP00260, Col. 5,
lines 32-36.

24 Steimle Dep. (I) 33:6-39:5, 67:16-68:3; Devitt Dep. 14:6-10, 36:1-9.

25 Hubbard Dep. 29:12-16. See also Kintzele Dep. 46:7-15 (“I think this [rib]
acts as a cap to keep the clamp from sliding up.”).

26 Opposer’s Notice of Reliance, Applicant’s Exhibit 13, p. ALP00250, Col. 4,
lines 32-36.

27 Id. at ALP00260, Col. 5, lines 37-42.
Opposition No. 91182064
17

U.S. Patent Nos. 5,826,919 and 5,988,698: “A plurality
of circumferential beads 52 running around the sleeve
above each hose clamp help to keep the hose clamps in
place at their respective points along the sleeve.
The beads are also useful in that they can be used as
guides for trimming from the boot any portion of the
sleeve that will not be used. For example, if the
boot is used to seal a large diameter pipeline, the
portion of the sleeve above the bead at the first hose
clamp can be trimmed such as with a utility knife.”28

Thus, the circular rib near the top of each step in the pipe
boot and the short, nearly vertical surface above it are also
functional.
In sum, the utility patent evidence, including applicant’s
own, now-expired patent, discloses the utilitarian advantages of
applicant’s pipe boot design. The severable, stepped
configuration allows the pipe boot to accommodate pipes of
various diameters, and the tapered walls within each step
provide a closer fit for the pipe diameters that fall between
the standard sizes (set forth or by way of the stepped decrease
in diameter sizes). That is, a secure seal is attained by
placing the boot over the pipe. As to the circular rib near the
top of each step, there is a small, nearly vertical wall above
said rib that acts as a cutting guide and as a barrier to keep
clamps in place.
Regarding the second Morton-Norwich factor, the record
includes applicant’s catalog touting several of the

28 Id. at ALP00245, Col. 5, lines 7-15, ALP00230, Col. 5, lines 7-15.
Opposition No. 91182064
18

aforementioned utilitarian features of applicant’s pipe design.
Specifically, the catalog explains that “[t]he conically shaped
steps of the Portals Plus pipe flashing will securely seal all
pipes and the large double thick molded rib at the top of each
step offers supreme tear resistance and reinforcement as well as
a cutting guide.”29 This description corroborates Mr. Steimle’s
testimony that the conical shape (within each step) allows the
pipe boot to work with a variety of different diameter pipes30
and that the rib “allow[s] the product not to tear easily” and
is “[u]sed as a guide for cutting.”31 Mr. Devitt concurred to
the extent that “[s]omeone could make that argument that it [the
rib] is reinforcing and obviously we do in our marketing
literature.”32 Further, on page 19 of its brief, applicant
concedes that “[i]t is true that Portals Plus brochures
beginning about 1996 attribute a cutting guide and reinforcing
function to the rib …, and later materials a clamp stopping
function to ribs.”33 As this evidence demonstrates, there are
utilitarian advantages of applicant’s pipe boot design as a
whole, namely, conically-shaped steps that provide a secure pipe

29 Opposer’s Notice of Reliance, Opposer’s Exhibit 9, p. ALP00473.

30 Steimle Dep. (I) 30:23-31:15.

31 Id. at 33:6-39:5.

32 Devitt Dep. 18:13-15.

33 Applicant goes on to note that “some [competitors] have adopted rings for
reinforcement.” Brief at p. 21.
Opposition No. 91182064
19

seal for various size pipes, and a rib that acts as a cutting
guide when separating the different steps and that also provides
resistance to tears when cutting the steps. Applicant’s own
advertising extols specific utilitarian advantages of the
applied-for product design and is strong evidence that the
matter sought to be registered is functional. See, e.g., In re
Becton, Dickinson & Co., 675 F.3d at 1375-76, 102 USPQ2d at
1377-78; Kistner Concrete Prods., Inc., 97 USPQ2d at 1924.
As to the third and fourth Morton-Norwich factors, the
evidence of alternative designs that can perform the same
functions as applicant’s design is somewhat limited. There are
competitors’ pipe boots with stepped walls that are not tapered
or “frusto-conical”; however, these designs would not perform
the same function as applicant’s design, namely, allowing the
pipe boot to fit a range of pipe diameters falling between the
standard pipe sizes at each step. Moreover, Mr. Hubbard
testified that using vertical instead of tapered walls for each
step makes it more difficult to pull the boot down over the
pipe, as there is “too much surface-area in contact.”34
Another possible alternative design would be a pipe boot
that is a cone without the steps. However, that design would
result in a cone that is “extremely tall without the steps to

34 Hubbard Dep. 128:15-25.
Opposition No. 91182064
20

bring it in.”35 The cone would need to be tall in order to
maintain an angle deep enough so that the boot, when clamped to
the pipe, would sit flush and prevent gathering at the clamp
that would be produced by a cone with shallower walls, which
could result in leaks.36
There is disagreement between the parties as to the
simplicity of manufacturing this particular pipe boot design or
whether applicant’s method of manufacture is relatively
inexpensive. Mr. Steimle testified that the applied-for design
“would require more material and be a cost to the
manufacturer.”37 Mr. Hubbard testified that the benefit of using
curved ribs, as applicant does with its design, is that it is
“easier for molding purposes to get out of the mold,”38 and Mr.
Smith, Jr., agreed;39 Mr. Devitt disagreed with this statement.40
However, even if applicant’s design is more expensive or more
difficult to make, that does not establish that the
configuration is not functional. In re Dietrich, 91 USPQ2d
1622, 1637 (TTAB 2009) (“[E]ven at a higher manufacturing cost,
applicant would have a competitive advantage for what is

35 Id. at 128:4-6.

36 Id. at 132:10-20, 133:17-134:5.

37 Steimle Dep. (I) 83:7-12.

38 Hubbard Dep. 130:14-15.

39 Smith, Jr., Dep. 39:7-8.

40 Devitt Dep. 20:21-22.
Opposition No. 91182064
21

essentially … a superior quality wheel.”); In re Pingel Enter.
Inc., 46 USPQ2d 1811, 1821 (TTAB 1998) (“That applicant, despite
the inherent advantages of a design which is simple and less
expensive to manufacture than other petcocks, has, however,
deliberately chosen a more complex and expensive manner in which
to manufacture its product does not mean that the configuration
thereof is not de jure functional.”); see In re Am. Nat’l Can
Co., 41 USPQ2d 1841, 1844-45 (TTAB 1997).
Ultimately, based on all of the record evidence and
arguments in relation to the Morton-Norwich factors, we find
that the overall design of applicant’s proposed pipe boot
configuration mark is dictated by utilitarian concerns. Thus,
we find that the pipe boot configuration mark as a whole is
functional and is not registrable on that basis.
Acquired Distinctiveness
Having determined that the applied-for mark is functional,
it is incapable of registration on either the Principal or
Supplemental Register. Opposer has argued that, in the
alternative, even if the applied-for mark is not functional, the
mark should also be refused registration because it has not
acquired distinctiveness.41 For sake of completeness, we address
the alternative claim.

41 Applicant argues in its brief that the acquired distinctiveness issue
raised by opposer is a new issue and that opposer “never notified Applicant
of its intent to pursue acquired distinctiveness alone without
Opposition No. 91182064
22

The applied-for mark consists of a design of a product.
Product design almost invariably serves purposes other than
source identification, and consumers are aware that even the
most unusual product design is intended not to identify the
source of the goods, but to render the product itself more
useful or appealing. See Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., 529 U.S. 205, 213, 54 USPQ2d 1065, 1069 (2000); In re
Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir.
2006). Thus, product designs can never be inherently
distinctive and will always require evidence of acquired
distinctiveness or secondary meaning. Wal-Mart Stores, Inc.,
529 U.S. at 215, 54 USPQ2d at 1069.
When a mark is proposed for registration under Section 2(f)
and is approved by the USPTO for publication, as happened with
applicant’s mark, there is a presumption that the examining
attorney found that the applicant had made a prima facie case of
acquired distinctiveness.42 Yamaha Int’l Corp. v. Hoshino Gakki

functionality.” Brief at p. 3. “Count I” of the Notice of Opposition
states, however, “[t]he alleged mark of Applicant’s Application is a
functional configuration of the goods that is not distinctive, has not
acquired secondary meaning or acquired distinctiveness, and does not operate
as a trademark.” Applicant implicitly acknowledges this claim; it asserts in
its second affirmative defense with its answer that “[a]pplicant’s three-
dimensional trademark has acquired distinctiveness through many years of
use.” Applicant’s argument on page 9 of its brief that “the issue of
distinctiveness should be limited to functionality” is therefore rejected.

42 During the prosecution history of this application, the application was
subject to an ex parte appeal on the issues of functionality and whether the
applied-for mark had acquired distinctiveness. At the request of the
examining attorney, the Board remanded the case in order to allow the
examining attorney to reconsider applicant’s evidence of acquired
Opposition No. 91182064
23

Co., 840 F.2d 1572, 1576, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).
And, when the same mark is challenged in an inter partes
proceeding such as this opposition, it is the opposer that has
the initial burden to establish prima facie that the applicant
did not satisfy the acquired distinctiveness requirement of
Section 2(f). Id., 6 USPQ2d at 1005. The opposer may meet this
initial burden if it produces “sufficient evidence or argument
whereby, on the entire record then before the board, the board
could conclude that the applicant has not met its ultimate
burden of showing acquired distinctiveness.” Id. And, as
further explained in Yamaha, “[i]f the opposer does present its
prima facie case challenging the sufficiency of applicant's
proof of acquired distinctiveness, the applicant may then find
it necessary to present additional evidence and argument to
rebut or overcome the opposer's showing and to establish that
the mark has acquired distinctiveness.” Id.; see also Duramax
Marine LLC v. R.W. Fernstrum & Co, 80 USPQ2d 1780 (TTAB 2006).
Upon review of all of the evidence and arguments in this
case, we find that opposer has met its initial burden in
challenging the acquired distinctiveness evidence submitted by

distinctiveness. The examining attorney “continued and maintained” the
functionality refusal and the refusal of the mark as non-distinctive product
design in Office actions dated May 18, 2005, August 29, 2006, and May 15,
2007 (the examining attorney made new drawing requirements in each of these
Office actions). The application, however, was then approved for publication
on December 5, 2007, and the appeal was dismissed without a decision on the
merits by the Board.
Opposition No. 91182064
24

applicant during the prosecution of its application. That is,
based on the entire record, including the patents submitted by
opposer and applicant’s own statements and catalog highlighting
the utilitarian aspects of the applied-for design, there is
ample evidence supporting a prima facie showing that consumers
will view the pipe boot design as a non-distinctive product
design, rather than a design that has acquired distinctiveness
and functions as an indicator of the source of the product.
Applicant has not overcome this finding by ultimately
establishing that its mark has acquired distinctiveness.
Applicant submitted evidence of acquired distinctiveness with
its initial application filed on October 18, 2002; said evidence
consisted solely of an affidavit of Ronald W. Resech, the
president of Portals Plus, Inc., the original applicant in this
case. In that affidavit, Mr. Resech made statements regarding
the length of use of the product as well as sales and
advertising expenditures, and attached examples of
advertisements for the pipe boot.
Applicant has not demonstrated with this affidavit that the
proposed mark has acquired distinctiveness by at least a
preponderance of the evidence. Because the proposed mark is a
product design, applicant had to show that the primary
significance of the design in the minds of consumers is not that
of the product itself, but rather is the source of that pipe
Opposition No. 91182064
25

boot in order to establish acquired distinctiveness. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); In re Ennco Display Sys. Inc., 56 USPQ2d 1279 (TTAB
2000).
Applicant made a claim in its application of substantially
exclusive and continuous use in commerce for the five years
prior to the date the statement was made. With respect to
applicant’s length of use, evidence of substantially exclusive
use for number of years may be considered as evidence of
acquired distinctiveness. See 37 C.F.R. §2.41(b). However, the
weight to be accorded this kind of evidence depends on the facts
and circumstances of the particular case. See Yamaha, 840 F.2d
at 1576, 6 USPQ2d at 1004. In this case, when considered in
relation to the evidence of record showing the utilitarian
nature of applicant’s design, the years of use claimed by
applicant are insufficient, by themselves or in conjunction with
the other evidence of record, to show that the pipe boot design
has acquired distinctiveness. See Mag Instruments Inc. v.
Brinkmann Corp., 96 USPQ2d 1701, 1723-24 (TTAB 2010) (twenty-
seven years of use “simply insufficient” to show distinctiveness
either alone or in connection with “substantial sales and
advertising”).
Applicant also relies on sales and advertising expenditures
for the pipe boot. This evidence does little to help establish
Opposition No. 91182064
26

that the pipe boot design at issue acts as a source-identifier
in the minds of consumers. Applicant’s sales information only
lists the number of units sold and is devoid of any context,
such as market share, giving this information little, if any,
probative value. Further, the advertising figures applicant
provided are not for pipe boots alone, but for advertising
expenditures “that include pipe boots.” Thus, it is unclear how
much advertising applicant devotes to establishing the pipe boot
design as a mark in the minds of consumers. See, e.g., Target
Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007)
(advertising expenditures relate to catalogs and advertisements
that display numerous goods under a variety of marks). Even if
we were to assume that all the advertising expenditures listed
by applicant went solely to promoting the pipe boot design as a
mark, the amount of advertising is relatively modest per year,
considering that it is assumed applicant advertises the pipe
boot nationwide. As we have noted before, even a successful
advertising campaign is not in itself necessarily enough to
prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d
1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual
sales under the mark of approximately eighty-five million
dollars, and annual advertising expenditures in excess of ten
million dollars, not sufficient to establish acquired
distinctiveness in view of highly descriptive nature of mark);
Opposition No. 91182064
27

Braun Inc. v. Dynamics Corp., 975 F.2d 815, 827, 24 USPQ2d 1121,
1133 (Fed. Cir. 1992) (“[L]arge consumer demand for Braun's
blender does not permit a finding the public necessarily
associated the blender design with Braun.”); In re Bongrain
Int'l (American) Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727,
1729 (Fed. Cir. 1990) (growth in sales may be indicative of
popularity of product itself rather than recognition as denoting
origin).
As already discussed, applicant has engaged in advertising
that highlights the utilitarian advantages of certain design
features of its pipe boot design. However, this does not
constitute “look for” advertising because applicant’s
promotional material does not point consumers to any unique
design features of the goods for the purpose of distinguishing
the source of its pipe boots from those of competitors. Rather,
applicant is merely highlighting the utilitarian features of its
pipe boot design. When advertisements are submitted as evidence
of acquired distinctiveness, they must demonstrate the promotion
and recognition of the specific configuration embodied in the
applied-for mark and not of the goods in general. See, e.g., In
re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008); In
re Edward Ski Prods. Inc., 49 USPQ2d 2001, 2005 (TTAB 1999); In
re Pingel Enter. Inc., 46 USPQ2d 1811, 1822 (TTAB 1998). This
Board and other courts have emphasized the importance of such
Opposition No. 91182064
28

advertisements in regard to configuration or product design
marks. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F.2d 1342, 1345 n. 8, 196 USPQ 289, 291 n. 8 (C.C.P.A. 1977)
(advertising emphasizing design portion of the mark to potential
customers is persuasive evidence of acquired distinctiveness);
Mag Instruments Inc., 96 USPQ2d at 1723-24 (absence of “look
for” advertisements “most damaging” to applicant’s claim of
acquired distinctiveness); see also Thomas & Betts Corp. v.
Panduit Corp., 65 F.3d 654, 662, 36 USPQ2d 1065, 1071-72 (7th
Cir. 1995) (advertising “look for the oval head” for cable ties
encourages consumers to identify the claimed trade dress with
the particular producer); Duraco Prods. Inc. v. Joy Plastic
Enter., Ltd., 40 F.3d 1431, 1451, 32 USPQ2d 1724, 1741 (3d Cir.
1994) (advertising expenditures “measured primarily with regard
to those advertisements which highlight the supposedly
distinctive, identifying feature” of the product configuration);
First Brands Corp. v. Fred Meyer Inc., 809 F.2d 1378, 1383, 1
USPQ2d 1779, 1782 (9th Cir. 1987) (“[A]dvertising campaign has
not stressed the color and shape of the antifreeze jug so as to
support an inference of secondary meaning.”). The advertising
applicant submitted with its application to support its claim of
acquired distinctiveness is deficient because it only shows a
picture of the pipe boot and explains where it can be used.
See, e.g., In re Pingel Enter. Inc., 46 USPQ2d at 1823
Opposition No. 91182064
29

(applicant’s catalog and advertising show configuration solely
as an illustration of applicant’s product and not in a manner
that would be understood by consumers as a mark). As for
applicant’s catalog, the pipe boot does not even appear on the
cover. And while certain features of the pipe boot are
highlighted inside the catalog, as noted previously, it is their
utilitarian purposes or advantages that they provide to
consumers that are being touted, which “undermines” a finding of
acquired distinctiveness. See In re Ennco Display Sys. Inc., 56
USPQ2d at 1285 (quoting Thomas & Betts Corp., 65 F.3d at 662, 36
USPQ2d at 1071-72). Thus, we do not view applicant’s
advertising as an attempt to create an association in the minds
of consumers between the pipe boot design and applicant as the
source of the pipe boot. See Mag Instrument Inc., 96 USPQ2d at
1723-24.
Based upon our consideration of all the evidence in the
record, with an emphasis on that specifically discussed above,
we find that the pipe boot design has not acquired
distinctiveness.
Decision: The opposition is sustained on the ground that
applicant’s proposed mark is functional under Section 2(e)(5)
and is not entitled to registration. We further find the mark
has not acquired distinctiveness and is not entitled to
registration under Section 2(f).