Bedford Industries, Inc.

Trademark Trial and Appeal Board

Sep 30, 1998

No. 74620872 (T.T.A.B. Sep. 30, 1998)

Paper No. 14
SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bedford Industries, Inc.
________
Serial No. 74/620,872
_______
Robert C. Baker of R. C. Baker & Associates, Ltd. for
Bedford Industries, Inc.
Odette Bonnet, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Simms, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Bedford Industries, Inc. (applicant), a South Dakota
corporation, has appealed from the final refusal to
register the asserted mark shown below
Ser No. 74/620,872
2
for plastic double wire tie ribbon with or without an
adhesive coating on one side.1 In an amendment to the
application, applicant describes its mark as follows:
The mark consists of transverse
parallel ridges and valleys on one side
of the web of material extending
between the thickened embedded-wire
edges of the tie ribbon. The outline
of the goods depicted in dotted lines
in the drawing shows the placement of
the mark on the goods and is not
claimed as a feature of the mark.
In her brief, the Examining Attorney indicates that there
are two issues on appeal:
I. Whether applicant’s proposed mark
for a “railroad track” design is
de jure functional insofar a[s] it
assists positive machine feeding;
II. Whether the mark is de facto
functional and a nondistinctive
configuration of the goods if it
is proven not to be de jure
functional, and whether
applicant’s proposed mark is
inherently distinctive.

1 Application Ser. No. 74/620,872, filed January 13, 1995, based
upon applicant’s claim of use in commerce since at least as early
as September 1977.
Ser No. 74/620,872
3
We believe, however, that there is only one issue before us
-– whether applicant’s asserted mark is inherently
distinctive of its tie ribbon. We turn first, therefore,
to a discussion of this aspect of the appeal.
In the first Office action, the Examining Attorney
refused registration on the grounds of de jure
functionality. She stated that the asserted mark consists
of a design feature which serves a utilitarian purpose.
The Examining Attorney also refused registration because
the proposed mark was not inherently distinctive. In the
next Office action, the Examining Attorney requested that
applicant provide information concerning whether its
asserted mark is the subject of a patent and whether
alternative designs are available. In the third (Final)
Office action, the Examining Attorney stated:
The attorney agrees that the proposed
mark does not appear to be de jure
functional. However, it is clearly de
facto functional, as pointed out by
applicant. Since it is de facto
functional, the issue of acquired
distinctiveness arises, if the mark is
not inherently distinctive.
See Final Office action mailed September 5, 1996. After
applicant submitted a request for reconsideration, the
Examining Attorney then stated, among other things:
…At any rate, the issue here is not one
of descriptiveness but whether the
Ser No. 74/620,872
4
proposed mark is functional and whether
it is a nondistinctive configuration of
the goods. As previously shown, the
answer must be that the mark is de
facto functional and is a non-
distinctive configuration of the goods.
Thereafter, applicant in its appeal brief stated that the
“sole issue is inherent distinctiveness.” (Emphasis in
original) In her appeal brief, however, the Examining
Attorney discussed both the issue of de jure functionality
as well as the issue of inherent distinctiveness. In its
reply brief, applicant objected to the Examining Attorney
again raising the issue of de jure functionality. We agree
with applicant that the issue of de jure functionality must
be considered withdrawn.
It seems to us that some of the confusion surrounding
this case has resulted from the Examining Attorney’s
apparently confusing the concepts of de jure functionality
and de facto functionality, and, contrary to normal usage,
using the term “functionality” alone to refer to de facto
functionality rather than de jure functionality. The
difference between these concepts is discussed in a number
of cases including the seminal case of In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
Suffice it to say that any product or product container
that has utility may be considered to have a de facto
Ser No. 74/620,872
5
function. The container in Morton-Norwich, for example,
was de facto functional because it performed the function
of holding applicant’s liquid product. Possessing a de
facto function or having de facto functionality, however,
is not a ground of refusal. Almost any product or
container can be said to be de facto functional because it
possesses some utility. However, the question is always
the degree of utility possessed by the asserted mark, not
the mere possession of utility, and the statute and case
law only bars registration of asserted marks which are de
jure functional, that is, products, product containers and
trade dress which are so superior in design that they are
essential to effective competition.
In her brief, the Examining Attorney indicated that
applicant has admitted that its mark is “functional.” The
“admission” by applicant, however, was that its asserted
mark is de facto functional, that is, that it possesses
some function. Further evidence of the Examining
Attorney’s confusing these terms is her reference to
factors of de jure functionality in that part of her brief
discussing the asserted mark’s lack of inherent
distinctiveness. For example, the Examining Attorney
indicated, page 6 of her brief, that applicant’s
configuration is not inherently distinctive “because the
Ser No. 74/620,872
6
railroad track design is in great part dictated by the
functionality aspect of the product…”. She also discussed
available alternative designs and other considerations that
usually apply to determining whether an asserted mark is de
jure functional. The Examining Attorney concluded:
Therefore, since the applicant has
failed to introduce any evidence of
acquired distinctiveness, registration
should also be refused on the ground
that the mark is de facto functional.
Suffice it to say that the Examining Attorney’s assertion
in the final refusal that applicant’s asserted mark “does
not appear to be de jure functional” is considered a
withdrawal of this refusal, and that it would be unfair to
applicant to now interject this issue in this case.2
With respect to the refusal based on the lack of
inherent distinctiveness, the Examining Attorney argues
that, unless the design is of such nature that its

2 Although the issue of de jure functionality is not before us,
there is some evidence tending to support a de jure functionality
refusal. Applicant submitted two declarations by Lloyd
Tinklenberg, its director of product development. In the first
of his two declarations, Mr. Tinklenberg stated that it is
“possible” that applicant’s tie ribbon having the transverse
parallel ridges and valleys “may provide some degree of anti-slip
for the gripping of the tie ribbon as it is moved through
application machinery in packaging operations at the industrial
user level,” although counsel maintains that the smooth tie
ribbons work satisfactorily. (Applicant also argues that this
feature is not important to the ultimate consumer of the products
employing its tie ribbons.) Exhibit No. 4 of applicant’s record
also contains the following statement: “Exclusive Bedford
railroad track design assists positive machine feed.” Applicant
Ser No. 74/620,872
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distinctiveness is obvious, evidence must be submitted to
prove that the relevant purchasers recognize the design as
a trademark identifying the source of the goods (secondary
meaning). The Examining Attorney relies, to a significant
degree, upon Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,
568 F.2d 1342, 196 USPQ 289 (CCPA 1987). In determining
whether a design is inherently distinctive, that Court
stated, at 291, that in the past the Court:
…has looked to whether it was a
“common” basic shape or design, whether
it was unique or unusual in a
particular field, [or] whether it was a
mere refinement of a commonly-adopted
and well-known form of ornamentation
for a particular class of goods viewed
by the public as a dress or
ornamentation for the goods…
The Federal Circuit more recently summarized the test for
determining inherent distinctiveness:
Thus, the focus of the inquiry is
whether or not the trade dress is of
such a design that a buyer will
immediately rely on it to differentiate
the product from those of competing
manufacturers; if so, it is inherently
distinctive.
Tone Brothers Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d
1321, 1331 (1994). It is the Examining Attorney’s position
in this case that the railroad track design of applicant’s

has taken the position that there are alternative designs which
perform this function just as well.
Ser No. 74/620,872
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tie ribbon is not so unique, unusual or unexpected that it
would immediately be perceived by customers as a trademark
for tie ribbon emanating from applicant.
Applicant, on the other hand, argues that its asserted
mark immediately functioned as a source identifier upon
first use because all of its other double wire tie ribbons
have a plain, smooth surface between the embedded edge
wires, rather than the so-called railroad track design.
Applicant argues that this railroad track design would
immediately distinguish these from other tie ribbons.
Applicant maintains that no one else has ever used a
railroad track design on its tie ribbons and that it is not
a mere refinement of the commonly adopted plain or smooth
form of ornamentation of a double wire tie ribbon.
Accordingly, applicant argues that the evidence points to
the uniqueness of applicant’s uncommon railroad track
design on its double wire tie ribbon.
This record is relatively limited, and includes
examples of applicant’s tie ribbons as well as two
declarations submitted by applicant. It is clear from this
record that applicant and others sell substantially
identical double wire tie ribbons without any transverse
parallel ridges and valleys or so-called railroad track
designs. For example, the first Tinklenberg declaration
Ser No. 74/620,872
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indicates that at least one U.S. maker of soda cracker
“slugs” or “tubes” uses plastic double wire tie ribbons
supplied by applicant without any parallel ridges and
valleys. Mr. Tinklenberg also indicates that there are
others who manufacture double wire tie ribbons having a
smooth surface between the edge wires. He also indicates
that applicant makes double wire tie ribbons with a smooth
surface between the lateral wires with widths both narrower
and wider than the width of the double wire tie ribbon
having the railroad track configuration. Mr. Tinklenberg
declares that the appearance of its double wire tie ribbon
“appears to be quite distinctive and unique to Bedford.”
First declaration, 5. In his second declaration, he again
indicates that competitors have put out “smooth panels
between the wires embedded at the edges.” He also states:
b) Bedford sells the No. 17 ribbon of
Exhibit 1 (having the mark of this
application), and the mark of No. 18 of
Exhibit 1 (not having the mark of this
application, but otherwise extremely
similar to No. 17) for the same price
per quantity and for the same purposes.
Elsewhere, in discussing possible alternative designs, he
indicates that a diamond design on tie ribbons has been
produced by applicant.
After careful consideration of this record, we agree
with the Examining Attorney that the asserted mark before
Ser No. 74/620,872
10
us is very similar to other double wire tie ribbons
produced by applicant and by others. As noted, applicant’s
own director of product development admits in his second
declaration that applicant’s tie ribbon without the “mark”
is “otherwise extremely similar” to the tie ribbon with the
“mark.” For applicant’s asserted mark to be registrable on
the Principal Register without resort to Section 2(f), the
asserted mark would have to be immediately recognizable as
a distinctive way of identifying the source of applicant’s
goods. See Seabrook Foods, supra, Tone Brothers, supra,
and In re Hudson News, 39 USPQ2d 1915 (TTAB 1996).
Here, we have no evidence from others in the trade,
such as purchasers or buying agents of manufacturers, that,
from the beginning, they perceived the railroad track
design as a distinctive source indicator. In other words,
there is no evidence, other than applicant’s statement in
the declaration that its design “appears to be quite
distinctive,” that this design on tie ribbon is immediately
recognizable as denoting origin. There is also no evidence
that the asserted mark has been promoted in advertisements
as being distinctive.3 Given the fact that applicant and
others sell tie ribbons with a plain or smooth surface

3 We do not regard the statement in relatively small print on
page 2 of applicant’s brochure (Exhibit 4) that its railroad
Ser No. 74/620,872
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between the double encased wires, and that the relevant
public has been exposed to at least one other design on tie
ribbons of this nature (a diamond design), we believe that
this railroad track design, if it is noticed at all,4 would
be perceived as nothing more than slightly different
ornamentation. This slight difference in appearance does
not, in our view, automatically transform this design to an
inherently distinctive trademark registrable on the
Principal Register. Finally, the fact that applicant is
apparently the only one that has used this railroad track
design on tie ribbon is also not persuasive of a contrary
result. See Hudson News, at 1924.
In sum, we fail to see how the so-called railroad
track design of applicant’s double wire tie ribbon would be
immediately recognized by potential purchasers of
applicant’s goods (even relatively sophisticated
purchasers) to differentiate the source of that product
from the source of other very similar tie ribbons. It
appears to us that the asserted mark is a relatively minor
refinement or variation, somewhat ornamental in nature,

track design assists in positive machine feed, quoted in footnote
2 above, as promotion as a distinctive mark.
4 In this regard, we note that the railroad track design is more
noticeable on some tie ribbons than it is on others. On some of
the tie ribbons, the design is not readily visible unless held up
to the light.
Ser No. 74/620,872
12
which would not ordinarily be perceived as a trademark.
See, for example, Goodyear Tire & Rubber Co. v. Vogue Tyre
& Rubber Co., 47 USPQ2d 1748 (TTAB 1998)(gold annular
stripe on tires not inherently distinctive); In re Chung,
Jeanne & Kim Co., Inc., 226 USPQ 938 (TTAB 1985)(stripes on
shoes not inherently distinctive); In re Keyes Fibre Co.,
217 USPQ 730 (TTAB 1983)(T-shaped openings in beverage
carrier sockets of molded carrying trays not inherently
distinctive); and In re Kwik Lok Corp., 217 USPQ 1245 (TTAB
1983)(perimeter and slot-shaped opening of plastic bag
closures not inherently distinctive).
Decision: The refusal of registration is affirmed.
R. L. Simms
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser No. 74/620,872
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