Brian Moore Guitars, Inc.

Trademark Trial and Appeal Board

Jul 16, 1997

EX (T.T.A.B. Jul. 16, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 16, 97
Paper No. 17
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Brian Moore Guitars, Inc.
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Serial No. 74/455,676
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Ronald S. Bienstock of Horing, Welikson & Bienstock, P.C.
for Brian Moore Guitars, Inc.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Sams, Simms and Cissel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 9, 1993, applicant applied to register the
configuration of the guitar headstock design shown below

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for what were subsequently identified by amendment as
"electric guitars and acoustic guitars and bass guitars and
parts thereof." The application is based on a claim of use
since October 1, 1993.
Registration was refused under Sections 1, 2 and 45 of
the Act on the ground that the proposed mark is functional,
and under Section 2(d) of the Act on the ground that the
proposed mark so resembles the mark shown below,

which is registered1 to Peavey Electronics Corporation for
"musical instruments, namely, guitars," that confusion is
likely.
Responsive to the refusal to register based on
functionality, applicant did not deny that its headstock
serves a utilitarian purpose, but argued that the design is
not unregistrable under the Act. Applicant contended that
the design is only de facto functional, rather than de jure
functional, and argued that it is therefore entitled to

1Reg. No. 1,738,262, issued on the Principal Register on
December 8, 1992.
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registration because it has acquired distinctiveess under
Section 2(f) of the Act. Applicant also argued that
confusion with the registered mark is not likely in view of
the differences in the marks and the sophistication of the
purchasers of the goods.
Attached to applicant's response were several exhibits,
including reviews of applicant's guitars from 20th Century
Guitar Magazine and Guitarist Magazine, an article about
applicant's guitars from the Putnam Reporter Dispatch, and a
promotional brochure for applicant's guitars.
The Examining Attorney was not persuaded by applicant's
arguments and exhibits. He maintained the refusal to
register based on the likelihood of confusion under Section
2(d) of the Act and he apparently withdrew the refusal under
Sections 1, 2 and 45 of the Act based on functionality,
agreeing with applicant that the design sought to be
registered is only de facto functional. He held that
applicant had not, however, established that the design has
acquired distinctiveness under Section 2(f) of the Act.
Applicant responded with more argument and exhibits,
including advertisements and photographs of applicant's
guitars and the guitars of three competitors, Fender, Gibson
and Washburn. Also submitted was another copy of the
article about applicant's guitars from the Putnam Reporter
Dispatch.
The Examining Attorney withdrew the refusal based on
Section 2(d), but made final the refusal based on his
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finding that applicant has not established that the design
it seeks to register has acquired distinctiveness.
Applicant then filed a Notice of Appeal to the Board,
followed by a request for reconsideration. The request
provided dollar amounts for applicant's advertising
expenditures from 1990 through July of 1995. Also included
with the reconsideration request was a copy of a printed
advertisement for applicant's guitars. The advertisement
features ten photographs of guitar players and quotations
from each regarding applicant's guitars, but the headstock
design is neither mentioned in the quotations nor featured
in the pictures. Applicant argued that the advertisement is
"an example of acceptance and recognition in the
marketplace."
The Examining Attorney remained unpersuaded by
applicant's arguments, and the application was returned to
the Board for resumption of action on the appeal. Applicant
filed its brief, attaching a copy of an advertisement from a
recent issue of Travel & Leisure Magazine. The
advertisement is for the Disney Institute, which is
described as a resort in Florida. On the second page it
shows what appears to be the neck and headstock of one of
applicant's guitars, along with a pair of drumsticks. Above
the photo is an invitation to "Participate in an open
rehearsal by your favorite guitarist."
The Examining Attorney filed his brief. In addition to
making arguments in support of the refusal to register, he
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specifically consented to the Board's consideration of the
evidence applicant untimely filed with its brief. His
position, however, is that the advertisement does not
support the conclusion that the design has become
distinctive of applicant's products.
No request for an oral hearing was made by applicant.
The legal principles governing this dispute are well
settled and are not disputed by applicant or the Examining
Attorney. "A design configuration is considered to be
unregistrable when it has been determined to be de jure, as
opposed to de facto, functional. An item which is de facto
functional may be registrable, while one which is de jure
functional may never be registered even if it has been shown
to possess some recognition in the trade." In re Peters, 6
USPQ2d 1390, 1391 (TTAB 1988). In order to hold the design
in question de jure functional, it must be shown not just
that the item has a function, but also that the performance
of that function is enhanced by the particular configuration
in which the design is executed. In re R. M. Smith, 734
F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984). A configuration
which embodies a design which is so superior to other
available designs for achieving its purpose is de jure
functional, and it is not registrable on either register.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ
9 (CCPA 1982). If, however, the design is a feature of the
goods which is only one of many equally feasible, efficient
and competitive alternatives, then it is considered to be
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merely de facto functional and may be registered on the
Supplemental Register or on the Principal Register if it is
inherently distinctive or if it has acquired distinctiveness
under Section 2(f) of the Act. In re R. M. Smith, Inc.,
supra.; In re Ovation Instruments, Inc., 201 USPQ 116, (TTAB
1968).
As noted above, the issue in this appeal is not whether
the design sought to be registered is de jure functional.
Contrary to the position taken in the Examining Attorney's
appeal brief, whether or not the configuration is de facto
functional is not an issue. De facto functionality is not a
ground for refusal of registration. Indeed, it would be
difficult to conceive of a product configuration which is
not at least de facto functional.
Both applicant and the Examining Attorney agree that
the design is de facto functional. Applicant does not
contend that it is inherently distinctive. The issue,
therefore, is whether or not applicant has established that
the configuration of applicant's guitar headstock is
registrable under Section 2(f) of the Act because it has
acquired distinctiveness.
To establish secondary meaning, applicant must show
that the primary significance of the design in the minds of
the people who purchase guitars is not the product, but
rather is an indication of the producer. Distinctiveness is
typically established with evidence of how long the mark has
been used, the type and amount of advertising of the mark,
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and any other evidence that shows that the consuming public
for the goods associates the proposed mark with a particular
source. In re Pennzoil Products Company, 200 USPQ 753 (TTAB
1991).
Based on careful consideration of all of the exhibits
submitted and arguments made by applicant, however, we agree
with the Examining Attorney that applicant's design is not
inherently distinctive, and that applicant has not met its
burden of establishing that the configuration has developed
secondary meaning as an indicator of the source of
applicant's goods. We will discuss each group of
evidentiary submissions in turn.
The first attempt to show acquired distinctiveness was
the September 19, 1994 response to the first refusal.
Exhibit A thereto is simply a copy of the drawing of
applicant's guitar headstock. This has no probative value
on the issue before us.
The second two exhibits are reviews of applicant's
product from guitar magazines. The text of the first notes
that the headstock on applicant's guitar is "a particularly
well designed and attractive piece of work." The second
reviewer notes that he likes the headstock design very much.
Both reviews feature photos of applicant's guitars, but the
configuration of the headstock is neither emphasized in the
pictures nor mentioned further in the text. These two
magazine articles are plainly favorable reviews of
applicant's guitars, but neither indicates that either
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applicant or the reviewer views the design of the
configuration of the headstock as an indication of the
source of the guitars.
Exhibit D is the article about applicant's business
from The Putnam Reporter Dispatch. The caption beneath one
photo therein notes that "Even the headstocks...on the
custom instrument are unique." Near the end of the two-page
text, a music store manager is quoted concerning the
contoured back of the guitar. He goes on to add "And
there's a really nice headstock." Although the headstocks
are shown in the accompanying photos, both attached to the
completed product and detached therefrom as unfinished
components during the manufacturing process, no further
attention is paid to the design of the headstock. We cannot
conclude from these exhibits that the configuration of
applicant's headstock serves as a trademark for these
guitars.
The final exhibit to the first response to the refusal
is a promotional brochure featuring text and photographs of
applicant's guitars. Although the headstock design is shown
on the cover and in several other pictures in the sixteen-
page pamphlet, the only mention of it in the text is on the
eighth page, wherein "Features" of the product are listed.
These features include "Natural Wood Binding," "Advanced
Neck-thru Composite Design," "Choice of Fingerboards" and
"Distinctive Sculptured Headstock." This exhibit clearly
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does not establish that the design sought to be registered
has acquired distinctiveness.
The exhibits submitted with applicant's January 17,
1995 response to the second refusal to register are likewise
unpersuasive that the design has acquired secondary meaning.
The competitive guitars shown are not dramatically different
in appearance from applicant's guitars. Applicant does not
even mention its headstock design in the texts of either
advertisement. The review of applicant's guitar in the
guitar magazine does note that "...the headstock itself is a
particularly well designed and attractive piece of work."
Neither the ads nor the review, however, indicates that the
design sought to be registered is perceived by guitar
purchasers as an indication of the source of applicant's
products.
The next exhibit submitted by applicant in support of
the claim under Section 2(f) of the Act is the advertisement
attached to the request for reconsideration. As mentioned
above, the headstock is neither mentioned in the text nor
featured in the photographs. The quotations may show that
the musicians pictured in the advertisement are all pleased
with applicant's product, but the ad is not evidence that
the headstock design functions as a trademark for
applicant's guitars.
The reconsideration request includes a statement that
applicant spent almost $350 thousand on advertising from
1992 through mid-1995, but this statement does not provide
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us with a basis for concluding that the advertising featured
the design sought to be registered, or that the amount spent
on such advertising had the effect of creating recognition
of the design as a trademark in the minds of prospective
guitar buyers. We have no examples of the advertisements,
nor do we have any information with which to put applicant's
expenditures into perspective relative to the promotional
expenses of applicant's competitors.
The exhibit submitted untimely with applicant's appeal
brief, but nonetheless accepted by the Examining Attorney,
is the ad for the Disney Institute. That another, unrelated
business pictures the headstock in its own advertisement
promoting its theme park does not establish that the
admittedly de facto functional design has become distinctive
as a source indicator for applicant's goods.
In summary, because applicant has not met its burden of
proving that the configuration sought to be registered has
come to be regarded as a trademark for applicant's goods,
the refusal to register is affirmed, and registration to
applicant is refused.
J. D. Sams
R. L. Simms
R. F. Cissel
Administrative Trademark Judges
Ser No. 74/455,676
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Trademark Trial and Appeal Board
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