Change Wind Corp.

Trademark Trial and Appeal Board

Jul 20, 2017

No. 86046590 (T.T.A.B. Jul. 20, 2017)

This Opinion is a
Precedent of the TTAB

Mailed: July 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Change Wind Corp.
_____

Serial No. 86046590
_____

Robert J. Hess dba Hess Patent Law Firm LLC,
for Change Wind Corp.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Quinn, Cataldo and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Change Wind Corp. (“Applicant”) seeks registration on the Principal Register
pursuant to the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f),
of the product configuration set forth below as a mark for “Wind turbines; Wind-
powered electricity generators” in International Class 7:1

1 Application Serial No. 86046590 was filed on August 23, 2013, based upon Applicant’s
allegation of first use anywhere and use in commerce since January 12, 2010.

In this decision, page references to the application record refer to the .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
refer to the Board’s TTABVUE docket system.
Serial No. 86046590
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The amended description of the mark states:2
The mark consists of a three-dimensional configuration of a wind
powered turbine for generating electricity featuring four vertically
extending turbine wings that are obliquely curved in a twisting manner
and spaced from and relative to a vertically extending cylindrical base
that tapers at its upper end into [sic] truncated cone with the turbine
wings extending from a [sic] elevation beneath that of the truncation of
the truncated cone to an elevation above the truncation of the truncated
cone, the matter shown in broken or dotted lines is not part of the mark
and serves only to show the position or placement of the mark.

2 Color is not claimed as a feature of the mark.
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The Trademark Examining Attorney has refused registration of Applicant’s
applied-for mark under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5),
on the ground that the product design is functional. Alternatively, registration has
been refused under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1052 and 1127, on the ground that the configuration fails to function as a mark
because it consists of a non-distinctive product design, is not registrable on the
Principal Register without proof of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), and the proffered evidence of acquired
distinctiveness is insufficient.
When the refusal and alternative refusal were made final, Applicant appealed and
requested reconsideration seven times.3 After the Examining Attorney denied the
requests for reconsideration, the appeal resumed. We affirm the refusal to register on
the ground that the matter sought to be registered is functional, and we also affirm
on the alternative ground that the matter sought to be registered constitutes product

3 March 20, 2015, March 23, 2015, March 25, 2015, March 25, 2015 (second filing), April 7,
2015, October 13, 2015, and October 22, 2015, Requests for Reconsideration. Applicant filed
an appeal brief on December 29, 2015, after which jurisdiction was restored to the Examining
Attorney for consideration of the outstanding requests for reconsideration. (4 TTABVUE; 6
TTABVUE). Applicant then filed, on May 23, 2016, an appeal brief that exceeded the page
limits under Trademark Rule 2.142(b)(2), 37 C.F.R. § 2.142 (b)(2). (11 TTABVUE). On June
4, 2016, Applicant filed an appeal brief that complied with the page limits. (13 TTABVUE).
After various orders issued regarding the appeal briefs, the Board indicated in its order
issued September 22, 2016, that the June 4, 2016, appeal brief was accepted. (19 TTABVUE).
Applicant’s evidence attached to its reply brief has not been considered. Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d); In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) (“By
attempting to introduce evidence with its reply brief, applicant has effectively shielded this
material from review and response by the Examining Attorney.”). See TBMP §§1203.02(e),
1207.01 (June 2017).
Serial No. 86046590
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design that does not function as a mark and the Applicant has not proved acquired
distinctiveness.
I. Functionality
Section 2(e)(5) of the Trademark Act provides that registration of a product design
be denied if it “comprises any matter that, as a whole, is functional.” Generally, a
product design or product feature is considered to be functional in a utilitarian sense
if it is: (1) “essential to the use or purpose of the article;” or if it (2) “affects the cost or
quality of the article.” TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58
USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844, 214 USPQ 1, 4 n.10 (1982)).
In making our determination of functionality we are also guided by the analysis
first applied in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16
(CCPA 1982). See also Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
1422, 1427 (Fed. Cir. 2002). Morton-Norwich identifies four nonexclusive categories
of evidence which may be helpful in determining whether a particular design is
functional: (1) the existence of a utility patent disclosing the utilitarian advantages
of the design; (2) advertising materials in which the originator of the design touts the
design’s utilitarian advantages; (3) the availability to competitors of functionally
equivalent designs; and (4) facts indicating that the design results in a comparatively
simple or cheap method of manufacturing the product. Morton-Norwich, 213 USPQ
at 15-16.
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The Supreme Court has made it clear, however, that if evidence such as
statements in a relevant utility patent or the applicant’s own promotional materials
establishes that the design is functional under the Inwood formulation of the test,
further inquiry into the existence of available alternative designs or whether there is
a competitive necessity for the feature is unnecessary. TrafFix Devices, 58 USPQ2d
at 1006 (“Where the design is functional under the Inwood formulation there is no
need to proceed further to consider if there is a competitive necessity for the feature.”);
In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1378 (Fed. Cir.
2012) (“[S]ince the patent and advertising evidence established functionality, the
Board did not need to analyze whether alternative designs exist.”). Thus, there is no
requirement that all of the categories of evidence identified in Morton-Norwich
appear in every case in order to make a functionality refusal. In re Heatcon, Inc., 116
USPQ2d 1366, 1370 (TTAB 2015).
In considering the applied-for mark as a whole, our primary reviewing court has
recognized that the initial analysis may be of the separate features of the involved
configuration, followed by consideration of the entire design. Becton, Dickinson, 102
USPQ2d at 1376 (“[O]ne object of the Morton-Norwich inquiry is to weigh the
elements of a mark against one another to develop an understanding of whether the
mark as a whole is essentially functional and thus non-registrable.”); In re R. M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 2 (Fed. Cir. 1984). Here, in considering the
functionality of the configuration as a whole, we may consider the functional role of
Serial No. 86046590
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the individual features of the design—the conical housing and the helical wings—to
determine whether the applied-for mark is functional and thus, unregistrable.
1. The Existence of Patents.
The first category of evidence identified in Morton-Norwich is whether a utility
patent discloses the utilitarian advantages of the design. A utility patent is strong
evidence that the features an applicant claims are functional. TrafFix Devices, 58
USPQ2d at 1005. A utility patent need not “claim the exact configuration for which
trademark protection is sought in order to undermine an applicant’s assertion that
an applied-for mark is not de jure functional.” Becton, Dickinson, 102 USPQ2d at
1377. In the case at hand, the Examining Attorney required that Applicant provide a
copy of any utility patent showing any of the utilitarian features of the configuration
in the Application, which Applicant provided on reconsideration.4 We have reviewed
the utility patent as a whole, including its claims, as evidence of functionality under
the first category of evidence in Morton-Norwich. In re Howard Leight Indus. LLC,
80 USPQ2d 1507, 1511 (TTAB 2006).
The patent Applicant provided is for an “on or off grid vertical access wind turbine
and self-contained rapid deployment autonomous battlefield robot recharging and
forward operating base horizontal axis wind turbine.” (October 13, 2015, Request for
Reconsideration p. 2). The summary of the invention includes the following

4 U.S. Patent No. 9,103,321 (“‘321 patent”) issued to Applicant’s CEO Jaime Bardia, and was
provided in connection with the Examining Attorney’s earlier information request under
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), made in the December 22, 2013, Office Action.
See October 13, 2015, Request for Reconsideration, pp. 2-31.
Serial No. 86046590
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disclosures in pertinent part: “Various aspects of the present invention relate to a
self-supporting structure without the need for guy wires . . . helical swept airfoils
. . . [and] a boundary layer fence for self-starting.” (October 13, 2015, Request for
Reconsideration p. 24; ‘321 patent, column 1 lines 45-50). The background
explanation of the invention contains the following statements: “an off or on grid wind
turbine for capturing and maximizing dissimilar airflow(s) (laminar and turbulent)
through a series of magnetically levitated helical variable geometry asymmetrical
wings.” (October 13, 2015, Request for Reconsideration p. 24; ‘321 patent, column 1
lines 18-20).
The patent provides the preferred embodiment of a vertical axis wind turbine
(VAWT) and structural components to include “helical swept wings 11 (FIGS. 1A and
1B) (shown below) with a series of boundary fences 12 at their ends and toward the
middle. A conical tower 20 tapers toward the top where it supports in a rotatable
Serial No. 86046590
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manner via a magnetic repulsion levitated rotary wing hub 30 rods 13 that connect
to each of the helical swept wings 11.” (October 13, 2015, Request for Reconsideration
p. 25; ‘321 patent, column 3, lines 12-17).
According to the preferred embodiment, the turbine is self-supporting, does not
require guy wires (due to the structural frame), and is self-starting, assisted by
components such as the helical wings and the boundary layer fences that are at the
top and bottom of each helical wing section. (October 13, 2015, Request for
Reconsideration, pp. 25-26; ‘321 patent, column 4, lines 24-25, 34-35, 54-59, column
5, lines 13-15).
As set forth in pertinent part, the features in the applied-for mark (helical wings
and housing enclosing frame structure) are specified in the twenty-one claims of the
invention:
A wind turbine, comprising: a frame structure; a housing
enclosing said frame structure . . . helical swept wings that
rotate to capture wind throughout a circumference of the
rotary wing assembly from both windward and leeward
sides so that a torque input spreads evenly to mitigate
damaging harmonic pulsations that would otherwise arise
without the torque input spreading evenly . . .
(October 13, 2015, Request for Reconsideration pp. 28-31; ‘321 patent,
column 9, lines 30-41; columns 9-10, lines 62-67, lines 1-5; column 10,
lines 57-59; column 11, lines 4-14; column 11, lines 45-54; column 12,
lines, 16-26; column 12, lines 54-64; column 13, lines 17-27; column 13,
lines 54-56; column 13, lines 57-67; column 14, line 19; column 14 lines,
24-34; column 14, line 58; column 15, line 4; column 15, line 11; column
15, line 22; column 15, line 26; column 16, line 1; column 16, line 9;
column 16, line 16).
Applicant argues that no utilitarian advantages are described by the patent with
respect to the applied-for mark which displays a wind turbine with helical wings
Serial No. 86046590
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straddling a conical tipped tower, and contends that the “patent describes utilitarian
advantages associated with the mechanical gear drive train system and with
components that are NOT found in the design sought to be registered, such as flaps,
boundary layers and spoilers of the wings.” (13 TTABVUE 6-7). Applicant also argues
that the features in its mark are not functional components. (21 TTABVUE 4).
However, both the disclosures and the claims of the patent reveal that the shape
of the housing and the use of helical wings and their placement are not merely
arbitrary, ornamental, or incidental, but serve an essential function in the invention
for the VAWT and that these features are necessary for its use. Both the conical
tipped tower (cylindrical base and conical top), which forms the exterior of the VAWT
and acts as the protective housing enclosing the structural frame, and the helical
wings are features of the invention as set forth in the specified claims. The references
in the patent to the housing which encloses the structural frame, the placement of
the helical wings to the structural frame, and the helical wings’ placement in relation
to the conical-tipped tower of the configuration clearly indicate the utilitarian
advantages of how these features are arranged and the benefits of the arrangement
to enable the VAWT invention to operate optimally.5 Furthermore, the preferred
embodiment of the invention shown in figures 1A and 1B of the patent, (October 13,
2015, Request for Reconsideration, pp. 4-5; ‘321 patent, sheets 1-2 of 20, column 3,

5 See Description of Preferred Embodiment in the patent. (October 13, 2015, Request for
Reconsideration, pp. 25-26, ‘321 patent, columns 3-5). Also, as disclosed by the patent, these
features are structural components of a VAWT. Id. (at p. 25, ‘321 patent, column 3, lines 9-
11).
Serial No. 86046590
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lines 9-17), as shown below, are in essence the applied-for mark, also shown below,
except that the “magnetic repulsion levitated rotary wing hub” to which the helical
wings attach is not displayed in the drawing for the applied-for mark, and the rods
that are part of the rotary wing hub and are shown in the trademark application
drawing are not claimed as part of the mark.

The patent shows that the tower constituting the housing, which comprises a
cylindrical base portion with a conical-tipped top, encloses the self-standing
structural frame of the VAWT invention, which is “within the conical tower.” (October
13, 2015, Request for Reconsideration, p. 25, ‘321 patent, column 3, lines 62-64). In
order to be self-supporting without guy wires, and for optimal placement of the helical
wings in connection with the magnetically levitated rotary wing hub, the preferred
embodiment of the VAWT requires an internal frame structure that is wider at the
Serial No. 86046590
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bottom and more conical and tipped at the top of the structure; therefore, the internal
frame structure dictates the housing shape. See Figure 3A of the patent shown below.
(October 13, 2015, Request for Reconsideration, p. 7; ‘321 patent, sheet 4 of 20, column
3, lines 20-23). See In re Carr-Griff, Inc., 223 USPQ 359, 361 (TTAB 1984) (shamrock
shaped housing that conformed to shape of three-chambered pump functional).

As stated, the internal frame structure also dictates the placement of the rotary
wing hub assembly to which the helical wings of the turbine attach, see Figure 3A
above and Figure 4D of the patent, shown below. (October 13, 2015, Request for
Reconsideration, pp. 7, 12, 25; ‘321 patent, sheets 4 and 9 of 20, column 3, lines 10-
22, 61-63).
Serial No. 86046590
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The placement of the helical wings to straddle the conical tipped tower is dictated
by the structural frame and placement of the rotary wing hub assembly. (October 13,
2015, Request for Reconsideration, p. 25; ‘321 patent, column 3, lines 14-17). See
Honeywell, 532 F.2d 180, 189 USPQ 343, 344 (CCPA 1976) (protective cover for round
thermostat so arranged that essential operating and temperature controlling and
indicating mechanisms are visible to operator). As to the helical wings themselves,
they are not only necessary to the VAWT invention as a means for generating
electricity by rotating to capture wind, but also contribute to the self-starting feature
of the VAWT invention. (October 13, 2015, Request for Reconsideration, p. 25; ‘321
patent, column 4, lines 34-35, 54-59). The helical wings maximize dissimilar airflow
and multiply the resultant rotational force into kinetic energy, thereby creating the
torque required to rotate the mechanical drive system. (October 13, 2015, Request for
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Reconsideration, p. 24; ‘321 patent, column 1, lines 18-21). The wings are placed
throughout the circumference of the rotary wing assembly from both windward and
leeward sides so that the torque input spreads evenly to mitigate damaging harmonic
pulsations. (October 13, 2015, Request for Reconsideration, pp. 28; ‘321 patent,
column 4, lines 54-61).
The drawing of the mark also includes a component to which the patent assigns
the number “12” (in FIGS. 1A and 1B) and refers variously to this as “boundary
fences” or “boundary layer fences.” This component, while not specifically highlighted
by name in the prose description of the mark, is not excluded from the drawing of the
mark via dotted lines, but rather is portrayed in solid lines and thus is part of the
claimed design.6 See Becton, Dickinson, 102 USPQ2d at 1374 (where features of a
product mark described in the amended description did not embody the mark in its
entirety, the Board concluded that the proposed mark included all elements shown in
the drawing except those elements shown in dotted lines). The patent states that this
component assists in self-starting the wind turbine as it “obstruct[s] span-wise
airflow” and “reduces the noise arising from rotation of the helical swept wings by
dispersing the sound waves by changing the direction of the airflow along the helical
swept wings.” (October 13, 2015, Request for Reconsideration, pp. 25-26; ‘321 patent,

6 We note that the drawing of the mark, not the words an applicant uses to describe it,
controls what the mark is. Trademark Rule 2.52, 37 C.F.R. § 2.52 (“A drawing depicts the
mark sought to be registered.”); Trademark Manual of Examining Procedure (TMEP) §
807.02 (April 2017) (“The drawing … indicates what the mark is, and provides a means for
reproducing the mark in the Official Gazette and on the certificate of registration.”).

Serial No. 86046590
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column 4, 34-35, column 5, lines 14-20). As mentioned earlier, Applicant, in its appeal
brief, agrees that the patent discloses the utilitarian benefits of “boundary layers.”
(13 TTABVUE 6-7).
The patent thus plainly discloses the functional role of the three components
disclosed and claimed in Applicant’s drawing of the mark: the conical tower, the
helical wings, and the boundary fences affixed to the helical wings. These features
are necessary elements of the invention and are essential to the functioning of
Applicant’s wind turbine. See TrafFix, 58 USPQ2d at 1005 (“A utility patent is strong
evidence that the features claimed therein are functional.”). Further, Applicant has
acknowledged that “the helical design and mounting pole do perform the function of
turning in response to turbulent and gusty winds for enabling the harvesting of power
from the turbulent and gusty winds.” (March 20, 2015, Request for Reconsideration,
Declaration of Jaime Bardia, p. 5).
The functional advantages of these features apply equally to the preferred
embodiment shown above in figures 1A and 1B in the patent, as well as to the applied-
for mark. In light of these disclosures, we reject Applicant’s argument that no
utilitarian advantages are described by the patent with respect to the applied-for
mark and find the disclosures of the patent are relevant to the question of the
functionality of Applicant’s wind turbine design mark. In short, the utility patent
demonstrates the utilitarian advantages of the VAWT design at issue, and for this
reason, we find the product configuration functional.7 Our finding is buttressed by

7 Applicant claims that “the features depicted in Fig. 1A are not in the claims and are not
described in the patent as providing any functional utilitarian advantage to the so-called
Serial No. 86046590
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our finding, discussed infra, that granting Applicant protection for this design would
hinder competition in light of the similarity among many of the competing product
designs that Applicant contends show a large variety of alternative designs.
2. Advertisements Touting the Utilitarian Advantages of the Design.
Under the second category of evidence identified in Morton Norwich, we next
consider evidence regarding “advertising materials in which the originator of the
design touts the design’s utilitarian advantages.” Valu Eng’g, 61 USPQ2d at 1426
(citing Morton-Norwich, 213 USPQ at 15-16).
The Examining Attorney argues that the statements in Applicant’s specimen and
on Applicant’s website tout the utilitarian benefits of Applicant’s applied-for design.
(20 TTABVUE 13; December 22, 2013, Office Action, pp. 1-2). Applicant’s website
includes images of the applied-for design (December 22, 2013, Office Action, p. 2) as
does the product brochure specimen (Specimen, August 23, 2013, p. 1).

helical design of the airfoil wings or their placement.” (October 13, 2015, Request for
Reconsideration, p. 1.) However, we may look to the disclosures as well as the claims in a
utility patent to determine functionality. Becton-Dickinson, 102 USPQ2d at 1377
(“statements in a patent’s specification illuminating the purpose served by a design may
constitute equally strong evidence of functionality”) (citation omitted); In re Howard Leight,
80 USPQ2d at 1511 (“although we may and must look to the patent’s claims in determining
functionality, we are not limited to review of the claims”). See, e.g., In re Van Valkenburgh,
97 USPQ2d 1757, 1761 (TTAB 2011) (finding utility patent provided prima facie evidence of
functionality as the drawing of the invention incorporated the proposed mark, the “detailed
description of the invention” describes the proposed mark, and the proposed mark was part
of the subject matter of one of the claims).
Serial No. 86046590
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Excerpts from Applicant’s product brochure include the following statements:
(Specimen, August 23, 2013, pp. 1-2).

Serial No. 86046590
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Applicant argues that its advertisements tout the advantages of a vertical-axis
wind turbine over a horizontal-axis (propeller-type) wind turbine but not over other
vertical-access wind turbines, and thus do not describe or reference any utilitarian
aspects or advantages of the proposed mark. (Appeal Brief, 13 TTABVUE 11,
referencing March 20, 2015, Request for Reconsideration, Declaration of Jaime
Bardia, pp. 4, 9-10). We fail to see language indicating that a vertical-axis wind
turbine is being compared to a horizontal-axis wind turbine. However, assuming that
such a comparison is being made, that would not itself detract from the probative
value of the advertisements. Applicant seems to be suggesting that other vertical-
axis designs would similarly benefit from a comparison to horizontal-axis competing
turbines, and that this means Applicant’s design is not functional. We disagree.
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Applicant argues further that other vertical-axis designs may share some of the
advantages over horizontal-axis designs enjoyed by Applicant’s design. For example,
Darrieus-type turbines (also known as eggbeater turbines) include helical-shaped
wings and require three or more helical wings to lower torque ripple. (June 15, 2014,
Response to Office Action, pp. 11-12). Newer types of Darrieus-type turbines are not
held up by guy wires but have an external superstructure. (June 15, 2014, Response
to Office Action, p. 12). These circumstances do not lessen the fact that these are, in
fact, features or benefits showing the functionality of this vertical-axis design over
competing horizontal designs. As the Seventh Circuit succinctly put it in a similar
situation involving a foldable chair design that was simply a variation of many
competing but similar folding chair designs, “[w]hat this says to us is that all of the
designs [sharing these benefits] are functional ….” Specialized Seating, Inc. v.
Greenwich Indus., L.P., 616 F.3d 722, 96 USPQ2d 1580, 1584 (7th Cir. 2010); see also
In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 6 (Fed. Cir. 1985) (Where evidence shows
that a particular product feature is functional, the fact that it “may be produced in
other forms or shapes does not and cannot detract from the functional character of
the configuration here involved.”) (quoting In re Honeywell, Inc., 189 USPQ at 344).
Put another way, if, as Applicant says, its advertisements are directed to advantages
its design enjoys over horizontal-axis wind turbine designs, then those
advertisements are probative of functionality. Functionality does not prohibit
registration only of the specific design with the best functionality, it prohibits
registration of all functional designs because, unless they are subject to patent
Serial No. 86046590
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protection, the public should be able to copy them. Protection of functional designs is
the purview of the Patent Act.
Applicant also urges that many of the benefits touted in its advertising are the
result of the internal workings of its turbine, not the external features depicted in the
drawing. While this may be, in part, true, we observe that the advertising touts some
of the same benefits set forth in the patent: that the design does not need guy wires;
and that the helical swept wings are conducive to “self-starting,” i.e., the ability to
generate electricity at a low wind speed. That other statements in the advertisements
relate to the internal mechanical drive system and other features of the helical wings
that are not part of the applied-for mark, see Appeal Brief, 13 TTABVUE 12,
referencing March 20, 2015, Request for Reconsideration, Declaration of Jaime
Bardia, pp. 12-15, does not negate that some of the statements arguably relate to the
design at issue. We agree with Applicant, however, that the advertisements do not
explicitly tie the touted benefits to the various aspects of the turbine depicted in the
drawing in this application. While we think that some consumers may connect the
listed advantages as flowing from the external design aspects depicted in the
application, some may not.
In light of the above, we find that the advertising in the record is inconclusive on
the issue of functionality.
3. Availability of Alternative Designs
Because we have found under Inwood that the utility patent shows that the design
features for which Applicant seeks trademark protection are essential to the use and
Serial No. 86046590
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purpose of Applicant’s wind turbine, there is no need to address whether design
alternatives exist. See TrafFix Devices, 58 USPQ2d at 1006. Nevertheless, we will do
so in the interests of completeness and to aid any subsequent judicial review of our
decision. Where relevant patents and/or advertising do not themselves establish
functionality, the availability of alternate designs can “be a legitimate source of
evidence to determine whether a feature is functional,” Valu Eng’g, 61 USPQ2d at
1427, and may be relevant to show whether or not the design sought to be registered
will hinder competition. Morton-Norwich, 213 USPQ at 16. See also In re Bose Corp.,
227 USPQ at 5-6 (“If the feature asserted to give a product distinctiveness is the best,
or at least one, of a few superior designs for its de facto purpose, it follows that
competition is hindered. Morton-Norwich does not rest on total elimination of
competition in the goods.”).
With respect to alternative designs, Applicant submitted photographs of
competing VAWTs with helical blades as well as VAWTs without helical blades,
asserting that there are multiple different designs for vertical axis wind turbines with
helical blades and without helical blades. (13 TTABVUE 12, referencing June 15,
2014, Response to Office Action, p. 8;8 March 20, 2015, Request for Reconsideration,
pp. 13-14). Applicant states its design differs in that “its turbine wings straddle an
elongated conical top of a cylindrical tower,” but acknowledges that there are other

8 Applicant’s June 15, 2014, Response to Office Action, pp. 6-7 also includes links to Internet
websites. These materials are not of record because providing only a website address or
hyperlink to Internet materials is insufficient to make such materials of record. In re
Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013).
Serial No. 86046590
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conventional thinner monopole VAWTs that have wings that straddle their towers
and arrange their blades helically and are therefore similar in arrangement of the
functional features and design of its product configuration. (June 15, 2014, Response
to Office Action, p. 7; March 20, 2015, Request for Reconsideration, Declaration of
Jaime Bardia, p. 8). Mr. Bardia’s statement of like VAWT designs is illustrated by
some of the Examining Attorney’s evidence of VAWT images as provided in
connection with the non-distinctiveness refusal:
. (May 12, 2015, Office Action, pp. 2-3).
Applicant provided the alternative VAWT designs both with and without helical
blades shown below: 9

9 March 20, 2015, Request for Reconsideration, pp. 13-15; June 15, 2014, Response to Office
Action, p. 8. Jaime Bardia’s declaration and the June 15, 2014, Response to Office Action,
quoted from Internet websites regarding VAWTs generally and also provided excerpted
photographs of VAWTs obtained from a Google image search for the phrase “VAWT,” taking
images from the first 20 pages of Google hits. However, the web pages and photographs were
not properly made of record as they were neither submitted with nor attached to Mr. Bardia’s
declaration as web pages nor were they submitted with or attached to the June 15, 2014,
Response to Office Action as web pages. We would also note that Internet search engine
“image” search result pages are problematic in this case (and many other types of trademark
cases) because they simply aggregate images on third-party websites with essentially no
indicia of what is depicted. The better practice is use the image search result page to click
through to the originating website and obtain a copy of the original image on the originating
website in order to provide the context from which evidentiary points the party proffering the
image wishes to make can be supported. Nonetheless, because the Examining Attorney has
not objected in his Office Actions or appeal brief to the quoted excerpts and excerpted photos
we have considered them.
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While none of the third-party VAWT’s with helical blades in the record are
identical to Applicant’s, none is so sufficiently different so as to constitute an
“alternative design” as contemplated by the case law. Specifically, we note that
several of these depicted designs display two, three, or more vertically extending
wings (many helical) that are mounted on or near the top of a cylindrical axis, similar
to Applicant’s. We find that this evidence supports the conclusion that the alternative
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designs of VAWTs with mounting poles and helical blades (as well as mounting poles
with straight blades) are all merely variations of a single basic VAWT design.10 It is
probative of functionality that others in the industry use similar designs; they do not
have to be identical. See Becton, Dickinson, 102 USPQ2d at 1378 (finding it probative
of functionality that others in the closure cap industry generally use ribs on the caps
and “similar functional openings”); see also In re Caterpillar Inc., 43 USPQ2d 1335,
1341 (TTAB 1997) (citing Greenhouse Sys. Inc. v. Carson, 37 USPQ2d 1748, 1754
(TTAB 1995)). It is apparent there are only a limited number of variations in these
design elements which maintain the functional advantages inherent in those design
elements and in the overall VAWT design. To allow Applicant to register a design
incorporating one of that quite limited number of superior designs as a trademark
clearly would hinder competition. See In re Bose, 227 USPQ at 6 (five sided speaker
enclosure “efficient and superior design as an enclosure and thus de jure functional,
whether or not it contributes to the functionality of the sound system itself”); In re
Honeywell, Inc., 189 USPQ at 344 (protective cover for round thermostat functional,
noting there are only so many basic shapes for a thermostat cover); In re Lincoln
Diagnostics Inc., 30 USPQ2d 1817, 1824-25 (TTAB 1994) (skin testing apparatus
functional, limited number of designs available to competitors); In re Vico Products
Mfg. Co., 229 USPQ 364, 368 (TTAB 1985) (citing In re Bose, 227 USPQ at 6) (venturi
body for whirlpool functional and one of few superior designs).

10 See March 20, 2015, Response to Office Action, p. 5, Declaration of Jaime Bardia which
states that both Applicant’s VAWT and other VAWTs with helical wings and mounting poles
“enable the harvesting of power from turbulent and gusty winds.”
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Where the supposed alternatives in the marketplace “share[] the same utilitarian
function of [Applicant’s] design,” they cannot “be characterized as alternative
designs” as that term is applied in the functionality inquiry. Becton, Dickinson, 102
USPQ2d at 1378. We find that these images of supposed alternatives thus provide
additional support for our finding of functionality based on the utility patent
evidence.
4. Cost of Manufacture
Because the patent and advertisements disclosed use-related benefits, the lack of
cost-related benefits does not undercut our finding of functionality. The Supreme
Court has stated that “a product feature is functional, and cannot serve as a
trademark, [1] if it is essential to the use or purpose of the article or [2] if it affects
[a] the cost or [b] quality of the article.” TrafFix, 58 USPQ2d at 1006 (citation
omitted; emphasis and numbering added). Thus, a product feature can be found
functional for affecting either the quality of the article or its cost. While evidence that
a product feature makes the product cheaper to manufacture may be probative in
showing functionality, evidence that it does not affect its cost is not necessarily proof
of non-functionality. In re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006). In
other words, evidence that a design costs more, or has no impact on cost, is irrelevant
if the design is found to work better.
The specimen of use in the record touts that Applicant’s wind turbines “cost 1/2
the price of all competing units while generating up to 4 times more electricity” and
that they save the user money because they start making electricity at a low wind
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speed. Mr. Bardia denies that this cost savings is due the helical wings or the
cylindrical base but instead attributes it to the product’s internal parts and
Applicant’s manufacturing efficiency. (13 TTABVUE 13, referencing the Declaration
of Jaime Bardia, March 20, 2015, Request for Reconsideration, p. 11; April 7, 2015,
Request for Reconsideration, pp. 6-7).11
We are skeptical of Mr. Bardia’s claim that the touted cost advantages have
nothing at all to do with the vertical base and helical wings, in light of the statements
in the specimen of use alluding to the higher costs of necessarily larger horizontal
axis wind-conversion units. Ultimately, however, we find the evidence of cost savings
touted in the advertisements to be inconclusive as to whether the savings are
attributable to the design features depicted in the drawing or to the turbine’s internal
workings.
II. Conclusion on Functionality
We find that the evidence of record, assessed in its entirety, establishes that
Applicant’s design is functional because it is essential to the use or purpose of the
product. Applicant has failed to rebut the evidence that supports this conclusion,
specifically, the utility patent and the possible adverse effect on competition because
of the similarity of Applicant’s design to those of other VAWTs. TrafFix Devices, 58

11 Applicant’s counsel stated in a response to one of the Office actions that the design is more
complex and expensive to manufacture in some respects than other VAWT designs—although
conceding that in other respects the design is less complex and less expensive to manufacture
than other VAWT designs. See June 15, 2014, Response to Office Action, p. 9. We do not
consider unsworn statements of counsel to be evidence. See e.g., In re Teledyne Indus., Inc.,
696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982).
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USPQ2d at 1007. Accordingly, registration of the design as a trademark is barred
under Trademark Act Section 2(e)(5). We affirm the Trademark Examining
Attorney’s refusal on this ground.
III. Acquired Distinctiveness
As noted at the beginning of this decision, the Examining Attorney issued a
refusal on the alternative ground that the proposed configuration mark is
nondistinctive product design. Applicant responded by stating that it sought to
overcome that refusal by seeking registration under the provisions of Section 2(f) of
the Trademark Act. (January 12, 2015, Response to Office Action, p. 1).12 Even though
our finding of functionality under Section 2(e)(5) precludes registration regardless of
any showing of acquired distinctiveness under Section 2(f), in order to render a full
decision on the issues presented in this appeal, we consider the question of acquired
distinctiveness in connection with the alternative ground for refusal that the mark
consists of a non-distinctive product design and the evidence of acquired
distinctiveness is insufficient.
A product configuration such as this one is not inherently distinctive and, if non-
functional, may be registered on the Principal Register only upon a showing of
acquired distinctiveness under Section 2(f). See Wal-Mart Stores, Inc. v. Samara
Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068-69 (2000). In order to obtain a

12 The Examining Attorney noted in his appeal brief that during prosecution and on appeal
Applicant has not disputed that its configuration is a non-distinctive product design. (20
TTABVUE 18). See also March 20, 2015 Response to Office Action, p. 24, where Applicant
stated that “[t]he refusal for non-distinctive product configuration . . . is traversed in view of
the perfection of its claim for acquired distinctiveness . . . .”
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registration under the provisions of Section 2(f), Applicant has the burden of
demonstrating that its mark has acquired distinctiveness. See Yamaha Intern. Corp.
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
The amount and character of evidence required to establish acquired distinctiveness
depends on the facts of each case. Roux Lab., Inc. v. Clairol Inc., 427 F.2d 823, 166
USPQ 34, 39 (CCPA 1970).
To support a claim of acquired distinctiveness, an Applicant may submit evidence
of “copying, advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies (linking the name to a source).” In
re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (citing
Cicena Ltd. v. Columbia Telecomms. Grp., 900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir.
1990)). The evidence must relate to the promotion and recognition of the specific
configuration embodied in the applied-for mark and not to the goods in general. See
Inwood Labs., 214 USPQ at 4 n.11 (“To establish secondary meaning, a manufacturer
must show that, in the minds of the public, the primary significance of a product
feature or term is to identify the source of the product rather than the product itself.”).
As evidence that its product design would be perceived as an indication of source,
Applicant claims five years of exclusive use. In addition, Applicant points to the
(undated) declaration of Michael Ferrara, co-founder of Prudencia LLC, Applicant’s
marketer. Mr. Ferrara states that Applicant has spent $48,750 for sales consulting
as of March 31, 2015, and $3,000 in marketing expenditures for a trade show booth,
travel and props. Prudencia participated on Applicant’s behalf in the Energy Expo at
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Metra Park held in Billings, Montana and another trade show in Missoula, Montana.
Mr. Ferrara states that Applicant was mentioned in press coverage for the trade show
and has been featured on Fox News television (no date provided), the Jerry Doyle
Show (radio) (June 13, 2014), and the HARTFORD COURANT newspaper (June 1, 2014).
Mr. Ferrara also states that Prudencia’s website has a webpage featuring Applicant’s
product that includes a photograph of the three-dimensional product configuration of
the wind turbine and includes information relating to $12 million in pre-production
orders for Applicant’s $59,500 wind turbine.13 Applicant’s counsel also points to
Applicant’s “look for” advertising, as shown below, as evidence of distinctiveness.
(October 22, 2015, Request for Reconsideration, p. 2).

13 No transcripts were provided for the Jerry Doyle radio show or the Fox News television
video. Applicant provided the news story in the HARTFORD COURANT.
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Here, Applicant’s claim of distinctiveness based on five years of prior use is not
sufficient to establish acquired distinctiveness of a product configuration. See e.g., In
re R.M. Smith, Inc., 222 USPQ at 3 (eight years use not sufficient evidence of acquired
distinctiveness for configuration of pistol grip water nozzles); In re Van Valkenburgh,
97 USPQ2d at 1766 (16 years use not conclusive or persuasive to show acquired
distinctiveness of motorcycle stands); In re ic! berlin brillen GmbH, 85 USPQ2d 2021,
2024 (TTAB 2008) (five years use not sufficient to establish acquired distinctiveness
for configuration of an earpiece for frames for sunglasses and spectacles).
Although Applicant has provided an example of “look for” advertising, the record
contains no evidence of how widely this “look for” advertising was disseminated, how
many consumers may have been exposed to it, or its effectiveness in indoctrinating
consumers to view the design as an indicator of source. Mr. Ferrara also described
the manner in which Applicant’s wind turbine has been marketed on Prudencia’s
website and provided a photograph of the trade show display; however, this
information does not establish that Applicant’s wind turbine design has been
advertised on the Prudencia website or at trade shows in a way that consumers would
perceive the configuration as a mark. See, e.g. In re Semel, 189 USPQ 285, 287 (TTAB
1975) (“[I]t is necessary to consider not only the extent of advertising but also whether
the use of the designation therein has been of such nature as to create in the minds
of the purchasing public an association of the designation with the user and/or his
goods or services.”). We find that the $12 million pre-production sales figure, while
perhaps indicating some initial commercial success for Applicant’s product, does not
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demonstrate that purchasers view the shape of the wind turbine as a mark. See e.g.,
In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir.
1990) (growth in sales may be indicative of popularity of a product itself rather than
recognition of a term or design as denoting origin); Goodyear Tire and Rubber Co. v.
Interco Tire Corp., 49 USPQ2d 1705, 1720 (TTAB 1998) (sales figures may
demonstrate popularity or commercial success as opposed to public recognition of
trademark rights). Additionally, we find that Applicant’s advertising figures are not
so significant that they establish acquired distinctiveness. It is well settled that even
compelling sales and advertising figures do not always result in the achievement of
distinctiveness. See In re Boston Beer Co., L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) ($85 million in annual sales revenues and in excess of $10 million in
advertising expenditures found insufficient to establish acquired distinctiveness).
Lastly, Applicant has identified three instances of unsolicited media coverage.
However, the media coverage does not demonstrate that the applied-for mark has
acquired distinctiveness. The content of the stories on Fox News and the Jerry Doyle
radio show is undisclosed, and the submitted newspaper article focuses on the
advantages of the wind turbine and its manufacture and not on the configuration
mark. In view of the foregoing, we find that Applicant’s five year’s use, declaration
and other evidence are insufficient to establish that Applicant’s mark has acquired
distinctiveness under Section 2(f).
Decision: The refusal to register under Section 2(e)(5) on the ground that the
applied-for mark is a functional product design is affirmed. In the event the applied-
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for mark is found not to be functional but a non-distinctive product design, the
alternative ground for refusal based on insufficient evidence of acquired
distinctiveness is affirmed.