Charles N. Van Valkenburgh

Trademark Trial and Appeal Board

Jan 7, 2011

No. 77025789 (T.T.A.B. Jan. 7, 2011)

Mailed: January 7, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Charles N. Van Valkenburgh
________

Serial No. 77025789
_______

Christopher J. Bischoff of Bischoff & Associates, Ltd. for
Charles N. Van Valkenburgh.

Toby E. Bulloff, Trademark Examining Attorney, Law Office
117 (J. Brett Golden, Managing Attorney).
_______

Before Bucher, Grendel and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Charles N. Van Valkenburgh (“applicant”) filed an
application to register the mark shown below

THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Ser. No. 77025789
2
for “motorcycle stands” in International Class 12. The
application includes the following description of the mark
sought to be registered:
The mark consists of the three
dimensional configuration and
associated trade dress of a motorcycle
stand. The material shown in the
dotted lines serves to show the
position of the mark on the goods and
is not claimed as part of the mark.

Applicant seeks registration on the Principal Register
under the provisions of Section 2(f) of the Trademark Act
of 1946, 15 U.S.C. § 1052(f). Applicant claimed first use
of the mark anywhere and first use of the mark in commerce
on August 20, 1994. Attached below is the specimen
displaying the proposed mark.

Attached below is an excerpt from applicant’s website
displaying the motorcycle stand incorporating the proposed
mark in use.
Ser. No. 77025789
3

The trademark examining attorney refused registration
under Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§1052(e)(5), on the ground that applicant’s proposed mark
is functional. Alternatively, if the proposed mark is not
functional, the trademark examining attorney refused
registration on the ground that the proposed mark has not
acquired distinctiveness.1
A. Whether the proposed mark is functional?
Section 2(e)(5) of the Trademark Act precludes
registration of “any matter that, as a whole, is
functional.” The Supreme Court has stated: “In general
terms, a product feature is functional if it is essential

1 Because the subject matter sought to be registered is a product
design, it is not inherently distinctive, and it is registrable
only with a showing of acquired distinctiveness. Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d
1065, 1067 (2000).
Ser. No. 77025789
4
to the use or purpose of the article or if it affects the
cost or quality of the article.” Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4
n.10 (1982). The Supreme Court has called this “Inwood
formulation” the “traditional rule” of functionality.
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.
23, 58 USPQ2d 1001, 1006 (2001).
The functionality doctrine is intended to encourage
legitimate competition by maintaining the proper balance
between trademark law and patent law. As the Supreme Court
observed in Qualitex Co. v. Jacobson Products Co., 514 U.S.
159, 34 USPQ2d 1161, 1163-64 (1995):
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, 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). That is to say, the
Lanham Act does not exist to reward
manufacturers for their innovation in
creating a particular device; that is
Ser. No. 77025789
5
the purpose of the patent law and its
period of exclusivity. The Lanham Act,
furthermore, does not protect trade
dress in a functional design simply
because an investment has been made to
encourage the public to associate a
particular functional feature with a
single manufacturer or seller.

The Federal Circuit, our primary reviewing court,
looks at four factors when it considers the issue of
functionality: (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. Valu Engineering Inc. v. Rexnord Corp., 278
F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In
re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ
9, 15-16 (CCPA 1982). These are known as the “Morton-
Norwich factors.” The determination of functionality is a
question of fact, and depends on the totality of the
evidence presented in each particular case. In re Udor
U.S.A. Inc., 89 USPQ2d 1978, 1979 (TTAB 2009). The Supreme
Court’s decision in TrafFix has not altered the Morton-
Ser. No. 77025789
6
Norwich analysis. See Valu Engineering, Inc. v. Rexnord
Corp., 61 USPQ2d at 1427.
1. The existence of a utility patent disclosing the
utilitarian advantages of the design.

The first Morton-Norwich factor is the existence of a
utility patent disclosing the utilitarian advantages of the
design. Regarding the evidentiary value of utility patents
in the functionality determination, the Supreme Court has
instructed as follows:
A prior patent, we conclude, has vital
significance in resolving the trade
dress claim. A utility patent is
strong evidence that the features
therein claimed are functional. If
trade dress protection is sought for
those features the strong evidence of
functionality based on the previous
patent adds great weight to the
statutory presumption that features are
deemed functional until proved
otherwise by the party seeking trade
dress protection. Where the expired
patent claimed the features in
question, one who seeks to establish
trade dress protection must carry the
heavy burden of showing that the
feature is not functional, for instance
by showing that it is merely an
ornamental, incidental or arbitrary
aspect of the device.

TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d
at 1005.
The particular motorcycle stand in question is
applicant’s PIT BULL motorcycle stand. Motorcycle stands
Ser. No. 77025789
7
are used to hold the motorcycle when performing
maintenance. “Many maintenance tasks require removing the
front wheel and therefore a stand to lift the front of a
motorcycle must connect to the base of the forks or a
position underneath the steering stem to give access to the
front axle.”2
Applicant is the owner of U.S. Patent No. 7,000,901
for a motorcycle stand. The drawing of the invention is
set forth below.

2 U.S. Patent No. 7,000,901, “Background of the Invention,”
attached to the July 20, 2007 Office Action. See also U.S.
Patent No. 7,100,928.
Ser. No. 77025789
8
“The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.
However, conventional features disclosed in the description
and claims, where their detailed illustration is not
essential for a proper understanding of the invention,
should be illustrated in the drawing in the form of a
graphical symbol or a labeled representation (e.g., a
labeled rectangular box).” 37 CFR 183(a).
The “detailed description of the invention” provides
the following information, so far as pertinent (emphasis in
the original):3
[T]he embodiment of the stand of the
present invention has a base support
frame designated at 12 … A pair of
horizontally, forwardly disposed
members 19,20 are connected to upwardly
disposed parallel members 14,15.
Members 19,20 are rigidly connected by
means of a transverse member 21.
Extending forward from transverse
member 21 is a handle 22 that is used
to leverage base support frame 12
during operation of the stand.

The “detailed description of the invention” identifies “the
precise invention for which a patent is solicited, in such
manner as to distinguish it from other inventions and from
what is old. It must describe completely a specific

3 The numbers in the “detailed description of the invention”
reference the numbers in the drawing.
Ser. No. 77025789
9
embodiment of the process, machine, manufacture,
composition of matter or improvement invented, and must
explain the mode of operation or principle whenever
applicable. The best mode contemplated by the inventor of
carrying out his invention must be set forth.” 37 CFR
1.71(b); see also 35 U.S.C. § 112 (“The specification shall
contain a written description of the invention, and of the
manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same, and
shall set forth the best mode contemplated by the inventor
of carrying out his invention”). “The best mode
requirement is a safeguard against the desire on the part
of some people to obtain patent protection without making a
full disclosure as required by the statute. The
requirement does not permit inventors to disclose only what
they know to be their second-best embodiment, while
retaining the best for themselves.” MPEP § 2165 citing In
re Nelson and Shabica, 280 F.2d 172, 126 USPQ 242, 253
(CCPA 1960).
Applicant claims as his invention the following, in
pertinent part:

Ser. No. 77025789
10
What I claim is:

1. A front motorcycle stand comprising

a. a supporting base comprising two
upwardly disposed parallel members
with an upper end and a lower end,
each of said parallel members
having a wheel attached to said
lower end to facilitate rolling
along the ground; said supporting
base also comprising two forwardly
disposed horizontal frame members
with a forward end and rearward
end attached to said lower end of
said upwardly disposed members; a
transversely disposed cross member
attached to said forward end of
each of said horizontally disposed
members to rigidly affix said
horizontal members to one another;
and handle attached to said cross
member for leveraging end of said
supporting base; …

The claim specifically identifies the invention. 37 CFR
1.75(a) (“The specification must conclude with a claim
particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention
or discovery”); see also 35 U.S.C. § 112.
U.S. Patent No. 7,000,901 incorporates the proposed
mark and the configuration of the proposed mark is a
necessary element of the invention: that is, the design of
the proposed mark constitutes the base of the motorcycle
stand as referenced by the numbers 12 and 19-22 in the
patent drawing. Accordingly, applicant has incorporated
Ser. No. 77025789
11
the best mode of the invention with respect to the base of
the motorcycle stand to obtain the advantages that result
therefrom (i.e., “used to leverage base support frame
during operation of the stand”). The fact that the
proposed mark comprises less than the entirety of the
invention claimed in the patent is not dispositive.
We do not find it necessary that the
configuration designs for which
trademark protection is sought be
“virtually identical to the invention
described and claimed” in the patent or
that the patent must “cover” all facets
of the proposed marks. Instead we look
to the features disclosed in the patent
which have been incorporated into the
present product designs and the
teachings of the patent with respect to
these features.

In re Visual Communications Co., 51 USPQ2d 1141, 1143 (TTAB
1999). The proposed mark adopts a significant portion of
the invention disclosed in the patent; it is not merely an
ornamental, incidental, or arbitrary aspect of the
motorcycle stand.
Applicant argues that “a careful and detailed reading
and analysis of the entire patent shows that Applicant’s
mark is not described in the patent.”4 (Emphasis in the
original). We disagree. As indicated above, the invention
described in the patent and the proposed mark do not have

4 Applicant’s Brief, p. 8.
Ser. No. 77025789
12
to be identical for the patent to read on or apply to the
proposed mark.
Applicant argues, in the alternative, that even if the
patent describes the proposed mark, the patent does not
disclose any utilitarian advantages of the proposed mark.5
To the contrary, applicant was required to present the best
mode of the invention and the patent discloses that the
design of the base is used to leverage support during
operation. The summary of the invention provides, in
pertinent part, that “[t]he bass (sic) portion consists of
a pair of arms to which are affixed a pair of fulcrum
wheels and a handle for operation.” Accordingly, the
proposed mark is necessary to the operation of the
motorcycle stand particularly, where as here, the proposed
mark is identified as the best mode for carrying out the
invention.
Finally, we note that applicant states that he
designed his motorcycle stand to be “reminiscent of the
distinctive physical appearance of a pit bull dog. … The
distinctive configuration and profile of Pit Bull
motorcycle stands does in fact and by my intentional
design, resemble the profile and physical characteristics

5 Applicant’s Brief, p. 9.
Ser. No. 77025789
13
of a pit bull dog.”6 However, if there is no reason for the
motorcycle stand to have its particular design other than
for ornamental or decorative reasons, then we are left with
the unanswered question as to why applicant claimed the
features of the proposed mark in its utility patent.
In view of the facts that the drawing of the invention
in U.S. Patent No. 7,000,901 incorporates the proposed
mark, the “detailed description of the invention” describes
the proposed mark, and Claim 1(a) of the patent claims the
proposed mark as part of the subject matter of applicant’s
invention, we find that the patent is prima facie evidence
that the proposed mark is functional. In the face of this
showing, it was incumbent upon applicant to rebut why the
patent does not disclose the utilitarian advantages of the
proposed mark. See Textor, Inc. v. U.S. Int’l Trade
Comm’n, 753 F.2d 1019, 1025 (Fed. Cir. 1986) (stating that
once a prima facie case of functionality is made by an
opponent, the burden shifts to the applicant to prove that
the design is nonfunctional). Applicant’s arguments do not
persuade us that the features of the proposed mark
described in the patent are not functional. Perhaps not

6 Applicant’s Declaration, ¶4 attached to applicant’s May 16,
2007 Response; see also the Foley Declaration (“Other than
attempting to resemble the physical features of a pit bull dog,
there are no obvious functional reasons the configuration of the
Pit Bull motorcycle stand needs to be as designed”).
Ser. No. 77025789
14
surprisingly, the handle on each motorcycle stand shown in
this record provides leverage action critical to getting
the bike on the stand. Similarly, the “horizontally,
forwardly disposed members [that] are rigidly connected by
means of a transverse member,” describes a characteristic
shared by substantially all the motorcycle stands of
competitors. Applicant and Mr. Foley base their
conclusions that the proposed mark is not functional on the
fact that there are alternative designs for motorcycle
stands. However, neither applicant nor Mr. Foley explained
why the design of the supporting base of the stand, as
shown in the proposed mark, is not essential to the
function or purpose of the motorcycle stand or why it did
not affect quality of the product. Thus, the applicant has
failed to carry the “heavy burden of showing that the
feature is not functional.” Traffix, 58 USPQ2d at 1005. In
view of the foregoing, we find that the patent constitutes
strong evidence of functionality.
2. Advertising materials in which the originator of
the design touts the design's utilitarian
advantages.

An applicant’s own advertising touting the utilitarian
aspects of its product design is strong evidence supporting
a functionality refusal. In this case, however, prior to
publishing his website, applicant had “not created any
Ser. No. 77025789
15
advertising, promotional and/or explanatory materials
concerning the configuration for which registration is
sought, particularly any material specifically related to
the design feature(s) embodied in the proposed mark.”7
Without any advertising by the applicant on which to rely,
the examining attorney turned to promotional materials
published by applicant’s competitors touting the functional
features of motorcycle stands that incorporate the design
of the proposed mark. See In re Gibson Guitar Corp., 61
USPQ2d 1948, 1951 (TTAB 2001) (referencing the
advertisement of a competitor that used the identical shape
to the configuration sought to be registered). The
advertisements set forth below have been made of record.
1. T-Rex Racing8

7 Applicant’s Declaration, ¶3 attached to applicant’s May 16,
2007 Response.
8 November 16, 2006 Office Action. We note that the T-Rex Racing
stand has triangular braces on the base.
Ser. No. 77025789
16
The spool/universal stand was designed
to allow a superb sturdy, non-flex
performance. … Extended arm provide
(sic) extra leverage.

2. Power Stands9

Low effort one hand lift
3. Cycle Cat10

[w]e created a system which takes bike
from sidestand to rearstand in one
motion, and which is so stable and easy
to use, that it is not even necessary
to touch the motorcycle.

* * *

9 July 20, 2007 Office Action.
10 Id.
Ser. No. 77025789
17
[t]he UCS1 provides a stable solid work
platform. … The whole system is so
strong, and its geometry so correct,
that a bike can easily be rolled around
while on the stand.

4. Pit Posse11

While applicant’s patent covers a stand for holding up
the front end of a motorcycle, the T-Rex Racing, Cycle Cat,
and Pit Posse products are explicitly advertised as rear
stands. However, there is no basis in this record to
believe that a supporting base of the type shown in
applicant’s proposed mark would not work equally well as
the supporting base for a rear stand. In this regard,
applicant’s description of goods is simply “motorcycle
stands,” without any limitation as to use in the front or
rear. We also note that neither applicant nor Mr. Foley
made any distinction between the use of motorcycle stands
for the front and rear of the motorcycle. Accordingly, we
find that for purposes of our functionality analysis, there

11 Id.
Ser. No. 77025789
18
is no difference between the supporting bases of a front or
rear motorcycle stand.
Applicant argues that the advertising does not
describe, explain or reference any utilitarian aspects or
advantages of the proposed mark; rather the advertising
makes general statements that could be attributed to any
motorcycle stand.12 We disagree. Statements such as
“designed to allow a superb sturdy, non-flex performance,”
“[e]xtended arm provide (sic) extra leverage,” “[l]ow
effort one hand lift,” “extraordinarily easy to use,”
“[t]he whole system is so strong, and its geometry so
correct, that a bike can easily be rolled around while on
the stand,” and “[u]niversal design to fit all standard
swing arm sportbikes” relate specifically to the design of
the supporting base incorporated into applicant’s proposed
mark. Thus, we find that the advertisements by applicant’s
competitors tout the utilitarian advantages of motorcycle
stands similar, if not identical, in design to the proposed
mark in more than just generalized statements.
3. The availability to competitors of functionally
equivalent designs.

The third Morton-Norwich factor involves consideration
of alternative designs. The Federal Circuit has indicated

12 Applicant’s Brief, pp. 9-10; Applicant’s Reply Brief, pp. 8-9.
Ser. No. 77025789
19
that competition “is the crux of the functionality
inquiry.” Valu Engineering, 61 USPQ2d at 1427 (internal
citations omitted). The availability of alternative
designs is relevant to show that the design sought to be
registered will “preserve competition by ensuring
competitors the right to compete effectively.” Id.; In re
Morton-Norwich Products, Inc., 213 USPQ at 13. The Federal
Circuit has noted, however, that the mere fact that other
designs are available does not necessarily mean that
applicant's design is not functional. In this regard, the
Federal Circuit has noted that the mere fact that other
designs are available does not necessarily mean that
applicant's design is not functional. In re Bose, 772 F.2d
866, 227 USPQ 1, 5-6 (Fed. Cir. 1985) (“That another type
of [design] would work equally as well does not negate that
this [design] was designed functionally to enhance or at
least not detract from the rest of the system … 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.” (emphasis in original)).
In connection with its argument that there are many
equally feasible, efficient and competitive designs,
Ser. No. 77025789
20
applicant submitted photographs of what it considers being
“well over 85 alternative designs for motorcycle stands.”13
Applicant contends that these designs are “a strong
indication that competition has not and will not be
hindered by applicant’s registration of the proposed
mark.”14
However, the availability of alternative designs does
not convert a functional design into a non-functional
design. TrafFix, 58 USPQ2d at 1007 (“Here, the
functionality of the spring design means that competitors
need not explore whether other spring juxtapositions might
be used. The dual-spring design is not an arbitrary
flourish in the configuration of MDI's product; it is the
reason the device works. Other designs need not be
attempted”). Similarly, a handle connected perpendicularly
to a transverse member rigidly connected to horizontally
disposed members on a supporting base “is not an arbitrary
flourish.” Beyond this basic structure, and without any
formal explanation of the specific elements which applicant
claims as its mark, registration of the claimed matter
could well hinder competitors who would not know if the

13 Applicant’s Brief, p. 12. We do not agree that applicant’s
evidence demonstrates 85 different alternative designs because
many of purported different designs are the same. Nevertheless,
there are alternative designs for motorcycle stands.
14 Id.
Ser. No. 77025789
21
features they used in the supporting base of their
motorcycle stands, whose overall configurations are not
dissimilar from those of applicant, might well subject them
to a suit for trademark infringement.
4. Facts indicating that the design results in a
comparatively simple or cheap method of
manufacturing the product.

The fourth and final factor is a consideration of
whether applicant’s design results from a comparatively
simple or cheap method of manufacture. Applicant submitted
the declaration of Michael J. Foley, an engineer “employed
in the analysis of mechanical and structural systems,” and
who is also “a motorcyclist who’s familiar with and used
motorcycle stands for many years.” In pertinent part, Mr.
Foley states the following:
[Applicant’s] product configuration at
issue is based on and results from a
comparatively complicated, difficult,
and expensive method of manufacture in
relation to alternative designs for
motorcycle stands. The manufacturing
of these stands involves tube bending
and forming, as well as milling,
welding, grinding, and deburring
operations. This requires numerically
controlled equipment, as well as
special jigs and fixtures. To obtain
[applicant’s] distinctive product
configuration, [applicant] uses high
strength materials and state-of-the-art
manufacturing processes which adds cost
to the product.15

15 Foley Declaration, p. 1, unnumbered paragraph No. 6.
Ser. No. 77025789
22
* * *

[Applicant’s] product configuration
does not result from a comparatively
simple or cheap method of manufacturing
the stand. Based on design and
manufacturing methods, I believe
[applicant’s] stand is likely one of
the most expensive stands on the market
due to the extra cost and steps
required to produce the product
configuration. Unlike [applicant’s]
stand, I believe the cheapest and most
efficient motorcycle stand design would
use square steel tubing, which is
cheaper to transport, store, handle,
cut, weld, saw, fabricate, and paint.
I believe cheaper and more efficient
designs would also use multiple
triangular supports (truss-like
supports) and gusseted welding plates
to bridge together component parts and
facilitate welding them together. The
majority of alternative stand designs I
have seen utilize these features.
[Applicant] utilizes none of those
features or cheaper manufacturing
methods. I believe that [applicant’s]
product configuration comes at an added
expense and increased costs for
materials, labor, shipping, warehousing
and handling.16

Attached below are representative samples of the
alternative designs for motorcycle stands made of record by
applicant.

16 Id., at p. 1, unnumbered paragraph No. 8.
Ser. No. 77025789
23

17

17 As noted earlier, these Black Widow motorcycle stands
demonstrate the similar deployment of a handle, transverse member
and horizontally disposed members used quite similarly on a front
and a rear motorcycle stand.
Ser. No. 77025789
24
Like applicant’s product, these alternative designs
use round steel tubing, not square steel tubing. Thus, the
manufacturing of these alternative motorcycle stand designs
would appear to also “involve[s] tube bending and forming,
as well as milling, welding, grinding, and deburring
operations. This requires numerically controlled
equipment, as well as special jigs and fixtures.”18
Furthermore, these alternative designs featuring round
steel tubing would not be “cheaper to transport, store,
handle, cut, weld, saw, fabricate, and paint.” Based on
Mr. Foley’s analysis of the manufacturing process, these
alternative designs would have similar “costs for
materials, labor, shipping, warehousing and handling.”
Accordingly, we find that the cost and complexity of
manufacturing applicant’s product design is comparable to
some of his competitors. Nevertheless, even if applicant’s
motorcycle stands with this design are more costly to
produce, a higher cost does not detract from its
functionality. As stated in TrafFix, 58 USPQ2d at 1006, a
product feature is functional “when it affects the cost or
quality of the article.” (Emphasis added). Thus, even at
a higher manufacturing cost, applicant would have a

18 Id., at p. 1, unnumbered paragraph No. 6.
Ser. No. 77025789
25
competitive advantage for what is essentially, as claimed
in the patent, a superior motorcycle stand.
In reviewing the Morton-Norwich functionality factors,
we find that the proposed mark is an efficient and superior
design for the supporting base of a motorcycle stand and,
thus, functional.
B. Whether the proposed mark has acquired
distinctiveness?

Our holding that the design sought to be registered is
functional bars registration, regardless of any showing of
acquired distinctiveness. However, for purposes of
completeness, we shall decide the alternative refusal that
applicant’s proposed mark has not acquired distinctiveness
pursuant to Section 2(f) of the Trademark Act of 1946.
As indicated above, because the subject matter sought
to be registered is a product design, it is not inherently
distinctive, and it is registrable only with a showing of
acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., 54 USPQ2d at 1067. An applicant faces a
heavy burden in establishing the distinctiveness of a
product design. Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir.
1988); In re Ennco Display Systems Inc., 56 USPQ2d 1279,
1284 (TTAB 2000).
Ser. No. 77025789
26
The Examining Attorney’s position is quite simple:
applicant has failed to demonstrate that the product design
is recognized as a trademark and consumers would perceive
the proposed mark as nothing more than the design of the
product. On the other hand, applicant contends that the
proposed mark has acquired distinctiveness by virtue of the
following “facts”:
1. Exclusivity, length, and manner of use.
“Applicant created and introduced its Pit Bull stand
with its distinctive product configuration in August of
1994. As of today’s date, Pit Bull’s distinctive product
configuration has been in continuous and exclusive use by
Pit Bull for 16 years.”19 Applicant asserts that his
substantially exclusive and continuous use of the mark for
16 years is significant because “the segment of the
motorcycle industry which purchases and uses motorcycle
stands is relatively small and a close-knit community.”20
2. Direct consumer testimony.
“Applicant submitted fourteen (14) Declarations from
consumers involved in the motorsports industry.”21 This is

19 Applicant’s Brief, p. 20.
20 Applicant’s Brief, p. 20.
21 Applicant’s Brief, p. 18.
Ser. No. 77025789
27
purportedly “a small sampling of what can be provided if
requested and/or necessary.”22
3. Consumer surveys.
“Applicant submitted twenty three (sic) (23) consumer
surveys from consumers involved in the motorsports
industry.”23 The surveys are purportedly “a small sampling
of what can be provided if requested and/or necessary.”24
4. Established place in the market.
Applicant contends that “[d]ue to Pit Bull’s hard
earned record for superior customer service and their (sic)
willingness to stand behind its products, Pit Bull stands
are immensely popular and likely the motorcycle stand most
recommended by those in the Motorsports industry.”25
5. Proof of intentional copying.
Applicant contends that motorcycle stands resembling
his product “are the target of intentional copying. This
fact is supported by Applicant’s Petition To Make
Special.”26
Nevertheless, we find that applicant has failed to
establish that its proposed mark has acquired

22 Applicant’s Brief, p. 18.
23 Applicant’s Brief, p. 18.
24 Applicant’s Brief, p. 18.
25 Applicant’s Brief, p. 21.
26 Applicant’s Brief, p. 21 referencing applicant’s Declaration,
¶5.
Ser. No. 77025789
28
distinctiveness. First, applicant’s 16 years of use is
substantial but not necessarily conclusive or persuasive
considering that its mark is a product configuration. See
In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed.
Cir. 1984) (eight years use was not sufficient evidence of
acquired distinctiveness for the configuration of pistol
grip water nozzle for water nozzles); In re ic! berlin
brillen GmbH, 85 USPQ2d 2021, 2023-2024 (TTAB 2008)(five
years of use is not sufficient to establish acquired
distinctiveness for a configuration of an earpiece for
frames for sunglasses and spectacles); In re Ennco Display
Systems Inc., 56 USPQ2d 1279, 1286 (TTAB 2000)(applicant’s
use of the product designs ranging from seven to 17 years
is insufficient to bestow acquired distinctiveness); TMEP
§1212.05(a) (7th ed. 2010) (“For matter that is not
inherently distinctive because of its nature (e.g.,
nondistinctive product container shapes, overall color of a
product, mere ornamentation, and sounds for goods that make
the sound in their normal course of operation), evidence of
five years’ use is not sufficient to show acquired
distinctiveness. In such a case, actual evidence that the
mark is perceived as a mark for the relevant goods or
services would be required to establish distinctiveness”).
Ser. No. 77025789
29
Second, the statements in applicant’s declaration
indicate that the success of the PIT BULL motorcycle stand
(i.e., its established place in the market) is a result of
the quality of the product and applicant’s dedication to
customer service.
Although the distinctive look and
configuration of the PIT BULL stand
created disadvantages as compared to
other stands … as a result of hard
work, a quality product, substantial
marketing and promotion, and a
commitment to total customer
satisfaction, Pit Bull Products and our
stands have established themselves as
an industry leader with substantial
goodwill and recognition.27

The product’s alleged position as an industry leader
demonstrates the popularity or commercial success of the
motorcycle stand, but it does not demonstrate that the
purchasing public recognizes the product design as a source
indicator. See In re Bongrain International (American)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed.Cir. 1990)
(growth in sales may be indicative of the popularity of the
product itself rather than recognition of a term or design
as denoting origin); Goodyear Tire and Rubber Co. v.
Interco Tire Corp. (US Pats), 49 USPQ2d 1705, 1720 (TTAB
1998). As indicated above, applicant states that his

27 Applicant’s Declaration, ¶5.
Ser. No. 77025789
30
motorcycle stand has become an industry leading product
because of “hard work, a quality product, substantial
marketing and promotion, and a commitment to total customer
satisfaction.”
Furthermore, applicant’s assertion that his product is
an industry leader is not supported by evidence of
substantial sales from which we may infer the existence of
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295-296 (CCPA 1954) (36 years
of use with substantial advertising and sales supported the
finding of acquired distinctiveness); In re Crystal Geyser
Water Co., 85 USPQ2d 1374, 1376 (TTAB 2007) (“Evidence of
acquired distinctiveness can include the length of use of
the mark, advertising expenditures, sales, survey evidence,
and affidavits asserting source-indicating recognition”).
In fact, applicant declined to provide sales figures or his
number of customers on the ground that they are
confidential business information. Applicant did not
provide any information regarding his market share.
Applicant also declined to provide advertising figures
explaining that he has “never needed to pay money to
create, acquire or reinforce the existence of the secondary
meaning that has attached to Pit Bull’s distinctive product
configuration. The acquired secondary meaning attached to
Ser. No. 77025789
31
our product configuration was obtained as a result of
natural market forces and consumer behavior.”28 With
exception of the excerpt from its website, applicant did
not produce any advertising or promotional material,
because applicant “has not created any advertising,
promotional and/or explanatory materials concerning the
configuration for which registration is sought,
particularly any material specifically related to the
design feature(s) embodied in the proposed mark.”29
We also note that applicant did not introduce any
unsolicited publicity for its motorcycle stand that
identified the product design as a trademark. Such
publicity would have been probative that readers, authors,
and others in the motorsports field identified the design
of the motorcycle stand as a trademark.
With these marketing conditions in mind, we address
the probative value of applicant’s consumer surveys and
declarations. While survey evidence is relevant to
establish acquired distinctiveness, the proponent of the
survey must document the procedural and statistical

28 Applicant’s Declaration, ¶15.
29 Applicant’s Declaration, ¶6. As indicated above, applicant
contends that his motorcycle stands have become an industry
leader with substantial recognition and goodwill, in part,
because of “substantial advertising and promotion.” Id. at ¶5.
Presumably, that advertising and promotion did not include
printed materials and did not cost much.
Ser. No. 77025789
32
accuracy of the evidence. In this case, applicant’s survey
evidence consisted only of 23 survey questionnaires
completed by the survey respondents themselves.
Apparently, applicant and/or applicant’s counsel
distributed the survey questionnaires to an unknown number
of people at motorsports events who filled them out at
their leisure and subsequently mailed them back to
applicant’s counsel. Suffice it to say that there is no
basis on which to conclude that the survey is based on
scientifically valid principles. While we will not
consider the “consumer surveys” as survey evidence, we will
consider them as declarations purportedly asserting
recognition of the proposed mark as a source indicator.
The people who submitted the 14 declarations that were
identified as declarations were 14 of the 23 people who
submitted the “consumer surveys.” Accordingly, we have 23
respondents, not 37 respondents.
However, not all of the survey respondents recognized
the product configuration as pointing exclusively to a
single source.
1. Dwayne (only identification) did not recognize
the product design at all; and,
2. James L. Meigs, Miranda Osborn, John Schmid,
Russell C. Roberts, Gary T. Bartz, and Paul
Ser. No. 77025789
33
Krause identified the product design as emanating
from multiple sources.
Applicant contends to the contrary that when the
responses are viewed in their entirety they “unequivocally
demonstrate ‘Pit Bull’ is the first thing that comes to
mind in terms of the source of the stand.”30 (Emphasis in
the original).
We find the responses in the above-noted six survey
responses to be ambiguous and, therefore, of limited
probative value. The ambiguity of these “survey”
questionnaires cast doubt on the credibility of the
separate declarations submitted by Ms. Osborn and Messrs.
Roberts and Bartz. Accordingly, we find that the
declarations submitted by Ms. Osborn and Messrs. Roberts
and Bartz have limited probative value.
Accordingly, there are 16 unambiguous
“surveys”/declarations from people in the “Sportbike
Motorcycle/Motorsports Industry” who recognize the proposed
mark as pointing to a single source.31 This evidence from
16 people familiar with motorcycle stands, while tending to
show acquired distinctiveness as a trademark, must be

30 Applicant’s Reply Brief, p. 17.
31 Even if we considered the six ambiguous declarations, as well
as Dwayne’s declaration, as evidence of acquired distinctiveness,
it would not change our decision.
Ser. No. 77025789
34
weighed against the nature of the subject matter sought to
be registered. To put the matter simply, that 16 people in
the entire “Sportbike Motorcycle/Motorsports Industry”
through applicant’s 16 years of doing business, have come
to recognize applicant's product configuration as a
trademark for motorcycle stands is not persuasive.32
Applicant asserts that because its motorcycle stand is
the target of intentional copying, we may draw an inference
that his product design has acquired distinctiveness.33
However, we decline to draw such an inference because the
proposed mark is a product design. Where the proposed mark
is a product design, the copier may be attempting to
exploit a desirable product feature, rather than seeking to
confuse customers as to the source of the product. For
example, applicant submitted two photographs, shown below,
of products copying applicant’s product design.34

32 We note that throughout the prosecution of this application,
applicant’s counsel has made a continuing offer to provide
additional “surveys” and declarations if required or necessary.
However, “[t]he examining attorney should not specify the kind or
the amount of evidence sufficient to establish that a mark has
acquired distinctiveness. It is the responsibility of the
applicant to submit evidence to establish that the mark has
acquired distinctiveness.” TMEP § 1212(g) (7th ed. 2010).
Moreover, applicant has a responsibility to make sure that the
record is complete prior to filing its notice of appeal.
Trademark Rule 2.142(d).
33 Applicant’s Brief, pp. 21-22.
34 Applicant’s May 16, 2007 Response.
Ser. No. 77025789
35

In both examples, the “copier” has identified its product
with a word mark (i.e., HEINDEL and POWER STANDS) that is
different than applicant’s PIT BULL word mark. See
Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 USPQ2d 1481,
1486 (8th Cir. 1994) (because defendant conspicuously used
its own word mark, it made an attempt to distinguish its
product. “[I]t was clearly erroneous to infer from
[defendant’s] copying of [plaintiff’s] product that the
mark at issue here [trade dress in packaging] had acquired
secondary meaning”); see also Cicena Ltd. v. Columbia
Telecommunications Group, 900 F.2d 1546, 14 USPQ2d 1401,
1406 (Fed.Cir. 1990) (defendant’s product design was an
effort to capitalize on a desirable product feature than to
trade on any trademark rights acquired by plaintiff in that
design).
Ser. No. 77025789
36
Finally, in his Reply Brief, applicant points out that
he is the owner of Registration No. 3356308 for the mark
shown below for motorcycle stands.

“The mark consists of the color gold as used on the entire
configuration of the motorcycle stand with the exception of
the color red used on the handle and guards which is being
claimed and the color black on the wheels which is not
being claimed.” The mark was registered on December 18,
2007. Applicant filed its notice of appeal on January 22,
2008. Applicant points out that in the application for the
prior registration it submitted similar declarations and
surveys to demonstrate that the red and gold color had
acquired distinctiveness.
As indicated above in footnote No. 28, the record in
an application should be complete prior to the filing of
the notice of appeal. Accordingly, it is too late to
reference evidence outside the record for the first time in
a reply brief. Moreover, the mark in the registration
Ser. No. 77025789
37
noted by applicant is for the colors gold and red, not for
the configuration of the product.
In considering the totality of the probative evidence,
we find that the evidence is insufficient to show that the
design of applicant’s motorcycle stand has acquired
distinctiveness.
Decision: The refusal to register on the ground that
the subject matter sought to be registered is functional is
affirmed. The alternative refusal on the ground that the
subject matter sought to be registered has not acquired
distinctiveness under Section 2(f) is also affirmed.