Controls Corp. of America

Trademark Trial and Appeal Board

Feb 19, 1998

No. 74254945 (T.T.A.B. Feb. 19, 1998)

Hearing: Paper No. 24
February 13, 1997 RLS/HLJ
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB FEB 19 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Controls Corporation of America
________
Serial No. 74/254,945
_______
Edward of Kerkam, Stowell, Kondracki & Clarke, P.C. for
Controls Corporation of America.
Susan K. Leslie, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Rice, Simms and Cissel, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Controls Corporation of America (applicant), a Virginia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register on the Supplemental
Register the asserted mark shown below:
Ser No. 254945
2
for goods described as “seat and filter assembly for gas
regulators.”1 The Examining Attorney has refused
registration on the ground that the asserted mark is de jure
functional.2 Applicant and the Examining Attorney have
submitted briefs and an oral argument was held.

1 Application Serial No. 74/254,945, filed March 13, 1992, based
upon applicant’s claim of use and use in commerce since on or
about March 1, 1987. In the original application, applicant
asserted:
No claim is made to the exclusive use of a filter
per se apart from the configuration shown.
Applicant amended its application to seek registration on the
Supplemental Register on July 28, 1993.
2 In connection with this refusal, it is noted that the
Examining Attorney has in her brief referred to Sections 1, 2 and
45 of the Trademark Act, 15 USC Sections 1051, 1052 and 1127.
While Section 45 is the definitional section of the Trademark
Act, Sections 1 and 2 pertain to applications on the Principal
Register. Section 23 of the Trademark Act, 15 USC Section 1091,
provides:
(c) For the purposes of registration on the
supplemental register, a mark may consist of any
trademark, symbol, label, package, configuration
of goods, name, word, slogan, phrase, surname,
geographical name, numeral, or device or any
combination of any of the foregoing, but such
mark must be capable of distinguishing the
applicant’s goods and services.
Ser No. 254945
3
Applicant’s seat and filter assembly is designed to
remove or prevent contaminants from fouling the operation of
a gas regulator. Applicant describes its mark as follows:
The mark consists of the configuration of a
capsule comprising a hexagonal cap having a
cylindrical member extending therefrom, a
cylindrical body member beneath the cap having
external threads, wherein the body member tapers
inwardly and a lower cylindrical member extends
from the taper.
Arguments
It is applicant’s position, expressed in its reply
brief and at the oral hearing, that the principles set forth
in the seminal case of In re Morton-Norwich Products Inc.,
671 F.2d 1332, 213 USPQ 9 (CCPA 1982), are not applicable to
this case, because Morton-Norwich involved an application
for registration on the Principal Register, whereas
applicant here seeks registration on the Supplemental
Register. According to applicant, “a configuration of goods
mark which is de jure functional, is capable of
distinguishing Applicant’s goods, should be registered on
the Supplemental Register …” Applicant’s reply brief, 2.3
That is, applicant argues that the principles set forth in
Morton-Norwich apply to designs or configurations requiring

However, because the Examining Attorney has consistently
refused registration of the asserted mark on the ground that it
is de jure functional, and because applicant has clearly
understood the Examining Attorney’s arguments in this regard,
this mistake is not considered material to the appeal.
3 This position is different from the one which applicant took
in its principal brief, where it stated that a mark which is de
jure functional can never function as a trademark. See brief, 7.
Ser No. 254945
4
distinctiveness and not to applications seeking registration
on the Supplemental Register, and that there is no statutory
bar to exclude marks which are functional yet capable of
distinguishing one party’s goods from those of others.
According to applicant, the doctrine of functionality should
operate only as an affirmative defense in inter partes cases
much like other affirmative defenses such as laches or
acquiescence, so that the courts may deny protection or the
enforceability of a registration because of the anti-
competitive effect.
Even though applicant has taken this position in its
reply brief, applicant’s counsel has argued that the
configuration herein sought to be registered is not a design
which is dictated by utilitarian considerations, and that
the functionality refusal should therefore be reversed.
Applicant argues that there are no utility patents
disclosing the utilitarian advantages of applicant’s
configuration. Also, the record shows, according to
applicant, that there are numerous alternatives, or
different filter housing shapes for gas regulators, which
perform the same function as applicant’s device. See
attachments. Applicant argues, therefore, that the fact
that competitors have not needed to use applicant’s design
is evidence that its particular design is not functional.
Applicant also maintains that the declarations made of
Ser No. 254945
5
record by applicant, which have not been rebutted by the
Examining Attorney, show that applicant’s device is not
cheaper or easier to make than competitive devices. In this
regard, although only pricing information has been made of
record, applicant argues that pricing is directly related to
manufacturing costs. With respect to promotional literature
describing applicant’s filter assemblies, pointed to by the
Examining Attorney, applicant argues:
The modular design of applicant’s filter
assembly, while touted as providing a
convenience feature, does not provide any
additional, enhanced or improved filtering
ability greater than that of the competing
products. While the modular design is touted
as being beneficial in protecting the seat
assembly from contamination, all filters are
designed to prevent fouling of the seat
assembly … As noted in response to the
previous Official Action, the competitors’
designs submitted by Applicant far outsell
Applicant’s design. Thus, it can be
reasonably inferred that Applicant’s design
does not provide any greater utilitarian or
functional advantage over these designs. The
competing designs merely perform the
filtering function in a different, not
necessarily less functional or less
utilitarian manner than that of Applicant.
There is no empirical evidence that
Applicant’s design protects the seat assembly
from contamination any better than the
designs of the competitors. Absent any
empirical evidence that the design of
Applicant’s competitors performs their stated
function worse than the design of Applicant,
the statements in the advertisements may be
treated as mere advertising puffery designed
to encourage consumers to purchase
Applicant’s goods …
… Moreover, as noted above, all of the
competitors of Applicant are significantly
larger than Applicant and have a higher sales
Ser No. 254945
6
volume overall than that of Applicant.
Accordingly, there is strong evidence that
the advantages lauded in Applicant’s
advertising are merely puffery and are not
evidence of functionality.
Applicant’s Response, filed October 4, 1995, 5-7.
Applicant also notes that, when its application was
still on the Principal Register, it submitted declarations
of officers attesting to the fact that the trade recognizes
applicant’s product configuration as its design. According
to applicant, brief, 15, its modular design is “more of a
marketing and salability feature than a functional one.”4
Applicant concludes, therefore, that its configuration
is only one of the many possible configurations available,
that the configuration sought to be registered is not
functional and that it is capable of being a trademark.
It is the Examining Attorney’s position, on the other
hand, that applicant’s design consisting of a hexagonal cap,
threaded cylinder body and lower filter body is de jure
functional. While the Examining Attorney acknowledges that
there is no utility patent covering applicant’s
configuration, the Examining Attorney argues that other
Morton-Norwich factors demonstrate that applicant’s
configuration is de jure functional. Essentially, the

4 In its reply brief, 5, however, applicant states:
It cannot be denied that certain benefits
are derived from a modular design in which
the teflon [sic] seat is encapsulated…
Ser No. 254945
7
Examining Attorney argues that applicant’s modular seat
assembly presents a superior design which is unregistrable
on either the Principal or the Supplemental Register. As
the Examining Attorney views applicant’s asserted mark, it
consists essentially of three parts: a hexagonal cap, a
threaded cylindrical section and a tapered lower cylindrical
member, which lower body is a metal filter which provides
gas stream filtration. (The seat assembly and valve
components are housed within the filter and upper
cylindrical body.) The Examining Attorney has noted that
applicant in its appeal brief, 7, has conceded that the
threads beneath the hexagonal cap are functional because
they serve to secure the filter in place. The Examining
Attorney also points to an information sheet which explains
that the “modular component eliminates any chance of
incorrect assembly of seat parts in the field and makes
servicing a quick and simple operation.” Relying upon
advertising claims made by applicant with respect to its
“innovative ‘encapsulated’ seat…[with] [a]ll seat-related
components…self-contained in a sealed module,” the Examining
Attorney argues that applicant is emphasizing the advantages
of the modular design of its seat and filter assembly.
The new 5500 and 6500 Series are designed
with encapsulated Teflon seat assemblies
that include a unique wrap-around sintered
metal 40 micron filter. That means there’s
only one part to change during maintenance -
and only one part to stock. The modular
Ser No. 254945
8
encapsulated seat assembly is simple, durable
and easy to replace. In fact, the
encapsulated seat is so trouble-free that
CONCOA unconditionally guarantees it for a
full 3 years.
There’s virtually no possibility of
contamination from chips or brass dust on the
seat assembly, the number one cause of
regulator failure. The encapsulated seat
module also acts as a heat sink to absorb the
“heat-of-recompression” when opening a full
high pressure cylinder. You get the ultimate
in gas compatibility, reliability and safety.
With respect to the competitive products available in
the marketplace, examples of which were provided by
applicant, the Examining Attorney argues that almost all of
the identified features of applicant’s design -– the cap,
the threaded mid-section and a lower cylindrical member -–
are used in the competitive designs. The Examining Attorney
concludes:
Granting exclusive trademark rights to the
applicant for the referenced features would
prevent competitors from using a confusingly
similar configuration of a cap, threaded mid-
section and lower cylindrical member in their
own regulators. The applicant has conceded
that the threading is functional, in that it
is used to secure the filter in place. If
exclusive use of the configuration is granted
to the applicant, competitors would be unable
to continue to use the functional design,
effectively eliminating competition.
Examining Attorney’s appeal brief, 7.
With respect to the question of whether applicant’s
design results in a simpler or cheaper method of
manufacture, the Examining Attorney notes that applicant has
given an average price of its goods. The Examining Attorney
Ser No. 254945
9
notes that this information relates to applicant’s
regulators as a whole and does not specifically address the
cost of manufacture of the capsule design. Finally, with
respect to applicant’s arguments that it has promoted its
design as a trademark, the Examining Attorney disagrees,
contending that none of applicant’s advertisements tells the
customer to look for a certain shape or design in order to
distinguish applicant’s goods from those of others.
Discussion
If a configuration of a product embodies a design which
is superior to other designs, then it provides a competitive
advantage and the configuration is de jure functional or
functional in law. See In re Morton-Norwich Products,
supra, at 213 USPQ 14 (“[E]xamination into the possibility
of trademark protection is not to the mere existence of
utility, but to the degree of design utility.”) See also
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32
USPQ2d 1120, 1122 Fed. Cir. 1994). If the configuration is
de jure functional, it cannot be registered on either the
Principal or the Supplemental Register. See In re Minnesota
Mining and Manufacturing Company, 335 F.2d 836, 142 USPQ
366, 368 (CCPA 1964) (“Applicable in addition to the
statutory considerations are those policy considerations,
which could prevent registration on the Principal Register,
considered in our opinion in In re Deister Concentrator Co.,
Ser No. 254945
10
48 CCPA 952, 289 F.2d 496, 129 USPQ 314, which apply equally
to registration on both registers.”) and TMEP Section
1202.03(a)(i)(C). See also In re Water Gremlin Co., 635
F.2d 841, 208 USPQ 89, 91 (CCPA 1980); In re Pollak Steel
Co., 314 F.2d 566, 136 USPQ 651, 655 (CCPA 1963); In re
Shaw, 184 USPQ 253 (TTAB 1974) and J. T. McCarthy, McCarthy
on Trademarks and Unfair Competition, § 7.95, p. 7-221 (4th
ed. 1996). As applicant has acknowledged, the refusal of de
jure functionality is not specifically enumerated in the
Trademark Act, but rather is a refusal developed by the
courts on the basis of public policy. See the discussion in
Morton-Norwich, 213 USPQ at 12. We reject, therefore,
applicant’s argument that registration on the Supplemental
Register of a de jure functional configuration is
permissible if the design is “capable” of distinguishing
applicant’s goods from those of others.
While the emphasis in these cases must, of course, be
placed upon the overall design of a configuration sought to
be registered, it has been recognized that it is sometimes
helpful to analyze a configuration from the standpoint of
its various features. In re R.M. Smith Inc., 219 USPQ 629,
631 (TTAB 1983), aff’d., 734 F.2d 1482, 222 USPQ 1 (Fed.
Cir. 1984). As the Examining Attorney has noted, a product
does not have to be the subject of a utility patent in order
for it to be held functional. In re Teledyne Industries,
Ser No. 254945
11
Inc., 212 USPQ 299, 301, aff’d., 217 USPQ 9 (Fed. Cir.
1982).
There is no doubt that the threaded feature of
applicant’s configuration serves a utilitarian purpose -–
that of securing the filter and seat assembly in place.
Applicant has admitted this. See brief, 7. See also
applicant’s Amendment, filed April 13, 1994, 3. Moreover,
while applicant has not specifically so stated in this
record, the hexagonal cap has the obvious utilitarian
purpose of permitting one to use an open-end or a socket
wrench in order to secure the filter and seat assembly in
place and to remove it. Counsel also conceded this fact at
the oral hearing. Because these features are obviously
functional, if applicant eventually prevails, it must submit
an amended drawing of its mark showing the hexagonal cap and
the threaded portion of its filter and seat assembly in
dotted lines. This will represent that applicant is not
claiming that these aspects of its configuration are
proprietary features of its mark. A statement should also
be made of record that the matter shown by the dotted lines
is not part of the mark. See Trademark Rule 2.51(d) and
TMEP Section 807.03(a). See also In re Water Gremlin Co.,
635 F.2d 841, 208 USPQ 89 (CCPA 1980) and In re Famous
Foods, Inc., 217 USPQ 177 (TTAB 1983).
Ser No. 254945
12
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney’s analysis of the functionality of applicant’s seat
and filter assembly and believe that this record establishes
that the configuration sought to be registered by applicant
is de jure functional or functional in law. The entire
design consists of a functional hexagonal cap, functional
threaded members and a simple lower cylindrical body which
consists of a housing for the elements of applicant’s filter
assembly. The configuration results from a comparatively
simple design housing the filter assembly. Applicant’s
advertising, we believe, touts the superiority of this
simple design and helps establishes its unregistrability.5
In this regard, we have also examined the competitive
designs of record and find them to contain aspects similar
to applicant’s configuration—-caps, threaded mid-sections
and lower cylinders housing the filters. Although it is
true that the competitive designs are not identical in
appearance to applicant’s, we nevertheless believe that this
record establishes that applicant’s design is, if not the
best, certainly one of the few superior designs for a seat
and filter assembly for gas regulators.
DECISION: The refusal to register is affirmed.

5 At the oral hearing, applicant’s counsel conceded that the
small hole, partially obscured in the drawing by the hexagonal
Ser No. 254945
13
J. E. Rice
R. L. Simms
R. F. Cissel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

cap, also serves a utilitarian function and must be present in
the assembly in order for it to work properly.
Ser No. 254945
14