Coobs Canada Ltd.

Trademark Trial and Appeal Board

Nov 25, 2014

No. 85345427 (T.T.A.B. Nov. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Coobs Canada Ltd.
_____

Serial No. 85345427
_____

Joseph W. Berenato, III of Berenato & White, LLC,
for Coobs Canada Ltd.
Cory Boone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Quinn, Mermelstein and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Coobs Canada Ltd. (“Applicant”) seeks registration on the Principal Register of
the following:

Serial No. 85345427
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for “concrete blocks” in International Class 19.1 The application includes an
amended description of the mark, which reads: “The mark consists of a design
showing a three-dimensional concrete block.”2
The Trademark Examining Attorney has refused registration under Section
2(e)(5) of the Trademark Act on the ground that Applicant’s asserted mark consists
of a functional design, and under Sections 1, 2, and 45 on the ground that the
asserted mark is a non-distinctive product design for which Applicant has not
provided sufficient evidence of acquired distinctiveness. In response to the Office
Action dated June 3 2013, in which the Examining Attorney maintained both
grounds for refusal, Applicant appealed. We affirm the refusals to register.
I. Evidentiary Issue.
Before proceeding to the merits of the refusals, we address an evidentiary
matter. Applicant submitted new evidence with and in its Brief and Reply Brief.
Evidence submitted after an appeal is untimely and ordinarily will not be
considered3 unless the Examining Attorney, in his or her brief, discusses the
exhibits attached to the Applicant’s brief without objecting to them. Trademark
Rule 2.142(d); see In re Development Dimensions International, Inc., 219 USPQ 161,

1 Application Serial No. 85345427 was filed on June 14, 2011 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act and upon Section 44(e) of the Trademark Act based upon Applicant’s
ownership of Canada Reg. No. TMA449524 dated November 3, 1995, renewed November 3,
2010.
2 It is clear from Applicant’s filings and arguments during examination of the application
and during this appeal that Applicant claims as its mark the shape of its goods (“concrete
blocks”). The Examining Attorney has treated the application consistent with that
understanding, and we will do the same.
3 Trademark Rule 2.142(d), 37 CFR § 2.142(d).
Serial No. 85345427
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162 n.2 (TTAB 1983); and Trademark Trial and Appeal Board Manual of Procedure
(TBMP) § 1207.03 (2014).
The Examining Attorney did not discuss said exhibits. Accordingly, any exhibits
first submitted with Applicant’s Brief and Reply Brief have not been considered.
II. Functionality Refusal under Section 2(e)(5) of the Trademark Act.
Registration was refused under Section 2(e)(5) of the Trademark Act,4 which
prohibits registration of a mark which comprises any matter that, as a whole, is
functional. The mark, as depicted in the drawing, consists of a three-dimensional
block with two protruding crosses on top. Applicant claims the entire depiction as
its mark.
The case law of our primary reviewing court, the Court of Appeals for the
Federal Circuit, and of its predecessor, the Court of Customs and Patents Appeals,
establishes that before an overall product configuration
can be recognized as a trademark, the entire design must
be ... non de jure functional. Petersen Mfg. Co. v. Central
Purchasing, Inc., 740 F.2d 1541, 222 USPQ 562, 569 (Fed.
Cir. 1984); In re Minnesota Mining and Mfg. Co., 335 F.2d
836, 142 USPQ 366 (CCPA 1964). The reason for this rule
is self-evident — the right to copy better working designs
would, in due course, be stripped of all meaning if overall
functional designs were accorded trademark protection
because they included a few ... nonfunctional features. See
Petersen Mfg. Co., 222 USPQ at 569; In re R.M. Smith,
734 F.2d 1482, 222 USPQ 1, 2-3 (Fed. Cir. 1984). In cases
where the holders of such designs seek trademark
protection, it can be obtained only for those features that
are nonfunctional. Petersen Mfg. Co., 222 USPQ at 569;
Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d
769, 774, 210 USPQ 351, 357 (9th Cir. 1981). Moreover,

4 Section 2(e)(5), which became effective on October 30, 1998, codified prior case law.
Trademark Manual of Examining Procedures (TMEP) § 1202.02(a)(1) (2014).
Serial No. 85345427
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an applicant for trademark protection has the burden to
prove that a design is nonfunctional, once a prima facie
case of functionality is made by an opponent. In re
Teledyne, Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed.
Cir. 1982); see also R.M. Smith, 221 USPQ at 3; In re
Morton-Norwich, 671 F.2d 1332, 1343, 213 USPQ 9, 17
(CCPA 1982).
Textron, Inc. v. U.S. International Trade Commission et al., 753 F.2d 1019, 224
USPQ 625, 628-29 (Fed. Cir. 1985) (citations revised).
Applicant does not argue that the underlying three-dimensional rectangular
shape of the block (without the protruding cross-shaped feature) is not functional.
Instead, Applicant argues that its ownership of prior incontestable Registration No.
1912535 for the following block design:

for “concrete blocks for use in constructing retaining walls,” mandates a finding that
the three-dimensional block designated in the application at issue is not functional.5
This argument is not persuasive. It has long been held that
[t]rademark rights are not static, and eligibility for
registration must be determined on the basis of the facts
and evidence of record that exist at the time registration
is sought. In re Chippendales USA, Inc., 622 F.3d 1346,
1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (citations
omitted).

5 Applicant argues that the registered mark is merely a depiction of the same concrete block
from a different angle. However, there are differences in the appearance of the registered
mark and the designation now before us.
Serial No. 85345427
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Each case must be decided on its own facts. Neither the
USPTO — specifically, the examining attorney who
examined the application here at issue — nor the Board,
is bound by the decision of the examining attorney who
examined the application for the applicant’s previously
registered mark. See In re Omega SA, 494 F.3d 1362, 83
USPQ2d 1541 (Fed. Cir. 2007) (upholding examining
attorney’s requirement for a more definite identification,
notwithstanding applicant’s ownership of several
registrations in which the term “chronographs” appeared
without further qualification in the identification); and In
re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865
(Fed. Cir. 1985) (examining attorney could properly refuse
registration on ground that DURANGO for chewing
tobacco is primarily geographically deceptively
misdescriptive, even though applicant owned
incontestable registration of same mark for cigars).
In re Cordua Rests. LP, 110 USPQ2d 1227, 1233 (TTAB 2014).6
In any event, although the differences are not great, both the mark and the
goods in Applicant’s prior registration differ from those set out in the application
now before us — indeed, it seems likely that is the reason why Applicant is seeking
a new registration. Regardless of the treatment of Applicant’s prior registration, an
application for registration of a different mark for different goods is a “‘new ball
game,’ which must be predicated on current thought.” See In re Hunter Publ’g Co.,
204 USPQ 957, 963 (TTAB 1979). Thus, Applicant’s ownership of prior Registration
No. 1912535 does not affect our finding that the three-dimensional rectangular
shape of the block at issue, without the cross-shaped protrusions, is functional.
Moreover, the evidence supports our finding that the three-dimensional block is a

6 The incontestable status of the prior registration is not relevant to our decision. Any
registration, even an incontestable one, may be cancelled at any time if the registered mark
is functional. Section 14 of the Trademark Act, 15 U.S.C. § 1064.
Serial No. 85345427
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common shape of concrete blocks sold by Applicant and its competitors7, which
provides certain advantages when used to build certain structures, such as
retaining walls.
We look next at the cruciate protrusions on the top of Applicant’s concrete
blocks. To determine whether the cross-shaped protrusions are functional, we
consider the factors set forth in the Morton-Norwich case:
1. The existence of a utility patent that discloses the
utilitarian advantages of the design;
2. Advertising by the applicant that touts the utilitarian
advantages of the design;
3. Facts pertaining to the availability of alternative
designs; and
4. Facts pertaining to whether the design results from a
comparatively simple or inexpensive method of
manufacture.
In re Morton-Norwich Prods., Inc. 213 USPQ at 15-16.
Upon consideration of these factors, our determination of
functionality is ultimately a question of fact, and depends
on the totality of the evidence presented in each
particular case. Valu Eng’g, Inc. v. Rexnord Corp., 278
F.3d 1268, 61 USPQ2d at 1424 (Fed. Cir. 2002); In re
Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997).
Furthermore, it is not required that all four factors be
proven in every case, nor do all four factors have to weigh
in favor of functionality to support a refusal…. See Valu
Eng’g, Inc., 61 USPQ2d at 1427; In re Udor U.S.A. Inc., 89
USPQ2d 1978, 1979 (TTAB 2009).

7 The record establishes that a number of Applicant’s competitors sell rectangular shaped
blocks, including Independent Concrete Ltd., Rempel Bros. Concrete and Bashaw Concrete
Products Limited. Office Action dated June 3, 2013.
Serial No. 85345427
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AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833-34 (TTAB 2013)
(citations revised).
1. The existence of a utility patent that discloses the utilitarian
advantages of the design.
Applicant owns Patent No. 6931797, entitled “Arched structures and method for
the construction of the same.”8 Applicant’s ’797 Patent discloses an arch and the
method of building it using blocks which “include[ ] a protrusion extending from the
surface, said protrusion being mateable with a corresponding recess in” a similar
adjacent block. Claim 1 and Claims 3, 4, 6, and 7 further disclose the use of similar
blocks having “cross-shaped” protrusions. The drawings (## 50 & 60) also show
blocks with cross-shaped protrusions, which “impede slippage in any direction,”
demonstrating that an advantage of using a block with a protrusion, especially one
with “both longitudinal and transverse components,” is better stability.
As discussed, supra, the protruding cross-shaped feature9 of applicant’s concrete
block is disclosed in Applicant’s patent. “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

8 Applicant claimed ownership of this patent in response to the Examining Attorney’s
request that Applicant provide information regarding the asserted mark. Response dated
March 26, 2012.
9 In the concrete block industry, the protruding portion of such a block is known as a “key.”
See Appeal Brief, pp. 15-16, 7 TTABVUE at 15-16 and Examining Attorney’s Brief, p. 4, 11
TTABVUE at 5.
Serial No. 85345427
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proved otherwise by the party seeking trade dress protection.” TrafFix Devices, Inc.
v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005 (2001).
To overcome the presumption of functionality, Applicant argues that the “patent
relates to voussoirs10 and arches constructed therewith,” and not to blocks. Appeal
Brief, p. 8, 7 TTABVUE at 9. “One of the objects of the ’797 patent ‘is to provide a
[wedge-shaped piece] with features enabling an improved interlock with like
[wedge-shaped pieces] but also to enhance the ease of assembling an arched
structure.’” Id. Although the block configuration at issue is not wedge-shaped, as
discussed infra, the protruding cross shape depicted in the application is the same
as the protruding cross-shaped key disclosed in the patent. In both cases, the cross
— which interlocks with a recess in an adjacent and similar block — enhances the
stability of a structure. Applicant’s patent thus strongly supports a finding that the
cross-shaped key which is a feature of Applicant’s proposed mark is functional.
Further, contrary to Applicant’s assertion, we do not find that the absence in the
trademark application of the recess disclosed in the patent, which connects with the
protrusion, renders the cross feature non-functional. The ’797 Patent discloses a
block which is manufactured with cross-shaped protrusions on the top surface and
cross-shaped recesses on the bottom surface. Applicant’s failure to include the

10 “Voussoir” is defined in Merriam-Webster’s Online Dictionary as “one of the wedge-
shaped pieces forming an arch or vault.” As requested by Applicant, we take judicial notice
of the definitions submitted by Applicant from Merriam-Webster’s Online Dictionary.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 85345427
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recessed portion in the drawing of the applied-for mark11 does not render the cross-
shaped protrusions claimed in the application non-functional.
2. Advertising by the applicant that touts the utilitarian
advantages of the design.
Both the Examining Attorney and Applicant submitted advertising material
from Applicant’s website that touts the utilitarian advantages of the cross-shaped
feature. For example, the page entitled HOME OF THE LOCK-BLOCK, ARCH-
LOCK & LOCK-BLOCK TRAFFIC BARRIER states:
Our founder Jay Drew, a professional engineer
licensed in British Columbia invented the United
Lock-Block Ltd. building system …
To make it easy to stack the units up straight, and
for other engineering considerations Jay looked at
many interlocking shear key designs and
copyrighted the best one.
Exhibit to Office Action dated April 16, 2012, and Exhibit 5 to Response dated
March 26, 2012;
The page entitled WALLS, SHELTERS, INDUSTRIAL & RESIDENTIAL
APPLICATIONS states:
Features and benefits that are common to many of
our applications …
Self aligning interlocking key that speeds assembly
and allows easy straight stacking.
Exhibit to Office Action dated April 16, 2012; and

11 The drawing in the application depicts only the top and two sides of a concrete block.
Although they are not depicted, it is obvious from the drawing that applicant’s actual
concrete blocks have a bottom and two additional sides which could easily include recesses
corresponding to the cross-shaped key depicted in the proposed mark
Serial No. 85345427
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The page entitled ARCH-LOCK – THE NEW ROMAN ARCH states:
The copyright protected interlocking key design
holds the units together in alignment during and
after assembly.
Exhibit to Office Action dated April 16, 2012.
Accordingly, we find that the advertising material touts the utilitarian
advantages of the interlocking key in the shape of two crosses, e.g., the shape
speeds assembly and allows easy straight stacking with improved lateral stability.
3. Facts pertaining to the availability of alternative designs.
Applicant has established that that there are various alternative interlocking
key designs available. However, because we find that the design affects the quality
of the goods and as such is functional, “there is no need to proceed further to
consider if there is a competitive necessity for the feature.” TrafFix Devices, Inc. v.
Mktg. Displays, Inc., 58 USPQ2d at 1006.
4. Facts pertaining to whether the design results from a
comparatively simple or inexpensive method of manufacture.
There is no evidence regarding the method of manufacturing the protruding
cross feature. To that end, we find this element to be neutral.
As discussed, supra, it is not necessary that all four Morton-Norwich factors be
proven in every case, or that all four factors weigh in favor of functionality to
support a refusal. In this case, the first two Morton-Norwich factors support a
finding of functionality of the protruding cross feature.
Conclusion.
Serial No. 85345427
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As discussed, supra, the shape of the block is essential to the building of
structures, including retaining walls, and the protruding cross-design (a portion of
the self-aligning interlocking key), speeds assembly, allows easy straight stacking
and holds the units together in alignment during and after assembly. As such, the
designation as a whole is functional and the refusal under Section 2(e)(5) is
affirmed. Having determined that the design is functional, it is not necessary for us
to decide the alternate ground for refusal, namely, whether Applicant has
established acquired distinctiveness of its non-distinctive design. However, we do so
for the sake of completeness.
III. Non-Distinctive Design Refusal under Sections 1, 2, and 45 of the
Trademark Act.
As asserted by the U.S. Supreme Court, a product’s design is not inherently
distinctive since with “product design, as in the case of color, we think consumer
predisposition to equate the feature with the source does not exist. Consumers are
aware of the reality that, almost invariably, even the most unusual of product
designs – such as a cocktail shaker shaped like a penguin – is intended not to
identify the source, but to render the product itself more useful or more appealing.”
Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069
(2000). As such, since Applicant’s asserted mark consists of the product design
consisting of a concrete block, it is per se not inherently distinctive. The burden of
proving acquired distinctiveness is on Applicant. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Applicant has not met this burden.
Serial No. 85345427
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Applicant argues that by virtue of its ownership of an incontestable registration
for a similar, albeit, not identical, mark used in connection with “identical goods,”12
its asserted mark has acquired distinctiveness.13 In support of this position,
Applicant relies on In re Best Software, Inc., 63 USPQ2d 1109 (TTAB 2002), and In
re American Sail Training Association, 230 USPQ 879 (TTAB 1986). This case can
be distinguished from the American Sail Training case, where a disclaimer was not
required of the previously registered term “TALL SHIPS,” because the Applicant
owned a registration for the entire registered mark, whereas in the present case,
the marks are not identical.
The Board reached a contrary conclusion in Best Software, where the issue was
whether the term BEST must be disclaimed in the mark BEST! IMPERATIV
HRMS for “computer software for human resource, payroll, W-2 and tax processing
and employment management,” where the applicant owned an incontestable
registration for the mark BEST! for “computer programs for accounting, tax
preparation, generating office reports and manuals, electronic filing and facsimile
transmission, human resource management, financial management, computer
network management, and for office administration and file management.” The
Board, in affirming the disclaimer requirement, acknowledged the differences in

12 The goods, as identified in the application at bar, “concrete blocks” are broader than the
goods identified in the prior registration, “concrete blocks for use in constructing
restraining walls.” Thus, to the extent that the goods include concrete blocks that are not
for use in constructing for retaining walls, they are not identical.
13 Applicant acknowledges that Reg. No. 1912535 issued prior to the Supreme Court’s
decision in Wal-Mart v. Samara and, therefore, Applicant was not required to establish
acquired distinctiveness of the design in order to register it.
Serial No. 85345427
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both the goods and marks in the application and the prior incontestable
registration, stating:
ownership of an incontestable registration does not give
the applicant a right to register the same or similar mark
for different goods or services, even if they are closely
related to the goods or services set forth in the
incontestable registration. Here, this application seeks
registration of a different mark—BEST! IMPERATIV
HRMS—with a different commercial impression from the
mark in the prior registration—BEST! per se—for goods
which, although similar, are nevertheless somewhat
different.
Best Software, 63 USPQ2d at 1113. The present case is similar to the Best Software
case in that the goods in the current application, while in part identical, are broader
than the goods in Applicant’s prior registration. More importantly, the alleged mark
in this case, if not functional, is so highly descriptive that it is not capable of
acquiring distinctiveness. As such, the alleged mark at issue is similar to the
descriptive nature of the laudatory term “BEST,” which was held by the Court of
Appeals for the Federal Circuit to be “so highly laudatory and descriptive as to be
incapable of acquiring distinctiveness as a trademark…. [I]t is so highly laudatory
and descriptive of the qualities of its product that the slogan does not and could not
function as a trademark to distinguish Boston Beer’s goods and serve as an
indication of origin.” Best Software, 63 USPQ2d at 1111 (quoting In re Boston Beer
Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (affirming refusal to
register the mark BEST BEER IN AMERICA)) A term or slogan that is so highly
laudatory and descriptive that it cannot function as a trademark is analogous to a
generic term or slogan, which can be cancelled at any time. §14(3) of the Trademark
Serial No. 85345427
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Act, 15 U.S.C. § 1064(3). Similarly, in this case where the asserted mark is a
product design consisting of a three-dimensional rectangular shape of a block
commonly used by third parties, with a functional cross-shaped protrusion,
ownership of a prior registration — even one over five years old — for a similar,
albeit not identical, mark for related goods is not sufficient to establish
distinctiveness.
“While there is no fixed rule for the amount of proof necessary to demonstrate
[acquired] distinctiveness, the burden is heavier in this case because it involves
product configurations.” In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1283
(TTAB 2000) (use of design for “eyeglass lens holders, eyeglass/spectacle frame
display holders and brackets” in commerce for between seven and seventeen years,
and evidence of sales and advertising, are not sufficient to establish
distinctiveness). In this case, Applicant asserts that it “has continuously utilized, for
over twenty (20) years, a design substantially similar to the design of the ’427
application as a source identifier.” Appeal Brief, p. 16, 7 TTABVUE at 17 (emphasis
in original). Applicant has provided no sales or advertising figures, nor has
Applicant provided evidence of the extent of its use of the configuration in the
United States.14
Long use of a mark is a relevant factor to consider in determining whether a
mark has acquired distinctiveness, however, it is not necessarily conclusive or
persuasive. In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984)

14 Applicant is a Canadian corporation. The current application is based on its Canadian
registration and on an intent to use the mark in commerce.
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(Sixteen years of use not sufficient to establish acquired distinctiveness). See also,
In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973) (evidence
held insufficient to show registrability under Section 2(f) for “CREME DE
MENTHE” on chocolate mint candy squares notwithstanding 20 years use, $2.5
million in annual sales, $25,000 per year in advertising and promotion, national
distribution through 1400 distributors in 49 states and Canada, nearly 100
unsolicited letters purportedly showing mark recognition, and affidavits of
president of applicant and of a chocolate distributing firm); In re Interstate Folding
Box Co., 167 USPQ 241 (TTAB 1970) (applicant held, alternatively, to have failed to
meet burden of proof that “INNER-LINED” for pasteboard cartons had become
distinctive under Section 2(f) notwithstanding 30 years of use, $50,000 in
advertising per year, seven “representative” unsolicited letters showing mark
recognition, and 70 million cartons sold throughout the U.S. plus advertising
samples supplied to verify nature of use); and In re Riviana Foods, Inc., 160 USPQ
757 (TTAB 1970) (registration refused under Section 2(f) to “PRESCRIPTION
DIET” for dietary animals foods sold to veterinarians and animal hospitals
notwithstanding 18 years of use, existence of two Supplemental Register
registrations for designation, and an “independent survey” among practicing
veterinarians which the Board found deficient). Accordingly, we find that the
asserted use of the concrete block configuration for over twenty years is not
sufficient in this case to establish distinctiveness, particularly since there is no
other evidence of acquired distinctiveness.
Serial No. 85345427
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Finally, Applicant argues that consumers would view its three-dimensional block
design as a logo since Applicant has used it next to Applicant’s trade name.
Applicant’s argument is unpersuasive since the trade name is not part of the mark
sought to be registered and we must consider the registrability of the mark shown
in the drawing, which is the configuration of a concrete block, not a graphic design.
See Trademark Rule 2.52; 37 C.F.R. § 2.52. The case relied on by Applicant,
Duramax Marine LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780 (TTAB 2006), is
distinguishable from this case, particularly since it relates to a product design used
as a service mark, and thus is not applicable.
Based on the evidence of record, we find that Applicant has not established that
the shape of its concrete blocks has become distinctive as an identifier of their
source.
In conclusion, we find that Applicant’s depiction of a three dimensional block is
functional. However, if on appeal the depiction is found to be not functional, we find
that Applicant has not established that the design has become distinctive.
Decision: The refusals to register Applicant’s asserted mark

under Section 2(e)(5) and Sections 1, 2, and 45 are affirmed.