Duramax Marine, LLCv.R.W. Fernstrum & Company

Trademark Trial and Appeal Board

Aug 4, 2006

No. 91119899 (T.T.A.B. Aug. 4, 2006)

Hearing: Mailed:
July 12, 2005 August 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Duramax Marine, LLC
v.
R.W. Fernstrum & Company
_____

Opposition No. 91119899
to application Serial No. 75701707
filed on May 10, 1999
_____

D. Peter Hochberg of D. Peter Hochberg Co., L.P.A. for
Duramax Marine, LLC.

Marc A. Bergsman and Samuel D. Littlepage of Dickinson
Wright PLLC for R.W. Fernstrum & Company.
______

Before Grendel, Rogers and Zervas,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

R.W. Fernstrum & Co. [applicant] seeks to register the
depiction shown below as a service mark in International
Class 40, for services identified as “manufacture of marine
heat exchangers to the order and specification of others”
[hereinafter may be referred to as applicant's custom
manufacturing services]. The application was filed on May
10, 1999, claiming 1975 as the date of first use of the
mark, and first use of the mark in commerce, in connection
This Opinion is
Citable as Precedent
of the TTAB
Opposition No. 91119899
2
with the services. Applicant also alleges first use of the
mark in another form as of 1955, and that such use was in
commerce. A description of the proposed mark states that
"the mark consists of a drawing of a marine heat exchanger."
Registration is sought under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f) ("Except as expressly excluded in
[other] subsections … nothing herein shall prevent the
registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce.").

Pleadings in the Opposition
Duramax Marine, LLC [opposer] has filed a notice of
opposition. Opposer asserts it "is now and has been engaged
in the manufacture and sales [sic] of external cooling
systems for marine engines" and that such systems "are
commonly called keel coolers." Amended Opposition ¶ 1.
(Both parties have referred to marine heat exchangers as
"keel coolers"; so shall we.1) Opposer asserts that

1 For the reader unfamiliar with keel coolers, in the image
comprising the proposed mark, the two smokestack-like vertical
Opposition No. 91119899
3
applicant and other companies manufacture and sell keel
coolers "having a flat, grid like surface formed by uniform
and parallel spaced rectangular tubes"; that keel coolers so
designed have been a "success"; and that, when applicant's
patents covering keel cooler designs expired, opposer began
copying the designs in the expired patents and engaging in
"direct competition" with applicant. Opp. ¶ 2. Opposer
also asserts it has become "widely known" for its marine
products, including keel coolers, and has a "favorable
reputation." Opp. ¶ 3.
In regard to applicant and its business, opposer
asserts that applicant has been manufacturing and selling
keel coolers "like that" shown by the proposed mark "for
over fifty years"; that the keel cooler shown by the mark is
"very similar" to the "detailed drawing of a functional"
keel cooler in U.S. Patent No. 4,338,993; that applicant has
used "views and drawings" of keel coolers "like that" of the

extensions on either end of the keel cooler are inflow and
outflow connections, through which fresh water or a mix of fresh
water and antifreeze flow. The water or water/coolant mixture
cools the inboard engine of a boat, keeping the engine from
overheating. The heat created by the engine is carried by the
water or coolant mixture from the engine compartment to the keel
cooler, the external surface of which is exposed to the fresh or
salt water through which the boat is traveling. The heat
dissipates and the cooled water or coolant mixture is then
returned to the engine. The ends of the keel cooler are called
headers. When installed on or in the hull of a boat, the header
extensions through which water or the coolant mixture flow are
inside the hull and connected to the engine by tubing. The rest
of the keel cooler is outside the hull, so that it remains
exposed to the body of water through which the boat travels.

Opposition No. 91119899
4
proposed mark in a functional manner, for example, in
installation publications; that the mark "is nearly an exact
drawing" of a keel cooler applicant manufactures and sells
under the mark GRIDCOOLER; and that the mark is not an
arbitrary, fanciful or stylized keel cooler but "is a
picture of a functional and utilitarian product… and is…
equivalent to the utilitarian shape itself." Opp. ¶¶ 4-11.
Opposer also claims that the mark is "merely
descriptive of the goods with which it is used"; that
opposer and "at least" one other party make and market keel
coolers similar to applicant's mark; that there is no
distinction between applicant's keel cooler, the mark in the
application, and the keel cooler of "at least one other
independent manufacturer"; that if applicant obtained a
registration, opposer would not be able to "show drawings or
photographs" of its keel coolers; that opposer and others
"displaying and demonstrating" their keel coolers or
publishing "photographs or drawings" of keel coolers would
"run the risk of being sued for trademark infringement" by
applicant, if it obtained a registration; and, even though
the keel cooler designs of applicant "are in the public
domain," applicant could obtain "a perpetual monopoly in a
drawing of its design." Opp. ¶¶ 12-18.
In our construction of the amended opposition, set
forth above, we have read the pleading for its fair and
Opposition No. 91119899
5
reasonable import. For example, when opposer asserts in
paragraphs 9-11, respectively, "Applicant's application
Serial No. 75/701,707 does not…/is not…/is…," we have taken
these as references to the mark in the application and not
the application document per se. Also, as noted in the
Board's order of March 10, 2004, the Board interprets the
amended notice of opposition as setting forth claims that
the proposed mark is descriptive, is functional, and lacks
acquired distinctiveness.2
Applicant, in its amended answer to the amended
opposition, admitted paragraphs 1, 5, 7, 9-10 and 13 without
qualification. By the first three of these admissions,
applicant has admitted that opposer manufactures and sells
keel coolers, and that such keel coolers have "a flat, grid-
like surface formed by uniform and parallel spaced
rectangular tubes similar to those shown in" the drawing in
the involved application; that the drawing of the keel
cooler in the involved application is "very similar" to the
drawing of a keel cooler in U.S. Patent No. 4,338,993, which
"is a detailed drawing of a functional" keel cooler; and
that an "article has been written about Applicant" and it
included a photograph or drawing "very much like the drawing

2 Whether the proposed mark has acquired distinctiveness is
relevant only to the claim that the proposed mark is descriptive.
Matter that is functional under Section 2(e)(5) of the Trademark
Act is excluded from consideration for registration under Section
2(f) of the Trademark Act.
Opposition No. 91119899
6
in" the involved application. By its admission of
opposition paragraphs 9-10, applicant has admitted that its
mark "does not create an overall arbitrary and fanciful
impression," and "is not a stylized and fanciful
illustration of" the keel coolers "with which it is used."
Finally, applicant has admitted (opp. ¶ 13) that opposer and
"at least one other" party "have been marketing" keel
coolers "very similar to that shown in" the involved
application.
By certain partial or qualified admissions of
opposition paragraphs 2, 6 and 8, applicant has admitted
"that Opposer copied certain functional features of
Applicant's keel cooler product and that it is aware of one
other company (apart from Opposer) that has recently engaged
in the manufacture and sale of marine heat exchangers having
a flat, grid like surface formed by uniform and parallel
spaced rectangular tubes," although it denies that the
design of its keel cooler "is in the public domain"; has
admitted that it has used the document attached to the
opposition as exhibit B; and has admitted that the drawing
in the [involved] application depicts its GRIDCOOLER [keel
cooler] from a particular perspective."
Applicant has either expressly or effectively denied
all other allegations in the opposition. In addition, as an
affirmative defense, applicant has asserted that opposer "is
Opposition No. 91119899
7
estopped from now opposing or otherwise challenging the
federal registration of" the involved mark, because of a
"Settlement and Mutual Release Agreement." Applicant
attached a copy of the agreement to its answer, and it was
separately introduced into the record.

The Record

The extensive record developed at trial includes, from
opposer, a June 1, 2004 notice of reliance on a variety of
items, and testimony depositions from eight witnesses,
introducing 68 exhibits;3 and from applicant, six notices of
reliance and one testimony deposition (with exhibits).
In its notice of reliance, opposer states that it
relies on: copies of two registrations owned by applicant
(one for applicant's word mark GRIDCOOLER4 and the other for
a composite design mark5 showing a globe and a drawing of a

3 The total number of exhibits is smaller, as opposer has had
some of the exhibits discussed by multiple witnesses.

4 Registration No. 941,382, on the Principal Register, for
"external cooling system for marine engines and installed upon
the hulls of watercraft" (twice renewed).

5 Registration No. 2,357,354, on the Principal Register, for
"external cooling system for marine engines, namely, heat
exchangers" (affidavits under Sections 8 and 15 filed, pending).

Opposition No. 91119899
8
keel cooler that, if not the same as that in the involved
application, is very similar)(Tab A of the Notice of
Reliance); applicant's responses or revised responses to
various discovery requests (Tabs B, C and D);6 excerpts,
including exhibits, from the discovery depositions of,
respectively, Sean Fernstrum, applicant's vice president of
operations, and Paul Fernstrum, applicant's president and
CEO (Tab E); and certain materials presented as printed
publications or official records (Tab F). We note, however,
in regard to the items submitted under Tab F, that applicant
filed, and the Board granted, a motion to strike seven of
the thirteen items so submitted. As a result, the only
items remaining in the record from the Tab F group of

6 The materials under Tabs B and C are responses to
interrogatories and requests for admissions. The materials said
to be under Tab D were reported by opposer to comprise 296 pages
identified in a revised response to a certain document request
and documents relating to a survey conducted by applicant and
identified in response to a different document request.
As noted in the Board's order of August 10, 2004, opposer's
notice of reliance did not include the referenced 296 pages or
survey documents. As also noted in that order, a party is not
permitted to introduce, by notice of reliance, documents received
from an adverse party pursuant to requests for production. TBMP
Section 704.11 (2nd ed. rev. 2004). However, because the
parties' various evidentiary submissions involve some
duplication, the 296 pages of produced documents on which opposer
relies found their way into the record when introduced as exhibit
3 to the discovery deposition of Sean Fernstrum (Tab E of
opposer's notice of reliance); and the survey documents were
introduced by applicant into the opposed application file, during
its prosecution, and are also present in the file contents for
applicant's Registration No. 2,357,354, which was introduced into
the record for this proceeding by one of applicant's notices of
reliance. We note, too, that applicant's attorney stipulated to
the authenticity of the documents produced by applicant. See p.
202 of the discovery deposition of Sean Fernstrum.

Opposition No. 91119899
9
submissions are copies of five patents and the file history
of an abandoned trademark application filed by applicant,
Serial No. 75382250. In its brief, applicant refers to the
trademark application as the "abandoned application for the
configuration of the GRIDCOOLER."
The witnesses called by opposer to provide testimony
are Michael W. Brakey, president of Brakey Consulting, Inc.,
which has opposer as one of its clients; Jeffrey Leeson, a
member of opposer's engineering staff; Richard Lockhart,
opposer's sales manager; George Kyle McHugh, of McHugh
& Associates; Steven Garver, who identified himself as "in
charge of the Commercial Division" of an entity known as
Donovan Marine; David L. Culpepper, an attorney that
represented Donovan Marine in a legal action also involving
applicant; Todd P. Boudreaux, "owner/president" of East Park
Radiator; and Paul M. Boudreaux, owner and president of
Ashton Marine.
Applicant, by its notices of reliance, has introduced
additional excerpts from the discovery depositions of Sean
Fernstrum and Paul Fernstrum;7 the entire file history for
trademark Registration No. 2,357,354; copies of nine patents
intended to "demonstrate the variety of alternative designs
available for marine heat exchangers"; opposer's responses
to applicant's first set of requests for admissions; and a

7 See Trademark Rule 2.120(j)(4), 37 C.F.R. § 2.120(j)(4).
Opposition No. 91119899
10
notice of reliance on opposer's non-response to applicant's
fourth set of requests for admissions, which includes a
submission of many documents applicant intended opposer to
authenticate by responding to the specific requests for
admission.

Objections to Opposer's Brief, Evidence

Applicant, in its brief, has asserted objections to
Sections IV(B) and (C) of opposer's trial brief, claiming
that they are mere argument unsupported by evidence and are,
in any event, arguments with no relevance to the issues
presented by this case. We agree that the latter of the two
disputed sections, which focuses on a false advertising case
between the parties, is irrelevant to the issues presented
by this opposition. It has had no influence on our decision
of this case. Moreover, to the extent that opposer's
discussion of that civil action may have been intended to
help establish the reliability of Michael Brakey as a
witness in regard to issues present in this opposition, we
note that our assessment of his testimony, and applicant's
objections thereto, have not been influenced in any way by
opposer's recounting of the false advertising action, Mr.
Brakey's role therein or the disposition of that action.
In contrast, we find the section IV(B) discussion of
certain consolidated trademark and trade dress civil actions
relevant to this case, at least insofar as those cases
Opposition No. 91119899
11
resulted in a settlement agreement that applicant asserts
precludes opposer from pursuing this opposition. Applicant,
concerned that the discussion is nothing more than an
attempt to prejudice the Board against applicant, may rest
assured that opposer's discussion of those cases has not led
the Board to favor, or disfavor, either opposer's claims or
applicant's affirmative defenses in this opposition. The
claims and defenses in this case have been considered on
their merits.
More specifically, it is the settlement of the civil
actions that is placed in issue in this case by applicant's
affirmative defenses, not the claims, defenses or evidence
submitted in those civil actions. Because we find the
settlement agreement (Brakey exh. 10; Sean Fernstrum test.
dep. exh. 33) and the incorporated term sheet (Brakey exh.
9) from the civil actions clear enough to be interpreted
without resort to parol evidence as to the intent of the
parties that signed those items, we have had no need to
resort to testimony of any witnesses, or opposer's
discussion in its brief of such testimony, to discern the
relevance of the settlement agreement to this case.8 The

8 Opposer's representation in section IV(B) of its brief of
Michael Brakey as "an expert on keel coolers" "prepared to
testify" in the consolidated civil actions has not influenced our
consideration of his testimony in this opposition or of
applicant's objections thereto.
Opposition No. 91119899
12
agreement and incorporated term sheet are as relevant as
their words clearly indicate.
Applicant has also asserted numerous objections to
certain passages from the testimony of Michael Brakey, and
to exhibits introduced during the Brakey testimony
deposition. Applicant's first objection is to certain parts
of the Brakey testimony, as well as exhibit 11 (a copy of a
decision on a motion for a preliminary injunction issued in
a civil action), because they relate to the civil actions
which applicant asserts are irrelevant, and in particular,
exhibit 11 relates to the false advertising case. We have
already discussed the essence of this objection, above, in
relation to arguments in opposer's brief to which applicant
has objected, and need not repeat the discussion here. We
note, however, that to the extent Mr. Brakey was asked by
opposer's counsel to testify to the accuracy of the contents
of exhibit 11, the testimony was: "Having read this prior to
today and having skimmed over it, it seems to go right along
with my recollection of the trial or the hearing, I should
say maybe." "Maybe" is not definite testimony, and the
indefiniteness of the testimony may be viewed as providing
good reason not to accord any weight to this portion of the
Brakey testimony or associated exhibit 11. Regardless, we
stress that exhibit 11 and the associated testimony have not
been considered because they are irrelevant.
Opposition No. 91119899
13
Applicant's next objection to the Brakey testimony, and
related exhibits, is that he improperly testified as an
expert without ever having been identified by opposer, in
response to discovery requests from applicant, as an expert
to be called at trial. Applicant's objection manifested
itself in two different ways during the testimony deposition
of Mr. Brakey. First, when Mr. Brakey was discussing
applicant's involved application and a prior, abandoned
trademark application filed by applicant, applicant's
counsel objected on the basis that Mr. Brakey is not an
expert in trademark law. Second, when Mr. Brakey was
discussing structural elements of keel coolers,
predominantly applicant's keel coolers, applicant's counsel
objected on the basis that Mr. Brakey either was not
qualified as an expert or was not identified as an expert
that would be discussing keel cooler design at trial. The
objection that Mr. Brakey is not a trademark expert was not
maintained in applicant's brief, which only maintains an
objection to "Brakey's expert testimony regarding the
functionality of the GRIDCOOLER design." Thus, the first
basis for objection to the Brakey testimony and exhibits was
waived. The second objection, i.e., as to purported expert
testimony by Mr. Brakey on opposer's claim of functionality,
was maintained in applicant's brief but is largely
Opposition No. 91119899
14
irrelevant because little, if any of the Brakey testimony or
exhibits actually addresses the question of functionality.
Matter proposed for registration may be refused
registration, either ex parte or through presentation of
proper proof in an opposition, if the matter is shown to be
"essential to the use or purpose of the product or if it
affects the cost or quality of the product." See TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58
USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products
Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64
(1995); Inwood Laboratories, Inc. v. Ives Laboratories,
Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982). Thus,
for the Brakey testimony or exhibits which applicant finds
objectionable to be considered as testimony on
functionality, expert or otherwise, the testimony would at
least have to address these factors or matters of fact
relevant to these factors.9 We find that the focus of the
questions, testimony and exhibits occasionally wanders near
matters relevant to these factors, but never actually
addresses them. Much of the transcript of Mr. Brakey's
testimony is filled with arguments of counsel. See, for
example, the passage from the middle of page 65, where

9 We leave aside, for the moment, whether a claim of
functionality brought against an application to register matter
as a mark for services, rather than as a trademark for a product,
would require evidence of a different type.

Opposition No. 91119899
15
counsel for applicant interrupts the witness while he is
responding to a question, through the middle of page 71,
when counsel for opposer abandons any attempt to obtain a
complete answer to his question and, instead, moves on to
the next exhibit. Much of the transcript is also filled
with requests by counsel for opposer that Mr. Brakey review
and read from certain exhibits. Occasionally, the exhibits
contain statements that might be considered relevant to a
functionality inquiry, for example, brochures from applicant
which Mr. Brakey characterizes as discussing the merits or
advantages of applicant's keel coolers (p. 73), or
advertisements by applicant that state, "The FERNSTRUM
GRIDCOOLER® is the simplest and most dependable form of
fresh water cooling available." (p. 119, witness reading
from exhibit 5/AO). Mr. Brakey, however, does nothing more
than read from these exhibits, which had already been
entered into the record by opposer's notice of reliance, and
does not actually testify about whether features shown in
applicant's proposed mark are "essential to the use or
purpose of" custom-manufactured keel coolers or affect the
cost or quality of custom manufacturing services or the
resulting products. If the testimony of Mr. Brakey has any
probative value, it is limited to the question whether the
design proposed for registration is a realistic or stylized
depiction of an actual keel cooler. We therefore overrule
Opposition No. 91119899
16
applicant's objection that the testimony of Mr. Brakey
constitutes improper expert testimony on the question of
whether the matter proposed for registration is functional.
We also overrule applicant's objection to opposer's
introduction of Brakey exhibits 2-5. Exhibit 2 is the file
for the involved application, which is automatically of
record; exhibit 3 is the file for applicant's abandoned
application for the configuration of the GRIDCOOLER, which
was separately introduced by opposer's notice of reliance;
exhibit 4 is a catalog from applicant that was separately
introduced during the testimony of opposer's witness Richard
Lockhart10; and exhibit 5 consists of 145 pages of various
materials, of which all but one page have Bates numbers
matching materials produced by applicant and separately
entered into the record by opposer's notice of reliance on
portions of the discovery deposition of Sean Fernstrum, and
exhibits thereto.
We overrule applicant's objection to Brakey exhibit no.
7, a copy of expired U.S. Patent No. 4,338,993, issued to
applicant. Mr. Brakey's testimony was as follows: "Q. Are
you familiar with that patent? A. This one escapes my

10 Even though the catalog is one of applicant's, applicant
objected to its introduction during the Lockhart deposition on
the ground that opposer did not produce it during discovery.
This objection, if it had any merit, was not maintained in
applicant's brief and so the catalog is of record. Mr. Brakey
identified it as a catalog that came from a file maintained by
Mr. Lockhart.
Opposition No. 91119899
17
memory." (p. 127) Nor was his recollection refreshed when
counsel for opposer directed his attention to a different
patent, which cited to the patent in exhibit 7. (p. 128—"…I
may have seen this in the past, but I don't recollect it.").
Nonetheless, this particular patent was entered into the
record as an exhibit to the discovery deposition of Sean
Fernstrum. Thus, it is a moot point whether it also comes
in as an exhibit to the Brakey testimony deposition. Of
course, since Mr. Brakey was unable to testify about the
patent, its value, if any, is limited to what the patent
shows on its face.

Opposer's Standing

Applicant advances two arguments why opposer should not
be heard on the merits of its claims. First, applicant
asserts that opposer has no standing. There is no doubt,
however, that opposer and applicant are competitors; that
the keel cooler depicted by the proposed mark is identical,
or nearly so, to the depiction of a keel cooler in
applicant's expired U.S. Patent No. 4,338,993; and that
opposer has manufactured and marketed a keel cooler having
the same overall appearance as that depicted in the expired
patent.11 Nonetheless, applicant essentially argues that

11 Opposer, by failing to respond to a request for admission from
applicant, admitted that "the mark sought to be registered" by
the involved application "is not disclosed in [U.S.] Patent No.
4,338,993." "Disclosure" being a term of art in patent law, the
Opposition No. 91119899
18
opposer has contracted away its standing, asserting that
opposer agreed in a settlement agreement to limit the type
of keel cooler it would manufacture and advertise. Second,
applicant argues that the same settlement agreement that
resulted in opposer's relinquishment of its standing also
estops opposer from pursuing the opposition. Thus, while
applicant's two arguments are rooted in the same agreement,
i.e., the agreement settling various consolidated civil
actions, the arguments are different in kind.12
The Trademark Act allows for the filing of an
opposition to an application by any person, including a
juristic person, "who believes that he would be damaged by
the registration of a mark upon the principal register." 15
U.S.C. § 1063. See also, Young v. AGB Corp., 152 F.3d 1377,
47 USPQ2d 1752, 1755 (Fed. Cir. 1998). At the pleading
stage, an opposer must allege facts in support of both
standing and grounds for opposition. Young at 1755.
"Standing is the more liberal of the two elements and [if

admission is that the patent does not disclose a particular mark
proposed for registration. However, the similarities between the
drawing of the invention disclosed in the patent and the drawing
of a keel cooler in the involved application are unmistakable and
admitted by applicant. See Opp. ¶ 5 and applicant's
corresponding answer.

12 Opposer was not a party to the agreement, but it is undisputed
that a predecessor was. Consequently, we have referred to
opposer as if it were a party to the agreement. While the
parties dispute the effect of the agreement, there is no dispute
that whatever effects it has, it binds the parties to this
opposition.

Opposition No. 91119899
19
not admitted or conceded] requires only [proof] that the
party seeking cancellation [or opposing registration] is
likely to be damaged by the registration." Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000).13 "A belief in likely damage can be shown by
establishing a direct commercial interest." Id.
Applicant's admission of paragraphs 1, 5 and 13, and
its partial admission of paragraph 2, of the amended notice
of opposition, would be sufficient to establish opposer's
commercial interest in this matter. Also, the record
provides evidence that would be sufficient to prove
opposer's interest even absent the admissions. Applicant
asserts, however, that it and opposer are parties to a
settlement agreement; that the agreement includes terms by
which opposer agreed to restrict itself to the manufacture
of a keel cooler of a type different from that which was
disclosed in applicant's expired patents and which applicant
continues to manufacture; and that opposer also agreed that
any advertising of its keel cooler would clearly depict the
cooler in a way that would show it to be different from

13 Young explains that the "linguistic and functional similarities
between the opposition and cancellation provisions of the Lanham
Act mandate" consistent construction. Young, 47 USPQ2d at 1755.
Thus, the Cunningham statement that standing is the more liberal
of the two main elements a plaintiff must plead is equally
applicable to oppositions.

Opposition No. 91119899
20
applicant's keel cooler. Opp. Br. pp. 23-27.14 In short,
applicant asserts that opposer agreed to manufacture only a
keel cooler with a beveled head, and to utilize advertising
that would "clearly display the beveled end(s) of the
header(s)" configured in accordance with the agreed
restrictions on manufacturing. Thus, applicant concludes,
opposer cannot be damaged by applicant's registration of the
depiction of a keel cooler that does not have beveled
headers, and opposer therefore lacks standing. We disagree.
As a competitor, opposer has an interest in seeing that
any other competitor in the field of keel cooler
manufacturing and sales does not register a depiction of a
keel cooler that is, assertedly, descriptive. Even assuming
that opposer is, by the settlement agreement, barred from
manufacturing a keel cooler in the form represented by the
depiction, the exclusive registration of assertedly
descriptive matter by a competitor might provide that
competitor with an advantage, for example, in marketing its
products. Cf. Eastman Kodak Co. v. Bell & Howell Document
Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed.
Cir. 1993) (Board found standing in opposer even though

14 The settlement agreement was introduced into the record
numerous times, including through the Brakey and Culpepper
testimony depositions taken by opposer and the Sean Fernstrum
testimony deposition taken by applicant. The term sheet that
served as the basis for the settlement agreement was introduced
through the Brakey and Culpepper depositions.

Opposition No. 91119899
21
proposed marks sought to be registered by applicant, and
challenged by opposer as descriptive, were not in use by
either party, having been applied for under intent to use.
Though the Board dismissed the claim of descriptiveness by
opposer, a competitor, without prejudice to later filing of
a cancellation case if the proposed marks should eventually
be registered, and appeal was taken from such dismissal, the
standing determination was not challenged or reviewed on
appeal).
In addition, the settlement agreement contemplates a
possible future right of opposer to manufacture and sell
keel coolers without being restricted to the type with a
beveled header, i.e., it could one day manufacture and sell
a keel cooler looking like that depicted in applicant's
expired patent and in the proposed mark. See Settlement
Agreement ¶ 11. If, however, that right did not arise until
more than five years after applicant's mark were registered,
and if the registration were asserted against opposer,
opposer would be barred by the Lanham Act from then
challenging the mark as descriptive. See 15 U.S.C. § 1064.
Opposer's prospective interest in one day using the proposed
mark, is a sufficient pleading of standing. Cf. Windsurfing
International Inc. v. AMF Inc., 828 F.2d 755, 4 USPQ2d 1052
(Fed. Cir. 1987) (The Federal Circuit distinguishes USPTO
proceedings from declaratory judgment actions in the federal
Opposition No. 91119899
22
district courts, explaining that those courts do not issue
advisory opinions and mere interest alone by a competitor
does not establish standing to initiate a declaratory
judgment action).15
Accordingly, we find that opposer has sufficiently
pleaded standing to pursue the opposition. Moreover, we
find the record to contain sufficient proof of the
allegations related to standing. We therefore must consider
applicant's alternative argument that opposer is nonetheless
estopped from pursuing the opposition by virtue of the
settlement agreement.

Equitable Estoppel

For this argument, applicant correctly observes that
the settlement agreement, in paragraph 15, specifies that
applicant would withdraw, with prejudice, its application
"to federally register the configuration of its one-piece
keel cooler product as a trademark" but that this paragraph

15 In contrast, we reject opposer's argument that it might, even
while bound by the agreement and while manufacturing keel coolers
with beveled heads, utilize drawings or pictures of a keel cooler
in marketing materials or installation manuals that would not
clearly show the beveled header, that this might prompt applicant
to assert a registration of the involved mark against opposer,
and therefore opposer would be damaged by issuance of the
registration. This argument regarding standing contemplates
opposer doing, while bound by the agreement, that which it has
expressly agreed to not do, i.e., utilize marketing materials
which fail to show that its keel coolers have a beveled header.
Opposer's standing can in no way be derived from this posited set
of circumstances and is derived only from the circumstances we
discuss above.

Opposition No. 91119899
23
also provides that "[n]othing herein shall preclude
[applicant] from seeking to register, in two dimensional
design format, its trademark logo featuring its one-piece
keel cooler as part of said design."
At this point, a bit more explanation is in order about
the relationship of applicant's abandoned configuration mark
application, the nature of the civil actions, the settlement
of the civil actions, and applicant's filing of two other
applications, including the involved application. Some of
these subjects have been alluded to already in this
decision. The explanation is derived from various materials
in the record.
Applicant's prior configuration application sought
registration of aspects of trade dress in the nature of
product design, i.e., the application sought to register
some aspects of the overall design of a particular style of
keel cooler produced by applicant.16 That particular style
is illustrated by the drawing of the involved application,
but in the configuration application, the unclaimed features
of the overall design were displayed in broken or dotted
lining. The configuration application naturally sought
registration of the claimed aspects of the trade dress for
actual keel coolers, not custom manufacturing of keel

16 The application sought registration on the Principal Register,
under Section 2(f) of the Lanham Act.

Opposition No. 91119899
24
coolers. Three parties, including opposer, opposed that
application and the oppositions were pending when the same
parties were involved in the civil actions. Thus, when
applicant agreed, in the agreement settling those actions,
to withdraw with prejudice its configuration application, it
resulted in the three oppositions being sustained. The
civil actions were settled by the parties first agreeing to,
and signing, a term sheet. The final signature, by opposer,
was added May 10, 1999. Later, in July 1999, a more
detailed settlement agreement was signed.
Applicant filed the application involved in this
opposition on May 10, 1999, i.e., on the date the final
signature was added to the settlement term sheet by opposer.
A few weeks later, on May 28, 1999, applicant filed
application Serial No. 75715815, for the mark shown, supra,
in footnote 5. The marks in these two applications both
include what applicant asserts is a two-dimensional line
drawing of a keel cooler and what opposer believes to be a
very realistic and accurate depiction of one model of keel
cooler produced by applicant. The mark in the later-filed
of the two applications, however, also included an image of
a globe, set as a backdrop for the image of the keel cooler.
Another difference between the two applications is that the
involved application seeks registration of the keel cooler
image for keel cooler custom-manufacturing services, while
Opposition No. 91119899
25
the application with the composite globe and keel cooler
design sought registration of the composite mark for keel
coolers per se. The later-filed application for the
composite mark was not opposed and the mark in that
application has registered.
In arguing that opposer is estopped from pursuing this
opposition, applicant relies not only on the paragraph of
the settlement agreement reserving applicant's right to seek
registration of a trademark logo, but also on paragraph 17,
which is a "covenant not to sue" applicant, by two of the
three parties adverse to applicant in the civil actions,
specifically, Duramax and East Park Radiator & Battery Shop,
Inc. That covenant releases applicant "of and from any and
all damages, attorneys' fees, punitive damages, equitable
and injunctive relief, costs, demands, rights, claims or
causes of action of whatsoever kind, whether now known or
hereafter discovered, arising in any way out of the facts
and/or claims asserted (or which could have been asserted)
by DMI, Fernstrum and East Park in the [civil actions] or
arising in any way from the facts asserted in said [civil
actions]."
As noted earlier in this opinion, opposer was not a
party to the settlement agreement, but references in the
agreement to Duramax, opposer's predecessor, have been taken
as the equivalent of references to opposer. Thus, by
Opposition No. 91119899
26
paragraph 17 of the settlement agreement, opposer expressly
covenanted not to sue applicant and released applicant from,
among other things, "claims or causes of action of
whatsoever kind, whether now known or hereafter discovered,
arising in any way out of the facts and/or claims asserted
(or which could have been asserted)" by "DMI," which means
Donovan Marine Inc., and "East Park," which means East Park
Radiator & Battery Shop, Inc. While this language does not
refer to facts or claims that were asserted or which could
have been asserted by opposer's predecessor in the civil
actions, that is because opposer's predecessor was not a
party in the civil actions and only intervened in the
settlement of the actions. Opposer does not argue that it
is not bound by the agreement because it bars only claims or
causes of action that were asserted or could have been
asserted by DMI and East Park, and is silent as to claims
that could have been asserted by opposer's predecessor.
Because opposer's predecessor intervened and made itself a
party to the settlement agreement, we view the covenant
paragraph as covering any claims or causes of action that
opposer's predecessor could have asserted in the civil
actions, or could later have asserted if "arising in any way
from the facts asserted" in the civil actions.
Applicant argues, in essence, that this opposition is
precisely the type of claim or cause of action that opposer
Opposition No. 91119899
27
is estopped from asserting, because it arises out of the
facts that provided the basis for the claims that were
asserted in the civil actions. Estoppel is particularly
warranted, according to applicant, because it specifically
secured in the settlement agreement an acknowledgment of its
right to file the involved application; and if applicant is
held not to have obtained, through the settlement agreement,
a promise that opposer would not oppose the application,
then applicant "received no consideration for the
abandonment of its prior [configuration] application."
Brief, p. 30. Applicant also asserts that allowing opposer
to pursue the opposition would render the settlement
agreement "valueless and without meaning" to applicant and
would only encourage the parties to litigate their disputes,
rather than to settle them. Brief, p. 31.
There is an overriding public policy, applicant argues,
that encourages settlement of litigation and requires that
parties be held to the terms of their agreements. Brief, p.
28, citing numerous cases. The question here, however, is
not what public policy promotes but, instead, what do the
terms of the involved settlement mean. In answering that
question, we may not interpret the settlement agreement "on
the subjective intentions of the parties" and must instead
focus "on the objective words of their agreement."
Novamedix Ltd. v. NDM Acquisition Corp., 166 F.3d 1177,
Opposition No. 91119899
28
1180, 49 USPQ2d 1613, 1616 (Fed. Cir. 1999), relying on
United States v. Armour & Co., 402 U.S. 673, 681-82 (1971).
It is not impermissible to interpret an agreement in a way
that favors one party, and where parties disagree, "an
interpretation that fails to meet one party's purpose will
very likely meet the other party's purpose." Novamedix, 49
USPQ2d at 1616. Armour, however, cautions that any
agreement "embodies as much of those opposing purposes as
the respective parties have the bargaining power and skill
to achieve" and an agreement must therefore "be discerned
within its four corners, and not by reference to what might
satisfy the purposes of one of the parties." 402 U.S. at
681-82.
In the agreement involved herein, the parties did not
include a forum clause directing that the laws of any
particular state apply. Neither party has argued for
application of any particular law in interpreting the
agreement. We apply the law of Louisiana. See Restatement
(Second) of Conflict of Laws § 188 (1971; electronic version
current through June 2005). The contract was negotiated in
Louisiana, two of the four parties are domiciled there, it
is the place of performance for numerous promises, and the
district court there retained jurisdiction over the parties
for the purpose of enforcing the agreement. We also note
that the eighth "Whereas" clause of the settlement agreement
Opposition No. 91119899
29
references the parties' agreement to the provisions in the
term sheet "which each of the parties prefers to the hope of
gaining balanced against the danger of losing." This phrase
is almost precisely a phrase that appears in section 3071 of
Title XVII of the Civil Code of Louisiana ("A transaction or
compromise is an agreement between two or more persons, who,
for preventing or putting an end to a lawsuit, adjust their
differences by mutual consent, in the manner which they
agree on, and which every one of them prefers to the hope of
gaining, balanced by the danger of losing.") (emphasis
added). The parties' use of this phrase strongly suggests
that, notwithstanding the absence of a forum clause, they
anticipated that the law of Louisiana would govern the
settlement agreement.
"Louisiana law provides that waivers of the right to
bring future claims must be clear and are narrowly
construed." Brennan's Inc. v. Dickie Brennan & Company
Inc., 376 F.3d 356, 71 USPQ2d 1400, 1408 (5th Cir.
2004)(citations omitted). Applicant's interpretation of the
settlement agreement, reached by tying paragraphs 15 and 17
together and by construing the latter too broadly, is
unwarranted and contrary to Louisiana law.
We note, in particular, that applicant, in one of its
requests for admissions, asked opposer to admit that "[t]he
purpose of the Settlement and Mutual Release Agreement
Opposition No. 91119899
30
executed by [the parties] was to settle the claims asserted
in the three civil actions." Request no. 6. The request
was admitted, and applicant introduced the response in the
record. Applicant has not put into the record an admission
by opposer, if any was obtained, that a purpose of the
settlement agreement was to allow applicant to file
applications to register marks that would be free of
possible opposition. The mere fact that the agreement
includes provisions relating to the USPTO, specifically, (1)
applicant's agreement to abandon its configuration
application and reservation of right to file a different
application for a two-dimensional logo, and (2) applicant's
agreement not to challenge any application opposer might
later file for a two-dimensional design mark, do not dictate
that settlement of prior oppositions to applicant's
configuration application or ensuring that subsequent
applications by applicant would be free of opposition were
primary purposes for the parties to enter into the
settlement agreement.
We also note that the term sheet signed by the parties,
and which served as the basis for the later settlement
agreement17, includes a provision stating "Fernstrum and

17 The settlement agreement acknowledges the term sheet, states
that the term sheet was filed in the record for the civil
actions, and states that the parties entered into the agreement
to implement the transactions contemplated by the term sheet.

Opposition No. 91119899
31
Duramax will release any and all claims that either party
has or had against the other arising out of the sales and
manufacture of a one-piece keel cooler." (emphasis added)
It is clear that this provision in the term sheet was the
basis for paragraphs 16 and 17 in the settlement agreement.
Therefore, we find this to provide additional support for a
narrow construction of the covenant not to sue as one
related to claims arising out of trade dress concerns and
issues related to use of marks, not registration of marks.
Opposer was the last of the parties to sign the term
sheet, on the same day that applicant filed the application
involved herein, applicant having signed the term sheet five
days earlier. Thus, when applicant filed the application,
it knew that the term sheet included (1) a provision
providing for reciprocal releases of claims related to sales
and manufacture of one-piece keel coolers and (2)
specifically obligated applicant not to oppose any
application opposer might later file for its keel cooler
design. Knowing these facts, when the settlement agreement
was negotiated, and with knowledge that its application was
already on file with the USPTO, applicant was free to
attempt to negotiate a provision that opposer would not
oppose that application. Applicant clearly did negotiate at
least one additional provision to be included in the
agreement that was not in the term sheet, specifically, the
Opposition No. 91119899
32
provision specifying that applicant would be able to apply
for "its trademark logo featuring its one-piece keel cooler
as part of said design." Viewed in this context, the
absence of any provision in the settlement agreement
specifically barring opposer from opposing the already-filed
application is telling. See Robin v. Sun Oil Co., 548 F.2d
554, 558 (5th Cir. 1977) ("We interpret the contract to mean
just what it says and no more. Counsel in this case were
competent maritime lawyers. They knew how to use other
words if they chose to do so.").
One final point that must be noted is that the involved
application does not qualify under paragraph 15 of the
settlement agreement. That paragraph reserves applicant's
right to seek registration of a "logo featuring its one-
piece keel cooler as part of said design." (emphasis added)
The mark in the involved application displays only the one-
piece keel cooler and is not part of a composite logo.
Thus, even if applicant were correct in asserting that
paragraph 17 of the settlement agreement estops opposer from
opposing any application contemplated by paragraph 15, the
involved application does not qualify. Cf., Brennan's,
supra, 71 USPQ2d at 1407-08 ("the fact that Brennan’s
permitted Dickie to engage in certain specified uses without
fear of liability does not mean that Dickie is thereby
immunized from trademark liability for all unauthorized
Opposition No. 91119899
33
uses.")(emphasis in original); and Chromalloy American Corp.
v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187, 190-91
(Fed. Cir. 1984)(settlement agreement placed certain marks
which might later be adopted and used by Kenneth Gordon
"outside the force of the injunction" it accepted by virtue
of the agreement, but language of settlement agreement did
not bar Chromalloy from asserting likelihood of confusion
based on use, and merely barred Chromalloy from asserting
the right to use was barred by the injunction provision).
We hold that the settlement agreement does not estop
opposer from opposing the involved application. In so
holding, we have not relied on any parol evidence offered by
either party as to what it understood the purpose of the
settlement agreement to be and, instead, have relied on the
agreement and term sheet themselves.18 Finally, we note
that much of the case law on which applicant has relied for
its estoppel argument either addresses only the general
principle that settlement of litigation is to be encouraged,
a point with which we do not disagree, or is inapposite
because it involves cases in which a party was trying to
remake or avoid an agreement, and we do not find opposer to
be making such an attempt. Contrary to applicant's

18 Applicant's request that opposer admit the purpose of the
settlement agreement was to settle the civil actions supports our
view of the import of the agreement, i.e., as one not intended to
bar the instant opposition, but we would reach the same
conclusion even without that admission in the record.
Opposition No. 91119899
34
contention, opposer is not the party trying to avoid the
terms of the settlement agreement. If applicant "desires to
reform or renegotiate the … agreement in accordance with its
alleged interpretation, this is not the appropriate forum
for doing so." Danskin, Inc. v. Dan River, Inc., 498 F.2d
1386, 182 USPQ 370 (CCPA 1974).

Functionality

As noted earlier, matter proposed for registration may
be refused registration in an opposition proceeding if the
matter is shown to be "essential to the use or purpose of
the product or if it affects the cost or quality of the
product." See TrafFix Devices, Inc. v. Marketing Displays,
Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co.
v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d
1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10
(1982). In the case at hand, we are not, however, faced
with an application seeking to register matter as a mark for
a product but, rather, as a mark for services, specifically,
the custom manufacturing of a product for another.
Applicant relies heavily on the fact that it seeks
registration of its asserted mark for services, not for
goods, and stresses that it is not seeking registration of a
product configuration. Opposer, in contrast, has
strenuously argued that applicant's custom manufacturing
Opposition No. 91119899
35
services are such in name only, and that the keel coolers it
manufactures, or at least that type of keel cooler which is
ably illustrated by the proposed mark, is essentially a
single product that merely is adapted in, for example, width
or length, to fit a particular boat. To be sure, the record
is unclear as to what percentage of the keel coolers sold by
applicant is attributable to purchase of "stock" items and
what percentage is attributable to custom manufacturing.
Compare the testimony of Sean Fernstrum with applicant's web
site:
Q. Does Fernstrum keep keel coolers or marine heat
exchangers in inventory?
A. Considering our -- our wide range of models, we
keep a -- a relatively small number of coolers in
stock; more-common models that would be needed
say, in emergency situations. So, no, we don't
keep a great number in stock. We're a job shop.
We -- build to the order and specification of our
customers.
Test. Dep. Sean Fernstrum, pp.8-9

"Because approximately 30% of all units we
manufacture are custom designs, we can easily
tailor a unit to your specific application."
Applicant's web site, submitted as Fernstrum exh.
20 [Bates page no. 000114]

Notwithstanding that there may be a difference of
opinion between the parties, and lack of certainty in the
record, regarding what percentage of applicant's keel
coolers is custom manufactured,19 it is abundantly clear

19 In the discovery deposition of Sean Fernstrum, generally at
pages 106-126, the witness attempts to explain the apparent
Opposition No. 91119899
36
that applicant does offer custom manufacturing services and
that it touts the adaptability of its designs and
manufacturing as contributing to the asserted superiority of
its products. There is no requirement that a party seeking
registration of a mark for custom manufacturing services
only produce custom manufactured goods, or even that a
particular percentage of its goods be custom manufactured.
Thus, though opposer would have us ignore the identification
of services in applicant's application, and essentially
treat it as an application to register a trademark for goods
rather than a service mark for services, we find no basis
for doing so.
Another point on which the parties have a difference of
opinion relates to the proposed mark itself. Opposer
essentially asserts that the image of the keel cooler is so
realistic as to be the equivalent of a photograph, or
perhaps a technically precise drawing ("It is either a line
drawing made from a photograph … or an exact drawing." …
"There is nothing ornamental, fanciful or arbitrary in the
drawing….") Brief, p. 18.20 Applicant, on the other hand,

discrepancy between applicant's web site and his statements, in
contrast, that 80 to 90 percent of applicant's keel coolers are
"built to order by custom design" and "stock units" are "fairly
insignificant." We find the explanation difficult to follow.
Nonetheless, as discussed above, it is not necessary to this
decision to determine precisely what percentage of applicant's
keel coolers results from its custom manufacturing services.

20 While opposer has pleaded distinct, alternative claims that the
proposed mark is functional or descriptive and devoid of acquired
Opposition No. 91119899
37
argues that the proposed mark "is a partial representation
of but one of many different [keel cooler] designs" used by
applicant and "is not a three-dimensional representation of
the product, it is not drawn to scale, and it is not used in
technical drawings of the product." (emphasis in original)
Brief, p. 1.
Applicant makes too much of what the mark assertedly is
not; and it is worth distinguishing here between the mark
drawing, as an element of the application, and the mark
itself. No drawing of a trademark that is the subject of an
application for registration is presented in true three-
dimensional form. Even an application to register a
configuration of a product depicts a mark in two-dimensional
form, perhaps from a view that yields a perspective of
depth, as in applicant's abandoned configuration
application. The fact that a drawing of a mark is in two
dimensions will not preclude the mark from being refused as
functional. See In re Deister Concentrator Co., Inc., 289
F.2d 496, 129 USPQ 314 (CCPA 1961) (Mark described as a
"substantially rhomboidal outline" "applied to the goods" by
fashioning the ore concentrating and coal cleaning table in
such shape refused registration as functional; depiction of
mark in two dimensions by four lines forming a rhomboid);

distinctiveness, both claims rely on opposer's contentions
regarding the nature of the depiction of applicant's keel cooler.

Opposition No. 91119899
38
and In re North American Phillips Corporation, 217 USPQ 926
(TTAB 1983) (Mark described as a "triangularly shaped plate
having smoothly rounded corners and having three circular
openings therein" and which was a configuration of the face
plate of an electric razor refused registration as
functional; depiction of mark in two dimensions, as if
viewed directly from the front, with no perspective of
depth).
As for applicant's contention that the mark is not
drawn to scale, the record does not reveal exactly how this
contention can be tested. Moreover, if we are to take as
correct applicant's contention that each keel cooler is
essentially created specifically for a particular boat and
application, then few keel coolers would be alike and any
illustrative drawing of a keel cooler would almost assuredly
be out of scale to most of applicant's keel coolers.
Nonetheless, we note that applicant used almost precisely
the same drawing, but for the presentation of some matter in
dotted lines, in its application seeking to register the
configuration of its keel cooler as a mark. If the drawing
was sufficiently close in scale to an actual keel cooler, so
that it could serve as a drawing in a configuration
application, it cannot now be seriously contended that the
drawing is significantly out of scale. See, in this regard,
the discovery deposition of Paul Fernstrum, at pages 76-77:
Opposition No. 91119899
39
"Q. (By Mr. Hochberg) In other words, they're nearly
identical; is that correct? A. Yeah." See also, the cross-
examination of Sean Fernstrum, during his testimony
deposition, at pages 122-123: "Q. Okay. Let's go to exhibit
25. Now, the--there's a picture of a keel cooler shown in
the upper center of the page. That's what you contend is--
is an example of your logo. A. Yes. … Q. And this is
pretty much the way a real keel cooler would look, isn't it?
A. Yes."
Finally, as for applicant's contention that the mark
drawing is not used as a technical drawing in items such as
installation manuals, we find no significant distinctions
between the characteristics of the drawings used in
installation instructions, as illustrated by the exhibit
reproduced on page 35 of applicant's brief, and the drawing
of the mark in the application. In fact, exhibit no. 17 to
the testimony deposition of Sean Fernstrum, a GRIDCOOLER
catalog, shows the full panoply of images of keel coolers
that applicant uses in marketing materials. There are, in
that catalog, the keel cooler and globe design, the keel
cooler design sought to be registered by the involved
application, illustrations of "common installations" for
applicant's GRIDCOOLER that are remarkably similar to the
depictions on page 35 of applicant's brief, and other images
and photographs. We see little, if any, difference between
Opposition No. 91119899
40
the degree of stylization of the depiction of the involved
mark in the catalog and the depictions of keel coolers in
common installations.
In short, despite all the things that applicant says
its mark drawing is not, it is the admitted equivalent of
the drawing of a keel cooler configuration applicant earlier
sought to register (albeit without the dotted or broken
lining utilized in that application), and "is pretty much
the way a real keel cooler would look," and we find the
drawing to be essentially the same as the drawing in
applicant's expired U.S. Patent No. 4,338,993 (albeit viewed
from a different angle). Thus, there is nothing about the
depiction of the keel cooler in the involved application
that is so highly stylized or unlike an actual keel cooler
that would preclude a finding of functionality on that basis
alone.
We do agree with applicant, however, that there is a
significant difference between an application to register
trade dress in the nature of product design as a mark for
the product itself (e.g., applicant's abandoned
configuration application) and an application to register a
two-dimensional drawing that may look very much like such a
product, but is used on labels, catalogs, brochures, and in
various other ways as a mark for services. The inquiry
regarding functionality may need to be decidedly different
Opposition No. 91119899
41
in the latter set of circumstances and this opposition is
therefore a case of first impression for the Board.
The vast majority of the functionality cases deal with
product design or product packaging. Indeed, applicant
contends that opposer has not cited in its brief "a single
case where a two-dimensional mark used in connection with
services has been held functional." Brief, p. 2. Opposer
does not directly rebut the argument in its reply brief, and
that may be because there is no reported case law dealing
with such a combination, i.e., a case involving a two-
dimensional mark, not trade dress, and involving services,
wherein the mark was held not a mark but, rather,
functional. Cf. Fotomat Corp. v. Photo Drive-Thru, Inc.,
425 F.Supp. 693, 193 USPQ 342 (D.N.J. 1977) (hereafter,
Fotomat NJ). In the Fotomat NJ case, the district court, on
plaintiff's motion for a preliminary injunction enjoining
defendant from use of a logo and trade dress of a drive-
through kiosk providing various retail and photofinishing
services, found that defendant had not rebutted the
presumptive validity of plaintiff's registered logo, and
granted the injunction as to defendant's logo, but the court
also found that the plaintiff's kiosk trade dress was
primarily functional and therefore denied the preliminary
injunction as to defendant's use of its own kiosk. There
are other cases brought by the Fotomat Corporation wherein
Opposition No. 91119899
42
its kiosk trade dress was found protectible rather than
functional. See Fotomat Corp. v. Ace Corporation, 1980 U.S.
Dist. LEXIS 16114, 208 USPQ 92 (S.D. Cal. 1980) and Fotomat
Corp. v. Steven Cochran, d/b/a Quick Stop Photo, 437 F.Supp.
1231, 194 USPQ 128 (D. Kan. 1977). The significance of
these three cases, however, is not whether the kiosk trade
dress was or was not held to be functional for services, but
that even in the one case where the kiosk trade dress was
held functional, a fairly accurate depiction of the kiosk,
registered as a logo, was not held functional. It is also
noteworthy that, in that particular case, the defendant did
not even challenge the logo as functional. Fotomat NJ, 193
USPQ at 353 ("The defendants have offered no evidence which
rebuts the statutory presumption … that Fotomat's service
mark was validly registered … and that Fotomat has exclusive
right to use the mark in commerce….").
We recognize that the instant case is significantly
different from the Fotomat cases, and from similar cases
involving trade dress in the nature of building design
(interior or exterior) claimed to be a mark for services.
Specifically, in the case at hand, the services are not
restaurant services or retail sales of photographic
products, but are custom manufacturing of a specific type of
item, once-patented, for which the patent has expired.
Applicant's competitors or would-be competitors, save for
Opposition No. 91119899
43
the voluntary restriction opposer took on itself via the
settlement agreement, are free to manufacture the
once-patented item; and even are free to manufacture the
item in varying sizes, to the order and specification of
customers. Thus, the case at hand presents, more than cases
involving restaurant or retail kiosk trade dress, a much
closer question regarding whether any manufacturer of the
formerly patented item should be free to utilize, in
advertising its goods for sale, a realistic depiction of the
item.
Opposer has advanced some compelling arguments why
applicant should not be permitted to register what is in
essence the two-dimensional depiction of the formerly
patented product that appeared in the patent itself, even
for services. Nonetheless, we must balance against
opposer's argument for the extension of existing case law on
functionality what is shown by the record to be long use of
the keel cooler depiction by applicant in the manner of a
logo. Further, opposer has not discussed whether, when
custom manufacturing services are involved, we should still
apply the TrafFix test for functionality (a three-
dimensional product design is functional if it is "essential
to the use or purpose of the product or if it affects the
cost or quality of the product") to the product that results
from purchasing the services, or whether the test should be
Opposition No. 91119899
44
adapted and focus on whether use of the two-dimensional
design to be registered is essential to anyone who would
provide the same service, or would, if unavailable, affect
the cost or quality of the service.
Opposer has failed to persuade us that an extension of
existing law to cover the circumstances of this case is
warranted. We decline to sustain the opposition on
opposer's claim of functionality. We add, however, that our
decision does not foreclose the extension of TrafFix to
service marks if circumstances in a future case warrant such
an extension.

Descriptiveness and Acquired Distinctiveness

We now turn to opposer's second claim. Opposer
essentially contends that the depiction of a keel cooler
that applicant seeks to register is descriptive and that it
has not acquired distinctiveness. “Where, as here, an
applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of distinctiveness as an established fact.” Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (emphasis in original).
This means that opposer is not required to advance evidence
Opposition No. 91119899
45
of descriptiveness and may concentrate its case on the
question of acquired distinctiveness.21
As Yamaha explains, when matter proposed for
registration under Section 2(f) is approved by the USPTO for
publication, there is a presumption that the examiner found
a prima facie case of acquired distinctiveness by the
applicant for registration. Id., 6 USPQ2d at 1004. In an
opposition, "the opposer has the initial burden to establish
prima facie that the applicant did not satisfy the acquired
distinctiveness requirement of Section 2(f)." Id., 6 USPQ2d
at 1005. "If the opposer does present its prima facie case
challenging the sufficiency of applicant's proof of acquired
distinctiveness, the applicant may then find it necessary to
present additional evidence and argument to rebut or
overcome the opposer's showing…." Id.
The case at hand having been completely tried, "the
only relevant issue … is which party should prevail on the
entire record" regarding acquired distinctiveness, and it is
therefore unnecessary to discuss the shifting of burdens or
whether prima facie cases have been made out by either

21 Notwithstanding that an opposer challenging an application
seeking registration under Section 2(f) need not prove
descriptiveness or lack of inherent distinctiveness, the kind and
amount of evidence of acquired distinctiveness required to secure
a registration will necessarily vary with the subject matter for
which registration is sought, Yamaha, 6 USPQ2d at 1008, and an
opposer's submission of evidence that matter is highly
descriptive therefore may benefit its attempt to ratchet up the
kind and quantity of evidence of acquired distinctiveness
required in a particular case.
Opposition No. 91119899
46
party. Id., 6 USPQ2d at 1006. However, under this
analysis, the "ultimate burden of persuasion" is on the
applicant. Id. Finally, the standard for applicant to meet
is preponderance of the evidence, "although logically that
standard becomes more difficult to meet as the mark's
descriptiveness increases." Id., 6 USPQ2d at 1008.
In securing the examining attorney's approval of the
involved mark for publication, applicant based its claim of
acquired distinctiveness solely on a survey. Applicant did
not, however, directly introduce the survey into evidence in
the opposition; and though opposer referenced it in a notice
of reliance, opposer essentially assumed that, because the
survey was filed in the application, and the application is
automatically part of the record in this opposition, opposer
did not have to attach the survey documents to its notice of
reliance and mere reference to them was sufficient. Neither
the submission of the survey to the examining attorney nor
opposer's mere reference to it in a notice of reliance makes
it a part of the record. See British Seagull Ltd. v.
Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB 1993), aff’d, 35
F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied,
514 U.S. 1050 (1995).
Applicant did file a notice of reliance on the contents
of the file for its Registration No. 2,357,354 and, more
specifically, on a response to an office action by which
Opposition No. 91119899
47
applicant set forth a claim of acquired distinctiveness of
the composite globe and keel cooler mark (see footnote 5,
supra). The survey documents were included with that
response. By the terms of the notice of reliance, however,
applicant stated not that it was relying on the registration
file contents to support its claim of acquired
distinctiveness but, rather, to establish that opposer and
others in the marine industry, not having objected to that
application, "did not find that the registration of that
mark would bestow upon applicant a right of ownership in
that drawing of the keel cooler to which it was not
otherwise entitled." Applicant's First Notice of Reliance
Under Trademark Rule 2.122(e) (July 30, 2004). Further,
applicant did not, in its brief, present any argument on
acquired distinctiveness that relied in any way on the
survey. Accordingly, to the extent that applicant might
have had a right to rely on the notice of reliance not as
evidence of what opposer and others purportedly believed
about the composite globe and keel cooler mark, but also as
evidence of the acquired distinctiveness of the involved
mark, applicant has waived any such right by not addressing
this evidence in any way in the arguments in its brief on
acquired distinctiveness. Accordingly, we have given no
consideration to the survey.22

22 Had applicant argued for the survey as evidence of acquired
Opposition No. 91119899
48
"In most oppositions to registrations under Section
2(f), prevailing opposers have presented some evidence that
the mark has not acquired distinctiveness, such as others'
use of the proposed mark or similar marks." Yamaha, 6
USPQ2d at 1008-07. In this case, opposer's evidence of use
of the proposed mark, or similar marks, as evidence that
applicant's proposed mark has not acquired distinctiveness,
is extremely limited. There is testimony that has been
offered to the effect that the proposed mark could be seen
as a depiction of a keel cooler of various parties. See,
e.g., trial testimony depositions of George McHugh, pages
10-12 ("Could be East Park, could be Duramax, Fernstrum,
could be any one of the three of them."); of Steven Garver,
pages 7-9, who testified that no one from applicant ever
told him the proposed mark was a Fernstrum trademark and the
depiction of a keel cooler could just as readily be a
depiction of a DuraCooler or an East Park keel cooler; and
of Todd P. Boudreaux, who discussed East Park's use of the
depiction in some ads, as well as applicant's demand that
East Park cease using the depiction. Also, exhibits 30 and
32 to the testimony deposition of Sean Fernstrum show use of

distinctiveness, we would have rejected the argument. The survey
tested for recognition only of tubing used in applicant's keel
coolers, and did not test for recognition of either entire keel
coolers or the involved illustration of a keel cooler.

Opposition No. 91119899
49
depictions of opposer's DuraCooler in, respectively, an
advertisement and in an installation manual.
The testimony of various witnesses for opposer that the
Fernstrum depiction could be perceived as a depiction of the
keel coolers of others because, for a time, Fernstrum was
not the only manufacturer of a grid-like keel cooler with
rectangular headers, is not testimony that others used the
Fernstrum depiction. There is, in fact, no evidence of use
of the proposed mark by others, apart from the evidence
regarding use by East Park of what was asserted by applicant
to be the Fernstrum keel cooler logo mark. The dearth of
evidence of use of the proposed mark, however, is not
surprising because, for a long time, the protection of the
patent laws secured to applicant alone the right to produce
a keel cooler looking like that illustrated by the proposed
mark.23 As for evidence of use of a similar keel cooler
depiction, there is only the referenced evidence showing use
by opposer of depictions of the DuraCooler design.24

23 In addition, though not clearly established by the record,
applicant suggests that the industry may be rather limited,
referencing only three other companies "actively manufacturing
and selling keel coolers," and that two of those only entered the
market during the period of time applicant has been using its
design. Brief, p. 38.

24 We note that Yamaha discusses the value of evidence of use of
the proposed mark "or similar marks." In stating that we view
the use of the DuraCooler depictions to be "similar" to
applicant's proposed mark, we do not use that term in the sense
that we would if we were discussing likelihood of confusion, and
we are, at this point, unconcerned with whether prospective
purchasers of a keel cooler or custom manufactured keel cooler
Opposition No. 91119899
50
Applicant argues that the acquired distinctiveness of
its keel cooler design is demonstrated by the following
evidence: (1) use of the design on a substantially
exclusive and continuous basis since 1975; (2) during this
period of use, applicant has promoted its logo in marine
industry trade journals, at marine industry trade shows, and
during personal sales visits; (3) average annual expenditure
of approximately $120,000 on print and trade show
advertising during the five years prior to Sean Fernstrum's
testimony deposition; (4) personal sales calls by
applicant's employees or by manufacturer's representatives
or distributors, during which literature and promotional
materials featuring the keel cooler design are distributed;
(5) that an estimated 90 percent of the relevant marine
industry has been exposed to the logo and an estimated 75
percent of companies in the industry have actually purchased
one of applicant's keel coolers; (6) that East Park Radiator
and Battery Company, a competitor, intentionally copied the
design and used it in ads, but stopped when confronted by
applicant; and (7) that applicant has already registered,

could tell them apart. Rather, the issue is whether the proposed
mark or depictions similar in kind are used in the field, because
that is to be considered in the calculus of how highly
descriptive the images are for consumers and, as a result, how
much evidence of acquired distinctiveness is necessary to find
applicant's proposed mark registrable.

Opposition No. 91119899
51
under Section 2(f), its composite globe and keel cooler logo
(see supra, footnote 5). Brief, pp. 40-44.25
The record clearly supports applicant's claim to
substantially exclusive and continuous use and its claim
that the design, or at least variations of it, have been
widely reproduced in sales and promotional materials, in
advertisements, and on promotional items. However, as
between mere use of the design and actual promotion of the
design, the record is mixed. Sean Fernstrum testified that
during personal sales calls, the attention of customers is
drawn to the appearance of the GRIDCOOLER, particularly the
rectangular heads ("A rectangular head means it's a

25 Applicant obtained effective admissions from opposer that
opposer "intends to use the design of its keel cooler" as a
trademark and service mark. Applicant's Second Notice of
Reliance Under Trademark Rule 2.120(j), requests no. 128 and no.
129. However, applicant did not rely on these as support for an
argument that depictions of keel coolers can function as marks.
Moreover, opposer's DuraCooler ad and installation manual both
utilize TM designations with the word DuraCooler, but make no
claim that the depiction of the keel cooler is a mark. See exhs.
30 and 32 to test. dep. of Sean Fernstrum.
Because opposer's admissions were technical and obtained when
opposer failed to respond to applicant's requests for admissions,
and because evidence of opposer's advertising of its keel coolers
does not corroborate the essence of the admissions, we do not
find the technical admissions to favor either party on the
question of acquired distinctiveness. Accordingly, under the
circumstances of this case, we do not consider the admissions to
provide significant support for the proposition that depictions
similar to the proposed mark are used by others (which would
support opposer's position) or to support the proposition that
such depictions are routinely perceived in the industry as marks
(which would support applicant's position). Cf. Yamaha, 6 USPQ2d
at 1009 (Board had broad discretion in its weighing of testimony
from experts that guitar head designs other than that sought to
be registered by the applicant in that case could serve as source
indicators).

Opposition No. 91119899
52
Fernstrum Gridcooler keel cooler. Nobody else uses that
rectangular head."). Test. dep. at pp. 19-20. Later, he
testified that outside sales representatives are instructed
to promote the grid-like appearance as well as the
rectangular heads. Test. dep. at 61. On cross-exam, the
witness testified that instructions to sales representatives
on this subject are only provided verbally. Test. Dep. at
112. Applicant's ads do not show the same focus. In an ad
placed in 2003 in the directory for the International
Workboat Show, applicant references "a confusing world of
look-alikes" and references its "one-piece header
construction" without referencing such headers as being
rectangular. Sean Fernstrum exh. 22. And a January 2000 ad
in Workboat magazine includes the tag line "Look For The
Grid… Find Fernstrum Quality," and does not mention headers.
Sean Fernstrum Exh. 23. There is little if any other
evidence approximating the type that could be said to
condition customers to look for a particular feature.
While the image of applicant's keel cooler is widely
used, there is little evidence of "look for" advertising or
actual promotion of the logo. In addition, the various ads,
catalogs, brochures and promotional materials do not display
the design in a uniform manner. In some, the foreground of
the image is on the right and it runs back to the left,
while in others the image is reversed and the foreground,
Opposition No. 91119899
53
like the drawing in the involved application, is on the
left, running back to the right. In some depictions, the
design is superimposed over a globe, but the globe design is
not always the same. The design may be a line drawing, or
it may have large dark areas, so that the contrast between
elements often differs. In short the display of the design
is not consistent and there is little evidence customers are
educated to look for any particular design. In addition,
there is the testimony of Steven Garver, who testified that
he has sold keel coolers from both opposer and applicant but
was never told by anyone from applicant that the image of
its keel cooler was a trademark.
Another difficulty we have weighing the Sean Fernstrum
testimony and exhibits is that the extent of distribution of
promotional items, brochures and the like is uncertain.
Sean Fernstrum used one word – "thousands" – to indicate how
many of various exhibits were produced or distributed. This
response was given for exhibits 4, 6, 7, 9, 12, 13, 14, 15,
21, 24, 25, 26, and 29. There were said to be "hundreds" of
a banker's bag distributed, and "over 10,000" of exhibits
16, 17 and 18. We simply do not find the testimony very
compelling, for it appears that the numbers are mere vague
estimates.
Next, we consider applicant's promotional expenditures.
Opposer, in cross-examining Sean Fernstrum, sought
Opposition No. 91119899
54
information on the size of applicant's business, so as to
compare the amount spent on promotion with sales realized.
Applicant refused to provide the information. Thus, while
we have testimony about promotional expenses, we do not have
information about sales. On the other hand, we conclude
that sales have not been insignificant, insofar as the
testimony of the witness that 75 percent of companies in the
industry have "on and off" made purchases from applicant.
Likewise, we do not find the annual amount spent on
advertising and promotion insignificant, although we do not
find it particularly substantial for a company that does
national advertising and promotion, attends trade shows,
distributes promotional items and maintains a web site.
We note at this juncture in our consideration of
applicant's asserted evidence of acquired distinctiveness,
that it would be virtually impossible to sort out the
advertisements, catalogs and other publications, or to break
down the promotional expenses, all discussed above, into
evidence that supports applicant's sales of goods and
evidence that supports its marketing of custom manufacturing
services. Certainly, not all the ads or promotional
expenses support a claim of acquired distinctiveness of the
involved design for custom manufacturing services. We have
not, however, attempted to divine which individual items of
evidence, or what portion of promotional expenses do support
Opposition No. 91119899
55
the claim, because we find that even if all the evidence
were considered to provide proper support for the claim of
acquired distinctiveness for the design and services in the
involved application, it would be insufficient evidence.
Turning back to other asserted evidence of acquired
distinctiveness, applicant contends that even opposer's
witnesses recognize the involved design. In particular,
applicant relies on numerous passages from the testimony
deposition of Michael Brakey. However, the passages noted
by applicant are not as supportive of applicant's contention
as it would have us believe. The discussions on page 79
involve the Fernstrum composite globe and keel cooler
design. It does not follow from the characterization of the
witness that the composite is well known that the design of
a keel cooler alone would be well known as indicating
applicant. Likewise, the testimony of the witness on pages
96, 97 and 101 is more accurately characterized as testimony
that the photocopies of the ads are of poor quality and
that, relative to the difficult to see images of boats, the
image of applicant's keel cooler is of good quality. This
can scarcely be considered testimony that the image of the
keel cooler is a widely known mark; and the mere fact that
the witness refers to "the Fernstrum keel cooler" in
discussing the images in the ads does not necessarily
indicate that the design is perceived as a mark, for each of
Opposition No. 91119899
56
the ads includes the Fernstrum name. Applicant also relies
on passages from the testimony of Todd Boudreaux and Paul
Boudreaux, but the referenced passages do not discuss the
proposed mark and are more properly read as statements that
applicant's keel cooler is a product well known in the
industry.
Building on its assertion that Todd Boudreaux viewed
the GRIDCOOLER logo, as opposed to the product itself, as
well known in the trade, applicant also asserts that when
East Park Radiator and Battery Company used the Fernstrum
image in advertising, it amounted to intentional copying.
Such copying, applicant correctly asserts, can be
significant evidence of secondary meaning. We do not view
the record, however, as providing strong support for
applicant's allegation of intentional copying of a well
known logo. First, the testimony of the witness was not
that the logo was well known, but that the product was well
known. Second, it is undisputed that East Park Radiator and
Battery Company was at one time repairing applicant's
products. It is just as likely, on this record, that East
Park's use of the Fernstrum image in an advertisement was
innocent and without knowledge that Fernstrum claimed rights
in the image alone, rather than intentional. There is no
evidence of record that East Park, even after it began
manufacturing a keel cooler that looked the same as
Opposition No. 91119899
57
applicant's, did so in an effort to pass off such product as
a Fernstrum product.
The final piece of evidence of acquired distinctiveness
that we consider is applicant's reliance on its prior
registration of the composite globe and keel cooler design,
itself registered under Section 2(f). Applicant relies on
Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), but that rule
allows that a prior registration of "the same mark" may be
accepted as evidence of acquired distinctiveness. What
constitutes "the same mark" is rather strictly construed.
See Section 1212.04(b) of the Trademark Manual of Examining
Procedure (4th ed., April 2005). We do not find applicant's
composite globe and keel cooler design mark to constitute
the same mark as that which it now seeks to register. We
also note that the only evidence of acquired distinctiveness
provided to the examining attorney to secure registration of
the composite mark was the survey already referenced
herein.26 We have previously discussed this survey as an
item on which applicant placed no reliance whatsoever in its
brief, essentially waiving any claim to it as evidence of
acquired distinctiveness. Applicant cannot rely on the
survey indirectly by relying on a registration that issued

26 The examining attorney had required applicant to disclaim the
image of the keel cooler on the ground that it is descriptive.
Applicant then amended the earlier application to assert acquired
distinctiveness.

Opposition No. 91119899
58
when an examining attorney accepted the survey. The Board
is not bound in this case to accept the survey simply
because the examining attorney accepted it in a prior
application. Moreover, as we have noted, supra, in footnote
22, had applicant argued that the survey was significant
evidence of acquired distinctiveness, we would have rejected
the argument.
Weighing all the evidence in the record on acquired
distinctiveness, and because we find the depiction of the
keel cooler proposed for registration to be highly
descriptive, we do not find sufficient evidence to support
applicant's claim of acquired distinctiveness.

Decision

Applicant's affirmative defenses that opposer does not
have standing and is equitably estopped from bringing this
opposition are denied. The opposition is dismissed as to
opposer's claim that the proposed mark is functional for
applicant's identified services. The opposition is
sustained as to opposer's claim that the proposed mark is
descriptive and has not been shown to have acquired
distinctiveness.