Edward Ski Products, Inc.

Trademark Trial and Appeal Board

Jan 20, 1999

No. 74600201 (T.T.A.B. Jan. 20, 1999)

Paper No. 17
HRW
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB JAN. 20, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Edward Ski Products, Inc.
________
Serial No. 74/600,201
_______
Julie K. Morriss of Trask, Britt & Rossa
for applicant.
Andrew D. Lawrence, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Edward Ski Products, Inc. has filed an application to
register the mark shown below for “clothing, namely, ski
masks.”1

1 Ser. No. 74/600,201, filed Nov. 17, 1994, claiming a first use
date of Dec. 1, 1978 and a first use date in commerce of Jan. 31,
1979. The application has been amended to one seeking
registration under the provisions of Section 2(f)of the Trademark
Act.
Ser No. 74/600201
2
Although there is no description of the mark in the
application, it is stated in the method of use clause that
“[t]he mark is used by incorporating it into the
configuration of the goods and by displaying photographs
and pictorial representations of the mark on packaging and
advertising literature associated with the goods... .” At
various points during the prosecution, applicant has
referred to its mark as the “profile design” of the mask,
but in the final brief applicant explicitly states that the
mark sought to be registered is the configuration of the
ski mask.2
Registration has been finally refused under Sections
1, 2, and 45 of the Trademark Act, on the ground that the
proposed mark is a configuration of the goods which is de
jure functional.3 In the alternative, if the proposed mark

2 The ski mask being symmetrical, the two-dimensional drawing in
the application illustrates the configuration from one side.
Nonetheless, a three-dimensional drawing, as originally required
by the Examining Attorney, but not pursued, would have been a
more accurate depiction of the mark sought to be registered. A
description of the mark should also have been required. See TMEP
§ 808.03.
3 As one of the amendments to the Trademark Act to implement the
provisions of the Trademark Law Treaty which became effective
October 30, 1998, Section 2(e) has been amended to specifically
Ser No. 74/600201
3
is found to be only de facto functional, the Examining
Attorney maintains that the evidences submitted by
applicant is insufficient to demonstrate acquired
distinctiveness under Section 2(f) of the Trademark Act.
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
DE JURE FUNCTIONALITY
The configuration or design of a product is de jure
functional if it is so utilitarian as to constitute a
superior design which others in the field need to be able
to copy in order to compete effectively. In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA
1982). The four factors found to be useful in determining
this issue, as discussed in In re Morton-Norwich, Inc.,
supra, and consistently looked to by the Board, are as
follows:
(1) the existence of a utility patent that discloses
the utilitarian advantages of the design;
(2) the touting by the originator of the design in
advertising material of the utilitarian
advantages of the design;
(3) facts showing the unavailability to competitors
of alternative designs; and

incorporate the functionality doctrine into the statute in new
subsection 2(e)(5), which provides for refusal if the mark
“comprises any matter that, as a whole, is functional.” Section
2(f) has been amended to exclude subsection 2(e)(5) from the
provisions thereof.
Ser No. 74/600201
4
(4) facts indicating that the design results from a
relatively simple or cheap method of
manufacturing the product.
See also In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB
1997); In re American National Can Co., 41 USPQ2d 1841
(TTAB 1997); In re Honeywell Inc., 8 USPQ2d 1600 (TTAB
1988); In re Weber-Stephen Products Co., 3 USPQ2d 1659
(TTAB 1987).
With respect to the first factor, the Examining
Attorney notes that applicant itself has disclosed that a
utility patent has been issued to applicant’s president,
Joseph Edwards, for the mask.4 The Examining Attorney
points to numerous structural elements set forth in the
patent as evidence of the utilitarian advantages of the
design of applicant’s mask, including the specific
configuration of the nose piece, the provision for a pocket
around the lips so as to permit the breathing of pre-warmed
air, and the incorporation of a strap design which
increases the ease of wearing the mask.
Applicant argues that the design sought to be
registered is but one embodiment of the structural elements
set forth in the claims of the patent and that other
configurations are available which would fall within the
Ser No. 74/600201
5
scope of the claimed invention. Thus, according to
applicant, the present design cannot be said to be de jure
functional, there being other “equally suitable”
configurations for the product. Applicant goes so far as
to present drawings of potential configurations which would
“ostensibly” infringe the patent, but differ in product
design from the present configuration. Applicant also
argues that the fact that the present configuration is the
embodiment illustrated in the patent is not indicative of
any superiority of design and, furthermore, the existence
of the patent is not evidence of the superiority of the
design of the product, but rather of structural differences
between the claimed invention and the masks of the prior
art.
At the very outset, we would point out that it is a
utility patent, as opposed to a design patent, which
issued with the present configuration disclosed as a
preferred embodiment of the claimed invention, a “cold
weather face mask.” Although more than one embodiment is
described in the patent, the structural elements set forth
in the claims of the invention, and the resultant
utilitarian advantages, must be present in each of these

4 U.S. Patent No. 4,300,240, issued Nov. 17, 1981. Taking into
consideration the 17 year term for a patent, we presume the
Ser No. 74/600201
6
embodiments. Obviously there cannot be strong variations
from the present design in order to assure this adherence
to the metes and bounds of the claimed invention.
It is these utilitarian advantages set forth in the
patent which we look to as evidence of de jure
functionality. See In re Caterpillar Inc., supra. The
Examining Attorney has relied in particular upon
statements made in the “Background of the Invention”
portion of the patent concerning the advantages of the
claimed mask over prior face masks, in that prior masks did
not integrate well with other outdoor apparel and were
often made of knitted materials which caused water vapor to
condense on the masks, and result in discomfort to the
user. Further on in the patent, we find disclosure of
specific utilitarian advantages inherent in the claimed
structural elements, these elements including the contour
of the nose piece, the breathing aperture above the upper
lip for the nostrils, the channel from the area under the
chin up to a pocket for the lips, and the several apertures
in the area of the mouth. For example, it is by means of
these structural features that preheated air passes upward
from the body to mix with cold inhaled air to provide

patent has recently expired.
Ser No. 74/600201
7
comfort for the user and also to permit the intake of cold
air without the buildup of frozen water vapor. In another
portion of the patent, the advantages of the fastening
features of the claimed mask, such as the fact that the
mask does not interfere with other apparel, including
goggles, are described.
All in all, it is readily apparent that the present
configuration, which is illustrated as a preferred
embodiment in the utility patent, possesses numerous
utilitarian advantages over the designs of previous face
masks. Furthermore, it is the combination of the
structural elements claimed in the patent which dictates
the overall configuration of the mask now sought to be
registered. Whether or not slight variations of the
configuration are possible which would retain these
advantages, the product design before us has been shown to
have utilitarian advantages over previously used designs.
We turn next to the second factor, the touting by the
originator of the product design of the utilitarian
advantages of this configuration in its advertising
material.5 The Examining Attorney has pointed to numerous

5 As noted by the Examining Attorney, the inventor named in the
patent is the president of applicant, not applicant. For
purposes of this proceeding, however, the advertising material of
applicant will be considered advertising by the originator of the
product design.
Ser No. 74/600201
8
examples in the advertisements of record of the touting of
these advantages, some of the strongest statements being:
Its patented design has revolutionized face
protection...
Our new high tech engineering means comfort, warmth,
easy on and off, superb fit and ventilation with no
fogging.
Thermal face protection/ Insulates, ventilates and
will not fog goggles...
The specimens of record, which appear to be a card for
holding the mask, list the patent number for the product
and point out that the mask’s “scientifically designed
ventilating system keeps you warm and breathing even in
waist-deep powder.”
Applicant argues, however, that none of this
advertising touts the configuration as being superior to
other available designs. Instead, applicant contends, the
advertising does no more than point out features that could
be similarly touted by competitors for their designs, e.g.,
that it keeps the wearer warm, that it reduces fogging of
goggles, that it “tucks conveniently into your pocket” and
the like.
Here also the question is whether the evidence of
record shows touting by applicant of the utilitarian
advantages of its particular product design, not specific
claims by applicant that its design is superior to all
Ser No. 74/600201
9
other available products. We find applicant’s advertising
in terms of the product’s being “scientifically designed”
and the result of “high tech engineering” clearly
attributes the touted utilitarian advantages per se, such
as thermal face protection or comfort, to the product
design. No more is necessary to construe this advertising
as evidence in support of the functionality of the product
design at issue.
We move to the third factor to be taken under
consideration, the unavailability to competitors of
alternative designs. Here applicant contends that it has
submitted evidence of other product designs that permit
competitors to compete effectively. Applicant further
argues that when its patent expires, competitors will even
be able to manufacture alternative designs which otherwise
embody the structural elements recited in the claims of the
patent.
We agree with the Examining Attorney that the
alternative competitors’ products of which applicant has
submitted photographs, while being different in
configuration, clearly do not possess the functional
advantages of applicant’s product design. In the first
place, these are all knitted masks, the disadvantages of
which are explicitly set forth in the background section of
Ser No. 74/600201
10
the utility patent for applicant’s product. Furthermore,
it is obvious that none of the alternatives comes close to
providing the advantages of the ventilation system which
result from the structural features of applicant’s design.
These are obviously not competitive alternatives in terms
of functional advantages. Insofar as the possibility of
copying applicant’s patent after expiration, it would
appear that by granting the trademark registration
presently being sought by applicant, we would be hindering
competitors from manufacturing copies which would be truly
equivalent to applicant’s design. In other words, we would
be perpetuating the protection which has run its term in
the patent, a result contrary to the public policy
rationale behind the functionality doctrine. See In re
Caterpillar Inc., supra.
Insofar as the fourth factor is concerned, we find
little evidence of record for either position. Although
applicant argues that manufacture is more costly for its
mask, because it must be cut from a single piece of fabric,
no specific facts or figures have been made of record to
support this claim. The Examining Attorney’s hypotheses as
to lower costs of assembly are equally without support.
Nonetheless, we find the evidence of record with
respect to the first three factors points overwhelmingly to
Ser No. 74/600201
11
the conclusion that applicant’s product design, which it
seeks to register as a trademark, is de jure functional.
It is the combination of the utilitarian advantages
resulting from the structural elements claimed in the
utility patent for the ski mask (elements which dictate the
overall configuration that applicant claims as its
trademark), the utilitarian advantages touted by
applicant’s advertising, and the lack of evidence of
equivalent alternative designs which leads us to the
determination that applicant’s ski mask design has been
shown to be a superior design to those of others. We need
not determine that it is the superior design; so long as it
is a superior design, or one of a few superior designs, the
test for de jure functionality has been met and
accordingly, registration is refused. In re Morton-Norwich
Products Inc., supra; In re Controls Corp. of America, 46
USPQ2d 1308 (TTAB 1998).
ACQUIRED DISTINCTIVENESS
Our holding of de jure functionality bars
registration, regardless of any showing of acquired
distinctiveness. However, in the event applicant’s
configuration is ultimately found to be only de facto
functional, we have taken the alternative refusal under
Section 2(f) under consideration.
Ser No. 74/600201
12
The Examining Attorney’s position is quite simple:
applicant has failed to demonstrate use of the product
design as a trademark. He contends that the evidence
submitted by applicant is indicative of the popularity of
its product, not the functioning of the design per se as an
indication of source for the product.
Applicant insists that the configuration of its ski
mask has been consistently used and promoted as a trademark
over the past nineteen years. Applicant notes that
virtually every advertisement made of record includes a
depiction of the configuration sought to be registered.
Applicant also points to the declarations of several buyers
in the ski industry which it has made of record in support
of its § 2(f) claim as evidence of the association by both
the buyers and their customers of the “distinctive shape”
of applicant’s ski mask with applicant as the source
thereof. In addition, applicant claims that the evidence
of record of attempts by competitors to copy the
configuration should also be considered as evidence of the
existence of acquired distinctiveness for applicant’s
product design.
The deficiency in applicant’s claim of acquired
distinctiveness lies in the absence of any evidence of the
promotion by applicant of the configuration of its ski mask
Ser No. 74/600201
13
as a trademark. While the product design may be shown on
each and every advertisement, there is no indication that
potential purchasers would view this as more than a picture
of the goods. See In re Pingel Enterprise Inc., 46 USPQ2d
1811 (TTAB 1998)[consumers would not regard depiction of
petcock configuration as anything more than graphic
representation of the product]. The shape of the mask has
not been advanced as a means of recognizing applicant as
the source of the product; only the word mark THE MASQUE
has been used in the manner of a trademark.
Moreover, there is no evidence to support recognition
by the ultimate purchasers of the configuration as an
indication of origin. The assertions of buyers of the
masks for resale in sporting good stores or ski shops, that
is, persons who know the source of the masks, cannot serve
to establish that the ultimate purchasers would recognize
the product design as an indication that it originates from
applicant. See In re Pingel Enterprise Inc., supra at
1822; In re Semel, 189 USPQ 285 (TTAB 1975). The
popularity of applicant’s ski mask may well result from the
functional attributes which are inherent in the product
design, but this popularity cannot be equated with acquired
distinctiveness for the design as a trademark. The fact
that competitors are selling “knock-offs” of comparable
Ser No. 74/600201
14
design may be indicative of their aims to exploit desirable
functional features of the design, rather than to confuse
purchasers as to the source of the goods. See Thomas &
Betts Corp. v. Panduit Corp., 65 F.3 654, 36 USPQ2d 1065
(7th Cir. 1995).
Accordingly, we find that, even if the configuration
is found to be only de facto functional, the evidence
submitted by applicant is insufficient to demonstrate
acquired distinctiveness under Section 2(f).
Decision: The refusal to register on the ground that
applicant’s product design is de jure functional is
affirmed. The alternative refusal on the ground that, even
if the product design is found to be only de facto
functional, applicant’s evidence is insufficient to
demonstrate acquired distinctiveness under Section 2(f) is
also affirmed.
E. J. Seeherman
P. T. Hairston
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board