Elevator Safety Company

Trademark Trial and Appeal Board

Feb 21, 2007

No. 76507737 (T.T.A.B. Feb. 21, 2007)

Oral hearing: Mailed:
June 20, 2006 February 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elevator Safety Company
________

Serial Nos. 76507505; 76507507; 76507675; 76507677;
76507734; 76507735; 76507737; 765077411
_______

James J. Merek of Merek, Blackmon & Voorhees, LLC for
Elevator Safety Company.

Linda A. Powell, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

1 On January 24, 2006, upon request by the examining attorney,
the Board consolidated these eight appeals and the Board is
addressing them in a single opinion. Citations to the briefs
refer to the briefs filed in application Serial No. 76507505,
unless otherwise noted; however, we have, of course considered
all arguments and evidence filed in each case. Applicant also
appealed the refusal issued in a related application, Serial No.
76507676. While the Board heard oral argument on that appeal as
well as these consolidated appeals at the same oral hearing, the
issues in application Serial No. 76507676 are different and a
decision in that case is being issued under a separate opinion.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 76507505 et al.
2
The Elevator Safety Company has filed applications to
register as trademarks on the Principal Register the
following:

for “elevator roller guides” in International
Class 7, describing the mark as follows: “The
mark consists of a three-dimensional
configuration of an elevator roller guide. The
roller guide includes three main components: the
base mounting bracket, the central hub and the
pivot arms. Each pivot arm holds two wheels,
mounted at the extreme and opposite ends of the
arm. The two ‘side’ pivot arms are identical,
and consist of two parallel, generally diamond-
shaped faces, connected in the middle by an
elongated cylinder. Substantially oval holes at
the center of each face of the pivot arm reveal
the springs and some inner workings of the guide.
The third pivot arm is disposed between the other
two pivoting arms and is rotated approximately 90
degrees relative to the other arms. This ‘face’
pivot arm consists of two parallel faces, each
shaped in an angular, three-section, wide-spread
U configuration. These two planes are attached
to each other in two places near the angles of
the U shape. All three pivot arms are attached
at their middles to a central hub, which consists
of a cylindrical section attached to four flat
rectangular surfaces. The base includes a
substantially planar platform and a generally
Serial Nos. 76507505 et al.
3
oval main support section, reinforced with an
angled rib extending from the bottom of the main
support section. The top of the oval main
support receives the hub’s cylinder. A large
generally oval hole is formed in the lower
portion of the main support”;2

for “elevator roller guides” in International
Class 7, the description of the mark is identical
to the description in Serial No. 76507505 with
the addition of the following: “The wheels
depicted by dotted lines do not form any part of
the mark in this application.”;3

2 Application Serial No. 76507505, filed April 18, 2003, alleging
January 1, 1980 as the date of first use and the date of first
use in commerce.
3 Application Serial No. 76507507, filed April 18, 2003, alleging
December 31, 1961 as the date of first use and first use in
commerce.
Serial Nos. 76507505 et al.
4

for “elevator roller guides” in International
Class 7, describing the mark as follows: “The
mark consists of a three-dimensional
configuration of an elevator roller guide
consisting of three main components: the base
mounting bracket, the central hub and the pivot
arms. Each pivot arm holds two wheels, mounted
at the extreme and opposite ends of the arm. The
two ‘side’ pivot arms are identical, and consist
of two parallel, generally diamond-shaped faces,
connected in the middle by an elongated cylinder.
Oval holes at the center of each face of the
pivot arm reveal the springs and some inner
workings of the guide. The third pivot arm is
disposed between the other two pivoting arms and
is rotated approximately 90 degrees relative to
the other arms. This ‘face’ pivot arm consists
of two parallel faces, each shaped in an angular,
three-section, wide-spread U configuration.
These two planes are attached to each other in
two places near the angles of the U shape. All
three pivot arms are attached at their middles to
a central hub, which consists of a cylindrical
section attached to four flat rectangular
surfaces. The base includes a substantially
planar platform and two main support sections,
reinforced with angled ribs down the sides, that
connect to a cylindrical top section of the base.
This top cylinder receives the hub’s cylinder.
The two main supports are divided by a large,
Serial Nos. 76507505 et al.
5
somewhat rounded, but generally rectangular
hole”;4

for “elevator roller guides” in International Class 7,
the description of the mark is substantially identical
to the description in Serial No. 76507675 with the
addition of the following: “The wheels depicted by
dotted lines do not form any part of the mark in this
application”;5

4 Application Serial No. 76507675, filed April 18, 2003, alleging
January 1, 1980 as the date of first use and first use in
commerce.
5 Application Serial No. 76507734, filed April 18, 2003, alleging
December 31, 1961 as the date of first use and first use in
commerce.
Serial Nos. 76507505 et al.
6

for “elevator roller guides” in International Class 7,
describing the mark as follows: “The mark consists of
a three-dimensional configuration of an elevator
roller guide. The roller guide includes three main
components: the base, three pivot arms and the spring
and bolt assemblies. All three pivot arms consist of
two parallel surfaces of generally elongated oval
shapes. The two ‘side’ pivot arms have tabs that
protrude from their sides. The two side pivot arms
extend outwardly in a substantially V-shaped
configuration from lugs cast into the base casting.
The third ‘face’ pivot arm forms an acute angle with
the base and extends upwardly from a third lug on the
base and bisects the V-shaped configuration formed by
the other two pivot arms. Two of the spring and bolt
assemblies extend in opposite directions from each
other and extend substantially parallel to the base.
They are attached to a large ridge-like portion of the
base. The third spring and bolt assembly forms an
acute angle with the base and a 90 –degree angle with
the face pivot arm. The base includes a substantially
planar platform that has three lugs for attaching the
pivot arms, as well as a large central ridge”;6

6 Application Serial No. 76507735, filed April 18, 2003, alleging
January 1, 1980 as the date of first use and first use in
commerce.
Serial Nos. 76507505 et al.
7

for “elevator roller guides” in International Class 7,
the description of the mark is substantially identical
to the description in Serial No. 76507735 with the
addition of the following: “The wheels depicted by
dotted lines do not form any part of the mark in this
application”;7

for “elevator roller guides” in International Class 7,
describing the mark as follows: “The mark consists of
the three-dimensional configuration of an elevator
roller guide. The roller guide includes three main
components: the base, three pivot arms and the spring
and bolt assemblies. All three pivot arms consist of

7 Application Serial No. 76507737, filed on April 18, 2003,
alleging December 31, 1961 as the date of first use and first use
in commerce.
Serial Nos. 76507505 et al.
8
two parallel surfaces of generally elongated oval
shapes. The two ‘side’ pivot arms have tabs that
protrude from their sides. The two side pivot arms
extend outwardly in a substantially V-shaped
configuration from lugs cast into the base casting.
The third ‘face’ pivot arm forms an acute angle with
the base and extends upwardly from a third lug on the
base and bisects the V-shaped configuration formed by
the other two pivot arms. Two of the spring and bolt
assemblies extend in opposite directions from each
other and extend substantially parallel to the base.
They are attached to a large ridge-like portion of the
base. The third spring and bolt assembly forms an
acute angle with the base and a 90-degree angle with
the face pivot arm. The base includes a substantially
planar form that has three lugs for attaching the
pivot arms, as well as a large central ridge.”;8 and

for “elevator roller guides” in International Class 7,
the description of the mark is substantially identical
to the description in Serial No. 76507677 with the
addition of the following: “The wheels depicted by
dotted lines do not form any part of the mark in this
application”;9

8 Application Serial No. 76507677, filed April 18, 2003, alleging
January 1, 1980 as the date of first use and first use in
commerce.
9 Application Serial No. 76507741, filed April 18, 2003, alleging
December 31, 1961 as the date of first use and first use in
commerce.
Serial Nos. 76507505 et al.
9
The proposed marks in the applications comprise four
of applicant’s elevator roller guides, referred to in
applicant’s literature as Models A, B, C and D. Models A
(76507675 and 76507734) and C (76507505 and 76507507) have
six wheels, but the central hubs and bases have a slightly
different shape and the wheels in Model A are larger.
Models B (76507735 and 76507737) and D (76507677 and
76507741) have three wheels, but the bases are slightly
different in shape and the wheels in Model B are larger.
Applicant seeks to register each of these models with and
without the wheels for a total of eight applications.
The examining attorney refused registration under
Section 2(e)(5) of the Trademark Act, 15 U.S.C. §
1052(e)(5), on the ground that applicant’s alleged marks
are functional, and under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1052, 1127, on the ground
that applicant’s alleged marks are non-distinctive
configurations that fail to function as trademarks. In
maintaining the refusal under Sections 1, 2 and 45, the
examining attorney also found that applicant did not make a
sufficient evidentiary showing of acquired distinctiveness
under Section 2(f), 15 U.S.C. § 1052(f).
When the refusals were made final, applicant appealed.
Briefs have been filed and an oral hearing was held upon
Serial Nos. 76507505 et al.
10
applicant’s request. We affirm the refusals to register in
each application.
EVIDENCE OF RECORD
In support of the refusals, the examining attorney
submitted: (1) printouts from applicant’s website; and (2)
printouts from third-party websites. In response to the
refusals, applicant submitted: (1) several third-party
utility patents, including three utility patents owned by
applicant’s predecessor; (2) the declarations of Gordon
Ferguson, General Manager of Eltec Systems, LLC and Wayne
Chiang, ThyssenKrupp Elevator, customers of applicant; (3)
industry literature from third parties discussing their
elevator roller guides; (4) an agreement entered into with
Bral Corporation, a supplier of applicant; (5) the
declaration of Douglas W. Hamilton, III, applicant’s vice-
president; and (6) samples of applicant’s advertising.10
FUNCTIONALITY UNDER SECTION 2(e)(5)
Under the statute, functional matter is unregistrable.
15 U.S.C. §1052(e)(5). Matter is functional if “it is
essential to the use or purpose of the article or if it

10 Applicant’s objection to the examining attorney’s arguments in
her brief regarding certain features of applicant’s proposed
marks is not well taken. The examining attorney did not submit
new evidence, refer to extrinsic evidence or raise a new refusal;
she simply responded to applicant’s argument raised for the first
time in its brief that she had not ascribed any function or
utility to certain aspects of applicant’s mark.
Serial Nos. 76507505 et al.
11
affects the cost or quality of the article.” TrafFix
Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58
USPQ2d 1001, 1006 (2001) (citation omitted). In making our
determination of functionality we apply the test first set
forth in In re Morton Norwich Products, Inc., 740 F.2d
1550, 213 USPQ 9 (CCPA 1982). See Valu Engineering Inc. v.
Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed.
Cir. 2002); American Flange & Manufacturing Co., Inc. v.
Rieke Corporation, 80 USPQ2d 1397 (TTAB 2006). Morton-
Norwich identifies the following factors to be considered
in determining whether a particular design is functional:
(1) the existence of a utility patent disclosing the
utilitarian advantages of the design; (2) advertising
materials in which the originator of the design touts the
design’s utilitarian advantages; (3) the availability to
competitors of functionally equivalent designs; and (4)
facts indicating that the design results in a comparatively
simple or cheap method of manufacturing the product.
Morton-Norwich, supra, 213 USPQ at 15-16.
With regard to the first factor, the existence of a
utility patent “is strong evidence that the features
claimed therein are functional” and “[w]here the expired
patent claimed the features in question, one who seeks to
establish trade dress protection must carry the heavy
Serial Nos. 76507505 et al.
12
burden of showing that the feature is not functional, for
instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device.” TrafFix,
supra, 58 USPQ2d at 1005. Further, third-party utility
patents may be relied upon as evidence; ownership of the
utility patent is not relevant. American Flange, supra.
See also In re Virshup, 42 USPQ2d 1402, 1405 (TTAB 1997).
The Federal Circuit has clarified the role of the
third Morton-Norwich factor:
Nothing in TrafFix suggests that consideration of
alternative designs is not properly a part of the
overall mix, and we do not read the Court’s
observations in TrafFix as rendering the
availability of alternative designs irrelevant.
Rather, we conclude that the Court merely noted
that once a product feature is found functional
based on other considerations, there is no need
to consider the availability of alternative
designs because the feature cannot be given trade
dress protection merely because there are
alternative designs available. But that does not
mean that the availability of alternative designs
cannot be a legitimate source of evidence to
determine whether a feature is functional in the
first place.

Valu Engineering Inc. v. Rexnord Corp., supra, 61
USPQ2d at 1428 (footnote omitted).11

11 In TrafFix the Supreme Court stated:
It is proper to inquire into a ‘significant non-
reputation-related disadvantage’ in cases of aesthetic
functionality, the question involved in Qualitex.
Where the design is functional under the Inwood
formulation there is no need to proceed further to
consider if there is a competitive necessity for the
Serial Nos. 76507505 et al.
13
Utility Patents
We turn first to a consideration of the various
utility patents of record. The examining attorney makes
the following observations:
Having examined prior patents issued to third
parties for elevator roller guides made of record
by the applicant, and having considered the
development of the arts as applied to such
devices, the Trademark Examining Attorney found
no part of the configuration of the goods in
question that appears to be without a functional
purpose. The three wheeled roller guide is
described in U.S. Patent 1,713,165 (1929). The
pivotal supports for each roller and spring
tension on the wheels are claimed in U.S. Patent
1,854,976 (1932), albeit in a different
configuration, however, the utilitarian purpose
is the same. The six wheel guide is described in
U.S. Patent 3,329,240 (1967) and also in U.S.
Patent 3,856,117 (1967), which has a highly
similar configuration of wheels, pivot arms, and
bolt and spring assemblies. The Trademark
Examining Attorney notes that similar U.S.
Patents 2,251,963 (1941) and 2,253,820 (1941)
(for five and six wheeled roller guides) and
2,265,086 (1941) (for pressure adjusting features
on elevator roller guides) may have belonged to
predecessors in interest of the applicant. A
supporting base structure of some sort appears to
be part of all of the patents for elevator roller
guides. That the component parts of roller
guides may be produced in other shapes or forms
that all perform the same function does not
detract from the utility provided by any of the
alternative forms. Granting the applicant the
exclusive use of an elevator roller guide with

feature. In Qualitex, by contrast, aesthetic
functionality was the central question, there having
been no indication that the green-gold color of the
laundry press pad had any bearing on the use or
purpose of the product or its cost or quality.

TrafFix, supra, 58 USPQ2d at 1006.
Serial Nos. 76507505 et al.
14
three or six wheels supported by pivotal arms
with spring and bolt assemblies for the
application of pressure to the wheels designed
for a standard ‘T’ rail would severely hamper the
ability of other elevator part manufacturers to
provide suitable rail stability devices for use
with elevators traveling on similar rails and for
use with similar speeds and weight allowances.
That these features were the subject of claims in
prior patents clearly establishes the utilitarian
nature of the features, and shows that other
manufacturers of the goods have a right to those
features that have now passed into the public
domain by virtue of the expiration of the
patents.

Br. unnumbered pp. 5-6.

Drawings from the various patents noted by the
examining attorney are shown below.
Patent No. 1713165 (three-wheeled roller
guide)
Patent No. 1854976 (pivotal supports for
roller and springs)
Serial Nos. 76507505 et al.
15
Patent No. 3329240 (six-wheeled guide)
Patent No. 3856117 (six-wheeled guide)

The three patents that were assigned to applicant’s
predecessor-in-interest are shown below.
Patent No. 2265086
(pressure adjusting feature)
Serial Nos. 76507505 et al.
16

Patent No. 2251963
Patent No. 2253820
Patent No. 2251963, issued on August 12, 1941, is for
a “roller guide for elevator cars.” The patent drawings
illustrate the various key features, including, diamond-
shaped pivot arms, U-configured pivot arms, spring-bolt
assemblies going through the pivot arms, and a parallel
construction to ride on the rail. But for the absence of
the oval hole in the side pivot arm, these features are
virtually identical to the diamond-shaped pivot arms, the
U-configured pivot arms and the spring-bolt assemblies
claimed in applications Serial Nos. 76507505, 76507507,
Serial Nos. 76507505 et al.
17
76507675, and 76507734. The patent discloses that it is
designed to be an improvement of prior art that “may be
constructed in a much simpler form, calculated to further
reduce the friction in operation, while calling for a much
lighter structure, adapted to be produced at considerably
less cost.” The design is “automatically adjustable to
unbalanced loading of the elevator and to rails presenting
bends and other irregularities, while preventing undue
friction and noisy operation of the elevator.” Further,
“the guide structure comprises an elongated frame formed at
each end with a bifurcated, outwardly extending
support...the frame extends in front of, and parallel with
the rail and the wheels or rollers are of equal diameter,
and are symmetrically mounted with respect to the center of
the frame...[t]he construction described thus provides a
three-point rolling contact for the guide, which is
possessed of a great amount of flexibility in action,
inasmuch as the resilient mounting of both the yoke and
sleeve make it possible for all the rolling elements to
instantly adjust themselves to such bends, misalignments
and inequalities as may occur at certain points in the
guide rail...[t]he treads with which the wheels or rollers
are equipped, being to a certain extent compressed when
forced against the running surfaces of the guide rail by
Serial Nos. 76507505 et al.
18
the action of springs as well as by the spring housed
within the hub also serve to provide a certain amount of
resilient action, insuring continuity of contact between
said wheels and said rail even when some particularly sharp
irregularity occurs in the guide rail...[t]he
constructional details of my invention may vary from those
shown without departing from the inventive idea. The
drawing should, therefore, be understood as being intended
for illustrative purposes only and not in a limiting
sense.” The patent claims, inter alia, “In an elevator
guide for use in connection with a guide rail having an end
riding surface and two side riding surfaces the
combination, with a frame, of a yoke oscillatable in a
plane substantially parallel to said end riding surface,
mounted at one side of said frame, a roller at each end of
said yoke adapted to ride along one of said side riding
surfaces, resilient means urging said yoke and rollers
against said side surface, a roller carried by the other
side of said frame at a point intermediate said two
rollers, adapted to ride along the other side riding
surface of said rail, and resilient means urging said
roller against said second mentioned side riding surface.”
The role of the springs is further articulated in
Patent No. 2253820 shown above. The elevator roller in
Serial Nos. 76507505 et al.
19
this patent is designed so that “a single spring may be
used to press the side guiding elements into contact
relationship between the rollers and the guide-rail;
furthermore, it will be seen that any deviation of the
elevator car from its normal path in a direction
transversal to the rib portion of the guide-rail, causing
one or the other of the side surfaces of the rail to react
against the rollers riding along the same, will result in
an immediate increase in the torsion of the spring, which
will thus be more effective in returning conditions to
normal. Furthermore, if an abnormal condition arises due
to an irregularity in the rail, causing a reaction to take
place by the rail against only one of the rollers, the
tension of the spring will in this case also be increased,
causing the roller directly opposite to press with
increased pressure against its own riding surface, thus
giving rise to a counter reaction, which will be paired
with the action of the arm which was previously deflected
from its normal position, in returning conditions to
normal. In both cases, therefore, the tension of the
spring is increased under abnormal stresses, causing
swinging movement of one or both arms around their common
axis, and furthermore, the force exerted by the spring is
utilized in its entirety in reestablishing normal
Serial Nos. 76507505 et al.
20
conditions.” This patent claims, inter alia, “each arm
having a roller at each end, a helical spring, interposed
between said arms, urging said arms to rotate each in the
direction in which one of its rollers will press against
one of said side riding surfaces, and the other roller will
press against the opposite surface, a frame mounted on, and
shiftable along said bearing, having two longitudinally
spaced rollers adapted to ride along said end riding
surface, and a spring urging said frame towards said end
riding surface.”
We further note Patent Nos. 5107963 and 6062347
showing three-wheeled elevator roller guides in alignments
similar to applicant’s proposed marks in application Serial
Nos. 76507677, 76507735, 76507737, and 76507741 and an
angled pivot arm with spring-bolt assembly similar to those
depicted in Serial Nos. 76507677, 76507735, 76507737, and
76507741.
Serial Nos. 76507505 et al.
21

Applicant argues that “the design for which
[applicant] is seeking federal registration has not been
the subject of a utility or design patent or patent
application.” Br. p. 10. That applicant has chosen to
pursue trademark protection rather than patent protection,
does not render an otherwise functional configuration non-
functional. As can be seen from the several utility
patents made of record, each piece of applicant’s elevator
roller guides has a functional purpose: the diamond-shaped
pivot arm, a standard yoke shape; the U-configured pivot
Serial Nos. 76507505 et al.
22
arm to sit between the side pivot arms and allow room for
the wheel to clear the arm and make contact with the face
of the rail; the springs to present counter pressure; and
the bolts to hold everything in place. It also appears
that applicant’s three-wheeled designs may have further
utility in that the angled arms may be adjusted as noted in
its advertising material discussed below.
Accordingly, we conclude that the patent evidence
supports a finding that applicant’s proposed marks are
functional.
Advertising
Under this factor, we consider evidence regarding
“advertising materials in which the originator of the
design touts the design’s utilitarian advantages.” The
examining attorney highlights the following from
applicant’s literature that discusses the attributes of the
proposed marks in application Serial Nos. 76507675 and
76507734:12
ELSCO’s Model A Guides set the performance
standard against which all other guides are
measured. When seeking optimum performance on
either high speed passenger or heavy duty freight
elevators, quality conscious elevator contractors
through-out the world turn to the design
advantages of the tandem-wheel Model A.

12 ELSCO is apparently another name for applicant.
Serial Nos. 76507505 et al.
23
The “walking beam action” of the side and face
wheel arms compensates for unbalanced cars or
misaligned rail conditions. Fully adjustable
stabilizing springs allow the elevator car to
float between the rails, eliminating the bumps
and vibrations that affect ride quality.

Postwise float can be precisely controlled with
adjustable stops, a standard feature on the Model
A Guide.

We further note the following excerpts from
applicant’s advertising literature:13
ELSCO’s 35 years of advanced engineering and
manufacturing technique have led to the
development of roller guides and guide shoes to
meet almost all elevator load, speed or
dimensional requirements. For high speed
passenger or heavy duty freight elevators. Our
six-wheel Model A and C Guides set the standard
for optimum performance. With six wheels, the
load carrying capability of the guide is
increased, and the shock of a bump is spread over
a larger area.

The Model B and D Guides are three-wheel
counterparts to the Model A and C Guides, and are
recommended for applications where speed and
capacity are moderate. ELSCO’s Model E Guide
offers a simpler design, yet provides optimum
performance and cost effective operation on low
rise, light to moderate capacity hydraulic
elevators.

ELSCO Model B elevator roller guides are designed
with adjustment features that provide superior
riding characteristics. The installer can easily
adjust ELSCO guides to compensate for adverse
operating conditions and to minimize noise, bumps
and vibration.

...

13 Similar excerpts are in the record for each model applicant
seeks to register as a trademark.
Serial Nos. 76507505 et al.
24

our spring-loaded roller guides have the ability
to compensate for unbalanced cars or misaligned
rail conditions.

...

A spring located in the hub of the wheel cluster
assembly plays an integral role in the
performance of these high speed roller guides.
In addition to helping the roller wheels maintain
constant contact with the rail, the spring action
helps the car float along the rail in a
controlled manner. The spring absorbs most of
the shock and bumps caused by rail
irregularities, isolating noise and vibration
from the car.

...

This ‘knee action’ takes place on three sides of
the rail, keeping the wheels in constant contact
with the rails. These guides are also designed
with a low profile for tight vertical clearances.

...

ELSCO Model C elevator roller guides are designed
with adjustment features that provide superior
riding characteristics. The installer can easily
adjust ELSCO guides to compensate for adverse
operating conditions and to minimize noise, bumps
and vibration.

...

Each wheel arm assembly is individually spring
mounted, allowing the guide to provide the
smoothest possible ride, even when rails are
rough or slightly misaligned. The wheel arm
“knee action” keeps all wheels in constant
contact with the rail.

These statements clearly tout the utilitarian
advantages of the various features previously discussed in
Serial Nos. 76507505 et al.
25
the patents. For example, the side and face wheel arms
compensate for unbalanced cars, six wheels increases the
load-carrying capacity of the guides, the spring-loaded
roller guides compensate for unbalanced cars, and the
spring in the hub of the wheel cluster absorbs shocks and
bumps and helps the rollers maintain constant contact with
the rail.
Accordingly, we conclude that the advertising evidence
supports a finding that applicant’s marks are functional.
Applicant argues that the examining attorney has
failed to meet her burden to present a prima facie case of
functionality because she has merely dissected the mark and
pointed to certain features that may be functional but has
not presented a case that the overall configuration is
functional. Applicant further contends that the evidence
of record does not support a functionality refusal because
it is directed only to certain particular features.
Applicant particularly notes that its literature does not
tout the utilitarian advantages of its overall resulting
configuration.
The statute prohibits registration of a mark that
“comprises any matter that, as a whole, is functional.” 15
U.S.C. 1052(e)(5). The issue then is how do we determine
the functionality of the whole. The PTO has the burden of
Serial Nos. 76507505 et al.
26
showing that a configuration is functional and it may
accomplish that task by showing the functionality of
various aspects of the configuration. See e.g., In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ2d 1, 2 (Fed. Cir.
1984) (“[the board] proceeded to initially review the six
features claimed by Smith to comprise its mark. Upon
consideration of the entire design, the board found that
not only were those features themselves highly functional,
except perhaps for the ribs, but that the drawing as a
whole included various other highly functional elements,
i.e.[b]ased on the functionality of the individual features
comprising the design, the board concluded that the design
as a whole was de jure functional. We agree with the board
that the PTO attorney established a prima facie case of de
jure functionality.”)
Applicant relies on In re Teledyne Industries Inc.,
696 F.2d 968, 217 USPQ2d 9 (Fed. Cir. 1982) (dissecting
proposed product design into its utilitarian features not
conclusive that design considered as a whole is functional)
in support of its position. However, even in Teledyne the
Federal Circuit recognized that “in most cases ...the best
the PTO can probably do is to analyze a design from the
standpoint of its de facto functional features, perhaps
with support from technical articles, patent disclosures,
Serial Nos. 76507505 et al.
27
or the applicant’s own advertisements.” Teledyne, supra,
217 USPQ at 11.
The fact that a utility patent does not exist for each
of the same exact overall configurations as applicant’s
designs is not sufficient to rebut the evidence of record
establishing functionality. The configurations are by
their nature functional because the designs bring the
functional features together and the configurations retain
the functional aspects of their parts. They are, in the
end, only the sum of their parts, inasmuch as the various
patents of record show the way in which the parts are put
together and interact.
Even if we were to agree with applicant’s argument
that the configurations include non-functional features,
for example the oval-shaped holes, the clearly functional
features included in applicant’s descriptions of the marks,
as described above, are part of the overall configurations
that applicant seeks to register. As stated by the Federal
Circuit, “The case law of this court and its predecessor
also establishes that before an overall product
configuration can be recognized as a trademark, the entire
design must be arbitrary or non de jure functional.”
Petersen Mfg. Co. v. Central Purchasing Inc., 740 F.2d
1541, 1550, 222 USPQ 562, 569 (Fed. Cir. 1984). See also
Serial Nos. 76507505 et al.
28
In re Minnesota Mining and Mfg. Co., 335 F.2d 836, 142 USPQ
336 (CCPA 1964).
Alternative Designs/Cost of Manufacturing
It is applicant’s position that the evidence,
including the third-party patents and product catalogs, far
from supporting a functionality refusal, in fact, preclude
a finding of functionality because they show that
alternative designs exist, and that, based on the
declarations, the record supports a finding that its
designs do not result “in a comparatively simple or cheap
method of manufacturing the products.” Br. p. 12. Once
again applicant relies on Teledyne to support its position.
In Teledyne the Federal Circuit noted that the
applicant had not shown that commercially feasible
alternatives existed and thus had not rebutted the
examining attorney’s prima facie case. Applicant here
argues that evidence of such alternatives exist in this
case. However, since Teledyne, the United States Supreme
Court in TrafFix has addressed the relevance of commercial
alternatives as noted above. The Federal Circuit in Valu
Engineering clearly stated that “once a product feature is
found functional based on other considerations ... the
feature cannot be given trade dress protection merely
because there are alternative designs available.” Valu
Serial Nos. 76507505 et al.
29
Engineering, supra, 61 USPQ2d at 1427. Thus, the fact that
other competitive alternatives may exist, does not alter
the initial finding that the configuration is functional
and, thus, unregistrable.
In addition, we note that some of the alternative
designs are very similar to applicant’s designs. An
example from the Hollister-Whitney Elevator Corporation is
depicted below with a “patent pending” statement.

The primary difference between this design and applicant’s
three-wheeled design is the angle at which the arms are
placed. As noted in applicant’s literature, its arms have
the added utility of being adjustable.
Finally, while applicant has provided examples of
alternative elevator roller guides and the declarations of
Mr. Ferguson and Mr. Chiang attesting to the fact that each
of applicant’s guides “is one of many feasible, efficient
Serial Nos. 76507505 et al.
30
and competitive designs,” it has not explained how its
designs are not superior to these other designs. It may be
that applicant’s configurations perform better than the
alternative designs, but at more expense, so while the
other designs may compete on price they do not compete on
performance.
With regard to the cost of manufacturing, the
examining attorney noted that:
The relative costs of competing goods has not
been addressed by any party except for the
statement from one party, Mr. Hamilton, the
applicant’s Vice President, who states that he is
“not aware of any fact that in any way suggests
that the design of the Model A roller guide
results from a simple or inexpensive method of
manufacture as compared to alternative designs.”
Similar statements are made for the various
models. Nonetheless, no actual evidence has been
made of record showing comparable roller guides
and the relative costs of manufacture...The
applicant does not address whether the various
designs or expenses of the applicant’s goods is
comparable to that of others. Rather, the
applicant is “not aware that its goods result
from a simple or inexpensive method of
manufacturing as compared to alternative
designs.” In any event, the Court in TrafFix
held that “where the design is functional under
the Inwood formulation there is no need to
proceed further to consider competitive
necessity.”

Br. unnumbered pp. 11-12 (citations omitted).

Applicant argues that the examining attorney has
conceded that she has no basis for making an assertion that
[applicant’s] configurations affect the cost of the
Serial Nos. 76507505 et al.
31
article. Br. p. 6. However, the information regarding the
comparative costs of manufacturing for different designs
resides with the applicant and applicant did not provide
more than the one statement from its vice president that he
is not aware that its goods result from a simple or
inexpensive method of manufacturing. Moreover, even if its
elevator guides are not “comparatively simple or cheap” to
manufacture, this does not mean that the design is not
functional. In re American National Can Co., 41 USPQ2d
1841, 1844 (TTAB 1997).
Accordingly, we conclude that the evidence of
alternative designs and cost of manufacturing does not
support a finding of non-functionality.
Because all or substantially all of applicant’s
overall designs are dictated by the function they perform,
we affirm the refusals based on functionality. See In re
Vico Products Mfg. Co., 229 USPQ 364, 368 (TTAB 1985).
Once a configuration is found to be functional, a
showing of acquired distinctiveness cannot transform it
into a trademark. However, for completeness we address the
failure to function refusal and applicant’s evidence
submitted in support of its claim of acquired
distinctiveness below.
Serial Nos. 76507505 et al.
32
FAILURE TO FUNCTION UNDER SECTIONS 1, 2 AND 45
In response to the refusals based on lack of inherent
distinctiveness applicant argues that its marks have
acquired distinctiveness. In support of its assertion of
acquired distinctiveness, applicant relies on: (1) the
declaration of Douglas W. Hamilton, III; (2) the
declaration of Gordon Fergusen; (3) the declaration of
Wayne Chiang; (3) the Bral Corporation agreement; and (4)
applicant’s advertising.
Product design, as a matter of law, is not inherently
distinctive and can only be registered upon a showing of
acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000);
In re Ennco Display Systems, Inc., 56 USPQ2d 1279 TTAB
(2000). Refusals based on failure to function may be
overcome by a showing of acquired distinctiveness under
Section 2(f) of the Trademark Act. The burden of proving a
prima facie case of acquired distinctiveness in an ex parte
proceeding rests with applicant. Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004
(Fed. Cir. 1988). An applicant must show that the primary
significance of the product configuration in the minds of
consumers is not the product but the source of that product
in order to establish acquired distinctiveness. See In re
Serial Nos. 76507505 et al.
33
Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420,
1422 (Fed. Cir. 2005); In re Ennco Display Systems Inc.,
supra. Acquired distinctiveness may be shown by direct
and/or circumstantial evidence. Direct evidence includes
actual testimony, declarations or surveys of consumers as
to their state of mind. Circumstantial evidence is
evidence from which consumer association might be inferred,
such as years of use, extensive amount of sales and
advertising, and any similar evidence showing wide exposure
of the mark to consumers. In re Ennco, 56 USPQ2d at 1283.
See also 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, Sections 15:30, 15:61, 15:66 and 15:70
(4th ed. 2005).
There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness, however,
the burden is heavier for configurations. In re Ennco, 56
USPQ2d at 1283 (product configurations face a heavy burden
to establish secondary meaning). See also Yamaha, supra, 6
USPQ2d at 1008 (evidence required to show acquired
distinctiveness is directly proportional to the degree of
non-distinctiveness of the mark at issue).
After careful review of the evidence of record, we
agree with the examining attorney that applicant's evidence
Serial Nos. 76507505 et al.
34
of acquired distinctiveness is insufficient to permit
registration of the configurations under Section 2(f).
Applicant claims to have sold between 22,000 and
60,000 units of each of its elevator rollers since 1998 and
spent approximately $100,000 on advertising via the
catalogs and brochures. Hamilton Decl. ¶ 5.
While the sales volume figures may demonstrate the
growing popularity of the product, mere figures
demonstrating successful product sales are not probative of
purchaser recognition of a configuration as an indication
of source. See Braun Inc. v. Dynamics Corp., 975 F.2d 815,
827, 24 USPQ2d 1121, 1133 (Fed. Cir. 1992) (“[L]arge
consumer demand for Braun’s blender does not permit a
finding the public necessarily associated the blender
design with Braun.”); In re Bongrain Int’l (American)
Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir.
1990) (growth in sales may be indicative of popularity of
product itself rather than recognition as denoting origin).
Moreover, it is well established that compelling sales and
advertising figures do not always amount to a finding of
acquired distinctiveness. See In re Boston Beer Co. L.P.,
198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) ($85,000,000
in annual sales revenues and $2,000,000 in advertising
expenditures found insufficient to establish acquired
Serial Nos. 76507505 et al.
35
distinctiveness); Goodyear Tire & Rubber Co. v. Interco
Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000 sales
revenues and 740,000 tires sold insufficient to show
acquired distinctiveness of tire tread design).
Although there may have been substantial sales and
some expenditures on advertising, the more important
question is how is the alleged mark being used, i.e., in
what manner have consumers been exposed to the alleged mark
so that we can impute consumer association between the
configurations and the product producer. To determine
whether a configuration has acquired distinctiveness,
advertisements must show promotion of the configuration as
a trademark.
Here, there is nothing of record that shows that the
alleged marks are being promoted as source indicators. The
examples in the record simply show a picture of the
product. Applicant’s contention appears to be that because
pictures of the products appear near applicant’s trade name
or trademark ELSCO they serve as source-identifying marks.
As the examining attorney stated:
The photo is not promoted in a source identifying
manner, but is merely used in the promotion of
the goods in the context of providing information
about the goods identified in the accompanying
picture for the applicant’s various models of
elevator roller guides

Serial Nos. 76507505 et al.
36
Br. unnumbered p. 14.

We see nothing in the record to show that the
advertising promotes the configurations in a way that would
imbue them with source-identifying significance; rather,
the advertising simply shows the product like any
advertising would. Applicant has not presented evidence of
advertising or promotional efforts that focus upon the
trademark significance of the configurations claimed as
marks.
Applicant also submitted an agreement between it and
one of its suppliers that includes the following
statements:
4. Bral hereby expressly acknowledges that
Hamilton and/or a related company is the owner of
certain trademarks including but not limited to
the marks consisting of (1) the red and black
colors for roller guides and roller guide parts;
and, (2) the product configurations for ELSCO’s
roller guides including but not limited to the
product configurations of Model A, Model B, Model
C and Model D roller guides.

5. Bral further agrees not to infringe upon any
of Hamilton’s or any related company’s trademarks
including but not limited to those identified in
paragraph 4.

6. Bral hereby agrees not to contest the validity
of Hamilton’s or any related company’s trademarks
including but not limited to those identified in
paragraph 4 in any proceeding including but not
limited to any proceeding brought by Hamilton or
any related company for enforcement of its
trademarks.

Serial Nos. 76507505 et al.
37
Bral Agreement.

As noted by the examining attorney:
The statement does not state that it does or does
not believe the configurations to identify the
source of ELSCO’s goods, but is merely
recognition of ELSCO’s claims of ownership for
the product configurations, and further agrees
not to infringe on any of the referenced marks.

Br. p. 15.

Finally, applicant submitted two consumer declarations
which include the following statements:
The configuration of ELSCO’S Models A, B, C and D
roller guides with and without wheels also
identify ELSCO as the source of the roller guide.
The configuration of each ELSCO’s Models A, B, C
and D roller guides is one of many feasible,
efficient and competitive designs.

Chiang and Ferguson Decls.

We do not find these two identical declarations to be
particularly persuasive. This conclusory statement is made
without particularity as to how consumers are exposed to
the alleged marks. In addition, the record does not reveal
the extent of applicant’s potential customer base and
whether these two declarations are sufficiently
representative of most potential purchasers.
Accordingly, based upon consideration of all the
evidence in the record, we find that applicant has failed
to establish that the configurations involved in the
Serial Nos. 76507505 et al.
38
applications before us have acquired distinctiveness within
the meaning of Section 2(f).
Decision: The refusals to register the configurations
claimed as marks in each application on the grounds that
the configurations are functional, or not inherently
distinctive and have not been shown to have acquired
distinctiveness are affirmed.