E.R. Shaw, Inc.

Trademark Trial and Appeal Board

Sep 29, 2015

No. 85797528 (T.T.A.B. Sep. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: December 16, 2014 Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re E.R. Shaw, Inc.
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Serial No. 85797528
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Paul M. Reznick, Cecilia R. Dickson and Steven M. Johnston
of The Webb Law Firm, for E.R. Shaw, Inc.

Frank J. Lattuca, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Zervas, Wellington, and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
E.R. Shaw, Inc. (“Applicant”) has applied to register the following configuration
mark on the Principal Register for “rifle barrels; rifles” in International Class 13:1

1 Application Serial No. 85797528 filed on December 7, 2012.
Serial No. 85797528
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The mark (hereinafter referred to as the “rifle barrel configuration mark”) is
described in the application as follows:
The mark consists of a three-dimensional configuration of external helical
fluting around a gun barrel. The dotted lines featuring the rest of the gun
are to show position of the configuration and are not claimed as part of
the mark.

The application is based on an allegation of first use anywhere and in commerce
on December 31, 1999, and contains a claim that the mark has acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
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 the rifle barrel
configuration mark is a functional design of the identified goods, namely, rifle
barrels.
In addition, the Examining Attorney has refused registration on the basis that
Applicant failed to respond fully to a request for information pursuant to
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b).
Applicant filed a request for reconsideration and then appealed. The Examining
Attorney denied the request for reconsideration. Both Applicant and the Examining
Attorney filed briefs, including a reply brief from Applicant. In addition, Applicant
and the Examining Attorney presented arguments at an oral hearing held before
this panel on December 16, 2014.
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Background – The Goods and the Proposed Mark
Applicant seeks to register its proposed rifle barrel configuration mark in
connection with rifles and rifle barrels. A “rifle” is described as:2
… a small firearm discharged from a shoulder position and having a helically
grooved, or rifled, bore, which imparts an axial spin to a bullet as it travels
through the barrel. This gyroscopic action keeps the bullet’s axis in the line of
flight, reducing air resistance and allowing the use of longer projectiles with
round or ogive (arch) points. The number of turns in the rifling throughout the
barrel depends on the type of rifle and bullet it will fire.

The described “helically grooved” feature in this definition is on the inside of the
rifle barrel or the “bore.” This may be distinguished from “fluting” where material is
removed from the outside of the gun barrel, “usually [by] creating grooves,” and
“[t]he main purpose [of which] … is to reduce weight, and to a lesser extent increase
rigidity for a given total weight or increase surface area to make the barrels less
susceptible for overheating for a given total weight.”3 The advantages of a fluted
rifle barrel are corroborated by Applicant’s own website describing its use of helical
fluting:4
[T]he unique appearance of our Helical Fluting provides the discriminating
shooter with a barrel that not only looks great but is up to thirty percent more
rigid than a similar barrel with Straight Fluting. Helical fluting provides
additional surface area for improved cooling, improved barrel harmonics, and
helps counteract rotational torque, giving the shooter greater shot consistency.

2 “Rifle.” Encyclopedia Americana. Grolier Online http://ea.grolier.com/article?id=0333140-
00 (accessed September 18, 2015). The Encyclopedia Americana is published by Scholastic
Library Publishing.
3 From www.wikipedia.org, printouts attached to Office Action dated March 28, 2013.
4 From www.ershawbarrels.com, printouts attached to Office Action dated March 28, 2013.
The advantages are further acknowledged by Applicant’s principal, Carl H. Behling, in his
declaration submitted (“Exhibit A”) with Applicant’s response filed July 29, 2013.
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As the drawing of the mark in the application depicts, the proposed rifle barrel
configuration mark involves solely the external features of a helically fluted rifle
barrel and does not include, or depict, any internal characteristics such as helical
grooves which, as described above, are used for rifling bullets through the bore of
the barrel when fired. Thus, for purposes of our functionality refusal analysis, we
focus on the features claimed and shown in the drawing.
Functionality
Functional matter cannot receive trademark protection. E.g., TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001 (2001). A product
feature is functional, and cannot serve as a trademark, if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163-1164 (1995) (quoting
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). At
its core, the functionality doctrine serves as a balance between trademark and
patent law. As the Supreme Court explained in Qualitex:
The functionality doctrine prevents trademark law, which seeks to
promote competition by protecting a firm’s reputation, from instead
inhibiting legitimate competition by allowing a producer to control a
useful product feature. It is the province of patent law, not trademark
law, to encourage invention by granting inventors a monopoly over new
product designs or functions for a limited time, 35 U.S.C. §§ 154, 173,
after which competitors are free to use the innovation. If a product’s
functional features could be used as trademarks, however, a monopoly
over such features could be obtained without regard to whether they
qualify as patents and could be extended forever (because trademarks
may be renewed in perpetuity).

514 U.S. at 164-165, 34 USPQ2d at 1163.

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In making our determination as to whether a proposed configuration mark is
functional, the following four factors are considered:
(1) the existence of a utility patent that discloses the utilitarian
advantages of the design sought to be registered;

(2) advertising by the applicant that touts the utilitarian advantages
of the design;

(3) facts pertaining to the availability of alternative designs; and

(4) facts pertaining to whether the design results from a
comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).
See also, In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372 (Fed.
Cir. 2012); and Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422,
1426 (Fed. Cir. 2002). Upon consideration of these factors, our determination of
functionality is ultimately a question of fact, and depends on the totality of the
evidence presented in each particular case. Valu Eng’g, 61 USPQ2d at 1424; In re
Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997); see also, Trademark Manual
of Examining Procedure (“TMEP”) §1202.02(a)(v)(July 2015).
1. The Existence of Patents
With respect to the first factor, Applicant owns two relevant patents, a utility
patent and a design patent.
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A. Applicant’s Utility Patent
As to the utility patent, U.S. Pat. No. 6,324,780 (“the ’780 patent), it is for a
“Fluted Gun Barrel” and described as:5
[a] gun barrel having a generally cylindrically-shaped barrel with a first end, a
second end, an inner surface and an outer surface. The inner surface defines a
plurality of internal spiral grooves and the outer surface defines a plurality of
external spiral grooves.

The ’780 patent depicts at Fig. 1 the outside of the barrel in the following manner:

While the above illustration is similar to the applied-for rifle barrel
configuration mark, this illustration and the patent itself clearly involve the
internal part, or bore, of the gun barrel, in combination with the helical external
fluting. Indeed, other drawings from the ’780 patent (Figs. 4 and 5) show cross-
sections of the exterior and interior of the barrel:

5 U.S. Patent No. 6,324,780 issued on December 4, 2001, from an application filed on July 9,
1999, listing Carl Behling as the inventor. Copies of this patent were attached to
Applicant’s response filed on July 29, 2013, and the Examining Attorney’s second Office
Action issued on September 9, 2013.
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The “Summary of the Invention” section of the ’780 patent describes the
relationship between the barrel’s exterior and interior spiral grooves, equal in
number but with different depths, and states that this relationship helps define the
invention. Some of the stated objectives of the internal and external grooves are as
follows:
In an effort to have a more accurate shooting rifle, yet a lighter rifle, straight
flutes or grooves have been formed on the outer surface of the gun barrel,
while rifling is present on the surface of the bore. Although the straight flutes
or grooves provide some improvement, the straight flutes or grooves do not
remove a substantial amount of the excess weight from the gun barrel.

Therefore, it is an object of the present invention to provide a strong,
lightweight, and accurate gun barrel.

[Column 1, lines 21-30]; and, referencing the Fig. 1 drawing (see above):

It is believed that the spiral or helical grooves 28 and the spiral flutes or
grooves 30 as described previously herein, will result in a gun barrel 10 that
is lighter than a gun barrel not having flutes 30, while emulating the
stiffness and the harmonic response of a heavier gun barrel. Further, the
spiral flutes 30 permit the gun barrel 10 to cool quicker than gun barrels
with straight flutes or no flutes. For example, if the gun barrel 10 has spiral
flutes that are twenty percent longer than straight flutes for the same length
of a gun barrel then it is believed that the spiral fluted gun barrel will cool
twenty percent faster than the straight fluted gun barrel. Further, it is
believed that the stiffness characteristics will improve with the spiral fluted
gun barrel over a straight fluted gun barrel. Also, although the present
invention is preferably used with shotguns and rifles, it may also be used
with other guns such as handguns.

[Column 3, lines 36-51].
These features, both the internal and external grooves (or fluting), are claimed
in each claim of the ’780 patent. For example, Claim 1 involves a gun barrel
comprising:
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…an inner surface defining a gun barrel bore and a plurality of internal
spiral grooves and said outer surface defining a plurality of external spiral
grooves, wherein the internal spiral grooves are not in fluid communication
with the external spiral grooves, and wherein a cross section taken through
the intermediate portion, which is transverse to the longitudinal axis,
includes an external spiral groove and an internal spiral groove radially
spaced from the longitudinal axis, and wherein the plurality of internal
grooves and the plurality of external grooves when viewed from said first end
progress in the same direction of rotation.

[Column 4, lines 16-27] (italics added). Dependent Claims 2 and 3 refer to the barrel
“claimed in Claim 1.” Dependent Claims 4-6 claim a gun with a barrel having the
same features described in Claim 1.
Independent Claim 7 describes a gun barrel comprising:
an open-ended hollow body having a first end, a second end, an inner surface and
an outer surface, said inner surface defining a gun barrel bore and a number of
internal spiral grooves and said outer surface defining a number of external
spiral grooves, wherein the number of the internal spiral grooves equals the
number of the external spiral grooves.

[Column 4, lines 61-67] (italics added). Claims 8-13 are dependent claims which
directly or indirectly reference and rely upon the “gun barrel claimed in claim 7.”
Claims 14-20 also reference a gun with the same type of barrel as that described in
Claim 7.
It is readily apparent from the ’780 patent that the external spiral grooves on
Applicant’s rifle barrels, as depicted in the patent’s drawings and the applied-for
rifle barrel configuration, are an integral part of the invention. The patent’s self-
described objectives of creating a lighter, stiffer and heat-diffusing gun barrel
(versus a similar gun barrel without the benefit of the patented technology) are
accomplished by virtue of these spiral grooves. More specifically, the external spiral
Serial No. 85797528
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grooves allow for a lighter gun barrel “while emulating the stiffness and the
harmonic response of a heavier gun barrel”; the external “spiral flutes permit the
gun barrel to cool quicker than gun barrels with straight flutes or no flutes”; and,
“the stiffness characteristics will improve with the spiral fluted gun barrel over a
straight fluted gun barrel.” In other words, the stated benefits of the technology
contained in the invention rely on the existence of the spiral external grooves, or
helical fluting, of the gun barrel shown in the applied-for rifle barrel configuration
mark.
Applicant argues that the ’780 patent’s description of the external grooves, or
fluting, cannot be “carved” from the internal grooves and that the patent “does not
disclose any functional benefits of external fluting on its own.” Brief, p. 2. While
Applicant is correct in that the patent’s description of the external fluting is nearly
always described in conjunction with the barrel’s internal grooves, and often
described as a “set” of grooves, this does not mean that the applied-for mark is not
functional. As noted above, and as Applicant does not dispute, the external grooves
are clearly crucial to the patented invention, and are an essential element of each
claim. Although external helical fluting may be but one element of the patented
invention, the grant of a trademark registration – which would be prima facie
evidence of the exclusive right to use the feature on rifle barrels or rifles – would
prevent others from practicing the invention disclosed in Applicant’s patent, even
after its expiration. Therefore, Applicant’s attempt to acquire trademark protection
for such an integral part of the invention is tantamount to seeking an indefinite and
Serial No. 85797528
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exclusive right in the patented technology. As indicated, Qualitex clearly prohibits
this.
B. Applicant’s Design Patent
Applicant also relies on the second patent, Design Patent D426,611,6 (“the ’611
patent”) and argues that the existence of this design patent “presumptively
indicates that the [applied-for mark] is not de jure functional,” citing In re Becton,
Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372. The ’611 patent covers a
claim of an “ornamental design for a gun barrel” as shown:

It is described in the ’611 patent as “the embodiment of a gun barrel showing my
new design, with a gun barrel borehole and gun stock in broken lines and which do
not form a part of the new design.”
According to Applicant, the “subject of the design patent and the instant
[applied-for mark] are identical.” Brief, p. 9. Applicant, quoting the Court in Becton,
Dickinson, contends that “[the] law recognizes that the existence of a design patent
for the very design for which trademark protection is sought ‘presumptively …
indicates that the design is not de jure functional.’” In re Becton, Dickinson and Co.,
102 USPQ2d at 1377 (citing In re Morton-Norwich, 213 USPQ 17 at n. 3).

6 Issued on June 13, 2000, for a term of 14 years, from an application filed on June 4, 1999,
listing Carl Behling, the listed inventor of the ’780 patent, as inventor. A copy of this patent
was attached to Applicant’s response filed on July 29, 2013.
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Applicant is correct to the extent that a design patent covering the identical
design for which an applicant seeks trademark protection has probative value in a
functionality refusal analysis; however, the mere existence of a design patent is not
dispositive and may be outweighed by other evidence. In re R.M. Smith, Inc., 734
F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984) (existence of expired design patent
covering part of a proposed pistol-grip water nozzle configuration mark was
insufficient in light of the evidence showing functionality).
Indeed, when both a utility and a design patent are present and addressing the
same product component, the Board must thoroughly review the patents, especially
the claims and any discussion of the utilitarian advantages of the invention set
forth in the utility patent, in conjunction with the applied-for configuration mark.
In the case of In re Caterpillar, Inc., the Board was presented with this very
situation, and stated that:7
[t]he fact that a configuration design is the subject of a design patent, as
in this case, does not, without more, establish that the design is non-
utilitarian and serves as a trademark. Here, this evidence is clearly
outweighed by the other evidence of record [including a utility patent]
showing the great degree of utility reflected in applicant’s configuration
design.

43 USPQ2d at 1339. The Board went on in Caterpillar to note that the utility patent
was “helpful in shedding light on the utilitarian aspects of applicant’s design,” and

7 The goods involved in that appeal were “tractors for earth moving, earth conditioning and
material handling; and undercarriage for such tractors” and the mark was described as “the
configuration of a continuous crawler track with an elevated drive sprocket and idler
wheels therefor.”
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“strong evidence of the de jure functionality of the configuration in which applicant
alleges trademark significance.” Id. at 1337.
We have considered the design patent here, but ultimately find, as we did in
Caterpillar, that its probative value is outweighed by other evidence, including a
utility patent describing the same design’s utilitarian features. In other words, and
specific to this decision, although the spiral lines on the gun barrel are described as
“ornamental” in the design patent and may be aesthetically pleasing, the question
remains whether, on balance, this design is merely incidental to the overall purpose
of the article or whether it “adopts a significant portion of the invention disclosed in
the [utility] patent.” In re Van Valkenburgh, 97 USPQ2d 1757, 1760-61 (TTAB
2011). In this case, Applicant’s proposed configuration mark is a “significant
portion” of the invention described in the utility patent. Accordingly, this factor
supports a finding of functionality.
2. Advertisements Touting the Utilitarian Advantages of the Design
With respect to the second Morton-Norwich factor, as noted earlier, Applicant’s
website clearly touts the utilitarian advantages of its rifle barrel configuration
design (“Helical fluting provides additional surface area for improved cooling,
improved barrel harmonics, and helps counter act rotational torque, giving the
shooter greater shot consistency.”). Applicant prefaces these comments by
acknowledging its ownership of and reliance on the patents discussed above
(“Shaw’s Patented Helical Fluting (U.S. Patents DES. 426,611 and USG.
Serial No. 85797528
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324,780B1)”).8 Applicant’s claims are more than mere puffery; as highlighted in the
Background section of this decision, Applicant specifically claims on its website that
its “patented helical fluting” provides an improvement of “up to thirty percent
rigidity versus straight fluting.” Thus, while Applicant mentions a “unique
appearance” to the fluting in the same passage on its website, it also clearly claims
the same specific utilitarian advantages identified in the patent, i.e., more rigid,
lighter, improved cooling, etc.
In addition to Applicant’s website, the appeal record includes printouts from
various other websites consisting of advertisements, descriptions or articles
involving fluted gun barrels. These materials, some of which discuss the
effectiveness of fluting, largely support the proposition that helical or spiral fluting
is a superior attribute to non-fluting or straight fluting. For example:
Spiral fluting removes more surface area than traditional fluting which allows
[the barrel] to not only dissipate the heat more efficiently but also lightens the
weight of the upper assembly. Spiral fluting is the length of the barrel…
[from “Marks Armory” website];9
and
Deeper flutes are far more effective, and the deep, spiral flutes offered by
[Applicant] provide more flute-length per inch of barrel…and the barrel cools
down pretty quickly, thanks both to the fluting and DBC inside the bore.10

Although the views expressed in these articles and advertisements are not from
Applicant itself, the statements are made by and for those in the gun industry about

8 On Applicant’s web site printout submitted with Office Action dated March 28, 2013.
9 Printout from www.marksarmory.com attached to Office Action issued on September 9,
2013.
10 Printout from article labeled www.gunsmagazine.com attached to Office Action issued on
September 9, 2013.
Serial No. 85797528
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Applicant’s guns. In this regard, they buttress the assertions of Applicant, in both
its utility patent and website, that there are utilitarian advantages to a helical or
spiral fluting design on the outside of the rifle barrel. Accordingly, we find that this
factor, too, supports a finding of functionality. Existence of Alternative Designs
As already discussed, a rifle barrel need not be fluted at all and the record
includes examples of non-helical fluting designs. Applicant also relies on the
declaration of its principal, Mr. Carl Behling, who avers to the existence of various
fluting styles used by competitors.
The existence of alternative designs available to competitors is certainly relevant
to our functionality analysis. Nevertheless, the availability of alternative designs
does not detract from the functional character of the product design where the
subject matter sought to be registered is “the preferred or a superior design.” In re
Bose Corp., 772 F.2d 866, 227 USPQ 1, 5 (Fed. Cir. 1985). The question, thus, is not
whether the alternative designs perform the same basic function, but whether these
designs work “equally well.” Valu Eng’g, 61 USPQ2d at 1427 (quoting, J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition, §7:75, 7-180-1 (4th ed.
2001)).
Here, there is sufficient evidence for us to conclude that, should competitors
desire to manufacture a fluted barrel, Applicant’s design would be the more
desirable option because a helical or spiral design has utilitarian advantages over
non-helical fluting. The ability to create longer grooves on the same length of gun
barrel provides more surface area and thus more efficient heat dissipation, and
Serial No. 85797528
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reduces more weight while retaining rigidity. Straight flutes, pocked indentations or
other grooves do not reduce as much weight from a similar size gun barrel and
straight fluting is not as strong, according to the ’780 patent. Thus, helical fluting is
clearly superior to the other fluting designs in the record, and this factor also
supports a finding of functionality.
3. Rifle Barrel Configuration Mark and the Method of Manufacture

There is no evidence showing that Applicant’s configuration mark allows for a
simplified method of manufacture. Applicant claims that, to the contrary, its rifle
barrel configuration mark “requires the use of sophisticated computer numeric
controlled (CNC) milling machines” and thus is “neither simple nor inexpensive
relative to methods used to manufacture other external fluting designs.” Brief, p.
12. In support, Applicant submitted the declaration of its principal, Mr. Behling,
who averred that “because of the differences in the equipment needed… externally
helically fluted gun barrels may cost 100% more to produce than gun barrels having
straight fluting.”11 But when viewed together with applicant’s advertising claims of
the significant utilitarian advantages of the helically-fluted design, the fact that
other designs are simpler and cheaper to make does not weigh very much in
applicant’s favor. See, e.g., In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009)
(“[E]ven at a higher manufacturing cost, applicant would have a competitive
advantage for what is essentially ... a superior quality wheel.”); In re Pingel Enter.
Inc., 46 USPQ2d 1811, 1821 (TTAB 1998) (“That applicant, despite the inherent

11 “Second Declaration” of Carl H. Behling, attached as “Exhibit A” to Applicant’s response
filed on July 29, 2013.
Serial No. 85797528
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advantages of a design which is simple and less expensive to manufacture than
other petcocks, has, however, deliberately chosen a more complex and expensive
manner in which to manufacture its product does not mean that the configuration
thereof is not de jure functional.”); see also In re Am. Nat’l Can Co., 41 USPQ2d
1841, 1844-45 (TTAB 1997).
4. Functionality Conclusion
For the aforementioned reasons and based on all of the record evidence, we find
Applicant’s proposed rifle barrel configuration mark is principally dictated by
utilitarian concerns. With respect to the Morton-Norwich factors in particular,
Applicant owns a utility patent demonstrating and claiming the utilitarian
purposes of its fluted design; Applicant extols these same virtues in its
advertisements; and Applicant’s design is considered superior to other barrel fluting
designs. With these findings and viewing the record in its entirety, we conclude the
proposed rifle barrel configuration mark comprises matter that, as a whole, “is
essential to the use or purpose of the article or … affects the cost or quality of the
article,” as contemplated by Inwood, and thus is functional and not registrable on
that basis.
Refusal on Ground of Failure to Comply with Requirement for Information
The Office may require an applicant to furnish information that “may be
reasonably necessary” for proper examination of the application. Trademark Rule
2.61(b). Failure to comply with such a request is a ground for refusal of registration.
In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013). See also, In re
Serial No. 85797528
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Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI Partnership
LLP, 67 USPQ2d 1699, 1701(TTAB 2003); and TMEP § 814.
In the first Office action, the Examining Attorney requested information
regarding:
• The existence of a utility patent that discloses the utilitarian
advantages of the product or packaging design sought to be registered;

• Advertising by the applicant that touts the utilitarian advantages of
the design;

• Facts pertaining to the availability of alternative designs; and

• Facts pertaining to whether the design results from a comparatively
simple or inexpensive method of manufacture.

In response to this request, Applicant submitted copies of its two patents12 and
the declaration of Applicant’s principal, Mr. Behling, who averred to the existence of
“at least four other external fluting patterns” and that Applicant’s costs of
manufacturing its helical fluted barrels are “significantly more expensive and
complex than a gun barrel having no fluting or straight fluting.”13
In the second Office action, making the requirement “final,” the Examining
Attorney stated that Applicant addressed “some of, but not all” of the informational
issues.14 Specifically, the Examining Attorney contended that Applicant did not
provide:

12 Attached as “Exhibit D” to its response filed on July 29, 2013.
13 Behling declaration attached as “Exhibit A” to its response filed on July 29, 2013. It is
noted that Mr. Behling explained in further detail the fluting design as well as the reasons
for its fluting design being more expensive.
14 Office action issued on September 9, 2013.
Serial No. 85797528
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…any information regarding additional advertising for the product, particularly
any materials specifically related to the design features embodied in the applied
for mark. The applicant did not include any such materials, nor did applicant
explicitly state that there were no materials to be offered.

He went on to note that Applicant mentioned in its response that it has a large
advertising budget devoted to these goods and “so there is a presumption, unless
applicant states so otherwise, that advertisements regarding the spiral fluting
design exist to be made available.”
In its Request for Reconsideration, Applicant noted the Examining Attorney’s
repeated request for additional advertising and responded that “[e]lsewhere in this
electronic reply, Applicant has provided the Examining Attorney with a selection of
additional images of advertising. Accordingly, this request has been adequately
addressed.” With the request for reconsideration, Applicant attached copies of
articles or printouts from gun-oriented magazines that reference Applicant’s goods.
Applicant did not state that no advertising materials exist and, of the materials
supplied with the reconsideration request, the closest to an advertisement is what
appears in a publication (“Predator Xtreme” August 2005) listing “Shooting
Accessories.” Applicant’s name is listed amongst other companies along with a
general description of the companies’ products or services.
The Examining Attorney denied the request for reconsideration, stating that
Applicant “has supplied additional advertising,” but asserted that Applicant still
had not complied with the information request. He contended that Applicant had
“provided no assurances that this is the extent of the advertising, or that it would
[be] representative of … advertising extolling the virtues of the spiral fluting.”
Serial No. 85797528
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In its appeal brief, Applicant states that materials already submitted comprise
“a representative sampling of readily-available advertising sufficient to
demonstrate its use of the trade dress in commerce.”15 Brief, p. 13. Nevertheless,
the Examining Attorney rejected this explanation once again, noting that “there is a
large advertising budget devoted to these goods, and so there is a presumption,
unless applicant states so otherwise, that advertisements regarding the spiral
fluting design exist to be made available.” Brief, p. 15.16
Finally, in its reply brief, Applicant states that “[a]fter a good faith effort to
locate additional written advertising in response to the Examining Attorney’s
requests, Applicant has confirmed that there are no additional, non-cumulative
advertising materials in its possession that would further assist the examination of
the pending application.” Reply brief, p. 9. Applicant also reiterates that “a large
advertising budget does not give rise to any sort of presumption that Applicant’s
advertising dollars are spent on print advertisements.” Id.

15 Applicant’s response appears to be more relevant to a requirement for an acceptable
specimen than a request for information; the request for advertising materials is directly
relevant to the second Morton-Norwich factor with respect to a functionality refusal.
16 The Examining Attorney is referencing Applicant’s assertions (made in its response dated
July 29, 2013) that:
[Applicant] has spent substantial sums in advertising its applied-for mark …
Specifically, Applicant has annual turnover in excess of two million dollars per
year. … This position is further substantiated by Applicant’s efforts to advertise,
among other products, the applied-for mark, including operation of an interactive
website, direct mailings, trade show appearances, and occasional advertisements in
print periodicals. The annual costs to Applicant for these efforts are approximately
$95,000.” (emphasis in original).

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Based on Applicant’s aforementioned statements in its main and reply briefs, we
find that it has adequately complied with the Examining Attorney’s requirement.
We would be remiss, however, if we did not point out that the better practice would
have been for Applicant to have offered these statements earlier in its responses to
the Office actions. Applicant’s delay resulted in this issue having to be resolved on
appeal.
Decision: We reverse the refusal premised on Applicant’s failure to comply with
the requirement for information under 37 C.F.R. § 2.61(b); however, we affirm the
refusal to register Applicant’s proposed mark on the ground that it is functional.