George Tash

Trademark Trial and Appeal Board

Apr 18, 2008

No. 76577156 (T.T.A.B. Apr. 18, 2008)

Mailed:
4/18/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re George Tash
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Serial No. 76577156
Serial No. 76577157
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Richard T. Lyon of Lyon & Harr, LLP for George Tash

Nelson Snyder, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Hohein, Holtzman, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

George Tash has filed applications to register the
following marks for “drain plungers for use with drains
such as found in toilets, sinks and tubs” in Class 21.
Each application contains a description of the mark as
indicated below.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76577156
Serial No. 76577157

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Serial No. 76577156:1

The mark consists of the three-dimensional
configuration of a plunger with a handle top
consisting of a quarter-circle cap that slopes
concavely down to a series of eight close packed
ridges above an asymmetrical octagon ringed with
two parallel lines, attached to a straight smooth
form ending with seven spiral ridge lines, and a
bellows element consisting of a two level sloped
design ending with eight uniformly-spaced,
continuous and parallel pleats, above a bulbous
seal ending with a flared ridge as shown in the
drawing accompanying the Application.

1 The application was filed on February 23, 2004, pursuant to
Section 1(a) of the Trademark Act, 15 USC §1051(a), asserting
that the mark has acquired distinctiveness under Section 2(f) of
the Act and claiming December 1, 1995 as a date of first use
anywhere and in commerce.
Serial No. 76577156
Serial No. 76577157

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Serial No. 76577157:2

The mark consists of the three-dimensional
configuration of a plunger with a handle top
consisting of a convex quarter-circle cap above a
wider annular form sloping concavely down to a
series of nine close packed ridges attached to
another smaller concave form then forming a
larger three-quarter circle form, flat side up,
above a straight smooth form ending with five
close packed ridges, and a bellows element,
consisting of eight uniformly-spaced, continuous
and parallel pleats above a seal consisting of an
annular form above two successively smaller
forms, the smallest ending with a slight annular
flare, as shown in the drawing accompanying the
Application.

The trademark examining attorney has refused
registration of both applications on the same two grounds.
In both cases the examining attorney has refused

2 The application was filed on February 23, 2004, pursuant to
Section 1(a) of the Trademark Act, 15 USC §1051(a), asserting
that the mark has acquired distinctiveness under Section 2(f) of
the Act and claiming September 1, 1987 as a date of first use
anywhere and in commerce.
Serial No. 76577156
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registration under Section 2(e)(5) of the Trademark Act of
1946, 15 U.S.C. §1052(e)(5), on the ground that applicant’s
proposed mark is functional and thus unregistrable; and on
the alternative ground that, if the mark is not functional,
the mark nonetheless consists of a nondistinctive
configuration of the goods that does not function as a mark
under Trademark Act Sections 1, 2, and 45, 15 U.S.C.
§§1051-1052 and 1127 and has not acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. §1052(f).
Since the applicant, the grounds for refusal, and the
issues are the same, and both cases contain common
questions of law and fact, the Board has consolidated the
appeals.
2(e)(5) Functionality
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 Products Co., Inc., 514
U.S. 159, 34 USPQ2d 1161, 1163-1164 (1995) (quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844, 214 USPQ 1, 4 n.10 (1982)). Functional matter cannot
receive trademark protection. At its core, the
functionality doctrine serves as a balance between
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trademark and patent law. As the Supreme Court explained,
in Qualitex Co. v. Jacobson Products Co., Inc., supra at
1163:
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).
The following four factors are used to determine the
functionality of a proposed mark:
(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 Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (CCPA 1982).
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The Supreme Court has decreed that it is not necessary
to consider all four Morton-Norwich factors, nor must they
all point toward functionality. TrafFix Devices, Inc. v.
Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006
(2001). Rather, evidence that the proposed mark is the
subject of a utility patent that discloses the utilitarian
advantages of the configuration at issue can be sufficient
by itself to support a functionality refusal. TrafFix, 532
U.S. at 33, 58 USPQ2d at 1007.
In the present case, both of applicant’s proposed
marks are subject to utility patents covering the
configuration applicant seeks to register. By applicant’s
admission, the product configuration in Serial No. 76577156
is claimed by applicant in U.S. Patent No. 7013499.
(Appl’s March 21, 2005 Amend. and Resp. to Office Action,
p.2). The claims of the issued patent are more broad-based
than the product configuration at issue here. But
nevertheless, this product configuration is subsumed in the
patent claims, which cover generally: “A toilet and sink
drain plunger comprising: a) a handle; b) a bellows
secured to said handle; and c) toilet and sink drain hole
sealing rings ....“ (Claim 9). See In re Weber-Stephen
Products Co., 3 USPQ2d 1659 (TTAB 1987) (where a utility
patent claims more than what is sought to be registered,
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this fact does not establish the non-functionality of the
product design, if the patent shows that the part claimed
as a trademark is an essential or integral part of the
invention and has utilitarian advantages.). Furthermore,
applicant’s description in the patent points specifically
to the utility and benefit of this configuration, stating:
Accordingly, there is a need for an improved type
of toilet and sink drain plunger which can seat
securely over or in the toilet or sink drain
hole, regardless of the curvature of the area
around the drain hole. Such plunger should be
simple, efficient, capable of being easily
fabricated and used and be inexpensive and
durable.

(“Background of the invention”).3
Similarly, the product configuration in Serial No.
76577157 is claimed by applicant in U.S. Patent No.
4745641. (Appl’s March 21, 2005 Amend. and Resp. to Office
Action, p. 2). Here, too, the claims subsume the product
configuration, describing “an elongated handle, to the
bottom of which is preferably releasably connected a
pleated bellows.” (“Summary of the Invention”). Although
the patent term has expired, it is no less relevant to the
determination of functionality. See In re Howard Leight

3 The “Summary of the Invention” for U.S. Patent No. 7013499
continues by asserting that “the present invention satisfies all
of the foregoing needs,” thus speaking to the utility of this
product configuration.
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Industries, LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) (“[W]e
find that applicant's expired utility patent, which
specifically discloses and claims the utilitarian
advantages of applicant's earplug configuration and which
clearly shows that the shape at issue ‘affects the . . .
quality of the device,’ is a sufficient basis in itself for
finding that the configuration is functional, given the
strong weight to be accorded such patent evidence under
TrafFix.”). Furthermore, applicant’s description in the
patent points specifically to the utility and benefit of
this configuration, repeatedly referring in the claims to
his “improved” device.
For both applications, this evidence weighs heavily
toward a finding of functionality, since not only is the
product configuration subject to a utility patent, but
applicant specifically touts the benefits considered under
the fourth Morton-Norwich factor. Applicant argues that
his ownership of a design patent allegedly covering the
76577156 configuration cancels out the functional effect of
his utility patent. We find that argument is not
convincing. Although the referenced design patent may
cover some of the same design aspects, the presence of the
utility patent is significantly more weighty in indicating
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the utilitarian aspects of the configuration. In re
Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997)
(existence of utility patent covering product configuration
significantly outweighs design patent), citing In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984)
(ownership of a design patent does not in itself establish
that a product feature is nonfunctional, and can be
outweighed by other evidence supporting the functionality
determination.).
Applicant’s advertisements of record add further
weight to our determination of functionality in accordance
with the second Morton-Norwich factor. See In re N.V.
Organon, 79 USPQ2d 1639, 1645 (TTAB 2006) (“applicant’s
promotional materials touting the utilitarian advantages of
the orange flavor, is particularly significant in assessing
functionality in this case.”). Applicant’s advertisements
for the 76577156 configuration tout utilitarian benefits
such as "provides more results with less effort"; “delivers
more plunge power per push”; “splashproof”; and “clears
clogged toilets faster and better.” Similarly,
advertisements for the 76577157 configuration tout benefits
such as “the first major technological improvement in
nearly 100 years”; and “[g]reatest plunging capacity on the
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market today.” Clearly, these advertisements are intended
to persuade consumers of the alleged benefits of the
utilitarian aspects of applicant’s product configurations.
Applicant argues that his advertisements merely
indicate that all bellowed designs are better, not just
applicant’s. However, the advertisements are clearly
intended to indicate the superiority of applicant’s designs
over those of his competitors. Furthermore, in order for a
mark to be held functional, the evidence need not establish
that the configuration at issue is the very best design for
the particular product or product packaging. Rather, a
finding of functionality is proper where the evidence
indicates that the configuration at issue provides specific
utilitarian advantages that make it one of a few superior
designs available. See, e.g., In re Bose Corp., 772 F.2d
866, 227 USPQ 1 (Fed. Cir. 1985).
Finally, applicant argues that each of his marks
“consists of an arbitrary combination of functional parts.”
(Appl’s Brief at 7). Where the evidence shows that the
overall design is functional however, the inclusion of a
few arbitrary or otherwise nonfunctional features in the
design will not change the result. Textron, Inc. v. U.S.
Int’l Trade Comm’n, 753 F.2d 1019, 224 USPQ 625, 628-629
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(Fed. Cir. 1985); In re Vico Products Mfg. Co., Inc., 229
USPQ 364, 368 (TTAB 1985).
In view of the foregoing, we find that the designs are
functional and that applicant's marks are therefore
unregistrable. Nevertheless, for purposes of a complete
record, we will decide the issue of whether, assuming the
designs are not functional, the designs have acquired
distinctiveness and hence function as marks.
2(f) Acquired Distinctiveness
A product design cannot be inherently distinctive.
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
215, 54 USPQ2d 1065, 1069 (2000). Accordingly, in both
applications, applicant provided evidence intended to show
acquired distinctiveness based on the following: an
assertion of substantially exclusive and continuous use for
a period of over 5 years prior to registration;
advertisements that reference applicant's “exclusive”
designs; and third-party declarations attesting to the
uniqueness of the configurations. However, this evidence
is insufficient to persuade us that applicant’s marks have
acquired distinctiveness.
The advertisements, as observed previously, simply
depict applicant's plunger designs, and serve to persuade
consumers of the allegedly superior nature of the designs.
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The advertisements promote the functional benefits of the
products; they do not promote the product designs as a
mark. Furthermore, applicant has not provided information
regarding the amount or extent of advertising that might
support a finding of acquired distinctiveness, except to
say generally that the products have been advertised over a
period of years.
The declarations, meanwhile, are not from the ultimate
consumers of applicant’s products. Rather, they are from
industry insiders with an apparent interest in applicant’s
sales, either as an employee, a sales distributor, a
retailer, a plumbing instructor, or the applicant himself.
Thus the declarations are of limited probative value.
Simply stated, the advertisements and declarations
submitted by applicant serve only to emphasize the
allegedly desirable and functional features of the
configurations. They do not, however, provide sufficient
evidence that the product configurations are viewed as
source-identifying. Applicant has therefore not shown
sufficient proof of acquired distinctiveness.
Decision: The refusals to register in both cases are
affirmed.