Ivanko Barbell Co.

Trademark Trial and Appeal Board

Jun 16, 2004

No. 78134755 (T.T.A.B. Jun. 16, 2004)

Mailed:
16 June 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ivanko Barbell Company
________
Serial No. 78134755
_______
Edward A. Sokolski, Esq. for Ivanko Barbell Company.
Cynthia Sloan, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Ivanko Barbell Company (applicant) filed an
application to register the mark shown below on the
Principal Register for “barbell plate with seven holes” in
International Class 28.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 78134755
2
The application (Serial No. 78134755) was filed on
June 11, 2002, and it claimed a date of first use anywhere
and a date of first use in commerce of February 1, 1999.
The application is described as “a three dimensional
configuration of a barbell having a raised border at its
circumference and seven equal size round holes that
surround a central round hole having a raised border at its
circumference.”1
The examining attorney ultimately refused registration
on the grounds that the design is functional under Section
2(e)(5) of the Trademark Act (15 U.S.C. § 1052(e)(5)) and,
that, if the mark is not functional, it is “a configuration
of the goods that has not acquired distinctiveness as a
source indicator for the goods” under Section 2(f) of the
Trademark Act (15 U.S.C. § 1052(f)). Examining Attorney’s
Brief at 1. Applicant argues that the examining attorney
has not demonstrated that the mark is functional and argues
that it “has submitted considerable evidence showing many
1 See Response dated January 29, 2003 at 1.
Ser. No. 78134755
3
alternate designs which are equally able to perform the
utilitarian task of the design.” Reply Brief at 3. In
addition, applicant argues that it has shown that its
design has acquired distinctiveness.
Functionality
We begin by addressing the central issue in this case,
which is whether applicant’s mark is functional under the
Trademark Act. The Act has been amended expressly to
provide that an application may be refused registration if
it “comprises any matter that, as a whole, is functional.”
15 U.S.C. § 1052(2)(5). The Supreme Court has addressed
the issue of functionality in several cases both before and
after this statutory change.
Discussing trademarks, we have said “`[i]n general
terms, 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., 514 U.S. 159, 165 (1995) (quoting
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 850, n. 10 (1982)). Expanding upon the
meaning of this phrase, we have observed that a
functional feature is one the “exclusive use of
[which] would put competitors at a significant non-
reputation-related disadvantage.” 514 U.S., at 165.
TrafFix Devices Inc. v. Marketing Displays Inc., 523
U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001).
The Federal Circuit looks at four factors when it
considers the issue of functionality:
Ser. No. 78134755
4
(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.
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268,
61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16
(CCPA 1982).
We will analyze the issue of functionality using the
four factors set out in Valu Engineering.
(1) Existence of a Utility Patent
Applicant’s literature refers to its “new rubber
plates [that] feature our exclusive E-Z lift design of
which our patent has recently been allowed.” However,
applicant has submitted a copy of its Design Patent No.
424,140, which includes a design of barbell plate with
seven holes. A design patent is not evidence of the
utilitarian advantages of applicant’s design.2 The
2 The “fact that a device is or was the subject of a design
patent does not, without more, bestow upon said device the aura
of distinctiveness or recognition as a trademark.” In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984),
quoting, In re Honeywell Inc., 187 USPQ 576, 578 (TTAB 1975).
Ser. No. 78134755
5
examining attorney also refers to a patent (No. 6,436,015)
owned by a third party as evidence of the utilitarian
advantages of applicant’s design.3 The examining attorney
relies on this patent as describing a weight plate “having
an ‘integral handle element for grasping by a single hand
to effect transport of the weight.’” Examining Attorney’s
Brief at 4. While the patent does not teach applicant’s
specific design, it does provide evidence that is relevant
to barbell plates, which is discussed subsequently.
(2) Advertising Materials Disclosing Utilitarian
Advantages
The examining attorney argues that applicant’s
advertising “indicates that the barbell design possesses
utilitarian advantages.” Examining Attorney Brief at 5.
“If a seller advertises the utilitarian advantages of a
particular feature, this constitutes strong evidence of
functionality.” 1 McCarthy on Trademarks and Unfair
Competition § 7:74 (4th ed. 2004). Applicant’s promotional
literature expressly and frequently extols the utilitarian
advantages of its design.
Ivanko® introduces [its] new E-Z Lift Plates. These
new plates feature a traditional, round shape, multi
opening, E-Z lift design. Our plates incorporate (7)
3 We note that although “the existence of a utility patent could
weigh against applicant in terms of showing that the
configuration is de jure functional, the absence of such a patent
simply has no weight in our analysis.” In re Gibson Guitar
Corp., 61 USPQ2d 1948, 1950 n.3 (TTAB 2002).
Ser. No. 78134755
6
openings, not just (2) or (3). These extra openings
dramatically improve handling off the floor and on and
off machines or bars.
“Ivanko E-Z Lift Plates are Hot!” ad
All the openings have smooth radius and rounded edges
for maximum comfort while grapping the plates.
Because they are round, there are no sharp “points” or
“edges” to cut floors and damage equipment as with
other “anti-roll” designs.
Id.
IVANKO’s rounded, contour shape of the plate conforms
better to the hand, making it easier to carry. We
round all edges to make it more comfortable to hold
onto.
Id.
As with all Ivanko E-Z Lift Plates, our openings have
smooth radius and rounded edges for maximum comfort
while grabbing the plates.
“Ivanko’s E-Z lift plates are Cool!” ad
We designed this plate with more grip holes to make it
easier to pick up, and therefore safer. And we kept
it round for very goods reasons that have stood the
test of time: ease of use and exercise safety.
Ivanko “The Evolution of Better Ideas” ad
As with all Ivanko E-Z Lift Plates, the openings have
smooth radius and rounded edges for maximum comfort
while grapping the plates.
Ivanko 2000
Ivanko has Rubber E-Z Lift Plates that feature a
seven-hole design for easier handling.
Yahoo! Shopping
Applicant argues that these ads “do not specifically
state that the seven [hole] designs per se are needed to
enable lifting and carrying of the plate.” Reply Brief at
2. In order to be functional, it is not necessary to prove
that the design for which applicant seeks registration “is
Ser. No. 78134755
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necessary to enable lifting and carrying of the plate.”
Obviously, weight plates were lifted and carried prior to
applicant’s design. We point out that the Supreme Court
rejected the argument that “a necessary test for
functionality is whether the particular product
configuration is a competitive necessity.” TrafFix, 58
USPQ2d at 1006 (internal quotation marks omitted). See
also Valu Engineering, 61 USPQ2d at 1427 (“We did not in
the past under the third factor require that the opposing
party establish that there was a ‘competitive necessity’
for the product feature”).
Here, applicant’s literature and other materials make
it clear that applicant touts the utilitarian advantages of
its seven-hole design. “Our plates incorporate (7)
openings, not just (2) or (3). These extra openings
dramatically improve handling off the floor and on and off
machines or bars.” In addition to improving handling,
applicant has also explained that “[w]e designed this plate
with more grip holes to make it easier to pick up, and
therefore safer.” In other words, the seven-hole design
according to applicant makes it easier to handle the plates
and this ease in handling makes it safer. Reinforcing
applicant’s advertising, the Yahoo Shopping article again
Ser. No. 78134755
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reports that applicant’s weight plates feature “a seven-
hole design for easier handling.”
Regarding the round holes and the rounded, contour
shape of its plate, applicant’s advertising again makes it
clear that they serve an important utilitarian purpose:
All the openings have smooth radius and rounded edges
for maximum comfort while grapping the plates.
Because they are round, there are no sharp “points” or
“edges” to cut floors and damage equipment as with
other “anti-roll” designs.
[O]ur openings have smooth radius and rounded edges
for maximum comfort while grabbing the plates.
And we kept it round for very goods reasons that have
stood the test of time: ease of use and exercise
safety.
IVANKO’s rounded, contour shape of the plate conforms
better to the hand, making it easier to carry. We
round all edges to make it more comfortable to hold
onto.
As with all Ivanko E-Z Lift Plates, our openings have
smooth radius and rounded edges for maximum comfort
while grabbing the plates.
Applicant’s advertising, after referring to the
utilitarian advantages of its products such as “more grip
holes to make it easier to pick up” and roundness for “ease
of use and exercise safety,” concludes with the following
statement: “Coming up with better ideas is not just a
process, it’s an attitude – one of never being satisfied
with the way things are, of always striving to give the
marketplace something better.” Ivanko “The Evolution of
Ser. No. 78134755
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Better Ideas” ad. The same ad goes on to explain that the
item shown is “Available in 45 lb, 35 lb. & 25 lb. sizes.
Companion 10 lb., 5 lb., & 2.5 lb. sizes available without
grip holes.” A customer confronted with these
advertisements would associate applicant’s design with a
superior, utilitarian product.
“Rather than showing that the configuration design
serves to distinguish source, this advertising touts the
design for its desirable, superior utilitarian qualities.”
In re Caterpillar Inc., 43 USPQ2d 1335, 1340 (TTAB 1997).
In this case, the design is advertised as an improved
design that dramatically improves ease of handling and
safety. This evidence strongly supports the examining
attorney’s argument that the design is functional.
(3) Alternative Designs
Regarding the third factor, the Federal Circuit has
explained that:
We did not in the past under the third factor require
that the opposing party establish that there was a
“competitive necessity” for the product feature.
Nothing in TrafFix suggests that consideration of
alternative designs is not properly 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
Ser. No. 78134755
10
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, 61 USPQ2d at 1427 (footnote
omitted).
Applicant argues that it has “submitted considerable
evidence showing many alternative designs which are equally
suitable to perform the utilitarian task of the design.”
Reply Brief at 3. Certainly, applicant’s own advertisement
would argue that applicant’s design is a superior design.
In fact, applicant has compared its design to the evolution
of man with applicant’s seven-hole plate shown as a
superior plate to the earlier plates having fewer holes.
Again, the ad describes its weight plates as giving “the
marketplace something better.” It is hard to argue with
applicant’s own statement that “more grip holes [] make it
easier to pick up.” Applicant’s design appears to balance
the need to have plates weighing up to 45 pounds, with the
most number of gripping holes for ease of lifting and
safety.4 To achieve these advantages, the holes cannot be
minimized beyond the size of those that can accommodate a
4 Applicant does not use the “gripping holes” on its smaller (10,
5, and 2.5 lb.) weights where lifting the weights would not be as
difficult.
Ser. No. 78134755
11
user’s hand or fingers. Applicant’s statement that there
are equal alternative designs is contradicted by its
statement that its plates “incorporate (7) openings, not
just (2) or (3).5 These extra openings dramatically improve
handling off the floor and on and off machines or bars.”
The fact that there are alternative designs is hardly
surprising, or in and of itself, legally sufficient. The
evidence of record clearly demonstrates that weight plates
have been around for many years. The question is not
whether there are alternative designs that perform the same
basic function but whether these designs work “equally
well.” Valu Engineering, 61 USPQ2d at 1427, quoting, 1
McCarthy on Trademarks and Unfair Competition, §7:75, 7-
180-1 (4th ed. 2001). Clearly, the Supreme Court found that
it was improper to engage in “speculation about other
design possibilities, such as using three or four springs
which might serve the same purpose … [or] to explore
designs to hide the springs.” TrafFix, 58 USPQ2d at 1007.
Here, applicant touts its design as a superior,
utilitarian design. While weight plates can be made in
5 Regarding the central hole and roundness of the weight plates,
“[t]raditionally weight plates are generally disc-shaped, and
formed with a central throughbore sized to slidably receive the
end of the bar.” Patent No. 6,436,015 B1 col. 1, lines 28-30.
The patent (Col. 1, lines 54-58) also indicates that
“conventional wisdom” also taught that the design of the openings
“preserve axially balancing of the plate.”
Ser. No. 78134755
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many forms and with less than seven grip holes, the
evidence, much of it from applicant, shows that applicant’s
design works better. It provides additional holes to ease
gripping and moving the plates and these grips contribute
to the ease and safety of their use.
(4) Facts indicating that the design results in a
comparatively simple or cheap method of
manufacturing the product
There is no indication that applicant’s design results
from a simple or cheap method of manufacturing the product
and, thus this fact does not favor applicant or the
examining attorney. Applicant argues that “the design with
seven holes is more expensive[,] more complicated and does
not result from a superior method of manufacturing the
article.” Reply Brief at 3. However, the focus in this
factor is on whether the design results from a simple or
cheaper manufacturing process. When a design results from
a simple or cheaper manufacturing process, if competitors
are barred from using the resulting design, they would be
barred from using the process itself. Kellogg Co. v.
National Biscuit Co., 305 U.S. 111, 114 (1938) (“The
plaintiff has not the exclusive right to sell shredded
wheat in the form of a pillow-shaped biscuit--the form in
which the article became known to the public. That is the
form in which shredded wheat was made under the basic
Ser. No. 78134755
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patent. The patented machines used were designed to
produce only the pillow-shaped biscuits”). Obviously,
there is no indication that applicant’s design results from
this type of manufacturing process.
Applicant’s argument that its design process is more
expensive is not, by itself, significant. Merely because a
product costs more to manufacture than other products does
not mean that the design is not functional. Indeed,
improving the utilitarian features of a product often
dictates that the manufacturing process be more expensive
or complicated. For example, in this case, most likely the
cheapest manufacturing process to produce a functional
weight plate would be to pour the molten metal into a
simple mold that would leave a single hole to attach the
weight plate to a bar. However, the evidence indicates
that this simple or cheap manufacturing process is not
completely satisfactory. Although traditional weight
plates “have succeeded in carrying out their intended
purposes, there are many areas for substantial improvement.
A key problem often associated with traditional weight
plates involves the transport of individual plates from one
location to another.” Patent No. 6,436,015 B1, Col. 1,
lines 31-36. Thus, an applicant’s incantation of the
statement, “my goods cost more to manufacture,” is by
Ser. No. 78134755
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itself meaningless. It is just as likely, if not more
likely, to be an indication that the goods have utilitarian
advantages as it is that the goods are not functional.
The record indicates that most of the beverage
containers sold by applicant are traditional smooth-
wall cans, not fluted cans. While this might be
taken as an indication that fluted cans are not
simpler or cheaper to make, it could well be that
applicant's decision to continue making smooth
sidewall cans has nothing to do with cost, and
everything to do with the preferences of its
customers. Even assuming that the process by which
applicant makes its fluted beverage containers is not
cheaper or simpler, this does not mean that the design
is not de jure functional.
In re American National Can Co., 41 USPQ2d 1841, 1844-
45 (TTAB 1997). See also In re Pingel Enterprise Inc., 46
USPQ2d 1811, 1821 (TTAB 1998) (“That applicant, despite the
inherent 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.
Specifically, as stated in the Pingel affidavit, that
applicant has decided to produce its petcock by employing
the more involved and costlier process of having it
‘machined from extruded aluminum or brass stock’ rather
than utilizing, as is the case with ‘[m]ost valves
manufactured by competitors [,] ... a cheaper die cast
Ser. No. 78134755
15
process,’ does not serve to avoid a finding of de jure
functionality for its product configuration”); In re Bio-
Medicus Inc., 31 USPQ2d 1254, 1265 (TTAB 1993) (“In
essence, because the principle of operation employed in a
vaned pump is so different from that used in a bladeless
pump, the difference in sales prices for such goods are
more reflective of the advanced technology developed by
applicant than a meaningful indication that the
configuration of applicant's blood pumps is not functional
in law”); Caterpillar, 43 USPQ2d at 1341 (“[E]ven if it is
true that tractors with the elevated sprocket configuration
design are more costly to manufacture than tractors with
conventional elliptical track designs, this does not
mean that the design is not de jure functional. As noted
above, the conventional track designs lack the utilitarian
advantages of applicant's design -- thus, such a comparison
in terms of cost is not probative. That is to say, there
is nothing in the record regarding the manufacturing costs
of any alternative designs that can perform the same
utilitarian function equally well”).
Here, the evidence supports the conclusion that to
achieve the utilitarian advantages of ease of handling and
safety, applicant’s goods cost more to manufacture. This
Ser. No. 78134755
16
evidence does not support applicant’s argument that its
design is not functional.
Functionality Analysis
As required by the statute, we must consider whether
applicant’s design as a whole is functional. 15 U.S.C.
§ 1052(2)(5). Here, the evidence supports the examining
attorney’s position that the design is de jure functional.
Applicant touts the utilitarian advantages of safety and
ease of handling of its design. In re Babies Beat Inc., 13
USPQ2d 1729, 1730 (TTAB 1990) (“[I]n reviewing applicant's
own literature, we find that the degree of design utility
encompassed by applicant's design is so great such that
applicant's design is de jure functional, and hence not
entitled to registration as a trademark”). There is no
indication that any alternative design would operate as
well as applicant’s design. Obviously, other designs would
work, but applicant’s design with seven rounded grip holes
would have superior qualities for those particularly
interested in ease of handling and safety. The Supreme
Court has made it clear that a “functional feature is one
the exclusive use of which would put competitors at a
significant non-reputation –related disadvantage.”
TrafFix, 58 USPQ2d at 1006 (internal quotation marks
omitted). Competitors desiring to compete with applicant
Ser. No. 78134755
17
in the area of ease of handling and safety would be at a
non-reputation-related disadvantage if they could not use
the seven hole design that applicant advertises as
dramatically improving handling and safety. Therefore, the
examining attorney has met her burden of establishing a
prima facie case of de jure functionality. R.M. Smith, 222
USPQ at 3. Furthermore, applicant has not rebutted the
examining attorney’s prima facie case. Therefore, the
examining attorney’s refusal under Section 2(e)(5) is
affirmed.
Acquired Distinctiveness
We now turn to the issue of acquired distinctiveness.
“Because applicant's designs are functional, any evidence
of distinctiveness is of no avail to applicant in support
of registration.” M-5 Steel Mfg. Co. v. O’Hagin’s Inc., 61
USPQ2d 1086, 1097 (TTAB 2001). However, for the sake of
completeness, we will discuss applicant’s contention that
its design has acquired secondary meaning.
The Supreme Court has explicitly held that product
“design, like color, is not inherently distinctive.” Wal-
Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,
54 USPQ2d 1065, 1068 (2000). Applicant’s design is a
product design for applicant’s weight plates and it would,
Ser. No. 78134755
18
if it is not functional, be registrable only if applicant
shows it has acquired distinctiveness.
Applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988).
However, the statute is silent as to the weight of
evidence required for a showing under Section 2(f)
except for the suggestion that substantially exclusive
use for a period of five years immediately preceding
filing of an application may be considered prima facie
evidence.
As observed by our predecessor court, the exact kind
and amount of evidence necessarily depends on the
circumstances of the particular case, and Congress has
chosen to leave the exact degree of proof necessary to
qualify a mark for registration to the judgment of the
Patent Office and the courts. In general, the greater
the degree of descriptiveness the term has, the
heavier the burden to prove it has attained secondary
meaning.
Id. (quotation marks, brackets, and citations
omitted).
Applicant’s most significant piece of evidence that
its mark has acquired secondary meaning is a document
Ser. No. 78134755
19
entitled “Ivanko Barbell Weight Plates Secondary Meaning
Survey.” The survey (p. 19) concludes with the following
statement: “These survey results show that in the relevant
market, a high percentage of purchasers of barbell weight
plates associate the appearance of Ivanko Barbell weight
plates in question (E-Z Lift Plates) with one company,
Ivanko. Of the survey respondents who were familiar with
the Ivanko barbell weigh weight [sic] plate in question
with all indicia removed (Picture A-1), 58.65% associated
the appearance of the barbell weight plate shown with
Ivanko and an additional 8.65% associate it [with] one
company.”
On its face, the survey does appear to indicate a high
rate of trademark recognition for applicant’s design but
several factors undercut the weight that we give the
survey. First, the survey ultimately analyzed only a total
of 117 responses. Survey, p.1. Second, all the interviews
occurred at two events, the Club Industry Show East 2002
titled “The Conference & Exposition of Health & Fitness
Facility Management” trade show in Washington, D.C. and the
“Health & Fitness Business Expo + Conference” in Denver,
Colorado, also in 2002. Third, the survey was limited to
participants who “work for a health club, gym, spa or an
exercise equipment manufacturer which purchases barbell
Ser. No. 78134755
20
equipment.” Survey, Question 2a. As a result of this
limitation and the fact that the survey was conducted at
two industry conferences, 83.76% (or a total of 98)
respondents were overwhelmingly senior officers and
managers of fitness business (fitness director/fitness
professional, owner/president, manager/general manager,
sales manager/sales rep, CEO, vice president, or director
of activities/director of facilities). Survey, Summary
Table D. In the survey, 45% of the participants were self-
identified as owners, presidents, vice-presidents, CEOs,
managers and general managers of health clubs, gyms, spas,
or exercise equipment manufacturers. Applicant’s survey
has selected a survey that is limited to only a small
percentage of potential purchasers. Ty Inc. v. Softbelly’s
Inc., 353 F.3d 528, 69 USPQ2d 1213, 1215 (7th Cir. 2003)
(“[T]he survey was worthless — 13- to 18-year-old girls
being an arbitrary subset of consumers of beanbag stuffed
animals”). Undoubtedly, among this small group,
applicant’s design has achieved some recognition. However,
even among this group, the responses often tend to identify
the utilitarian advantages of the design. See Responses
Nos. 119 (“easy to grab”), 107 (It has holes so the person
can carry it – safety reason”), 117 (It has easy grip), 106
(“You can grab it with less chance of dropping it on your
Ser. No. 78134755
21
feet’); 116, 602, 110, 115, 602, 201, 206, 207 (“easy
grip[s]”); 126 (“The holes for carrying”); 124, 131, 212
(“easier to grip”); 134 (“the holes in it that it’s easy to
pick up”); 137 (“ease of carrying them away”); 149 (“can
pick up easier”); and 114 (easy for grasping”). Inasmuch
as applicant’s advertisements refer to “it’s new patent
pending E-Z Lift Plates” and its “exclusive E-Z lift design
of which our patent has recently been allowed,” potential
purchasers are likely to view applicant’s advertisements as
simply touting its improved design, and these responses
recognize applicant’s technical improvements and not
trademark recognition.6
While the survey is evidence that a very small group
of potential purchasers (owners, presidents, vice-
presidents, and general managers of health/racquet and
fitness clubs) may recognize the applicant’s design as a
trademark,7 we have little, if any, evidence of whether the
6 While applicant received a design patent and never apparently
sought utility patent protection, this distinction is likely to
be lost on potential purchasers since these ads tout the
utilitarian advantages of applicant’s design.
7 Applicant argues that the “average ‘user’ of barbell plates, as
determined by the organization making the survey, is not
generally the purchaser of such equipment, the purchasers
generally being persons who work for health clubs, gyms…” Reply
Brief at 3. The survey states without explanation that the
“relevant market” was defined as “individuals who work for a
health club, gym … These are the types of persons who would be
likely to purchase barbell weight plates.” Survey at 9-10.
Applicant’s goods are not restricted to commercial barbells.
Ser. No. 78134755
22
broader group of prospective purchasers would recognize
applicant’s design as a trademark. We note that
applicant’s goods are identified as barbell plates without
any limitation as to prospective purchasers. There is also
evidence that barbells are sold in a wider market than
simply owners, general managers, and corporate officials of
health and fitness clubs. For example, the Yahoo Shopping
site simply identifies applicant’s goods under the
subheadings: “Home > Sports and Outdoors > Reviews > Free-
Weight Sets > Hammertone Set Ivanko.” The description of
the weights is list as:
Ivanko has Rubber E-Z Lift Plates that feature a
seven-hole design for easier handling. If you hate
the sound of dropped plate makes – or if you worry
about dinging the floor or equipment with metal plates
– these could be a good choice for you. Expect to pay
nearly double for this convenience and new design. If
aesthetics really count, take a look at Ivanko’s OMC-
302 Olympic Chrome set of plates and bar bell.
They’re gorgeous and reasonably priced at $250.
Caution – chipping could be a problem with heavy use.
The advertisements for competitors such as Troy and
VTK appear to be directed to ordinary purchasers.
There is nothing inherent in barbells that would limit their sale
to the limited class of purchasers applicant has selected.
Certainly, the individuals applicant has selected would purchase
weight plates but the class of purchasers who would purchase
barbell weight plates would appear to include numerically many
more purchasers that the limited group applicant has chosen to
survey.
Ser. No. 78134755
23
Therefore, we consider the survey as evidence of some
trademark recognition but we give it only limited weight
because of the small sample of prospective purchasers
included within the survey.
We also consider the evidence that applicant has sold
a total of nearly $531,000 of these products between 1998
and May 2003.8 Applicant’s advertising figures are not
associated with a particular product and are of limited
probative weight.9 We do not consider that applicant’s
sales and advertising evidence is particularly strong.
When we consider the survey concerning secondary
meaning that surveyed primarily health club officers and
managers, applicant’s limited sales and advertising, and
the many utilitarian features of the design that are often
recognized by survey participants, we conclude that
applicant has not met its burden of demonstrating that its
mark has acquired distinctiveness.
Decision: The examining attorney’s refusal to
register applicant’s design on the Principal Register on
the basis that it is functional is affirmed. If the mark
is not functional, the examining attorney’s refusal to
8 Applicant’s highest yearly sales was nearly $159,000 in 2001.
9 Applicant’s declarant indicated that its “advertising expenses
of this and other plates during 2002 and 2003 … totaled
$401,368.”
Ser. No. 78134755
24
register the mark on the ground that it has not acquired
distinctiveness is also affirmed.