Jamesv.Young

Trademark Trial and Appeal Board

Sep 18, 1998

No. 74679615 (T.T.A.B. Sep. 18, 1998)

Paper No. 12
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB 9/18/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re James V. Young
___________
Serial No. 74/679,615
___________
Lionel L. Lucchesi of Polster, Lieder, Woodruff & Lucchesi
for applicant.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
____________
Before Hanak, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
James V. Young has filed a trademark application to
register the mark shown below for a “hand-held massage
apparatus.”1

1 Serial No. 74/679,615, in International Class 10, filed May 24, 1995,
based on an allegation of use of the mark in commerce, alleging first
use and first use in commerce as of May, 1994. The application
includes the statement that “the lining shown in the mark is used to
indicate the 3-dimensional character of the mark and is not a feature
of the mark.”
Serial No. 74/679,615
2
Applicant submitted the following description of its
mark:
The mark consists of a configuration of a hand-
held massager with a generally circular head and
a handle possessing a keyhole grip, the top and
bottom of which grip duplicate the waveform of
the handle shaft.
The Trademark Examining Attorney has finally refused
registration under Sections 1, 2 and 45 of the Trademark
Act, 15 U.S.C. 1051, 1052 and 1127, on the alternative
grounds that (1) applicant’s applied-for mark is de jure
functional, or (2) if it is not, that, in any event, it is
not inherently distinctive. Additionally, the Examining
Attorney has issued a final requirement that applicant
amend its description of the mark to accurately describe
the applied-for mark as shown in the drawing of record.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register on

Serial No. 74/679,615
3
the ground that the applied-for mark is de jure functional;
and that the applied-for mark is not inherently
distinctive. Further, we affirm the requirement that
applicant amend its description of the applied-for mark to
accurately describe the mark as shown in the drawing of
record.
Description of the Applied-for Mark
Applicant submitted with its application, as
originally filed, a drawing depicting the configuration of
its hand-held massager wholly in solid lines and including
the statement “the mark consists of the configuration of an
applicator for hand-held massage.” The Examining Attorney
required a “clear and concise description of the mark.”
Additionally, the Examining Attorney sought clarification
as to which features of the configuration shown in the
drawing comprised the mark, noting that those features
claimed as the mark should appear in the drawing in solid
lines and the remainder of the configuration should appear
in the drawing in broken or dotted lines to show the
context/placement of the claimed features of the
configuration.
Following the Examining Attorney’s final refusal on
the substantive grounds asserted herein, applicant
submitted an amended drawing, which is the drawing of
Serial No. 74/679,615
4
record before us in this appeal, depicting the entire
configuration in dotted lines except the “keyhole grip” and
the “waveform” of the handle shaft. While applicant had
amended its description of the mark in a previously-filed
response, applicant also submitted a further amendment to
the description of the mark, which is the description
previously quoted herein.
The Examining Attorney reinstated the requirement for
a clear description of the mark depicted in the drawing of
record, objecting to the amended description of the mark on
the ground that, as stated, applicant is describing the
entire configuration of the goods. The Examining Attorney
argues that the applied-for mark represented in the drawing
of record is limited to the “keyhole grip” and the
“waveform” of the handle shaft, as only these features are
represented in the drawing in solid lines. Applicant
argues that the description of record is accurate because
“applicant’s mark consists of the overall configuration of
its massager.”
Section 1 of the Trademark Act, 15 U.S.C. 1051,
requires the submission with an application of a drawing of
the mark. Trademark Rule 2.51, 37 CFR 2.51, sets forth the
mandatory requirement for a drawing. Subsection (d) of
that rule provides as follows:
Serial No. 74/679,615
5
Broken lines should be used in the drawing of a
mark to show placement of the mark on the goods,
or on the packaging, or to show matter not
claimed as part of the mark, or both, as
appropriate.
Trademark Rule 2.35, 37 CFR 2.35, permits applicant to
submit a description of a mark that must be acceptable to
the Examining Attorney. Rule 2.35 also permits the
Examining Attorney to require a description of the mark.
In this regard, Sections 808.02 and 808.03 of the Trademark
Manual of Examining Procedure state the following:
If a description of a mark is placed in the
record, its form must be satisfactory to the
examining attorney. To be satisfactory, the
description should state accurately what the mark
comprises, and should not create a misleading
impression by either positive statement or
omission of facts.
. . .
The examining attorney should require a
description of the mark where the mark is three-
dimensional, where the mark is a configuration of
the goods or packaging, where the drawing
includes dotted lines to indicate a portion of
the product or packaging which is not part of the
mark, and in similar cases. … If applicable,
the description statement must clearly indicate
the portion of the product or container that the
mark comprises and what the dotted lines on the
drawing represent.
There is no question, and applicant does not contest,
that the drawing of record in this application is the
amended drawing of the configuration of applicant’s product
showing in solid lines only the keyhole grip and waveform
of the handle shaft. Thus, the applied-for mark consists
Serial No. 74/679,615
6
only of the configuration of the keyhole grip and waveform
of the handle shaft as these features appear on applicant’s
massager. However, it is equally clear that the
description of record describes the mark as the entire
configuration of the goods, which is not how the mark
appears in the drawing of record. We find, on these facts,
that the description submitted by applicant does not
accurately describe the mark depicted in the drawing; and
that the Examining Attorney properly required applicant to
amend its description to accurately describe the mark as
shown in the drawing of record.
De Jure Functionality
We turn to the issue of whether applicant’s applied-
for mark is de jure functional.2 As the Board stated in In
re Peters, 6 USPQ2d 1390, 1391 (TTAB 1988), “[a] design
configuration is considered to be unregistrable when it has
been determined to be de jure, as opposed to de facto,
functional. An item which is de facto functional may be
registrable, while one which is de jure functional may
never be registered even if it has been shown to possess

2 Both applicant’s and the Examining Attorney’s arguments pertaining to
de jure functionality and inherent distinctiveness pertain to the
entire configuration of the goods rather than to the features of the
goods claimed as the mark in this application, as discussed herein. We
have limited our consideration to only those elements of the
configuration claimed as the mark in this application and have
considered applicant’s and the Examining attorney’s arguments in this
regard.
Serial No. 74/679,615
7
some recognition in the trade.” For the design in question
to be de jure functional, it must be shown not just that
the claimed elements of the configuration of the goods are
functional, but also that the performance of that function
is enhanced by the particular configuration in which the
design is executed. In re R.M. Smith, 734 F.2d 1482, 222
USPQ 1 (Fed. Cir. 1984). A configuration which is so
utilitarian as to constitute a superior design for its
purpose, so that competitors need to copy it in order to
compete effectively, is de jure functional, and
unregistrable. In re Lincoln Diagnostics Inc., 30 USPQ2d
1817 (TTAB 1994). As set out in In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982),
there are a number of factors which are useful in
determining whether particular product designs are
superior, including:
(1) the existence of a utility patent that
discloses 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
alternative designs; and
(4) facts indicating that the design results from
a comparatively simple or cheap method of
manufacturing the product.
Serial No. 74/679,615
8
There is no evidence in this case with respect to the
fourth factor. As regards the first factor, whether
utility patents exist which disclose the utilitarian
advantages of the design, applicant is the owner of a
design patent,3 rather than a utility patent, for the entire
configuration of the goods. The design patent claims “the
ornamental design for a cordless, hand-held massager, as
shown and described.” The drawing includes several
perspectives, including one perspective identical to the
drawing of the configuration, although the design patent
drawing depicts the configuration in solid lines.
While there is no specific reference in the
description of the design to the “keyhole grip” or the
“waveform of the handle shaft,” these elements are
encompassed in the description of the configuration in its
entirety. We note that the existence of a design patent,
while some evidence of non-functionality, is not alone
sufficient evidence to overcome a finding of de jure
functionality. See, In re R.M. Smith, Inc., 219 USPQ 629
(TTAB 1983), aff’d, 734 F.2d 1482, 222 USPQ 1 (Fed. Cir.
1984). See also, In re Vico Products Mfg. Co., 229 USPQ
364 (TTAB 1985) [the fact that a product shape is the
subject of a design patent does not, without more, prove

3 Design Patent No. 367,712, issued March 5, 1996.
Serial No. 74/679,615
9
that the shape is non-utilitarian and serves as a
trademark]. In this case, the evidence of applicant’s
design patent is clearly outweighed by the other evidence
of record showing the great degree of utility embodied in
the particular elements of the configuration asserted as
the mark.
With respect to the second factor, whether applicant’s
advertising materials tout the utilitarian advantages of
the relevant elements of the configuration, applicant’s
promotional brochure contains photographs, shown below,
demonstrating the different ways to hold the massager and
identifying as “hand grips” the particular elements of the
massager that comprise the applied-for mark.
Serial No. 74/679,615
10
Applicant’s brochure goes on to tout this aspect of its
massager, stating “[l]ocate desired applicator section and
apply to body … [m]ultiple grip handle will facilitate
convenient application.”
It is clear from the foregoing that the “keyhole grip”
and the “waveform of the handle shaft,” the elements
claimed as the mark herein, function as “hand grips”; and
that applicant’s promotional materials tout the utilitarian
advantages of these features comprising the applied-for
mark.
Regarding the third evidentiary factor, the
availability to competitors of alternative designs, both
applicant and the Examining Attorney have submitted copies
of third-party registrations and advertisements for
numerous hand-held massagers. Applicant argues that this
evidence demonstrates that there are “multitudinous
alternative designs for hand-held massagers [and that] each
has a different overall configuration and a different
handle with a different surface to allow a firm grasp”; and
that, therefore, competitors can compete effectively
without using applicant’s design.
The overall configurations of the third-party hand
held massagers pictured in the record are various in shape,
although certain common characteristics exist. However,
Serial No. 74/679,615
11
only the hand grips of these massagers are of relevance to
us in this case. Like applicant’s massager, several of the
pictured third-party hand-held massagers have handles,
either straight, like applicant’s handle, or curved.
Several of these handles, shown below, contain lines or
“waves” which appear to function to assist the user’s
fingers to firmly grasp the device.
Serial No. 74/679,615
12
Thus, it would appear that hand grips, especially hand
grips with indentations enabling fingers to firmly grasp
the handle, are an important feature of some hand-held
massagers. While none of the third-party massager’s finger
grips is identical to those of applicant, none is
sufficiently different so as to constitute an alternative
design. Thus, we find that this evidence supports the
conclusion that the alternative designs of hand grips on
the hand-held massagers made of record are all merely
variations of a single basic design, that is, indentations
for fingers to firmly grasp the massager’s handle. Given
the utilitarian advantages of the hand grip elements of
applicant’s configuration (as touted by applicant in its
promotional materials), this design for hand grips is one
of a very few superior designs for its functional purpose.
Thus, a registration granted to applicant would seriously
interfere with the right to compete. In re Morton-Norwich,
supra.
In summary, we find that the hand grips of applicant’s
hand-held massager are in the configuration sought to be
registered herein because such configuration is one of the
best designs to perform the desired function. Analysis of
the Morton-Norwich factors shows that the configuration is
de jure functional. Although there are points in
Serial No. 74/679,615
13
applicant’s favor (the design patent and the fact that not
all third-party hand-held massagers utilize hand grips with
finger indentations), they are not persuasive of a contrary
finding. Accordingly, we find that the configuration
sought to be registered is de jure functional.
Inherent Distinctiveness
Although we have found that the matter sought to be
registered by applicant is de jure functional, we
nonetheless now consider the issue of whether applicant’s
configuration is inherently distinctive in the event that
applicant’s applied-for mark is ultimately found not to be
de jure functional.4 It is well-established that designs
that are inherently distinctive are registrable without
proof of secondary meaning, whereas those that do not
possess inherent distinctiveness, and are not de jure
functional, can acquire distinctiveness as registrable
trademarks. Wiley v. American Greetings Corp., 26 USPQ2d
101 (1st Cir. 1985). An inherently distinctive mark is one
which is “by its very nature distinctive or unique enough
to create a commercial impression as an indication of
origin . . .” In re Raytheon Co., 202 USPQ 317 (TTAB
1979). While a design may, in fact, be unique, i.e., it

4 A finding that the applied-for mark is distinctive, either inherently
or otherwise, will not obviate a finding of de jure functionality.
Serial No. 74/679,615
14
may be the only such design being used by anyone, to be
registrable as a trademark, it also must possess an
“original, distinctive and peculiar appearance.” In re
McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960),
quoting with approval from Ex parte Haig & Haig, Ltd., 18
USPQ 229, 230 (Asst. Commr. 1958). The fact that other
similar products use or incorporate designs that differ in
only insignificant respects leads to the conclusion that
such designs lack inherent distinctiveness. See, In re E.
S. Robbins Corp., 30 USPQ2d 1540 (TTAB 1992).
In view of the functional characteristics of
applicant’s configuration of its hand grips on its hand-
held massager, and in consideration of the configurations
of other hand grips for hand-held massagers of record, as
discussed herein, there does not appear to be anything
inherently distinctive or “unique enough” about applicant’s
configuration to warrant the conclusion that the applied-
for mark would create a commercial impression as a source
indicator. As discussed in connection with the question of
de jure functionality, applicant’s promotional materials
establish that the “keyhole grip” and “waveform of the
handle shaft,” which are the elements of its hand-held
massager asserted as the mark herein, function as the “hand
grips” by which the user holds and applies the massager.
Serial No. 74/679,615
15
It would appear from the evidence herein that these
elements of the configuration serve no other purpose other
than as hand grips; and that the “waveform” of these
elements function to provide a firm “grip” for the fingers
while the apparatus is operating. As such, these features
do not contribute any unique quality to the applied-for
mark so that it can be considered inherently distinctive.
Decision: The refusal is affirmed on the grounds
that the applied-for mark is de jure functional and,
alternatively, that it is not inherently distinctive; and
the final requirement for a clear and accurate description
of the mark as shown in the drawing of record is affirmed.
E. W. Hanak
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board