Jon P. File

Trademark Trial and Appeal Board

Jul 13, 1998

No. 74708137 (T.T.A.B. Jul. 13, 1998)

Paper No. 10
GDH/gdh
7/13/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
______
Trademark Trial and Appeal Board
______
In re Jon P. File
______
Serial No. 74/708,137
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Daniel D. Chapman of Gunn, Lee & Miller, P.C. for Jon P. File.
Jeri J. Fickes, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Jon P. File has filed an application to register the
matter shown below, which is described as a "mark [which]
consists of tubular lights running lengthwise down bowling lanes
projecting over the gutters," as a service mark for
"entertainment services in the nature of a bowling alley".1

1 Ser. No. 74/708,137, filed on July 31, 1995, which alleges dates of
first use September 1, 1994. The broken or dotted lines show the
location of applicant’s putative mark but do not form part thereof.
See Trademark Rule 2.51(d) and TMEP §1202.03(c).
Ser. No. 74/708,137
2
Registration has been finally refused under Sections 1,
2, 3 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053
and 1127, on the ground that, as shown by the photographs of the
interior of applicant's bowling alley facility which were
submitted as specimens of use, the matter which applicant seeks
to register does not function as a service mark. Specifically,
as stated in her final refusal, the Examining Attorney contends
that "[t]he proposed mark is not inherently distinctive" and
that, "[a]bsent promotion of applicant's lighting design as
serving ... a source indicating function, consumers would simply
assign the lighting placement its normal value as a decorative
element of interior design."
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Ser. No. 74/708,137
3
Applicant, in support of his position that the matter
sought to be registered is an inherently distinctive mark, has
submitted a declaration in which he states, among other things,
that he has been involved in the bowling industry since 1993 and
has been "offering the novel trade dress lights for over the past
two (2) years"; that he has "attended numerous bowling trade
shows over the past three (3) years," is "familiar with novel
bowling games, alleys, and apparatus" and has "read the standard
trade publications over the past few years"; that he "know[s] of
no other bowling alley using the placement of tubular lights
lengthwise down the bowling lanes on bumpers which project out
over the gutters prior to [such use by] applicant"; and that
"[t]here are many ways to light the interior of a bowling alley
for the purposes of providing visibility," including "lights on
the walls, masking units, pinsetters, concourse, ceiling,
seating, ball returns, approach, [or] handrails, or in the
counter area," which are "far superior to the use of tubular
lights extending longitudinally down the gutters".
Applicant further avers in his declaration that his
"customers perceive the trade dress to be attractive, but
primarily as a source indicator rather than a commonplace
variation of a complex lighting design"; that, in his experience
and opinion, "[t]he trade dress ... is not a minor variation, but
[is] a major departure from previous bowling alley lighting due
to the location and shape of the lights" and which, to his
knowledge, "has never been done before"; that applicant’s lights
"do not assist in visibility to the bowlers"; that such lights,
Ser. No. 74/708,137
4
"while being somewhat cosmetic, are primarily distinctive to the
consumer"; that "[t]housands of customers have utilized ...
applicant’s bowling services directly adjacent [to] the
distinctive and novel lights"; that the lights "are readily
visible to all bowlers in a bowling alley" and create,
"especially when used on a number of adjacent lanes, a very
striking, distinctive, and novel appearance heretofore
unavailable"; and that it is applicant’s "experience, working in
bowling alleys and the bowling industry, that this distinctive
lighting is immediately recognizable as a source" for applicant’s
bowling services.
Applicant asserts that it is "the placement and
structure of the lighting system ... [which] serve a source-
indicating function to the consuming public." Specifically,
according to applicant:
Most bowling alley interior lighting
systems are directed towards the illumination
of space for the purpose of carrying out the
game of bowling. While such lighting systems
as a whole could not be classified as
inherently distinctive, Applicant’s lighting
design, which serves not to illuminate an
area (as does a ceiling light fixture) but
rather serves as a notice to the public of
the source of the services being provided (as
does a neon sign that explicitly spells out a
trademark term), can be classified as
inherently distinctive. Applicant agrees
that most lighting schemes to be found in
bowling alleys for the purposes of
illuminating an area and/or creating a
pleasant environment within which to bowl,
could not be characterized as inherently
distinctive. The public has come to accept,
both in bowling alleys and in other
entertainment areas, the placement of lights
in a variety of positions for the purposes of
facilitating the entertainment activity and
Ser. No. 74/708,137
5
making it more enjoyable. As the Examining
Attorney correctly states, lighting systems
for this purpose can and have been placed in
or on a number of structural elements
associated with bowling alleys and bowling
activities.
Applicant’s lighting system, on the
other hand, is unique in its placement and
arrangement for a number of reasons. First,
it is, and has been, extremely difficult to
configure lighting systems in the position
and placement of Applicant’s trade dress.
Normally, this position and placement will
come into direct contact with heavy weight
bowling balls during the bowling activity and
would normally be destroyed, crushed, or
otherwise damaged by the customers carrying
out the activity. It goes without saying
that Applicant’s trade dress positioning of
the lighting system has overcome this concern
through the use of lighting structures that
are not susceptible to damage as the result
of contact from bowling balls. This
characteristic alone establishes Applicant’s
trade dress as something unique, distinctive,
and unexpected to the consuming public.
Applicant thus insists that, because his trade dress, which
consists of tubular lengthwise lighting located adjacent to the
gutters of bowling alley lanes, differs in significant respects--
by virtue of the unexpected and previously impractical placement
of the lighting system--from the lighting systems employed by
others who operate bowling alleys, such trade dress is inherently
distinctive and is registrable.
We agree with the Examining Attorney, however, that
customers for bowling alley entertainment services would regard
applicant’s trade dress simply as an element of interior
decoration and would not, therefore, immediately perceive such
trade dress as a source indicator. As the Board noted in In re
Hudson News Co., 39 USPQ2d 1915, 1922 (TTAB 1996), aff’d in
Ser. No. 74/708,137
6
decision without published opinion, 1997 U.S. App. LEXIS 15556
(Fed. Cir. June 12, 1997), case law and other authority have
essentially adopted the test set forth in the leading case of
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196
USPQ 289, 291 (CCPA 1977), for determining whether matter is
inherently distinctive (footnotes omitted):
In the case now before us, we have
looked to our primary reviewing court, the
Federal Circuit (or, more accurately, its
predecessor, the U.S. Court of Customs and
Patent Appeals) for guidance. In determining
whether a design (or, in this case, trade
dress) is inherently distinctive, the Court
in the past
has looked to whether it was a
"common" basic shape or design,
whether it was unique or unusual in
a particular field, [or] whether it
was a mere refinement of a
commonly-adopted and well-known
form of ornamentation for a
particular class of goods viewed by
the public as a dress or
ornamentation for the goods[.]
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,
568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977).
Other courts have relied on the Seabrook case
when considering whether or not a claimed
trade dress is inherently distinctive. See:
Brooks Shoe Manufacturing Co. v. Suave Shoe
Corp., 716 F.2d 854, 221 USPQ 536 (11th Cir.
1983); AmBrit Inc. v. Kraft Inc., 805 F.2d
974, 1 USPQ2d 1161 (11th Cir. 1986); Turtle
Wax Inc. v. First Brands Corp., 781 F.Supp.
1314, 22 USPQ2d 1013 (N.D. Ill. 1991); and
Jungle Rags Inc. v. Rainbow Graphics Inc., 29
USPQ2d 1704 (M.D. Fla. 1993). The above-
mentioned factors were recently summarized
by the Federal Circuit in determining whether
or not a trade dress is inherently
distinctive:
Thus, the focus of the inquiry is
whether or not the trade dress is
of such a design that a buyer will
Ser. No. 74/708,137
7
immediately rely on it to
differentiate the product from
those of competing manufacturers;
if so, it is inherently
distinctive.
Tone Brothers Inc. v. Sysco Corp., 31 USPQ2d
1321, 1331 (Fed. Cir. 1994), citing
Paddington Corp. v. Attiki Importers &
Distributors, Inc., 996 F.2d 577, 582-84, 27
USPQ2d 1189, 1192-93 (2d Cir. 1993).
Restatement (Third) of Unfair Competition,
§16, comment b appears to essentially adopt
the Seabrook test:
If the trade dress used by a
particular seller differs in
significant respects from that
employed by others, consumers may
be expected to utilize the trade
dress as an indication of source
.... Trade dress that is unique
and prominent can thus be
inherently distinctive. If the
trade dress is descriptive (see
§14), or inconspicuous, or not
sufficiently different from that
used by others to justify a
conclusion of inherent
distinctiveness, trademark rights
will depend upon proof of
distinctiveness through evidence of
secondary meaning.
We thus dispense with applicant's
discussion of its trade dress under the
analysis set forth in Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 9, 189
USPQ 759, 764 (2d Cir. 1976) ... [since] we
see no reason in the case now before us to
engage in an Abercrombie type of analysis.
The Examining Attorney here has not refused
registration on the basis that applicant's
trade dress is generic or descriptive.
Rather, the ground of refusal essentially is
that applicant's trade dress would not be
perceived by the purchasing public as an
indicia of source and that, therefore, the
trade dress is not inherently distinctive.
Accordingly, we look to the factors in the
Seabrook case in assessing whether or not the
trade dress sought to be registered in the
Ser. No. 74/708,137
8
involved applications is inherently
distinctive.
As the Examining Attorney correctly observes, "the
essential criterion of an inherently distinctive mark is that it
is immediately recognizable by consumers as a source indicator."
Applying the Seabrook test for inherent distinctiveness to the
present case, we find nothing in the record which would lead us
to believe that consumers of bowling alley entertainment services
would immediately perceive and rely upon applicant’s tubular
lighting arrangement as an indication of source. Rather, it is
common for places of indoor entertainment to employ various
lighting schemes for decorative purposes and not merely as
sources of illumination. Whether such lighting schemes be neon
displays, florescent tubular lights and/or incandescent bulbs,
lights are frequently used in various colors, patterns and/or
locations to enhance the atmosphere of indoor places of amusement
and are typically viewed, even when the arrangement of the
lighting may be regarded as striking or unusual, as simply part
of the overall interior decor or ornamentation. We consequently
concur with the Examining Attorney that, "[g]iven this common
experience, it is ... reasonable to assume that the public’s
perception of applicant’s proposed mark would be as a mere
refinement of a commonly used form of decor for commercial
establishments rather than an inherently distinctive indicator of
source for bowling alley services." See In re Hudson News Co.,
supra at 1923-24 [Board, in finding that prospective purchasers
are not likely to perceive a "cool bluish, clean and salubrious
Ser. No. 74/708,137
9
newsstand shopping environment" motif as a symbol of
identification, indicated that such purchasers will view the
trade dress as nothing more than interior decoration due to the
commonality of the ornamental elements, including colored
fixtures and lighting, which comprise the motif].
Applicant, in fact, concedes as much, admitting in its
initial brief that, as noted earlier, "most lighting schemes to
be found in bowling alleys for the purposes of illuminating an
area and/or creating a pleasant environment within which to bowl
... could not be characterized as inherently distinctive" since
"[t]he public has come to accept, both in bowling alleys and in
other entertainment areas, the placement of lights in a variety
of positions for the purposes of facilitating the entertainment
activity and making it more enjoyable." Applicant’s contention,
however, that it is the assertedly unexpected and previously
impractical placement of the its tubular lighting scheme which
causes it to function as a source indicator is not borne out by
the declaration of record, which gives no cogent reason why such
scheme would be "primarily distinctive to the consumer" of
applicant’s bowling alley entertainment services. As the
Examining Attorney convincingly points out:
[T]here is no persuasive evidence of record
that placement of lighting tubes down the
length of bowling alley gutters is
[currently] "impractical." Applicant merely
states [in its initial brief] that "it is,
and has been, extremely difficult to
configure lighting systems in the position
and placement of Applicant’s trade dress."
.... According to applicant, it is the
likelihood of the lighting being destroyed,
crushed or otherwise damaged by bowling balls
Ser. No. 74/708,137
10
which makes such placement impractical.
Applicant then goes on to state that "[i]t
goes without saying that Applicant’s trade
dress positioning of the lighting system has
overcome this concern through the use of
lighting structures that are not susceptible
to damage as a result of contact from bowling
balls." .... However, if lighting
structures exist so that impact damage is
minimized or eliminated, then placement of
lighting tubes where they may encounter
impact is not impractical. Moreover, even if
applicant’s lighting arrangement is
"impractical," consumers would have to
perceive such placement as impractical, which
would assume some unlikely degree of
expertise in lighting systems and impact
resistance. Finally, even if potential
damage from ball impact makes placement of
lighting tubes running down along gutters
"impractical" and consumers would perceive it
as such, impractical placement of lighting
may not be remarkable given the similar uses
of lighting on ball returns, pinsetters and
embedded in lanes, areas apparently equally
susceptible to impact damage.
Lastly, with respect to applicant’s showing by his
declaration that his tubular lighting arrangement is novel or
unique in the bowling industry in that he "know[s] of no other
bowling alley using the placement of tubular lights lengthwise
down the bowling lanes on bumpers which project out over the
gutters prior to [such use by] applicant," the Examining Attorney
is again correct that, "as prior case law has made clear, the
circumstances of an applicant being ’the one and only’ user of a
proposed mark does not in and of itself elevate that mark to the
level of uniqueness required for inherent distinctiveness." In
particular, as stated by the Board in In re E S Robbins Corp., 30
USPQ2d 1540, 1543 (TTAB 1992), "[i]f the concept of inherent
distinctiveness was defined as meaning simply ’one and only,’
Ser. No. 74/708,137
11
then one could obtain a registration for a design which, while
’unique’ in this sense, differed only slightly from the designs
of other competing products and/or containers."
In the present case, as in Hudson News, supra at 1924,
not only is there no evidence that the trade dress at issue has
ever been promoted by applicant as its service mark, but the
record is completely devoid of evidence that anyone other than
applicant regards an arrangement of tubular lights running
lengthwise down bowling lanes and projecting over the gutters as
a service mark for bowling alley entertainment services even
though, to the best of applicant’s knowledge, he is the sole user
of such a trade dress in the bowling industry. Instead,
applicant’s lighting scheme, as shown by the specimens of use, is
employed in a merely ornamental or decorative way to highlight
the bowling alley lanes (including the gutters), with such a
lengthwise or longitudinal theme being echoed by the stripes on
the wall of applicant’s facility. Applicant’s tubular lighting
arrangement, in fact, runs the entire length of each of the lanes
in his bowling alley and, thus, would most likely be perceived by
patrons of applicant’s services simply as part of the overall
decor or ambiance of his bowling alley establishment.
We consequently agree with the Examining Attorney that
applicant’s particular trade dress is not inherently distinctive.
Customers for applicant’s bowling alley entertainment services
would not be likely to regard applicant’s tubular lighting scheme
as identifying and distinguishing the source of such services,
given the admitted expectation of the public with respect to the
Ser. No. 74/708,137
12
enhancement of the entertainment experience which is provided by
the use of decorative or ornamental lighting. Instead, even
though applicant views his particular trade dress as "a major
departure from previous bowling alley lighting due to the
location and shape of the lights," the use by applicant of a
novel or striking scheme of tubular lights running lengthwise
down bowling lanes and projecting over the gutters would be
perceived by customers for bowling alley entertainment services
as simply a refinement of the commonplace decorative or
ornamental lighting arrangements to which they have become
accustomed and would not be inherently regarded as a source
indicator. See, e.g., In re Hudson News Co., supra at 1925
[various blue trade dress motifs for newsstand services not
inherently distinctive since such are "simply a mere refinement
of a basic blue interior decorating scheme"]; In re F.C.F. Inc.,
30 USPQ2d 1825, 1828 (TTAB 1994) [rose design packaging for
cosmetics not inherently distinctive inasmuch as it "appears to
be no more than a mere refinement of a basic, relatively common
and well-known form of decoration or ornamentation for cosmetic
packaging and would be so regarded by the public"]; and Wiley v.
American Greetings Corp., 226 USPQ 101, 103-104 (1st Cir. 1985)
[red heart, permanently affixed to the left breast of a teddy
bear, not inherently distinctive (even if unique) because it "is
simply a mere refinement of a red heart motif which is a commonly
adopted and well-known means of ornamentation for teddy bears,
other stuffed animals and toys in general].
Ser. No. 74/708,137
13
Decision: The refusal to register is affirmed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board