Karsten Manufacturing Corporation

Trademark Trial and Appeal Board

Apr 15, 2009

No. 77170356 (T.T.A.B. Apr. 15, 2009)

Mailed: 4/15/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Karsten Manufacturing Corporation
________

Serial No. 77170356
_______

John D. Titus of The Cavanagh Law Firm for Karsten
Manufacturing Corporation.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Karsten Manufacturing Corporation filed an application
to register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77170356
2
for “golf clubs” in International Class 28.1 The
application includes the following description of the mark
sought to be registered:
The mark consists of a golf putter head
having curved sides that extend
rearward from the heel and toe ends of
the club face, tapering into a central
portion that extends rearward from the
mid-portion of the club face and
protrudes rearward beyond the
intersection of the central portion
with the two sides. Two arcuate cut-
outs separate the sides of the club
from the central portion. The dotted
outline of the face and hosel are not
part of the mark, and are merely
intended to show the position of the
mark.

The trademark examining attorney refused registration
under Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§1052(e)(5), on the ground that applicant’s proposed mark
is functional.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that applicant’s five
utility patents for a golf putter head with a visual
alignment aid and an increased moment of inertia (“MOI”)
are strong evidence of functionality. According to the

1 Application Serial No. 77170356, filed May 1, 2007, alleging
first use anywhere and first use in commerce on February 18,
2004.
Ser. No. 77170356
3
examining attorney, the configurations of the putter heads
for which the patents were issued are identical to
applicant’s proposed mark. The examining attorney also
asserts that advertisements for applicant’s putters tout
the advantages of the utilitarian aspects of the putter
design. As to alternative designs for golf putter heads,
the examining attorney recognizes their existence, but
insists that the number of alternatives available to
competitors is limited. Lastly, the examining attorney
states that the method of manufacture of applicant’s putter
head appears to be normal for the industry. In support of
the refusal, the examining attorney submitted, as just
noted, applicant’s relevant patents and advertisements for
the goods.
Applicant argues that the underside of its golf putter
is distinctive and should be registered.2 Although
applicant “does not dispute that its utility patents
contain claims that recite features of the configuration
for which registration is sought,” applicant goes on to

2 Because the subject matter sought to be registered is a product
design, it is not inherently distinctive and, assuming it were
not functional, it is registrable only with a showing of acquired
distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
529 U.S. 205, 54 USPQ2d 1065, 1067 (2000). Accordingly,
applicant’s argument that the underside of its putter head is
distinctive is irrelevant to the determination of whether the
product feature is functional.
Ser. No. 77170356
4
argue that these features should be protected “in spite of
being found in a utility patent claim.” (Brief, p. 6).
More specifically, applicant asserts the following: “The
through-holes and the arms of applicant’s golf club head
are recited in the utility patent claims, but nothing in
the patent suggests that the arms must be curved just so or
that the through-holes must be a particular size or shape
to accomplish the claimed improvement.” Id. Further,
applicant contends, the examining attorney’s reliance on
applicant’s advertisements is misplaced inasmuch as
applicant’s “generalized statements concerning the
geometric shape and the perimeter weighting are descriptive
of the function of any high MOI putter, not just the unique
shape of Applicant’s configuration with its recurved arms
and airfoil-shaped through-holes.” (Brief, p. 10).
Applicant also states that its configuration is “only one
of many equally feasible, efficient and competitive
designs” and that there are numerous alternative putters,
“all of which have high MOI and all of which look radically
different from [applicant’s] configuration.” (Brief, p.
11). According to applicant, applicant’s and its
competitors’ designs demonstrate that the concept of moving
mass from the center of the golf club head to its perimeter
is functional because it increases the moment of inertia of
Ser. No. 77170356
5
the club head, but that “the configurations that results
[sic] from this mass movement can be accomplished in a
multitude of equally feasible, efficient and competitive
ways.” (Brief, p. 12). Lastly, applicant asserts that its
putter head design is not the result of a comparatively
simple or inexpensive method of manufacture as compared
with other high moment of inertia putter heads.
Section 2(e)(5) of the Trademark Act precludes
registration of “any matter that, as a whole, is
functional.” The Supreme Court has stated: “In general
terms, a product feature is functional if it is essential
to the use or purpose of the article or if it affects the
cost or quality of the article.” Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4
n.10 (1982). The Supreme Court has called this “Inwood
formulation” the “traditional rule” of functionality.
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.
23, 58 USPQ2d 1001, 1006 (2001).
The functionality doctrine is intended to encourage
legitimate competition by maintaining the proper balance
between trademark law and patent law. As the Supreme Court
observed in Qualitex Co. v. Jacobson Products Co., 514 U.S.
159, 34 USPQ2d 1161, 1163-64 (1995):
Ser. No. 77170356
6
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, 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). That is to say, the
Lanham Act does not exist to reward
manufacturers for their innovation in
creating a particular device; that is
the purpose of the patent law and its
period of exclusivity. The Lanham Act,
furthermore, does not protect trade
dress in a functional design simply
because an investment has been made to
encourage the public to associate a
particular functional feature with a
single manufacturer or seller.

The Federal Circuit, our primary reviewing court,
looks at four factors when it considers the issue of
functionality: (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
Ser. No. 77170356
7
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). These are known as the “Morton-
Norwich factors.” The determination of functionality is a
question of fact, and depends on the totality of the
evidence presented in each particular case. In re Udor
U.S.A. Inc., 89 USPQ2d 1978, 1979 (TTAB 2009). The Supreme
Court’s decision in TrafFix has not altered the Morton-
Norwich analysis. See Valu Engineering, Inc. v. Rexnord
Corp., 61 USPQ2d at 1427.
The first Morton-Norwich factor is the existence of a
utility patent disclosing the utilitarian advantages of the
design. Regarding the evidentiary value of utility patents
in the functionality determination, the Supreme Court has
instructed as follows:
A prior patent, we conclude, has vital
significance in resolving the trade
dress claim. A utility patent is
strong evidence that the features
therein claimed are functional. If
trade dress protection is sought for
those features the strong evidence of
functionality based on the previous
patent adds great weight to the
statutory presumption that features are
deemed functional until proved
otherwise by the party seeking trade
dress protection. Where the expired
Ser. No. 77170356
8
patent claimed the features in
question, one who seeks to establish
trade dress protection must carry the
heavy burden of showing that the
feature is not functional, for instance
by showing that it is merely an
ornamental, incidental or arbitrary
aspect of the device.

TrafFix Devices Inc. V. Marketing Displays Inc., 58 USPQ2d
at 1005.
The particular golf club in question is applicant’s
PING CRAZ-E putter, which is one of a class of high moment
of inertia putters. High moment of inertia putters are
characterized by the way they have more mass located
farther away from the center of the front face of the
putter head, thereby giving higher moment of inertia,
resulting in resistance to twisting as compared with
conventional blade and cavity-backed putters. According to
applicant, most golf club manufacturers sell at least one
high MOI putter.
As indicated by one of applicant’s patents covering
its putter head, “recent developments in golf equipment
have resulted in golf putter heads with high moments of
inertia.” The “Background of the Invention” states that it
relates “to a golf putter head with a visual alignment aid
and an increased moment of inertia.” The “Summary of the
Invention” reads, in pertinent part, as follows:
Ser. No. 77170356
9
The present invention provides a golf
putter head including a face member
having a heel end, a toe end, a top
rail, a front surface arranged for
impacting a golf ball, and a back
surface. A first arm extends
substantially rearwardly from the heel
end of the face member, and a second
arm extends substantially from the toe
end of the face member. A central
member extends rearwardly from the face
member intermediate the heel and toe
ends thereof. The central member is
connected to the first and second arms
rearwardly of the face member. The
central member and the first arm define
a first opening there between adjacent
the heel end of the face member while
the central member and the second arm
define a second opening there between
adjacent the toe end of the face
member. A first cavity is formed in an
upper surface of the central member
between the first and second openings,
and a second cavity is formed in the
upper surface of the central member
rearwardly of the first cavity and
rearwardly of the first and second
openings.

The central member includes a
substantially U-shaped wall at one end
thereof that merges with the back
surface of the face member. The
substantially U-shaped wall has a top
edge, and a middle portion of the wall
top edge protrudes above the top rail
of the face member. The wall top edge
has opposed side portions which slope
downwardly from the middle portion as
the wall extends away from the face
member. The first and second arms have
top surfaces that slope downwardly as
the first and second arms extend away
from the face member, and the central
member has a thickened portion at the
other end thereof opposite the wall.
Ser. No. 77170356
10

As the “Description of the Preferred Embodiment” indicates,
the openings in the putter head cause more weight to be
located near the end portions and the back portion of the
putter head “which increases the moment of inertia” of the
putter head. The central member of the putter head
includes a thickened back portion that also causes more
weight to be located near the back portion of the putter
head “further increasing the putter head moment of
inertia.”
Figure 7 as shown in applicant’s patent is an
illustration of a bottom view of applicant’s putter head.

In pertinent part, the patent includes the following
descriptions:
A first arm 32 extends substantially
rearwardly from the heel end 14 of the
face member 12 while a second arm 34
extends substantially rearwardly from
the toe end 16 of the face member 12.
A central member 36 extends rearwardly
from the face member 12 intermediate
the heel and toe ends 14, 16 thereof.

The central member 36 includes a pair
of wing portions 38, 40 connecting the
Ser. No. 77170356
11
central member 36 to the first and
second arms 32, 34 rearwardly of the
face member 12. A first opening 42 is
defined between the central member 36
and the first arm 32 adjacent the heel
end 14 of the face member 12, and a
second opening 44 is defined between
the central member 36 and the second
arm 34 adjacent the toe end 16 of the
face member 12. These openings 42, 44
cause more weight to be located near
end portions 10a, 10b and back portion
10c of the putter head 10 which
increases the moment inertia of the
putter head 10. The central member 36
includes a thickened portion 37
adjacent putter head back portion 10c.
This thickened portion 37 also causes
more weight to be located near the back
portion 10c of the putter head 10
further increasing the putter head
moment of inertia.

We find that the utility patents comprise strong
evidence in support of the examining attorney’s position
that the design sought to be registered is functional. The
elements comprising the mark, as set forth in the
description of the mark sought to be registered, are
included in the patent’s claims and serve a utilitarian
function.
Although as earlier noted applicant “does not dispute
that its utility patents contain claims that recite
features of the configuration for which registration is
sought,” applicant latches on to certain of the Supreme
Court’s language in TrafFix in support of its main
Ser. No. 77170356
12
argument. The Court offered this observation in cautioning
that a thoughtful analysis of a utility patent and its
effect on the question of functionality is required:
In a case where a manufacturer seeks to
protect arbitrary, incidental, or
ornamental aspects of features of a
product found in the patent claims,
such as arbitrary curves in the legs or
an ornamental pattern painted on the
springs, a different result might
obtain. There the manufacturer could
perhaps prove that those aspects do not
serve a purpose within the terms of the
utility patent. [The patent and its
prosecution history must be examined]
to see if the feature in question is
shown as a useful part of the
invention.

TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d
at 1007. Based on this language, applicant argues the
following:
[T]he arms of applicant’s golf club
head are functional because they have
mass and are located away from the club
face for increased perimeter weighting
(MOI), but the recurved shape, taper
and step in the arms is arbitrary.
Likewise the through-holes of
applicant’s golf club head are
functional because they have no mass
and therefore allow the mass that would
have been present to be redistributed
to other parts of the club head for
increased perimeter weighting. The
through-holes are, however, arbitrarily
shaped, and therefore non-functional
for the purpose of trademark
registration. [footnote omitted].

Ser. No. 77170356
13
(Brief, p. 7). Applicant points out that “[t]he recurved
shape of the arms is not the most efficient way to
redistribute the mass for increased moment of inertia.
Instead, the ideal way to redistribute the mass would be to
locate it in a ring of constant radius with no taper and no
central member.” Id.
The problem with applicant’s argument is that the
exact same features claimed in the utility patent are
included in the description of the trademark sought to be
registered. So as to be clear, the patent includes the
following claims:
What is claimed is:

A golf putter head comprising: a face
member having a heel end, a toe end, a
top rail, and a front surface arranged
for impacting a golf ball; a first arm
extending substantially rearwardly from
the heel end of said face member; a
second arm extending substantially
rearwardly from the toe end of said
face member; a central member extending
rearwardly from said face member
intermediate the heel and toe ends
thereof, said central member being
connected to said first and second arms
rearwardly of said face member, said
central member having an upper surface;
said central member and said first arm
defining a first opening there between
adjacent the heel end of said face
member; said central member and said
second arm defining a second opening
there between adjacent the toe end of
said face member; said central member
including a first cavity in its upper
Ser. No. 77170356
14
surface located between said first and
second openings; and said central
member including a second cavity in its
upper surface located rearwardly of
said first cavity and rearwardly of
said first and second openings.

The golf putter head of claim 1,
wherein said central member includes a
pair of wing portions connecting said
central member to said first and second
arms rearwardly of said face member.

The golf putter head of claim 1,
wherein said central member includes a
substantially U-shaped wall at one end
thereof that merges with a back surface
of said face member.

As Professor McCarthy has pointed out, non-functional
elements of an invention, such as “arbitrary curves” or a
painted “ornamental pattern,” should not and do not appear
in the claims of a utility patent as asserted by the
Supreme Court in the quoted language; “[t]herefore, the
Court must have been referring to non-functional features
that appear in a patent disclosure.” J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §7:89 (4th
ed. 2006).
Professor McCarthy further notes in this regard:
“Prior case law cautions that a utility patent must be
examined in detail to determine whether the disclosed
configuration is really primarily functional or is just a
non-functional shape that happens to be described or
Ser. No. 77170356
15
pictured as an incidental detail in a patent disclosure.”
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §7:89 (4th ed. 2006). Similarly, as Professor
McCarthy notes at §7:89.1, the Court of Customs and Patent
Appeals has stated that “[a] patent may not be evidence of
functionality in regard to things of a ‘purely arbitrary’
or ‘mere design’ nature which happen to be disclosed in the
patent but which are not attributed any functional
significance therein.” Best Lock Corp. v. Schlage Lock
Co., 413 F.2d 1195, 162 USPQ 552, 556 (CCPA 1969).
However, if the patent discloses the functionality of the
design,
… this evidence is particularly
entitled to great weight if the patent
was applied for by the same person who
now asserts trademark significance in
the same configuration. A kind of
estoppel arises. That is, one cannot
argue that a shape is functionally
advantageous in order to obtain a
utility patent and later assert that
the same shape is non-functional in
order to obtain trademark protection.
Functional patent protection and
trademark protection are mutually
exclusive. As one court stated, when
the configuration is disclosed in a
functional patent, and the patent
expires, the public “now has its
inning.”

McCarthy, supra, at §7:89.1.
Ser. No. 77170356
16
In the present case, the utility patent includes
claims covering the very same functional features of the
putter head that, as set forth in the description, comprise
the applied-for mark. Accordingly, the utility patent is
strong evidence of functionality.
The second factor in the Morton-Norwich analysis
involves a consideration of whether applicant’s
advertisements tout the utilitarian advantages of
applicant’s design. Applicant submitted an advertisement
run by a third party for applicant’s putters, and the
examining attorney introduced three advertisements run by
third parties. The advertisements include the following
statements:
The CRAZ-E features strategic weight
placement near the heel, toe and rear
of the putter through its geometric
shape and use of lightweight urethane
inserts...The result, Solheim said, is
an extremely high moment of inertia and
a center of gravity positioned low and
away from the face to ensure accuracy
and consistency.
(www.pga.com)

Additional performance comes from the
increased perimeter weighting and lower
center of gravity achieved through
redistribution of the mass removed to
create the insert cavity.
(www.bhmgolf.com)

Designed with a geometric shape for
increased inertia and easy
alignment...the head is designed with a
Ser. No. 77170356
17
center of gravity (CG) that is very low
and away from the face. This helps get
the ball rolling sooner and straighter
for more consistent putts. The
strategic weight placement near the
heel, toe and center of the putter,
creates an extremely high moment of
inertia (MOI) for increased accuracy
and consistency. The crescent shapes
and extra-long sight line contrast with
the blue urethane inserts to create an
Optigraphic Effect – a visual aid that
helps golfers square up and stroke the
putter along the intended target line.
(www.iwantgolf.com)

When added to the aluminum body, the
tungsten weights maximize the perimeter
weighting to earn it the distinction of
being PING’S highest MOI putter (and
thus most forgiving) to date.
(www.edwinwattsgolf.com)

Although the advertisements were not run by applicant
itself, it does not dispute the above statements. In each
instance, the advertisement touts the advantages of
perimeter weighting to increase moment of inertia, thereby
increasing the likelihood of accuracy and consistency.
This weighting is accomplished by the specific design of
applicant’s putter head. Thus, we find that the
advertisements tout the utilitarian advantages of
applicant’s putter design. See In re Caterpillar Inc., 43
USPQ2d 1335 (TTAB 1997). Moreover, we find that the
specificity with which the advertisements discuss
particular characteristics of applicant’s putters belies
Ser. No. 77170356
18
applicant’s contention that the advertisements are merely
“generalized statements concerning the geometric shape and
the perimeter weighting [that] are descriptive of the
function of any high MOI putter.” Finally, we agree with
the examining attorney’s assessment that “[t]he advertising
does not call attention to the putter head design as a
trademark, rather it merely stresses the functional aspects
of the design and the advantage it provides over other
similar types of equipment.” (Brief, p. 9). This factor
weighs in favor of a finding of functionality.
The third Morton-Norwich factor involves consideration
of alternative designs. The Federal Circuit has indicated
that consideration of this factor remains part of the
analysis. Valu Engineering, Inc. v. Rexnord Corp., 61
USPQ2d at 1427. In connection with its argument that there
are “many equally feasible, efficient and competitive
designs,” applicant submitted photographs of what it
considers to be eighteen alternative designs of high moment
of inertia putter heads manufactured by competitors.
Applicant contends that these designs “demonstrate that the
concept of moving mass from the center of the golf club
head to its perimeter is functional because it increases
the MOI of the club head. Nevertheless, the configurations
that results [sic] from the mass movement can be
Ser. No. 77170356
19
accomplished in a multitude of equally feasible, efficient
and competitive ways.” (Brief, p. 12).
Although this evidence shows a variety of designs that
are specifically different, all are similar in design and
involve the same utilitarian features: perimeter weighting
accomplished by through-holes to increase moment of
inertia. These other designs presumably work equally well,
but the number of alternatives to increase the moment of
inertia in a putter head is relatively limited. Moreover,
although the putter heads are available in somewhat
different designs, each of these designs would appear to be
likewise functional because utility, not source
identification, dictates the shape of each of the
alternatives. The grant of an exclusive trademark right to
applicant or any competitor for its design will impair free
competition. See In re Bose Corp., 772 F.2d 866, 227 USPQ
1 (Fed. Cir. 1985); and Greenhouse Systems Inc. v. Carson,
37 USPQ2d 1748 (TTAB 1995). See also In re Edward Ski
Products Inc., 49 USPQ2d 2001 (TTAB 1999) (a design need
not be the superior design, so long as it is a superior
design or one of a few superior designs). As explained by
the Federal Circuit, “Morton-Norwich does not rest on total
elimination of competition in the goods.” In re Bose
Corp., 27 USPQ at 6. On balance, this factor weighs
Ser. No. 77170356
20
against a finding of functionality. It is important to
note, however, that the availability of alternative designs
does not convert a functional design into a non-functional
design. TrafFix Devices Inc. v. Marketing Displays Inc.,
58 USPQ2d at 1007 (“Here, the functionality of the spring
design means that competitors need not explore whether
other spring juxtapositions might be used. The dual-spring
design is not an arbitrary flourish in the configuration of
MDI’s product; it is the reason the device works. Other
designs need not be attempted.”).
The fourth and final factor is a consideration of
whether applicant’s design results from a comparatively
simple or cheap method of manufacture. Applicant submitted
the declaration of David Jones, a design engineer for
applicant. In pertinent part, Mr. Jones states that
applicant’s putter head is manufactured by a lost wax
casting process similar to the process used to manufacture
many conventional putter heads and iron heads. The shape
of the putter, according to Mr. Jones, “does not result
from a comparatively simple or inexpensive method of
manufacture as compared with other high moment of inertia
putter heads.” The advertisements of record show that
applicant’s putter and those of competitors are
comparatively priced in the $100-$150 range. This factor
Ser. No. 77170356
21
weighs in favor of a finding that the design is not
functional.
In summary, the shape of the putter head is dictated
by the desire to move additional weight to the perimeter to
create high motion of inertia for greater forgiveness for
miss-hits. Applicant’s putter head has through-holes
designed to apportion the putter weight to the front of the
putter, the ends closest to the striking face, and the back
end central member. This design increases the moment of
inertia of the putter head, thereby rendering the design
functional.
Decision: The refusal to register is affirmed.