Kason Industries, Inc.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 74691008 (T.T.A.B. Aug. 17, 1999)

Paper No. 20
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 16, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kason Industries, Inc.
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Serial No. 74/691,008
_______
Robert B. Kennedy of Kennedy, Davis & Kennedy, P.C. for
Kason Industries, Inc.
Chad M. Smith, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney)
_______
Before Seeherman, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Kason Industries, Inc. has applied to register the
configuration shown below
Ser. No. 74/691008
2
for “metal door closers.”1 Applicant’s description of its
mark which was finally accepted by the Examining Attorney
reads as follows: “The mark consists of the external
appearance of a housing and a roller arm of a door closer
which is attached to a door. The environment of the mark,
including a strike for attachment to a door frame and a
roller for cooperating with the strike, is shown in broken
lines which are not part of the mark.” Applicant also
included a statement that “[t]he stippling in the drawing
represents shading and is not intended to indicate color.”
Applicant claims that the configuration is only de
facto functional and has become distinctive of applicant’s
goods, and applicant therefore seeks registration pursuant
to Section 2(f) of the Trademark Act.
Registration was finally refused on the ground that
the configuration is de jure functional under Sections 1, 2
and 45 of the Trademark Act2; and that if the configuration
is held not de jure functional, the evidence submitted by

1 Application Serial No. 74/691,008, filed June 20, 1995.
Applicant claimed dates of first use and first use in commerce of
August 1987.
2 As one of the amendments to the Trademark Act to implement the
provisions of the Trademark Law Treaty which became effective
October 30, 1998, Section 2(e) has been amended to specifically
incorporate the functionality doctrine into the statute in new
subsection 2(e)(5), which provides for refusal if the mark
“comprises any matter that, as a whole, is functional.” Section
2(f) has been amended to exclude subsection 2(e)(5) from the
provisions thereof.
Ser. No. 74/691008
3
applicant in support of its Section 2(f) claim is
insufficient for that purpose.
Applicant has appealed. Applicant and the Examining
Attorney filed briefs, but no oral hearing was requested.
Preliminarily, we address an evidentiary matter.
Applicant submitted several exhibits with its brief on
appeal, some of which were submitted during the prosecution
of the application, and thus, properly form part of the
record. However, the Examining Attorney objected to the
third-party materials which were not previously made of
record. We agree that these submissions were untimely, and
accordingly, applicant’s exhibits C, D, and E (attached to
its brief) have not been considered. See Trademark Rule
2.142(d).
I. De Jure Functionality
To be considered de jure functional, it must be shown
that not only does the design of a product have a function,
but performance of that function is enhanced by the
particular configuration that it takes. See In re R. M.
Smith, Inc. 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984); and
In re Virshup, 42 USPQ2d 1403 (TTAB 1997). “If the design
of a product is so utilitarian as to constitute a superior
design which others in the field need to be able to copy in
Ser. No. 74/691008
4
order to compete effectively, it is de jure functional and,
as such, is precluded from registration for reasons of
public policy.” In re Caterpillar Inc., 43 USPQ2d 1335,
1338 (TTAB 1997).
The Examining Attorney bears the burden of making a
prima facie showing of de jure functionality of the
applied-for mark. Our primary reviewing court has
recognized that “[t]he practicalities of the limited
resources available to the PTO are routinely taken into
account in reviewing its administrative action.” In re
Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868
(Fed. Cir. 1985).
Factors which may be considered in determining de jure
functionality (i.e., whether or not a particular design is
a superior one) include: (i) the existence of a utility
patent showing the functional advantage of the design; (ii)
advertising materials showing that the utilitarian
advantages have been touted by applicant; (iii) facts
tending to show an absence of alternative designs; and (iv)
facts from which it could be determined that the design is
the result of a comparatively simple or inexpensive method
of manufacture. See In re Morton-Norwich Products Inc.,
671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
Ser. No. 74/691008
5
The Examining Attorney argues that applicant’s product
configuration is a simple rectangular-shaped housing for a
locking cylinder, and a lever arm for positioning and
holding of a locking roller; that this rectangular shape
housing is necessary to cover the long narrow cylinder with
a minimum of material and to provide a base from which to
secure the tabs to the door itself; that use of the same or
highly similar designs by competitors indicates the lack of
available competitive designs; and that applicant’s own
brochure touts the utilitarian advantages of its product
design.
First, we note that applicant does not own a utility
patent for this configuration. While applicant does own a
design patent, this is not, without more, decisive of the
question of de jure functionality. We note that the
drawing in the design patent is virtually identical to the
drawing in the present application, the only difference
being the design patent does not include the strike or hook
for attachment to the door. However, the hook appears in
the drawing of this application in broken lines, and
applicant stated it makes no claim thereto. See In re
American National Can Co., 41 USPQ2d 1841 (TTAB 1997).
Moreover, applicant’s design patent is simply evidence of
Ser. No. 74/691008
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recognition of the ornamental features of the door closer.
The design patent is silent as to utilitarian features.
The next factor is applicant’s touting of the
utilitarian features in its advertisements or brochures.
Applicant’s brochure includes references that its “one-
piece solid steel housing completely encloses hydraulic
mechanism” and “You save the extra expense and assembly
time needed for separate housing cover.” Applicant
contends this is mere “puffing” or promoting the unitary
nature of its product, and, more importantly, that
applicant is not claiming the unitary nature of the product
as a feature of the mark. However, applicant’s statements
clearly refer to the rectangular housing cover, and this
is, in fact, the feature that applicant is claiming as part
of its mark. Thus, we find there is touting of this
utilitarian feature of applicant’s design. See In re
Edward Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999).
The third factor, the unavailability of other designs,
also weighs against applicant. Applicant’s vice president
of engineering, Burl M. Finkelstein (in two declarations)
attested to the number of alternative designs available in
the marketplace. The alternative designs provided by
applicant essentially show the exact same shape, a
rectangle. (Some of the asserted alternative designs are
Ser. No. 74/691008
7
manufactured by applicant.) There are of record two other
designs produced by competitors (Standard-Keil Industries,
Inc. and Dent Manufacturing Inc.). All of these products
show essentially a rectangular-shaped cover or housing for
the door closer, with essentially the same roller arm.
We agree with the Examining Attorney that the
alternative designs made of record all constitute a single
basic rectangular shape. See Greenhouse Systems Inc. v.
Carson, 37 USPQ2d 1748 (TTAB 1995); and In re Lincoln
Diagnostics Inc., 30 USPQ2d 1817 (TTAB 1994). That is, all
of these alternatives are comprised of a rectangular-shaped
housing or casing covering a hydraulic closer with a
hooking roller arm attached thereto. In the absence of any
specifically different or alternative designs, it follows
that the rectangular shape is the best or one of a very few
superior designs for its functional purpose. Therefore,
competition would be hindered and a registration to
applicant would seriously interfere with the right to
compete. It is not necessary that competition be
eliminated totally to find de jure functionality. Rather,
it is sufficient if the product design applicant seeks to
register is one of only a few superior designs. See In re
Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985). Cf.
Ser. No. 74/691008
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In re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB
1987).
The fourth factor, whether applicant’s product
configuration design is the result of a simpler or cheaper
method of manufacturing, we also find weighs against
applicant. Applicant asserts that its door closers cost
more to manufacture, and therefore the configuration is not
the result of a cheaper method of manufacturing. However,
in reviewing the supplemental declaration of applicant’s
vice president of engineering, Mr. Finkelstein, we note
that the increased cost of making these door closers is due
to the fact that they are made of steel instead of other
materials such as plastic, which involves greater material
as well as labor costs (for handling and finishing steel).
This evidence all goes solely to the materials used, not to
the actual design of the product involved. Applicant
submitted no evidence regarding the cost of manufacturing
the involved design. The housing and roller arm in
applicant’s product configuration simply follow the natural
line of the functional portion of the door closer.
In sum, we find that the product configuration design
sought to be registered by applicant is de jure functional.
Ser. No. 74/691008
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II. Acquired Distinctiveness
Although we have found the applied-for matter to be de
jure functional, in order to render an opinion on each of
the issues before us, we now consider applicant’s Section
2(f) evidence, assuming for this discussion that the
configuration is only de facto, rather than de jure,
functional. Applicant bears the burden of establishing
acquired distinctiveness. See Yamaha International Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1006 (Fed. Cir. 1988). Applicant submitted a declaration
and a supplemental declaration from its vice president of
engineering, Burl M. Finkelstein; one affidavit from a
customer, Judy Wansley; one affidavit from an officer of a
competitor, Douglas D. Dodge; and certain documents from a
law suit involving applicant and a third-party regarding
alleged intentional copying of applicant’s design.
Applicant has explained that its primary market is
limited to 12 major original equipment manufacturers (OEM)
of walk-in refrigerators and freezers, with a secondary
market of hundreds of minor OEM’s and refrigeration
equipment supply houses which sell retrofit and replacement
products. Applicant’s identification reads “metal door
closers,” without any limitation thereto. Even considering
such limitation, i.e., metal door closers sold to
Ser. No. 74/691008
10
manufacturers for use on walk-in commercial refrigerators
and freezers, in assessing the evidence of acquired
distinctiveness, we still find that applicant’s evidence
falls far short of proof that the relevant consumers have
come to view applicant’s rectangular door closer
configuration as a trademark which identifies applicant as
the source of the goods.
Applicant’s brochures do not include any promotion of
the rectangular housing shape as an indication of the
source of the product. Mr. Finkelstein averred that
applicant spent $170,000 to create the involved door closer
design, and since 1988 has spent $10,000 for brochures,
catalog inserts, displays at trade shows, and promotional
photographs. The money spent in creating the design does
not in any way indicate consumer recognition of the design
as a trademark. The advertising expenditures have been
very limited, with only $10,000 spent in eight to nine
years. Moreover, there is no clear indication what
portion, if any, of these numbers relate solely to the door
closer design, rather than applicant’s trademark, KASON.
That is, there is no information in the Finkelstein
declarations specifically relating to the door closer
design as opposed to applicant’s trademark KASON, under
which applicant’s goods are sold.
Ser. No. 74/691008
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Applicant’s sales figures of 178,000 units,
representing sales of approximately $3,000,000, since 1988
certainly suggest applicant has enjoyed some success with
this door closer. However, this does not establish there
is secondary meaning associated with applicant’s
configuration (i.e., that consumers recognize applicant’s
design as a trademark). In sum, this evidence does not
demonstrate that the container configuration is recognized
as a source indicator. Rather, it shows only that
applicant has, in fact, advertised, promoted and sold its
goods. See In re American National Can Co., 41 USPQ2d 1841
(TTAB 1997); and In re Semel, 189 USPQ 285 (TTAB 1975).
Despite sales of 178,000 units, as well as a primary
market of twelve major original equipment manufacturers and
a secondary market which includes hundreds of minor OEM’s
and supply houses, nonetheless applicant submitted a single
affidavit from a customer, Judy Wansley. She averred that
she recognizes applicant’s door closers by their “overall
general appearance, and particularly by their three
extended ears and simple rectangular shape.” Even this
consumer referred to the shape as a “simple rectangular
shape.” We have little information regarding this
consumer, and there is no further evidence of consumer
recognition.
Ser. No. 74/691008
12
Applicant specifically argues that “it should be
appreciated that customers and persons in the relatively
small commercial refrigeration hardware industry are
reluctant to step forward and give sworn legal statements”
(Response filed March 17, 1997, p. 5). Although there is
no further evidence as to why this may be particularly true
in this industry, even assuming it is true, the affidavit
of one customer simply does not prove that the applied-for
matter has acquired distinctiveness.
An officer of one of applicant’s competitors (Mr.
Dodge, president of Dent Manufacturing, Inc.) also provided
an affidavit. Mr. Dodge avers that he is familiar with
many types of commercial refrigeration hardware; that he
recognizes the design in question as coming from applicant;
that he believes the design is well known in said industry
and is “readily recognized by its long rectangular shaped
appearance and its uni-body steel construction.” While Mr.
Dodge is aware of applicant as a competitor, again this
does not establish consumer recognition of the design as
indicating source.
Applicant also contends that evidence of intentional
copying supports a determination of acquired
distinctiveness, and that applicant filed a lawsuit against
a competitor for trademark infringement. The record shows
Ser. No. 74/691008
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that applicant’s lawsuit ended in a consent judgment.
Thus, there was no finding by the court on the merits of
applicant’s claim against its competitor. Moreover, we
cannot tell from the materials submitted from the court
case whether the third party admitted they were copying the
specific configuration at issue here.
Applicant has submitted information regarding one
purchaser and one competitor, along with some sales and
advertising figures. However, given the ordinary nature of
the involved rectangular shape, upon review of all the
evidence of acquired distinctiveness, we find it is
insufficient.
Decision: The refusal to register on the ground that
applicant’s door closer configuration is de jure functional
is affirmed, and on the additional ground that even if this
configuration of the goods were not de jure functional,
applicant’s evidence of acquired distinctiveness is
insufficient to establish that the configuration has become
distinctive through use in commerce.
E. J. Seeherman
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Board