Lange Uhren GmbH

Trademark Trial and Appeal Board

Apr 15, 2003

No. 75883446 (T.T.A.B. Apr. 15, 2003)

Mailed: April 15, 2003
Paper No. 12
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lange Uhren GmbH
________
Serial No. 75/883,446
_______
Eric P. Schellin for Lange Uhren GmbH.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Lange Uhren GmbH has appealed from the final refusal
of the Trademark Examining Attorney to register the design
shown below on the Supplemental Register for “chronometers,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/883,446
2
chronographs for use as watches.”1 The application includes
the following description of the mark:
The mark consists of a configuration of
a watch face consisting of two circles
and a rectangle. The large circle
serves as a border for the hour and
minute hands, the smaller circle serves
as a border for the second hand, and
the rectangle serves as the border for
two numerals indicating the date of the
month. Broken lines are used in the
drawing to show placement of the mark
on the watch. The matter shown by the
broken lines is not part of the mark.2
1 Application Serial No. 75/883,446. The application was
originally filed on the Principal Register on December 23, 1999,
claiming use between the United States and Germany since 1994.
After the Examining Attorney refused registration pursuant to
Sections 1, 2 and 45 of the Trademark Act, on the grounds that
the proposed mark is not inherently distinctive and that it does
not function as a mark, applicant amended its application to the
Supplemental Register on December 21, 2000.
2 Applicant, in its appeal brief, has offered a new description
of the mark, with the following statement: "If it will material
[sic] help matters, the applicant would ask to have the
application for [sic] remand to consider definite language for
the said two circles and rectangle." The proper manner in which
to submit a request for remand is to file a separate document
captioned as such, rather than to bury such a request in an
appeal brief (in this case, at the bottom of the third page).
Aside from the procedural irregularity, applicant has not shown
good cause for such remand, and the request is hereby denied. It
should also be noted that the proposed description appears to
change the mark to eliminate the reference to the geometric
figures acting as borders for the hour and minute hands, the
second hand, and the date; such change would constitute an
unacceptable material alteration of the mark.
Ser No. 75/883,446
3
Registration has been finally refused pursuant to
Section 23 of the Trademark Act, 15 U.S.C. §1091, on the
grounds that the applied-for design is de jure functional,
and that the proposed mark is incapable of identifying
applicant’s goods and distinguishing them from others. The
Examining Attorney has also made final a requirement,
pursuant to Trademark Rule 2.61(b), that applicant submit a
patent which was referred to in applicant’s advertising.
Applicant and the Examining Attorney have filed appeal
briefs; an oral hearing was not requested.
We turn first to the Examining Attorney's request that
applicant submit its patent. This requirement was made in
the second Office action, and arose because of a statement
in what the Examining Attorney has characterized as a
substitute specimen. (In fact, applicant did not submit a
substitute specimen, but argued that its original specimen
was acceptable. The statement appears in the original
specimen.) The statement advertises a "patented outsize
Ser No. 75/883,446
4
date" as a feature of applicant's watch.3 The Examining
Attorney required that applicant submit a copy of the
patent to which this statement refers. Applicant responded
by stating that the mention of the patented outsize date
"does not refer to any U.S. patents expired or not expired
so the point is moot." Apparently the Examining Attorney
interpreted this statement as indicating that the relevant
patent had not been issued in the United States, because in
the next, and final, Office action, the Examining Attorney
stated that applicant's response was insufficient because
the request for information was not limited to U. S.
patents.
In its appeal brief applicant made the following
statement:
The examining-attorney relies heavily
on the statement made by applicant in
one [of] its advertising materials
wherein [it] is mentioned mentions
[sic] a patent to cover an "outsize
date". There is no patent of applicant
or applicant's having rights under a
patent live or expired depicting the
two large and small circles with a
rectangle as depicted on the present
application or discoursed thereon in
the above. Essentially such a
statement was made heretofore during
the course of prosecution. To obviate
3 The advertising text also refers to "stop seconds" as well as
"manually wound," "twin barrels," and "power-reserve indicator."
The Examining Attorney has assumed that the patent refers to the
stop seconds as well as the outsize date. We do not read the
advertising material in this manner.
Ser No. 75/883,446
5
any further such assertion applicant
offers herewith a list (EXHIBIT A) of
all the patents in which applicant
possesses some interest. Also
forwarded herewith is a translated copy
of European patent No. 0 529 191
(EXHIBIT B) which has absolutely no
bearing on the instant matter. It is
submitted that the reference to a
patent is by way of puffery to gain
advantage competitively which has
nothing to do with a large circle, a
smaller circle and a rectangle and
their relative positions.
p. 2-3.
In general, to make evidence of record subsequent to
the filing of an appeal, the applicant must file a request
for remand. See Trademark Rule 2.142(d). In this case,
however, the Examining Attorney has discussed and, in fact,
relied on, the exhibits submitted with applicant's appeal
brief. Therefore, we deem this evidence to have been
stipulated into the record.
The Examining Attorney has continued to assert that
applicant has not complied with the requirement that it
submit its patent. Although the Examining Attorney has
pointed to statements made in the European patent to
support her claim that the design mark is functional, at
the same time she has asserted that, because applicant
stated that Exhibit B "has no bearing on the instant
matter," it is not responsive to the requirement that
applicant submit a copy of the patent referenced in the
Ser No. 75/883,446
6
specimen. The Examining Attorney also criticizes this
exhibit because "applicant has not specified whether the
submitted translation is the patent referenced in the
specimen of use." Brief, p. 13.
There is a certain Alice-in-Wonderland quality to the
Examining Attorney's objections. Applicant has repeatedly
stated that the reference to a patent in the specimen is
mere puffery, and does not refer to an actual patent. Yet
the Examining Attorney continues to insist that applicant
must submit this non-existent patent. Further, although
applicant, in an excess of caution, has submitted a list of
all the patents it owns or in which it has an interest,
including a copy of its European patent for a date-
indicating device, the Examining Attorney has criticized
the latter patent (while at the same time relying on it to
show the mark is functional) because applicant has not
stated that it is the patent to which the advertising
refers, when applicant has stated that there is no such
patent.
Trademark Rule 2.61(b) provides that "the examiner may
require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper
examination of the application." Clearly, Examining
Attorneys are authorized to require such information, and
Ser No. 75/883,446
7
the Board has affirmed refusals of registration when
applicants have failed to comply with such requirements.
See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002); In re
Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990). However,
the requirement must be reasonable. It is patently
unreasonable for the Examining Attorney to continue to
insist that applicant submit a copy of a patent when
applicant has already explained that it does not exist.4
The Examining Attorney's requirement that applicant
submit the requested information is reversed.
This brings us to a consideration of the refusal based
on the ground that applicant's proposed mark is de jure
functional. Section 23(c) of the Trademark Act prohibits
the registration of any matter that as a whole is
functional.
The Examining Attorney asserts that applicant's mark
is functional because each of the separate elements of the
overall configuration is functional, and that applicant has
simply combined the functional elements into a logical
combination which is merely the sum of the functional parts
and, therefore, the whole is functional, also. The
4 Of course, if an applicant were, in response to a request for
information or exhibits, to deliberately misstate that such
information or materials did not exist, the application or any
resulting registration would be vulnerable in an inter partes
proceeding to a claim of fraud.
Ser No. 75/883,446
8
Examining Attorney also asserts that the positioning of the
different elements on the face of the watch is merely the
logical accommodation of the internal functional shapes.
A product feature is functional and cannot serve as a
trademark if it is essential to the use or purpose of the
article or it affects the cost or quality of the article. A
functional feature is one the exclusive use of which would
put competitors at a significant non-reputation-related
disadvantage. Qualitex Co. v. Jacobson Products Co., 514
U.S. 159, 34 USPQ2d 1161 (1995), quoted in TrafFix Devices
Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d
1001, 1006 (2001).
The Examining Attorney has reached the conclusion that
applicant's mark is functional by examining the evidence in
light of the four factors set forth in In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982):
(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.
Ser No. 75/883,446
9
With respect to the first factor, the Examining
Attorney points to the European patent which applicant
submitted as Exhibit B to its appeal brief. That patent
relates to a date indicator for a wristwatch. The patented
operating mechanism for the date indicator requires a
smaller operating area, thus allowing more flexibility in
the positioning of the date display, including in the edge
region of the watch.
The patent does not show that the rectangle portion of
applicant's proposed mark, which is used as the border for
the date, is functional. Although the patent allows for
the rectangular date indicator to be located in the part of
the watch face as shown in applicant's mark, that placement
is not dictated by the patent. On the contrary, the patent
indicates that the rectangle area for the date would not be
restricted to any particular position on the watch face.
The second factor is whether there are any advertising
materials which tout the utilitarian advantages of the
design. The Examining Attorney points to that portion of
the advertising copy which lists as a feature of the watch
the "patented outsize date."5 To the extent that the
5 Again, the Examining Attorney also refers to the mention of
"stop seconds" as part of the patented "outsize date" feature;
however, as pointed out in footnote 3, we do not read the copy as
referring to the "stop seconds" as being part of the patented
"outsize date" feature.
Ser No. 75/883,446
10
Examining Attorney considers the reference to a patent as
touting the utilitarian feature of the design, the utility
patent which is of record, as we have discussed above, does
not demonstrate that the rectangular portion of applicant's
mark is utilitarian, or that the rectangular section must
appear in the placement shown in the mark. To the extent
the highlighting in the copy of the outsize date is
asserted to be touting the utilitarian nature of the
design, we find that this is insufficient to show that the
mark is functional. The rectangular shape which is part of
applicant's proposed mark, while not particularly large,
might be viewed as being able to accommodate a date shown
in larger type. However, the rectangular shape does not
appear to us to be particularly outsize, such that the
rectangular border would be perceived as utilitarian.
Further, the rectangular shape is only one element of
applicant's mark. The two circle designs are at least as
prominent as the rectangular shape. And there is no
touting of any utilitarian aspect of these designs, or of
the configuration as a whole.
The third factor is the availability of alternative
designs. Applicant has submitted 34 exhibits showing
alternative designs of watch faces which contain various
circles, squares and rectangles bordering indicators of
Ser No. 75/883,446
11
seconds, hours and minutes, dates and days. The Examining
Attorney does not appear to contest that there are
alternative designs, because in terms of this factor she
states "the mere fact that there are alternative designs
does not automatically mean that the configuration that
Applicant seeks to register is not functional." Brief, p.
9. We think that applicant has persuasively shown that
there are many alternatives for depicting minutes and
hours; seconds; and the date. In fact, applicant's design
is different from the others which have been submitted in
that the others all appear to indicate the minutes and
hours in a large circle that forms the circumference of the
watch as a whole. Applicant's design, on the other hand,
is for a smaller circle in which minutes and hours are to
be depicted, and this circular border appears within the
larger circumference of the watch itself.
As for the final factor, applicant has stated that
there are alternate designs that would not be more costly
to produce. Certainly there is no evidence that the use of
the two circles and a rectangle as depicted in applicant's
mark results from a comparatively simple or cheap method of
manufacturing the product. The Examining Attorney argues
that "it would seem that competitors would need to be free
to copy the design in order to compete, given that it is
Ser No. 75/883,446
12
common for the various components of a watch face to
consist of a date function, a minute and hour function and
a seconds functions [sic]. The configuration is functional
because the design must be made available for others to use
if they are going to compete effectively." Brief, pp. 9-
10. This argument clearly does not establish that
applicant's design would result in a cheaper method of
manufacture.
This is not to say that applicant's mark does not
consist of very common elements. On the contrary, the
evidence shows that circles are commonly used as the shape
bordering the depiction of both hours and minutes, and
seconds, and rectangles or squares are used as the border
for the date. However, applicant is not seeking to obtain
exclusive rights to the use of a circle or a rectangle as a
trademark for watches. Applicant is seeking to register
two circles and a rectangle which have a particular size
ratio and placement to each other. The Examining Attorney
has neither shown how these particular sizes and placements
of circles and rectangle are functional, nor how the
registration of this particular design would hinder
competition.
Accordingly, we reverse the refusal based on the
ground of de jure functionality.
Ser No. 75/883,446
13
The final ground for refusal is that "the proposed
mark does not function as a trademark." Examiner's brief,
p. 11. The Examining Attorney has asserted that
applicant's sales figures do not provide [sic, should be
prove] that purchases [sic] recognize the design sought to
be registered as Applicant's mark" and that "the purchasing
public would not perceive the applied for mark as
identifying or distinguishing Applicant's chronometers and
chronographs for use as watches as to source." Brief, p.
12.
We agree with the Examining Attorney that, based on
this record, the applied-for design does not function as a
mark. However, applicant has applied for registration on
the Supplemental Register, for which the requirement is
only that the matter be capable of distinguishing
applicant's goods or services. Thus, it is not necessary
that at this time the design actually distinguishes the
source of applicant's goods, or that it currently functions
as a mark. There is no question, as we mentioned above,
that circular borders are used in numerous watches, and
that rectangular borders are used for the date indicator.
In view of this, consumers are not likely to recognize such
geometric shapes as source indicators. However, applicant
has not applied for a circle or rectangle shape per se, but
Ser No. 75/883,446
14
two circles and a rectangle of particular size ratios and
placement. We cannot say that the applied-for matter is
incapable of ever distinguishing applicant's goods.
Accordingly, we find that the mark is registrable on the
Supplemental Register.
Decision: The refusals of registration on the grounds
that the applied-for mark is de jure functional and
incapable of functioning as a trademark and the requirement
for submission of a particular patent are reversed.