Music City Marketing, Inc.

Trademark Trial and Appeal Board

Nov 14, 2000

No. 75035717 (T.T.A.B. Nov. 14, 2000)

Hearing: Paper No. 29
April 27, 2000 HRW
11/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Music City Marketing, Inc.
________
Serial No. 75/035,717
_______
Charles A. Laff and Martin L. Stern of Laff, Whitesel &
Saret, Ltd. for Music City Marketing, Inc.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Simms, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Music City Marketing, Inc. has filed an application to
register the configuration shown below for a “smoking
pipe.”1

1 Serial No. 75/035,717, filed December 22, 1995, based on an
allegation of a bona fide intention to use the mark in commerce.
A statement of use was filed January 9, 1998, setting forth a
date of first use and first use in commerce of January 1988.
The application was subsequently amended to one seeking
registration under Section 2(f).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/035,717
2
The description of the mark reads: The mark consists of a
configuration which is the design of a cigarette. The
lining statement reads: The drawing is lined for the color
tan.2
The intent-to-use application was published for
opposition on May 6, 1997. No oppositions were filed and a
notice of allowance issued July 29, 1997. The statement of
use was filed January 9, 1998. Thereafter the Examining
Attorney refused registration under Sections 1, 2 and 45 of
the Trademark Act on the ground that the proposed mark
consists of a design which is de jure functional.
Applicant subsequently amended the application to one
seeking registration under the provisions of Section 2(f)
and submitted evidence in support of its claim of
distinctiveness. The Examining Attorney argued, however,
that the proposed mark was not merely de facto functional,

2 Contrary to the statement made in the dissent, applicant has
never stated that “the color lining is not a feature of its
mark.” Applicant simply stated, in reference to the propriety of
its drawing, that the “lining shown in the drawing is not
intended as a feature of the mark, but is used only to indicate
the color tan, pursuant to 37 C.F.R 2.52(e).” We find this a
clear indication that applicant intends to claim the color tan as
a feature of the mark and that the lining is not to be
interpreted otherwise. Furthermore, since the Examining Attorney
never raised the issue of the non-registrability of the end
portion per se of the configuration, we find it an undue
extension of prosecution to remand this application for
consideration of this matter at this late date.
Ser No. 75/035,717
3
as would permit registration under Section 2(f), and made
the refusal of de jure functionality final.
The refusal on the basis that the mark is de jure
functional was appealed. Both applicant and the Examining
Attorney filed briefs and both participated in an oral
hearing on the case. The Examining Attorney stated in his
brief that the evidence which applicant had submitted was
sufficient to show acquired distinctiveness if the mark
were only de facto functional.
The configuration or design of a product is de jure
functional if it is so utilitarian as to constitute a
superior design which others in the field need to be able
to copy in order to compete effectively. In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA
1982). The four factors found to be useful in determining
this issue, as discussed in In re Morton-Norwich, Inc.,
supra, and consistently looked to by the Board, are as
follows:
(1) the existence of a utility patent that discloses
the utilitarian advantages of the design;
(2) the touting by the originator of the design in
advertising material of the utilitarian
advantages of the design;
(3) facts showing the unavailability to competitors
of alternative designs; and
(4) facts indicating that the design results from a
Ser No. 75/035,717
4
relatively simple or cheap method of
manufacturing the product.
See also In re Zippo Manufacturing Co., 50 USPQ2d 1852
(TTAB 1999); In re Edward Ski Products, Inc., 49 USPQ2d
2001 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335
(TTAB 1997).
The Examining Attorney has taken the position that
applicant’s proposed mark, a configuration in the design of
a cigarette, is superior to other available designs for
smoking pipes similar in function to applicant’s pipes and
thus would give a competitive advantage to applicant. He
points to the specimens of record and promotional
literature submitted by applicant as evidence that
applicant’s smoking pipes, which are marketed under the
mark THE SMOKELESS CIGARETTE, are in fact used as a smoking
cessation aid. As one example, he notes the statement in
the brochure attached to the declaration of Richard K.
Rowland, Vice President of Sales and Marketing for
applicant, which was submitted in support of applicant’s
claim of distinctiveness, that: Today’s health conscious
smokers also can use the Smokeless Cigarette ™ to reduce
tobacco consumption while satisfying the need for a smoke.
(Exhibit A1). Further statements in the literature in
Exhibit A2 are also pointed out as evidence of the use of
Ser No. 75/035,717
5
applicant’s smoking pipes as a means of cutting down or
quitting smoking.
Thus, the Examining Attorney argues that, since
applicant’s smoking pipes are used as a “cigarette
substitute smoking cessation aid,” the use of a design in
the form of a cigarette provides functional advantages. He
contends that the “realistic cigarette design allows the
smoker to be inconspicuous” whereas the alternative designs
available do not offer the user the same inconspicuous
design or serve as a substitute which looks and feels like
a regular cigarette.
Turning to the factors considered in determining
functionality, the Examining Attorney points to the touting
by applicant in its promotional material that the
“SMOKELESS CIGARETTE looks, lights and smokes just like a
regular cigarette” (Exhibit A2) and that it is “an
acceptable alternative to public cigarette smoking.”
(Exhibit A1).
Insofar as alternative designs are concerned, he
argues that although applicant has provided evidence of
other smoking pipe designs, these are not actually
alternatives, in that they do not offer the same
inconspicuous cigarette design. He has made of record
evidence of the use of “realistic cigarette configurations”
Ser No. 75/035,717
6
for products marketed as artificial cigarettes under the
marks NICOTROL and E-Z QUIT which are used by persons
attempting to quit smoking. He contends that the use of
similar cigarette configurations for these competitive
smoking cessation aids demonstrates the lack of alternative
designs when the consumer desires the “look and feel of a
real cigarette” and that “to prevent applicant’s
competitors from using the common design of a cigarette
would be costly...because they could not market to
consumers that demand a cigarette substitute in the form of
a realistic cigarette.” (Brief, p. 9).
Applicant, on the other hand, describes its goods as a
smoking pipe which burns only a single pinch of tobacco at
a time, thus, as it advertises, “satisfying the smoker’s
need for a ‘puff’ while eliminating afterburn and reducing
the quantity and odor of ‘secondhand’ smoke objectionable
to so many non-smokers.” (Exhibit A1). Applicant
acknowledges that this ability to burn only a single pinch
of tobacco also permits users with a means of rationing or
controlling the amount of tobacco they consume. Applicant
insists, however, that all of these functions are fulfilled
by the size of the tobacco bowl at the end of the pipe and
not the cigarette design or of any particular design of the
pipe. Applicant’s declarant, Richard Rowlands, has stated
Ser No. 75/035,717
7
that the resemblance of applicant’s pipe to a cigarette is
“purely whimsical and adds nothing to its function as a
pipe.”
Looking to the determinative factors, applicant states
that applicant’s cigarette design is not the subject of a
utility patent;3 that its advertising does not tout any
utilitarian advantages of the cigarette design; and that
the configuration does not result from a relatively simple
or inexpensive method of manufacture.4 As for alternative
designs, applicant points to the Rowland declaration in
which evidence was presented of several different designs,
many similar to a baseball bat, which are used by
competitors for similar products. (Exhibit E).
Accordingly, we find that only two of the four factors
which potentially may take a part in the determination of
functionality need be further considered here. There is no
relevant utility patent and there is no evidence that a
smoking pipe in a cigarette configuration is any cheaper or
easier to manufacture.

3 The only patent of applicant’s which is of record is for a
smoking system for holding a pipe and smoking material in a
single container and does not show use of a pipe having the
configuration of a cigarette.
4 In the Rowlands declaration the statement is made that
“[c]onfiguration as a cigarette does not affect the cost or
quality of manufacture of smoking pipes... .” (Par. 11).
Ser No. 75/035,717
8
Turning to applicant’s advertising and promotion of
its smoking pipes, we find that at least in one instance
applicant has touted the fact that its pipe “looks, lights
and smokes just like a regular cigarette.” Obviously,
simply by using the mark SMOKELESS CIGARETTE in conjunction
with the pipe, applicant draws attention to the resemblance
of the pipe to a cigarette. But we agree with applicant
that this advertising does not in any significant manner
tout any utilitarian advantages which are linked to the
cigarette design. The functioning of the smoking pipe as
one which only burns a single pinch of tobacco at one time
and the benefits obtained thereby, albeit reduction of
second hand smoke or reduction of tobacco consumption, are
not touted as resulting from the particular configuration
of the pipe. Nor is there any reference to the
inconspicuous appearance or any psychological benefit which
might be obtained from the use of a pipe resembling a
cigarette.
We further agree with applicant that advertising copy
describing the pipes as “an acceptable alternative to
public cigarette smoking” relates not to the cigarette
design itself, but rather to the features inherent in the
small bowl size of the pipe which makes smoking thereof
Ser No. 75/035,717
9
much more acceptable to persons frequently subjected to
second hand smoke.
We also find no evidence of the unavailability to
competitors of alternative designs which would serve the
same purposes and function in the same manner as
applicant’s smoking pipe which is in the configuration of a
cigarette. As shown by the examples of competitors’
products in Exhibit E attached to the Rowland declaration,
the pipes are often offered in a baseball bat configuration
or a highly decorated straight configuration. The
appearances of the pipes may vary widely; the utilitarian
functions remain the same.
The Examining Attorney contends, however, that these
other designs are not true alternatives, in that they do
not offer the inconspicuous nature of applicant’s cigarette
design. He argues that persons trying to cut down or quit
smoking, but wanting to use a substitute which has the
appearance of a cigarette, would not find the other designs
suitable. His claim of superior design is based for the
most part on the allegedly inconspicuous appearance of
applicant’s cigarette design pipe and/or the psychological
effects thereof.
Thus, the issue comes down to whether the cigarette
design is merely an aesthetic feature of applicant’s
Ser No. 75/035,717
10
smoking pipe which has contributed to its commercial
success or whether the design is in fact a superior design
in that it provides a competitive advantage to applicant
which truly hinders competition. As stated by our
principal reviewing court in Brunswick Corp. v. British
Seagull Ltd., 35 F.2d. 1527, 32 USPQ2d 1120, 1124 (Fed.
Cir. 1994):
...traditional trademark principles govern the
registrability of a proposed mark’s aesthetic
features. As with any mark, the test for de jure
functionality hinges on whether registration of a
feature hinders competition, and not whether the
feature contributes to the product’s commercial
success.
In the Brunswick case, the use of the color black for
outboard motors was found to be de jure functional, not
because the color was related in any way to the working of
the engine or the ease of manufacture, but rather because
the color black made the motors more compatible with boat
colors and visually decreased the apparent size of the
motors. These features were held to serve more than purely
aesthetic functions; instead, they supplied a competitive
advantage to the manufacturer of the black motors.
This holding was later referred to by the Supreme
Court in Qualitex Co. v. Jacobsen Products Co. 514 U.S.
159, 34 USPQ2d 1161 (1995), wherein the Court considered
Ser No. 75/035,717
11
the applicability of the functionality doctrine to the
color mark at issue. The Court succinctly stated that
functionality bars use of a product’s feature as a mark
“where doing so will put a competitor at a significant
disadvantage.” Citing the Restatement (Third) of Unfair
Competition, the Court reiterated the statement therein
that the “ultimate test of aesthetic functionality is
whether the recognition of trademark rights would
significantly hinder competition.” [Emphasis added].
We do not find this test to have been met here. It is
true that the cigarette configuration may be appealing to
or perhaps provide a psychological boost to persons who
want to appear to be smoking a cigarette or who are
accustomed to smoking cigarettes. If looked at with any
detail, however, it is obvious that this is not a
cigarette. The materials are not the same; this is a hard
pipe. The end is not a tobacco tip, as in a cigarette, it
is a metal tip. But even more significantly, there is no
evidence of record that the cigarette appearance is such a
major selling point that preventing competing manufacturers
and sellers of smoking pipes from using a similar design
would significantly hinder competition in this field.
Although the Examining Attorney has provided evidence that
somewhat similar cigarette shaped products are sold as non-
Ser No. 75/035,717
12
smoking cigarette substitutes, this evidence fails to
demonstrate the competitive need for applicant’s particular
cigarette configuration for actual smoking pipes.5 Although
the configuration may in fact enhance commercial success,
the configuration has not been shown to be such a superior
design that competitors would be put to a significant
disadvantage by applicant’s registration thereof. Thus,
the configuration has not been proven to be de jure
functional.

5 The dissent fails to recognize the distinction which must be
made between applicant’s product, which has been identified as a
“smoking pipe” and non-smoking cigarette substitutes. Although
applicant has acknowledged that its pipe may be used as a means
of rationing the amount of tobacco used, the fundamental purpose
of applicant’s pipe is not the same as the smokeless cigarette
substitutes such as E-Z QUIT or Nicotrol devices. While a
cigarette design may be highly instrumental to the
competitiveness of a cigarette substitute which is used to take
the place in one’s hand or mouth of a cigarette, there is no
evidence of record that the same is true for a smoking pipe whose
primary feature is to cut down on secondhand smoke and,
coincidentally, to cut down on, not replace, tobacco consumption.
Although the dissent states that the record establishes the
superiority of a cigarette design for a “cigarette smoke
cessation aid,” the only evidence advanced by the dissent of the
touting of the psychological advantages of a device which looks
like a cigarette is that made in connection with a cigarette
substitute, not a smoking pipe. We do not consider the single
instance of applicant’s touting its pipe as one which both
“looks, lights and smokes” (emphasis added) like a cigarette
sufficient to establish that this configuration provides such a
psychological advantage that competition in the field of smoking
pipes would be significantly hindered by the registration of
applicant’s configuration. Whether or not applicant could claim
infringement when such a configuration is used for a non-smoking
cigarette substitute is a matter of conjecture and clearly not a
basis for refusing registration.
Ser No. 75/035,717
13
While applicant has argued that its cigarette
configuration is also not de facto functional, this
question is irrelevant. Under the recent holdings by the
Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers
Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), product design
is not inherently distinctive for purposes of trademark
recognition. Accordingly, the present configuration can
only serve as an indication of source and be registrable on
the Principal Register upon a showing of acquired
distinctiveness. As previously noted, however, the
Examining Attorney has stated in his brief that the
evidence submitted under Section 2(f) is sufficient to
establish acquired distinctiveness for the present
configuration. Thus, we find applicant’s product design
registrable under the provisions of Section 2(f).6

6 We see no need to remand the application to the Examining
Attorney for further consideration of the evidence submitted
under Section 2(f). In Wal-Mart the Supreme Court simply held
that a product design could never be inherently distinctive. No
new or stricter standard was set forth for determining acquired
distinctiveness. Since the Examining Attorney has already
treated the present product configuration as one which was not
inherently distinctive, we see no reason to re-evaluate the
evidence which was found adequate to establish acquired
distinctiveness.
Ser No. 75/035,717
14
Decision: The refusal to register under Sections 1, 2
and 45 on the basis that the configuration sought to be
registered is de jure functional is reversed. The mark
will be forwarded for registration under the provisions of
Section 2(f).
E. W. Hanak
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 75/035,717
15
Simms, Administrative Trademark Judge, dissenting:
Because I believe that the majority has minimized the
significance of applicant’s touting of the appearance of
its own goods, has otherwise given inadequate weight to the
use of similar designs for smoke cessation devices and has
failed to use common sense, I dissent.
Applicant’s product is designed to help cigarette
smokers cut down on or quit smoking. While applicant’s
goods are defined in its application as “smoking pipes,” it
is clear from the promotional literature of record that its
goods are aimed at cigarette smokers and not pipe smokers.7
Applicant has apparently identified its goods as “smoking
pipes” because its goods are not ordinary paper cigarettes
but are constructed of aluminum or brass.8 Applicant’s
literature indicates that its cigarette-like device is sold
in cases “about the size of a standard 100mm cigarette pack
and can be carried easily in shirt pocket or purse.” To

7 Despite the fact that applicant had been using its asserted
mark for seven years, applicant’s 1995 application was filed
under Section 1(b) of the Act, 15 USC §1051(b), on the basis of
applicant’s “bona fide intention to use the mark in commerce.”
8 Webster’s Third New International Dictionary (Unabridged)
(1993) defines “pipe” as, among other things, “a device usu.
consisting of a tube having a bowl at one end and a mouthpiece at
the other and used for smoking .” There is nothing in
either the description of goods or the description of applicant’s
mark, both of which will be printed on applicant’s registration,
which indicates the composition of applicant’s goods. However,
from the identification “smoking pipes,” one can surmise that the
goods will be of somewhat rigid structure.
Ser No. 75/035,717
16
use, one “fill[s] the Smokeless Cigarette and light[s] up
as usual.” Each fill offers up to six puffs and self-
extinguishes after each puff.
The Examining Attorney has argued that applicant’s
cigarette design is superior to other available designs and
provides applicant with a competitive advantage. The
Examining Attorney maintains that a smoker using
applicant’s device can be “inconspicuous” because the
device looks like a real cigarette. See the reproductions
below, from applicant’s packaging and promotional
literature.
Ser No. 75/035,717
17
The Examining Attorney also notes the following statement
from applicant’s literature.
SMOKELESS CIGARETTE looks, lights and smokes just
like a regular cigarette.
Because of the resemblance of applicant’s product to a
regular cigarette, there are obvious psychological benefits
to the use of applicant’s device in the difficult process
of quitting smoking. Indeed, the majority concedes that
the use of applicant’s “cigarette configuration may be
appealing to or perhaps provide a psychological boost to
persons who want to appear to be smoking a cigarette or who
are accustomed to smoking cigarettes.”
The Examining Attorney maintains that the other
designs which applicant has pointed to are less desirable
alternatives because they do not resemble real cigarettes.
Consumers that are trying to cut down or quit
smoking, and want a cigarette substitute to look,
and feel just like a regular cigarette, would not
purchase the colorful, metallic, odd shaped pipes
for their purposes.
Some of the alternative designs are shown below.
Ser No. 75/035,717
18
The Examining Attorney also points to other smoke
cessation aids which use realistic cigarette appearances in
arguing that applicant, by federal registration, should not
be able to appropriate exclusive rights to a common
cigarette design for a product that functions as its
substitute. The fact that others use similar cigarette-
like appearances for their smoke cessation aids
demonstrates the lack of realistic alternatives, according
to the Examining Attorney. If applicant were granted a
registration, the Examining Attorney argues that others
could be hampered in their ability to compete by selling
realistic cigarette substitutes as smoke cessation aids. I
agree. The Examining Attorney has pointed to the E-Z QUIT
product (“a smokeless cigarette substitute that fills your
need to do something with your hands and mouth, and to
inhale deeply”) and the Nicotrol inhaler. Those devices
are reproduced below.
Ser No. 75/035,717
19
The maker of the E-Z QUIT product states that the user will
“feel like smoking a real cigarette.” The promotional
information, obtained by the Examining Attorney from the
Internet, further indicates that this product “Simulates
The Sensation Of Smoking,” that “E-Z QUIT is uniquely
designed to substitute for the habits of handling and
drawing on a cigarette… When you inhale through an E-Z
QUIT, you replicate the actions of smoking, calming your
oral desire to smoke… Holding and handling an E-Z QUIT
keeps your hands occupied as if with a cigarette. This
helps reduce your feeling of deprivation.” The
Ser No. 75/035,717
20
testimonials that accompany this product information are
also telling:
I have found the recently introduced
(brand name) nicotine patches to be helpful in
ridding myself of nicotine addiction; however,
few proponents of the anti-smoking campaigns
have considered effective aids for the more long-
lasting psychological addiction or habit of
holding that cigarette, puffing on it and
actually drawing something into the lungs.
Nothing on the market (I’ve tried them all)
compares to the emotional comfort offered by E-Z
QUIT cigarettes.—Carole Kilgore, Westland, MI
A smoker is used to having a cigarette in his
hand and a pill or gum won’t satisfy that
habit…Evelyn Bergstedt, Bend, OR
Applicant, on the other hand, argues that the
appearance of its smoking pipe does not make the product
work better or easier to use or affect its costs.
Applicant maintains that there is no functional reason for
the appearance of its product because it does not matter
whether its smoking pipe has a cigarette design, a cigar
design or any other design for it to accomplish its stated
purpose. That purpose is to contribute to eliminating
afterburn, to reduce second-hand smoke and to curtail
tobacco consumption. While applicant seems to admit in its
reply brief, 3, that its design is “not entirely
arbitrary,” elsewhere applicant maintains that the look of
its pipe is “whimsical” and “is different, unique and
clearly capable of functioning as a trademark.” Response,
Ser No. 75/035,717
21
filed, January 21, 1997, 1, 3; Response, filed September
10, 1998, 3; appeal brief, 8; and reply brief, 7.9
Concerning the touting of its product, applicant
maintains that this statement appears only once in an
eight-page brochure and is not in other advertisements or
displays of applicant’s goods. It is applicant’s position
that a single instance of touting is not sufficient to meet
the burden of showing de jure functionality. Applicant
argues that the Examining Attorney has provided no evidence
that the cigarette design is intended to make applicant’s
pipe less conspicuous, and that the Examining Attorney’s
argument concerning this matter does not establish a prima
facie case. Applicant maintains that the Examining
Attorney’s contention about the “inconspicuous” appearance
of its cigarette-like device is at best indirect and
tangential to the product’s purpose of reducing tobacco
consumption and second-hand smoke. Applicant argues that
it does not promote its design as possessing any
utilitarian advantage or increasing the “public
acceptability” of its product.

9 If applicant’s product design is entirely “whimsical,” it is
curious that the tan “filter,” resembling the filter on many
cigarettes, also appears in applicant’s mark.
Ser No. 75/035,717
22
Concerning the existence of other cigarette-like
devices which the Examining Attorney has made of record,
applicant states that they have “an explicit function in
providing the user with the sensation that he/she is
smoking a real cigarette, despite the absence of tobacco.”
Request for Reconsideration, 6. Further, applicant
maintains that these devices show different cigarette-like
designs; for example, one is white with a flared end and a
gold stripe around the middle while the Nicotrol inhaler is
somewhat bulbous with a flattened end. According to
applicant, these are not smoking pipes but substitutes for
tobacco smoking.10
It is clear that trademarks and registrations of
trademarks are designed to protect features which are not
functional. Textron, Inc. v. United States International
Trade Commission, 753 F.2d 1019, 224 USPQ 625, 628 (Fed.
Cir. 1985). As the majority has noted, the effect on
competition is really the crux of the matter of de jure

10 It is curious that applicant even argues that its product
design is not de facto functional. See Response, filed September
10, 1998, 3, and appeal brief, 5, 10. Obviously, applicant’s
device is de facto functional because it performs the function of
delivering tobacco to the user when it is lit. Almost every
device which performs some function is de facto functional. See
In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir.
1984) and the discussion of this matter in In re Parkway Machine
Corp., 52 USPQ2d 1628, 1631 n. 4 (TTAB 1999).
Ser No. 75/035,717
23
functionality. In re Morton-Norwich Products, Inc., 671 F.
2d 1332, 213 USPQ 9 (CCPA 1982).11 I believe that this
record establishes that applicant’s cigarette-like device
is the best or one of a few superior designs available for
a cigarette smoke cessation aid. While there are
alternative designs, it is obvious to me that, while they
may perform the same function of delivering tobacco to the
user in as efficient a manner as applicant’s device, they
do not offer the psychological advantage that applicant’s
device does. Applicant’s promotional literature clearly
indicates that its Smokeless Cigarette “looks, lights and
smokes just like a regular cigarette.” It is simply not
understood why applicant would bring the appearance of its
product to the attention of potential purchasers unless
applicant was intending to make explicit the obvious-—that
a cigarette smoker who is trying to quit smoking could use
applicant’s realistic cigarette-like device to aid in the
effort to quit smoking. Also, as noted above, another
maker of a “Smokeless Artificial Cigarette System” clearly
expresses the obvious psychological benefits of using
applicant’s device-—that it looks and feels like a

11 The statutory ground of refusal is now Section 2(e)(5), 15 USC
§ 1052(e)(5)(eff. Oct. 30, 1998), which bars registration of a
mark which “comprises any matter that, as a whole, is
functional.”
Ser No. 75/035,717
24
cigarette, and that one trying to quit smoking may make the
transition easier if the cigarette substitute looks like an
ordinary cigarette to which the user is accustomed.
Aside from the evidence of record, including
applicant’s own touting and the touting of a similar
design’s advantages by another, I believe that the look-
alike advantages of applicant’s cigarette substitute
product designed to help cigarette smokers stop smoking are
patently obvious. It should not take much evidence to
realize that a cigarette smoker who is trying to stop
smoking would obviously feel more comfortable in using a
device which closely resembled the cigarettes he is used to
smoking, rather than an unfamiliar product, such as a
miniature baseball-bat like device. The evidence of record
only serves to substantiate what is obvious and intuitive.
In the past, we have not been faulted for using our common
sense. See In re Teledyne Industries, Inc., 212 USPQ 299
(TTAB 1981)(stating that the functionality of certain
features of applicant’s showerhead were obvious, such as
the spaced orifices, the cylindrical shape (“easily
conformable to the human hand”) and the knurls of the dial
(“to facilitate manipulation of the dial when the user’s
hands are wet”), aff’d 696 F.2d 968, 217 USPQ 9 (Fed. Cir.
1982). I fully agree with the Examining Attorney that
Ser No. 75/035,717
25
registration of applicant’s device as a trademark, which is
designed as an aid to help people stop smoking cigarettes,
would significantly hinder competition. Others should be
free to copy this design and be able to compete by making
and selling their competing smoke cessation aids in the
form of a regular cigarette.12 Applicant should not have
the right to force competitors to resort to different
designs which do not have the same advantages as
applicant’s. See also Norwich Pharmacal Co. v. Sterling
Drug, Inc., 271 F.2d 569, 123 USPQ 372 (2d Cir. 1959),
cert. denied, 362 U.S. 919 (1960)(although stating the now
discredited law that color may not become one’s exclusive
property for a particular product, court held that the
color pink, used by numerous others for upset stomach
remedies, is functional since pleasing appearance has a
psychosomatic effect on users).
Also, with the advent of the 1995 Federal Trademark
Dilution Act, codified as Section 43(c), 15 USC 1025(c),
the pernicious effect of registration of this device as a
trademark could even extend into other areas than

12 It seems to me that applicant’s cigarette-like smoking pipe
should be no more registrable than a cigar cessation aid in the
shape of a cigar. Aside from the fact that such a device would
not likely be seen as a trademark for a cigar replacement device,
the shape of a cigar for a device intended to help cigar smokers
stop smoking should be free for others to copy.
Ser No. 75/035,717
26
competitive stop-smoking devices, potentially forever
interfering with those markets.
With respect to the alternative designs on the market,
applicant states that there are 28 styles of smoking pipes.
However, it appears that applicant is including pipes of
identical appearance (the baseball bat-like devices, for
example) but of different colors. In other words,
applicant is counting a red bat-like device and an
identical blue device as two different alternative designs,
and the different garish variations of the cylindrical
device reproduced above as separate styles. It appears
from this record, however, that, in reality, only three or
four different designs, including applicant’s cigarette-
like device, are currently available.
Applicant has made much of the fact that its device in
the shape and appearance of a cigarette does not make it
function any better or make it any easier or less expensive
to make. However, neither did the black color of an
applicant’s outboard motors make those engines perform
better or make them easier or less expensive to make. See
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1994). Nevertheless, that color was
more desirable and was held de jure functional because of
the competitive need to copy a color which was compatible
Ser No. 75/035,717
27
with other colors and had the ability to make the engine
appear smaller.
Further, I believe that there are several matters
which suggest remand of this case, or at least
clarification by applicant. First, in the application,
applicant has indicated that its goods are lined for the
color tan. Elsewhere, applicant states that the color
lining is not a feature of its mark but is only used to
indicate color. Response, filed September 10, 1998, 2.
Where an applicant does not consider color to be a feature
of its mark, the applicant should so indicate. TMEP
§§807.06(b) and (c). Without such a statement, color is
presumed to be a feature of the mark. If this application
matures into a registration without further clarification,
the public, including competitors, will likely presume that
applicant is claiming the color tan as a feature of its
mark.
Also, the beveled end of applicant’s smoking device
appears to be functional in appearance because it lets the
user load it with tobacco with a simple twist of the
fingers. See applicant’s promotional literature.
Functional aspects of trademarks should be disclaimed, and
an application which includes a claim to rights in
unregistrable subject matter must be refused. See In re
Ser No. 75/035,717
28
Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (CCPA 1980);
and In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983).
See also Trademark Rule 2.51 (d) and TMEP § 807.03(a). It
is my opinion that the Examining Attorney should have
required a disclaimer of this matter, or at least inquired
into the functionality of this feature.
As a final matter, I believe that this case should
also be remanded to the Examining Attorney to reconsider
applicant’s showing of acquired distinctiveness, in light
of a recent Supreme Court decision. The Examining
Attorney, while refusing this application on the ground of
de jure functionality, stated in his appeal brief,
submitted in December 1999, that applicant had filed a
sufficient showing of acquired distinctiveness, if
applicant’s asserted mark were not de jure functional.
Applicant stated that it had sold over 3 million units and
spent $250,000 in advertising and promotion of its asserted
mark in magazines, at trade shows and in product packaging
over approximately ten years. Also, form letters have been
submitted from several retailers asserting that applicant’s
design has come to be recognized as an indication of
source.
In Wal-Mart Stores Inc. v. Samara Brothers Inc., 120
S.Ct. 1339, 54 USPQ2d 1065 (2000), handed down three months
Ser No. 75/035,717
29
after the Examining Attorney’s appeal brief was submitted,
the U.S. Supreme Court held that, in a trademark
infringement suit brought on the basis of unregistered
trade dress, product design, such as that involved here, is
protectible only upon a showing of secondary meaning.
While it is true that the Examining Attorney has stated
that applicant has submitted a sufficient showing of
acquired distinctiveness, that determination was made in a
pre-Wal-Mart legal environment in which a product
configuration or product design mark was registered if the
Examining Attorney believed that that the design was
inherently distinctive (not permitted after Wal-Mart), and
where an Examining Attorney may have required minimal
evidence of acquired distinctiveness if he or she thought
that the asserted mark, while not inherently distinctive,
presented a close or borderline case of distinctiveness.13
However, in Wal-Mart, 54 USPQ2d at 1069-70, the Supreme

13 The courts and the Board have long recognized that the nature
and amount of acquired distinctiveness vary from case to case,
depending on the degree of descriptiveness (or distinctiveness of
a product design). See, for example, TMEP § 1212.01 and cases
cited therein. Now that the Supreme Court has ruled that product
design can never be inherently distinctive, one might argue, I
think reasonably, that a more persuasive showing of acquired
distinctiveness than was previously required should be of record
before a product design mark is allowed, in view of the public
policy behind the Court’s reasoning.
Ser No. 75/035,717
30
Court ruled that, as a matter of law, product design can
never be inherently distinctive:
In the case of product design, as in the
case of color [which the Court stated can
never be inherently distinctive], we think
consumer predisposition to equate the feature
with the source does not exist. Consumers are
aware of the reality that, almost invariably,
even the most unusual of product designs – such
as a cocktail shaker shaped like a penguin –
is intended not to identify source, but to
render the product itself more useful or more
appealing.
The fact that product design almost
invariably serves purposes other than source
identification not only renders inherent
distinctiveness problematical; it also renders
application of an inherent-distinctiveness
principle more harmful to other consumer
interests. Consumers should not be deprived of
the benefits of competition with regard to the
utilitarian and esthetic purposes that product
design ordinarily serves by a rule of law that
facilitates plausible threats of suit against
new entrants based upon alleged inherent
distinctiveness…
…To the extent there are close cases, we
believe that courts should err on the side of
caution and classify ambiguous trade dress as
product design, thereby requiring secondary
meaning. The very closeness will suggest the
existence of relatively small utility in adopting
an inherent-distinctiveness principle, and
relatively great consumer benefit in requiring a
demonstration of secondary meaning.
Because this application was examined under prior law
where registration was permitted, in some circumstances, of
product designs without any showing of acquired
distinctiveness and where the Examining Attorney may have
accepted a lesser showing of acquired distinctiveness than
Ser No. 75/035,717
31
is now arguably required where product design is, as a
matter of law, not registrable as inherently distinctive, I
would remand this application to the Examining Attorney for
reconsideration of the issue of acquired distinctiveness,
in light of Wal-Mart. In view of the nature of this
asserted mark (the appearance of a cigarette for a
cigarette replacement product), I would also suggest that
the Examining Attorney inquire into the nature of the
third-party use of similar designs mentioned in the
declaration of applicant’s vice president (“a few isolated
infringing designs”) to determine if that use may have been
of such a nature as to detract from applicant’s showing of
acquired distinctiveness. See Levi Strauss & Co. v
Genesco, Inc., 222 USPQ 939, 940-41 (Fed. Cir. 1984)(“When
the record shows that purchasers are confronted with more
than one (let alone numerous) independent users of a term
or device, an application for registration under Section
2(f) cannot be successful, for distinctiveness on which
purchasers may rely is lacking under such circumstances.”)
Cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227
USPQ 417, 422, 424 (Fed. Cir. 1985)(“We agree that color is
usually perceived as ornamentation. While ornamentation is
not incompatible with trademark function, ‘unless the
design is of such nature that its distinctiveness is
Ser No. 75/035,717
32
obvious, convincing evidence must be forthcoming to prove
that in fact the purchasing public does recognize the
design as a trademark which identifies the source of the
goods.’ …By their nature color marks carry a difficult
burden in demonstrating distinctiveness and trademark
character.” [Case citation omitted.])
What the Court of Appeals for the Federal Circuit said
in the Water Gremlin case, 208 USPQ at 91, is especially
noteworthy here:
Trademarks are useful tools of a competitive
society, providing consumers with the means for
choosing from among different producers. The
tenet which precludes recognition of functional
designs as trademarks is one of the balance
points. Our society is better served if
functional containers (as well as functional
product designs and highly descriptive or generic
terms--) remain available for use among
competitors. To the extent this causes a modicum
of confusion of the public, it will be tolerated.
There is, indeed, no overriding requirement in
the law that comparable goods be distinguishable
in the marketplace. On the other hand, a
merchant who wishes to set himself apart has no
dearth of means to do so. One who chooses a
commonplace design for his package, or one
different from competitors only in essentiality
functional features, even if he is the first to
do so, must expect to have to identify himself as
the source of goods by his labelling or some
other device. [Footnotes omitted.]
In a similar vein, the Third Circuit has stated this
cautionary concern, in Versa Products Co., Inc. v. Bifold
Ser No. 75/035,717
33
Co. (Manufacturing) Ltd., 50 F.3d 189, 33 USPQ2d 1801, 1814
(1995), cert. denied, 516 U.S. 808 (1995):
Where product configurations are concerned,
we must be especially wary of undermining
competition. Competitors have broad rights
to copy successful product designs when those
designs are not protected by (utility or design)
patents. It is not unfair competition for
someone to trade off the goodwill of a product…
it is only unfair to deceive consumers as to
the origin of one’s goods and thereby trade off
the good will of a prior producer… [Citations
omitted.]
Because I believe that registration to applicant of
this product design would confer a serious competitive
benefit on one producer to the detriment of competitors,
and is therefore functional as a whole, I would affirm the
refusal.
R. L. Simms
Administrative Trademark
Judge, Trademark Trial and
Appeal Board