Navy Exchange Service Command

Trademark Trial and Appeal Board

Sep 29, 2012

No. 77324266 (T.T.A.B. Sep. 29, 2012)

Oral Hearing: Mailed:
December 6, 2011 September 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Navy Exchange Service Command
________

Serial Nos. 77160754, 77160783, 77324266 and 77324270
_______

Melanie Fix and Geoffrey McNutt for the Navy Exchange
Service Command.

Kathleen H. Lorenzo1, Trademark Examining Attorney, Law
Office 109 (Gwen Stokels, Acting Managing Attorney).
_______

Before Quinn, Taylor and Kuczma, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

This appeal involves four applications filed on the
Principal Register by the Navy Exchange Service Command
(“NEXCOM” or “applicant”), a component of the Navy, to
register marks consisting of or including the Navy’s four-
color pixilated pattern mark.

1 Ms. Lorenzo represented the Office at the oral hearing with
respect to all four applications and, additionally, is the
examining attorney that was responsible through briefing for
application Serial Nos. 77160754 and 77160783. Wendy Goodman is
the examining attorney that was responsible for Application
Serial Nos. 77324266 and 77324270 through briefing.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 77160754, 77160783, 77324266, etc.
2
Application Serial No. 77160754,2 for the mark shown
below, includes the following description, as amended (more
fully discussed, infra):
The mark consists of a bald eagle perched,
with wings spread, on an anchor in front of a
schooner ship with USN, the literal element of
the mark, below the design, all of which
appear in the color deck grey and set against
a light grey portion of the background that
consists of irregular block-shaped pixels that
consist of a four-color pattern of black, deck
grey, light grey and navy blue, the pattern
being applied to all or part of the surface of
the goods.

Applicant also submitted a statement in the application
that “The color(s) black, deck grey, light grey and navy
blue is/are claimed as a feature of the mark.”

2 Application filed April 19, 2007, asserting a bona fide
intention to use the mark in commerce. Applicant subsequently
filed a statement of use claiming December 15, 2008, as the date
of first use of the mark anywhere and in commerce.
Although the prosecution history of the application indicates
that the examining attorney accepted, as sufficient, applicant’s
claim of acquired distinctiveness under Section 2(f) of the Act,
the automated records of the USPTO were never updated. These
records will be amended to reflect the Section 2(f) claim.
Serial No. 77160754, 77160783, 77324266, etc.
3
Application No. 77160783,3 for the mark shown below,
includes the following description, as amended (more fully
discussed, infra):
The mark consists of irregular block-shaped
pixels that consist of a four-color pattern of
black, deck grey, light grey and navy blue,
the pattern being applied to all or part of
the surface of the goods.

Applicant also submitted a statement in the application
that “The color(s) black, deck grey, light grey and navy
blue is/are claimed as a feature of the mark.”

Both applications cover goods identified as “uniforms,
caps, blouses, trousers, parkas, all sold to authorized
patrons of the military exchanges pursuant to Armed
Services Exchange Regulations” in International Class 25.

3 Application filed on April 19, 2007, claiming a bona fide
intention to use the mark in commerce pursuant to Trademark Act
Section 1(b). Applicant subsequently filed a statement of use
claiming December 15, 2008, as the date of first use of the mark
anywhere and in commerce.
Although the prosecution history of the application indicates
that the examining attorney accepted, as sufficient, applicant’s
claim of acquired distinctiveness under Section 2(f) of the Act,
the automated records of the USPTO were never updated. These
records will be amended to reflect the Section 2(f) claim.
Serial No. 77160754, 77160783, 77324266, etc.
4
Application Serial No. 77324266,4 for the mark shown
below, includes the following description, as amended (more
fully discussed, infra):
The mark consists of irregular block-shaped
pixels in a four-color pattern of black, deck
grey, light grey and navy blue, which pattern
repeats and covers the entire surface of the
goods.

Applicant also submitted a statement in the application
that “The color(s) black, deck grey, light grey and navy
blue is/are claimed as a feature of the mark.”
Application Serial No. 77324270,5 includes the
following description, as amended (more fully discussed,
infra):

4 Application filed on November 8, 2008, with a claim of a bona
fide intention to use the mark in commerce pursuant to Trademark
Act Section 1(b). Applicant subsequently filed a statement of
use, claiming December 15, 2007 as the date of first use of the
mark anywhere and in commerce. Thereafter, applicant claimed
acquired distinctiveness pursuant to Trademark Act Section 2(f),
15 U.S.C. § 1052(f), which claim was accepted by the examining
attorney.
5 Application filed November 8, 2007, asserting a bona fide
intention to use the mark in commerce. Applicant subsequently
filed a statement of use claiming December 15, 2008, as the date
of first use anywhere and in commerce. Thereafter, applicant
claimed acquired distinctiveness pursuant to Trademark Act

Serial No. 77160754, 77160783, 77324266, etc.
5
The mark consists of a bald eagle perched,
with wings spread, on an anchor in front of a
schooner ship with ‘USN’, the literal element
of the mark, below the design. The outline of
the ship and anchor appears in Deck Grey, set
against a Light Grey portion of irregular
block-shaped pixels in a four-color pattern
that repeats and covers the entire surface of
the goods. The bald eagle has Deck Grey
wings, chest, and head, and Light Grey eyes.
The color deck grey appears in the wording
‘USN’ and in the design of the schooner ship,
anchor, and bald eagle set against a light
grey portion of the irregular block-shaped
pixels that consists of a four-color pattern
of black, deck grey, light grey, and navy
blue, the pattern being applied to all or part
of the surface of the goods.

Applicant also submitted a statement in the application
that “The color(s) black, deck grey, light grey and navy
blue is/are claimed as a feature of the mark.”

The previous two applications cover goods that are
identified as “Cotton, nylon blends, and nylon fabrics
which will all be used in the manufacture of merchandise,
including but not limited to clothing, to be sold to

Section 2(f), 15 U.S.C. § 1052(f), which claim was accepted by
the examining attorney.

Serial No. 77160754, 77160783, 77324266, etc.
6
authorized patrons of the military exchanges pursuant to
Armed Services Regulations” in International Class 24.
As detailed below, all four applications are on appeal
on the ground that the pixilated pattern is functional as a
matter of law under Section 2(e)(5) of the Trademark Act,
15 U.S.C. § 1052(e)(2). Additionally, application Serial
Nos. 77160754 and 77160783 are also on appeal based on
requirements for more accurate descriptions of the marks.
At the request of applicant, because the marks, facts
and issues in each appeal were substantially the same, the
appeals were consolidated for an oral hearing held December
6, 2011.6 We will issue a single opinion for all four
applications, but will take into account the differences in
the facts and issues in each application.
APPLICATION SERIAL NUMBERS 77160754, 77160783, 77324266 and
77324270

Prosecution Histories
We turn then to the merits of the appeals in
Application Serial Nos. 77160754, 77160783, 77324266 and
77324270. We note that the prosecution histories with

6 The December 6, 2011, oral hearing included a fifth proceeding
involving an appeal filed in Application Serial No. 77160763 for
a mark that includes the same four-color pixilated pattern at
issue in this decision. However, for the reasons explained in a
concurrently issued remand order in Application Serial No.
77160763, that proceeding is not ready for final decision.

Serial No. 77160754, 77160783, 77324266, etc.
7
respect to application Serial Nos. 77160754 and 77160783
are virtually identical.7 Both applications were
originally filed based on applicant’s intent to use the
marks in commerce. After publication, with no opposition
having been filed, a notice of allowance issued in each
case. Upon review of the statement of use filed in each
application, the examining attorney refused registration of
each mark on the grounds that it is functional under
Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(2), and
that it is a decorative or ornamental feature of the goods
under Trademark Act Sections 1, 2 and 45, 15 U.S.C.
§§ 1051-1052, 1127. The examining attorney also required
new drawings depicting placement of the marks and amended
descriptions explaining what is and is not a part of the
mark. Applicant argued in response that its marks were not
functional or ornamental but, even if they are considered
ornamental, they had acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f). Applicant
provided evidence to support its Section 2(f) claims. In a

7 We particularly point out that both applications, for marks
for clothing items for patrons of military exchanges, were
handled by the same examining attorney (Ms. Lorenzo) on
virtually identical records and briefs.

Serial No. 77160754, 77160783, 77324266, etc.
8
subsequent Office Action issued in each case, the examining
attorney issued a requirement for a more accurate
description of the mark that refers to the “repeating
pattern” in the marks. Applicant ultimately satisfied the
requirements for new drawings and overcame the ornamental
refusals by amending the identifications of goods and
claiming in each case acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1152(f).
The examining attorney made final the functional
refusals under Section 2(e)(5) and maintained the
requirements for more accurate descriptions of the marks,
and these are the issues on appeal.
While the virtually identical prosecution histories of
application Serial Nos. 77324266 and 773242708 are very
similar to those of the two applications discussed above,
they do contain some differences which are set forth
below.9 Once again, both applications were originally
filed based on applicant’s intent to use the marks in
commerce. After publication, with no opposition having

8 These two applications for fabrics were handled by the same
examining attorney (Ms. Goodman) on virtually identical records
and briefs.
9 Although the prosecution histories are a bit different, the
records and briefs of all four proceedings are virtually
identical. Accordingly, unless otherwise indicated, specific
arguments and exhibits are taken from the record in Application
Serial No. 77160754.
Serial No. 77160754, 77160783, 77324266, etc.
9
been filed, a notice of allowance issued in each case.
Upon review of the Statement of Use filed in each
application, the examining attorney refused registration of
each mark on the grounds that it is functional under
Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(2), and
that it is a decorative or ornamental feature of the goods
under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§
1051-1052, 1127. Applicant responded to the refusal,
arguing that its marks are neither functional nor
ornamental. Applicant further asserted in its responses
that even if the marks are considered ornamental, they had
acquired distinctiveness under Trademark Act Section 2(f),
15 U.S.C. § 1052(f), and applicant provided evidence to
support its Section 2(f) claims. In a subsequent Office
Action issued in each case, the examining attorney rejected
applicant’s claim of acquired distinctiveness, maintained
the functional and ornamental refusals, and raised as new
issues a requirement for a more accurate description of the
mark that refers to the repeating pattern, and for a
substitute specimen showing use of the applied-for mark as
applied to the actual goods. Applicant, in each
application, ultimately satisfied the requirement for a
substitute specimen and a more accurate description of the
goods, and overcame the ornamental refusal by amending the
Serial No. 77160754, 77160783, 77324266, etc.
10
identification of goods which led to acceptance of its
Section 2(f) claims.
In each case, only the functional refusal under
Section 2(e)(5) was made final.
Applicant’s Marks
As noted, applicant seeks to register four marks
comprising or containing an irregular block-shaped, multi-
colored pixilated pattern design; two are comprised solely
of the pixilated pattern (Serial Nos. 77160783 and
77324266) while the other two are comprised of a logo
consisting of an anchor/U.S.S. Constitution/eagle (“ACE
logo”) placed above the letters “USN” set against an
irregular block-shaped, multi-colored pixilated pattern
design (Serial Nos. 77160754 and 77324270). The Section
2(e)(5) refusal in each application is directed solely to
the pixilated pattern design. In that regard, the
examining attorney contends that the additional matter in
each mark that is the subject of application Serial Nos.
77160754 and 77324270, respectively, is “a small design,”
and the “non-functional” features do not change the
overriding functional purpose of the mark as a whole.10

10 In support of this position, the examining attorneys cite to
Textron, Inc. v. U.S. Int’l Trade Commission, 753 F.2d 1019, 224
USPQ 625, 628-29 (Fed. Cir. 1985) and In re Vico Products Mfg.
Co., Inc. 229 USPQ364, 368 (TTAB 1985) (“Where the evidence

Serial No. 77160754, 77160783, 77324266, etc.
11
Although applicant points out that the examining attorneys
ignored the ACE logo and the letters USN in those marks,
applicant focuses its arguments solely on the multi-color
pixilated pattern. Accordingly, we limit our discussion to
the pixilated design in those applications. Additionally,
because the description in each application describes the
mark in whole, or in part, as consisting of irregular
block-shaped pixels in a four-color pattern consisting of
black, deck grey, light grey, and navy blue, we will
hereafter refer to this trade dress that is the whole of,
or comprises a part of, the mark in each application,
collectively as the “color pattern marks.”11
Functionality
The examining attorneys maintain that applicant’s
color pattern marks are functional because they mask stains

shows that the overall design is functional, the inclusion of a
few arbitrary or otherwise nonfunctional features will not
change the result.”).
11 Applicant takes issue with the examining attorneys’
characterization of its marks as single color marks, instead of
marks that consist of several different colors arranged in a
pattern design and, by such characterization, and ignoring cases
holding that a combination of colors or other trade dress
elements is protectable. As just stated, applicant’s marks, as
described in the applications, are multi-colored pixilated
pattern marks and we treat them as such, and apply the
appropriate functionality analysis.
We nonetheless disagree with applicant and find the cases
cited by the examining attorneys involving single color marks
generally instructive as to how the Federal Circuit and the
Board have applied the functionality analysis to different types
of color design features.
Serial No. 77160754, 77160783, 77324266, etc.
12
and wear-and-tear, and thereby, the color pattern design is
essential to applicant’s requirements for a neat and clean
Navy uniform.12
Applicant, in urging reversal of the refusals,
contends that the examining attorneys failed to offer
sufficient evidentiary support to demonstrate a prima facie
case that its applied-for marks are functional. Applicant
specifically contends that there is no evidence to support
a showing that the colors black/deck grey/light grey,
and/or navy blue serve a functional purpose. Applicant
further argues that to the extent that the color pattern in
applicant’s mark provides an advantage of hiding stains or
wear and tear, this attribute is merely an incidental
feature inherent to any patterned material. Lastly,
applicant cites the definition of “essential,”13 arguing
that its applied-for marks are neither absolutely necessary
nor indispensable to the purpose of its goods, and that

12 During prosecution of the applications, the examining
attorneys argued that applicant’s color pattern design served a
traditional camouflage function, i.e., that it was intended for
concealment. They indicated in their briefs that they had been
assured by applicant that the color pattern is not intended to
serve, and would not effectively serve, as camouflage. They
accordingly stated that they would make no further argument on
this basis and, we accordingly, consider that argument
withdrawn.
13 “Essential” is defined at Dictionary.com as “absolutely
necessary; indispensable.” Response to Office Action, September
19, 2010, at Exh. A.
Serial No. 77160754, 77160783, 77324266, etc.
13
“the plethora of alternative patterns available and the
absence of a competitive need to adopt any particular color
or design – including those colors and designs reflected in
applicant’s Mark[s] – confirm that Applicant’s Mark[s are]
not functional and [are] entitled to registration.” Br.,
p. 11.
Section 2(e)(5) of the Trademark Act prohibits the
registration of a mark that comprises any matter that, as a
whole, is functional. 15 U.S.C. § 1052(e)(5). In general
terms, the design or trade dress of a product is functional
and cannot serve as a trademark if it is essential to the
use or purpose of the article or if it affects the cost or
quality of the article. TrafFix Devices Inc. v. Marketing
Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001)
citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
34 USPQ2d 1161 (1995) quoting Inwood Laboratories, Inc. v.
Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10
(1982). In In re Morton-Norwich Products, Inc., 671 F.2d
1332, 213 USPQ 9 (CCPA 1982), the Court of Customs and
Patent Appeals (the predecessor to our primary reviewing
court) set forth four factors to be considered in
determining whether a product design is functional:
Serial No. 77160754, 77160783, 77324266, etc.
14
(1) the existence of a utility patent
disclosing the utilitarian advantages of the
design;
(2) advertising material in which the
originator of the design touts the utilitarian
advantages of the design;
(3) the availability to competitors of
alternative designs; and
(4) facts indicating that the design results in
a relatively simple or cheap method of
manufacturing the product.

The examining attorney acknowledges that determining
functionality normally involves consideration of one or
more of the Morton-Norwich factors, and correctly points
out that it is not necessary to consider all the factors in
every case, TrafFix Devices, 58 USPQ2d at 1006, or that all
four factors weigh in favor of functionality. See Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
1422 (Fed. Cir. 2001). However, there appears to be some
dispute between the examining attorneys and applicant as to
whether, post TrafFix, the Morton-Norwich factor of the
availability of alternative designs and their effect on
competition, still plays a role in the functionality
analysis.
In this regard, the Court of Appeals for the Federal
Circuit, our primary reviewing court, explained that the
Serial No. 77160754, 77160783, 77324266, etc.
15
Supreme Court’s decision in TrafFix did not alter the
Morton-Norwich analysis. The Court specifically stated:
Nothing in TrafFix suggests that consideration
of alternative designs is not properly a part
of the overall mix, and we do not read the
Court's observations in TrafFix as rendering
the availability of alternative designs
irrelevant. Rather, we conclude that the
Court merely noted that once a product feature
is found functional based on other
considerations, there is no need to consider
the availability of alternative designs
because the feature cannot be given trade
dress protection merely because there are
alternative designs available. But that does
not mean that the availability of alternative
designs cannot be a legitimate source of
evidence to determine whether a feature is
functional in the first place.

Valu Engineering, 61 USPQ2d at 1428.
We thus consider whether applicant’s color pattern
marks are de jure functional by looking to the Morton-
Norwich factors.
With regard to the first factor, the record does not
contain any utility patents referencing utilitarian
advantages of applicant’s color pattern marks.
We next consider the second factor, applicant’s
advertising. In determining whether an applicant’s
advertising or promotional materials tout the utilitarian
advantages of a product design, the advertising should
clearly emphasize specific utilitarian features of the
design claimed as a mark. Goodyear Tire and Rubber Co. v.
Serial No. 77160754, 77160783, 77324266, etc.
16
Interco Tire Corp., 49 USPQ2d 1705, 1716-1717 (TTAB 1998),
quoting In re Witco Corp., 14 USPQ2d 1557, 1559-1561 (TTAB
1989) (the specific statements should focus directly on the
advantages of the product design).
The examining attorneys point to statements made in
U.S. Navy regulations and policies, press releases, and
articles from the Navy’s website which they assert show the
importance of the “uniform display” to the U.S. Navy. The
examining attorneys contend that these statements exemplify
applicant’s commitment to meet the “qualitative factors”
for uniform development set out in Navy regulations and
that applicant’s color pattern marks meet the requirements
of ease of maintenance, cleaning, upkeep, and tailoring, as
well as the amount of space required for storage, purchase
price and maintenance costs, durability and how well the
uniform displays a crisp image. Those statements are set
forth below. See Br. at unnumbered p. 8.
1. The Navy Working Uniform (NWU) Concepts Frequently
Asked Questions, Task Force Uniform Public Affairs Press
Release essentially states, in pertinent part:14
• A multicolored pattern was chosen because
solid colors show heavy wear and wrinkles
more predominantly, and often a small

14 Response to Office Action, September 19, 2009, at p. 7.
Serial No. 77160754, 77160783, 77324266, etc.
17
stain or spot of paint renders a solid
colored uniform not wearable.

• The specific Navy-related colors,
including “deck gray” and “navy coverall
blue” were thought appropriate to further
identify the uniforms to their Navy
source since they are colors associated
with a maritime environment.

• The camouflage pattern will permit
mending of small rips in uniform fabric,
saving Sailors considerably in
replacement costs.

2. Article 1501.5 of the United States Navy Uniform
Regulations – Uniform Review and Development states:15
The Chief of Naval Operations charged the Navy
Uniform Board to continually review Navy uniform
matters and use the following specific qualitative
factors, applicable to all uniforms to evaluate
suitability of current uniforms and those proposed
for replacement.

a. Versatility. Flexibility and adaptability in
terms of:
(1) Number of personnel wearing uniforms
(2) Varied Climates
b. Safety. The ability to protect and not
present a hazard to personnel.
c. Ease of Maintenance. Laundering, cleaning,
upkeep, and tailoring requirements.
d. Storage. Amount of space required for
storage.
e. Cost. Purchase price and maintenance costs.
f. Durability. Ability to present a neat
appearance over a long period of time …
i. Military Appearance. How well the uniform
displays a smart, crisp image.

15 Final Office Action, October 22, 2010, at pp. 9-11.
Serial No. 77160754, 77160783, 77324266, etc.
18
3. Article 1101.3 of the Uniform Regulations of the U.S.
Navy highlights the Navy’s emphasis on the importance of
the display of the uniform:16
Navy uniforms are distinctive visual evidence
of the authority and responsibility vested in
their wearer by the United States … Navy
personnel must present a proud and professional
appearance that will reflect positively on the
individual, the Navy and the United States.

4. An excerpt for the recruiting website of the U.S. Navy,
www.usnavy.com, describes the Navy uniform policy in great
detail, emphasizing the importance of properly maintained
uniforms. It specifically states:17
Commanding officers of the US Navy inspect the
clothing of E1/E2/E3 personnel at regular intervals
and those of E4/E5/E6 is [sic] subject to
individual inspection.
…
All naval personnel of the US Navy need to maintain
neat and clean Navy uniforms and wear their
respective badges, decorations, ribbons and
insignias as the case may be.

5. In an excerpt from an article appearing on the official
website of the U.S. Navy, entitled New Navy Working Uniform
and Service Uniform Concepts Approved,18 Chief of Naval
Operations Adm. Mike Mullen noted, with respect to the New
Navy Working Uniform: “Durability, safety, ease of wear
and cleaning were all factors that weighed heavily on my

16 Id at p. 14.
17 Id at pp. 7-8.
Serial No. 77160754, 77160783, 77324266, etc.
19
mind…. Additionally, Master Chief Petty Officer of the
Navy, Terry Scott, stated: “[W]e’ve created a uniform
that’s also easier to maintain, is longer lasting, helps
reduce the size of the sea bag, while at the same time
recognizing the tradition and heritage of serving in the
Navy.”
While these statements clearly reflect the Navy’s
requirement that its personnel present a “proud and
professional” appearance, and its desire for a durable,
cost effective and easily maintained uniform, only one
refers in any manner to the design of applicant’s mark.
That statement, indicating that a multicolor pattern was
chosen because it is less likely to show wrinkles, stains
and heavy wear than a solid, does not convince us that the
particular multicolored pattern chosen by applicant is
superior to any other pattern that could have been chosen.
As pointed out by applicant, the ability to hide stains and
wear and tear is an incidental function inherent to most
patterned material.19

18 Id. at 5.
19 Applicant supports this statement with claims on various
“civilian” websites that patterns hide stains. For example,
patterned clothing hide stains on:
new mother’s clothes
(http://pregnancy.about.com/od/postpartum/a/postbabyclothes.htm)
children’s clothes
(http://defrazlemom.wordpress.com/2007/08/01/21), and

Serial No. 77160754, 77160783, 77324266, etc.
20
Furthermore, many of the Navy’s requirements for its
uniform have nothing to do with fabric design. Instead,
requirements such as durability, cost, ease of maintenance
and storage space stem from the permanent press 50/50 nylon
and cotton blend fabric, the wash and wear nature of the
fabric and the Navy’s conscious decision to replace several
styles of uniforms with one multi-seasonal uniform. See
the press releases entitled Navy Working Uniform (NWU)
Concepts Frequently Asked Questions and New Navy Working
Uniform and Service Uniform Concepts Approved.20
Quite simply, there is nothing in applicant’s
statements that persuade us that applicant’s applied-for
color pattern design is essential to the Navy’s requirement
for a neat and clean uniform.
The third factor, the availability of alternative
designs, is relevant to show that the design sought to be
registered will not hinder competition.21 In re Morton-
Norwich Products, Inc., 213 USPQ at 16. Where the evidence
indicates that the applicant’s design is the best or one of
a few superior designs available, then this evidence will
strongly support a finding of functionality. In re Bose

chef’s pants (http://ask.metafilter.com/98625...). See Response
to Office Action, September 19, 2010, Exh. E.
20 Final Office Action issued October 22, 2010.
Serial No. 77160754, 77160783, 77324266, etc.
21
Corp., 772 F.2d 866, 27 USPQ 1, 5 (Fed. Cir. 1985) (the
availability of alternative designs does not detract from
the functional character of the product design where the
subject matter sought to be registered is “the preferred or
a superior design”). With particular regard to the
alternative designs, the question is not whether they
perform the same basic function, but whether these designs
work “equally well.” Valu Engineering, 61 USPQ2d at 1427,
quoting, J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §7:75, 7-180-1 (4th ed. 2001).
Applicant has submitted numerous alternative designs
of camouflage patterns that contain various colors and
patterns, a random sampling of which are shown below.
Camouflage Uniforms of the World –United States Uniforms22

Coat, Hot weather, Camouflage MARPAT (Woodland)

21 The examining attorneys did not address this factor.
22 Retrieved from the website of Henrik Clausen, at
http://camo.nenrikc.dk/all.asp on September 1, 2009.
Applicant’s response of September 19, 2009, Exh. C. Applicant
submitted images of camouflage patterns for military uniforms
throughout the world. We have focused on the patterns used in
the United States, of which 16 were listed.
Serial No. 77160754, 77160783, 77324266, etc.
22

ACU – Army Combat Uniform –jacket MARPAT (Desert)

Random Designs in Various Camouflage Patterns23

23 Applicant’s Response of September 19, 2009, Exh. C.
Applicant made of record a total of 40 random patterns.
Although applicant did not indicate a particular source of or
use for these patterns, they nonetheless are probative to show
that there is a wide variety of color combinations and patterns
that could hide stains and mask wear and tear.
Serial No. 77160754, 77160783, 77324266, etc.
23
Applicant’s mark shown on the actual goods

Uniform blouse24 Fabric bolt25

Applicant has persuasively shown there are many
alternative “camouflage” patterns that are different from
applicant’s pattern but, due to their coloration and
pattern, could similarly mask stains and hide wear and
tear.26 We therefore conclude that the availability of
alternative designs that appear to work “equally well,”
does not support the examining attorneys’ argument that
applicant’s marks are functional. Put another way, because
there are alternative color pattern designs that perform
the same functions as well as applicant’s pattern, there is

24 Application Serial No. 77160754, specimen.
25 Application Serial No. 77324266, specimen.
26 In making this finding, we did not rely on the third-party
registrations submitted by applicant for marks with patterns or
for other uniforms, including sports uniforms. As pointed out
by the examining attorneys, prior decisions are not binding on
the Board and we make no presumptions as to why these
color/patterns were chosen.
Serial No. 77160754, 77160783, 77324266, etc.
24
no competitive need to adopt applicant’s color pattern.
See Qualitex v. Jacobson, 34 USPQ2d at 1164 (Although the
Court recognized the importance to use some color on press
pads to avoid noticeable stains, the [lower] court found
“no competitive need in the press pad industry for the
green-gold color, since other colors are equally usable”).
With respect to the final factor, as indicated above,
a product feature or design is functional if it affects the
cost or quality of the product. Applicant has made of
record the declaration of Arthur J. Mitchell, Jr., CFO of
Rothtec Engraving Company, a subcontractor of Santee
Printworks, a contractor hired to create the screens for
printing the Navy digital pattern and embedded logo (color
pattern) on fabric. Mr. Mitchell, in his declaration,
states that: “Printing the Navy color digital pattern,
which the subject of [the four] trademark application[s] is
no less expensive of a process than would be involved for
any other digital or camouflage pattern in any other
colors.”27 Mitchell decl., para. 2. Mr. Mitchell further
states that: “Printing an embedded logo in the digital
design is no less expensive of a process than would be

27 Applicant’s Response of September 19, 2009, Exh. I.
Serial No. 77160754, 77160783, 77324266, etc.
25
involved for any other additional logo in the design.”28
Id. at para. 3. While this evidence shows that applicant’s
color pattern does not result from a cheaper method of
manufacturing, this fact does not favor applicant or the
examining attorneys in the functionality analysis. See In
re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006) (“While
evidence that a product feature makes the product cheaper
to manufacture may be probative in showing functionality,
evidence that it does not affect its cost is not
necessarily proof of non-functionality”).
After carefully considering all the arguments and
evidence submitted by applicant and the examining attorney,
including those not specifically discussed, we cannot
conclude that the examining attorneys have met their burden
of establishing prima facie cases of functionality. In re
R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir.
1984). See also In re Howard Leight Industries LLC, 80
USPQ2d 1507, 1509 n.7 (TTAB 2006) (“In ex parte proceedings
before the Board, … the Office has the initial burden of
establishing a prima facie case of functionality.”). While
the color pattern design in applicant’s marks may perform
the incidental function of masking stains and wear and tear

28 Id.
Serial No. 77160754, 77160783, 77324266, etc.
26
on the fabric and clothing items identified in the
applications, it need not be devoid of any function in
order to be registrable as a trademark. See In re Morton
Norton Products, supra (the mere fact that a product
configuration has utility, or aspects of a product are
functional, does not render the configuration
unregistrable). The examining attorneys quite simply have
not shown how applicant’s particular color pattern is
functional or how it would hinder competition.
In view thereof, the refusals to register in each case
pursuant to Section 2(e)(5) are reversed.
APPLICATION SERIAL NUMBERS 77160754 and 77160783
More Accurate Description Requirement
We consider now the requirement for complete and
accurate descriptions of the marks made only in Application
Serial Nos. 77160754 and 77160783. The descriptions
initially read in the respective applications as follows:
The mark consists of a bald eagle perched,
with wings spread, on an anchor in front of a
schooner ship with USN, the literal element of
the mark, below the design, all of which
appear in the color deck grey and set against
a light grey portion of the background that
consists of irregular block-shaped pixels that
consist of a four-color pattern of black, deck
grey, light grey and navy blue. [Application
Serial No. 77160754]
and
The mark consists of irregular block-shaped pixels
that consist of a four-color pattern of black, deck
Serial No. 77160754, 77160783, 77324266, etc.
27
grey, light grey and navy blue. [Application Serial
No. 77160783]

The examining attorney did not accept applicant’s
originally-submitted descriptions of its marks, arguing
that they are incomplete because they do not describe all
of the significant aspects of the applied-for marks.
During prosecution of the application, the examining
attorney suggested to applicant possible acceptable
descriptions which include language that “the mark is a
repeating pattern applied to the entire surface of the
goods.”
Applicant declined to amend the descriptions to
include wording that indicates the pattern is a repeating
one, arguing that the description in each application is
neither inaccurate nor inconsistent with the mark shown on
the drawing, that nothing in the authority cited by the
examining attorney requires that a mark description
identify a design as being “repeating” and that the
description submitted meets the requirements for
registration. Applicant further explains that it “does not
wish to have its mark described as containing a repeating
logo when the logo may not repeat in all the goods sold or
to be sold by Applicant.” Br. p. 15. Nonetheless, in
responses filed on May 12, 2010, in each application,
Serial No. 77160754, 77160783, 77324266, etc.
28
applicant indicated that it would agree to the following
proposed descriptions of the marks, which applicant cited
in its briefs as being at issue in the appeals:
The mark consists of a bald eagle perched,
with wings spread, on an anchor in front of a
schooner ship with USN, the literal element of
the mark, below the design, all of which
appear in the color deck grey and set against
a light grey portion of the background that
consists of irregular block-shaped pixels that
consist of a four-color pattern of black, deck
grey, light grey and navy blue, the pattern
being applied to all or part of the surface of
the goods. [Registration No. 77160754]
and
The mark consists of irregular block-shaped pixels
that consist of a four-color pattern of black, deck
grey, light grey and navy blue, the pattern being
applied to all or part of the surface of the goods.
[Application Serial No. 77160783]

Although the examining attorney did not formally
accept the proffered amendment to the description of the
mark in either application, she addressed the proposed
amendments in her briefs. She particularly stated that she
had considered the proposed amended descriptions, but found
each incomplete because “it still failed to describe an
important feature of the mark, namely, that the pattern is
a repetitive design.” Examining Attorney’s br., unnumbered
p. 15. She went on to explain that, as currently
described, “the mark on the goods could appear simply as a
very large, single set of squares in black, blue and gray,
splayed across an entire uniform. This would present a
Serial No. 77160754, 77160783, 77324266, etc.
29
different commercial impression than that provided by the
mark as applied to the goods in the specimen.” Examining
Attorney’s br., unnumbered p. 16.
Because both applicant and the examining attorney
addressed the proposed descriptions in their briefs, we
consider them to have been accepted as applicant’s
operative description of the mark in each case.29
Trademark Rule 2.37 provides that “a description of
the mark must be included if the mark is not in standard
characters.” Section 808.01 of the Trademark Manual of
Examining Procedure (“TMEP”) further provides guidelines
for requiring a description of a mark if “the mark contains
a design element” and if “the mark includes color.” TMEP
§ 808.02 (8th ed. 2011) states that “the description should
state clearly and accurately what the mark comprises, and
should not create a misleading impression by either
positive statement or omission. The description should
describe all significant aspects of the mark, including
both literal elements and design elements. Insignificant
features need not be included in a description.”

29 The Office records of each application will be updated to
reflect the amended descriptions.

Serial No. 77160754, 77160783, 77324266, etc.
30
Under this guidance, we find the amended descriptions
comply with Rule 2.37 and the corresponding guidelines
provided in the TMEP. While perhaps not as specific as
they could be in terms of the repeating nature of the
marks, the amended descriptions are sufficient under the
rule. We find so primarily because applicant’s inclusion
of the term “pattern”30 in the descriptions, essentially
subsumes the “repeating” language required by the examining
attorney. Although applicant’s marks theoretically may
appear in whole, or in part in the context of the
“background” in the ‘754 application, as a large, single
set of squares in black, blue and gray, splayed across an
entire uniform, given the nature of the pattern and goods
upon which it will be applied, we find it unlikely that the
description would convey such a singular commercial
impression.

30 We take judicial notice of the definition of “pattern” taken
from the online edition of the Encarta® World English Dictionary:
[North American Edition] (2009):

1. regular form: a regular or repetitive form,
order, or arrangement …
2. design: a repeated decorative design, e.g., on
fabric
http://www.bing.com/Dictionary/search?q=pattern&qs=n&form=QB,
retrieved September 5, 2012. The Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed

Serial No. 77160754, 77160783, 77324266, etc.
31
We thus find that applicant’s descriptions of the
marks, as amended by the May 12, 2010, responses provide
accurate characterizations of the marks. In view of the
forgoing, the examining attorney’s requirement for
acceptable descriptions of the marks is reversed.
Decision: The functionality refusals pursuant to
Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5), in
Application Serial Nos. 77160754, 77160783, 77324266 and
77324270 are reversed; and the requirements for a more
accurate description of the mark made in Application Serial
Nos. 77160754 and 77324270 are reversed.

editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB
2006).