Paul Adam’s Trademarks and Patents LLC

Trademark Trial and Appeal Board

Sep 11, 2015

No. 85851688 (T.T.A.B. Sep. 11, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Paul Adam’s Trademarks and Patents LLC
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Serial No. 85851688
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David H. Chervitz,
for Paul Adam’s Trademarks and Patents LLC.
Hai-Ly Lam, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Bucher, Ritchie and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Paul Adam’s Trademarks and Patents LLC (“Applicant”) seeks registration on
the Principal Register of the configuration shown in three different views below1 for

1 Applicant petitioned the Commissioner for Trademarks for permission to show the mark
in more than a single rendition as required by Trademark Rule 2.52(b)(2). The petition was
granted on November 18, 2014.
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goods identified as “multi-use stone retaining wall blocks,” in International Class
19:2

The design is described in the application as follows:
The mark consists of a three-dimensional configuration of
a stone retaining wall block having a top side that
features three horizontal grooves, one vertical groove, and
angled grooves at each corner and each side having a
center vertical groove, a vertical groove adjacent to one of
the angled grooves at one of the corners, and a vertical
groove adjacent to the other one of the angled grooves at
the other one of the corners.

The Trademark Examining Attorney initially refused registration of Applicant’s
mark under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), on the
grounds that the mark is functional. Applicant amended the application to seek
registration on the Supplemental Register, and the Trademark Examining Attorney
again refused registration on the grounds that the mark is functional, this time
under Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c).3 After the

2 Application Serial No. 85851688 was filed on February 15, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as 1992.
3 The Examining Attorney’s Brief references both Sections 2(e)(5) and 23(c), however, once
Applicant amended to seek registration on the Supplemental Register the statutory
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Trademark Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Applicable Law
Matter is functional under Section 2(e)(5) 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.
Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citation omitted).
“To support a functionality rejection in proceedings before the Board, the PTO
examining attorney must make a prima facie case of functionality, which if
established must be rebutted by ‘competent evidence.’” In re Becton, Dickinson and
Co., 675 F.3d 1368, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) quoting In re Teledyne
Indus., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982). In making our determination
of functionality we apply the test first set forth in In re Morton-Norwich Prods., Inc.,
740 F.2d 1550, 213 USPQ 9 (CCPA 1982). See Becton, Dickinson and Co., 102
USPQ2d at 1377 (citing Morton-Norwich, 213 USPQ at 15-16). These factors are not
exclusive, however, for functionality “depends upon the totality of the evidence.”
Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1424 (Fed. Cir.
2002).
Although the application before us now seeks registration on the Supplemental
Register and the statutory authority for refusal is Section 23, the case law applying

authority for the refusal is only Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c),
which governs the Supplemental Register. Cf. Trademark Manual of Examining Procedure
§ 1209.02(a)(i) (2015) (if an applicant responds to a mere descriptiveness or genericness
refusal by amending to the Supplemental Register the statutory basis for such a refusal is
Section 23 of the Trademark Act).
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Section 2(e)(5) and addressing functionality refusals prior to the 1998 amendments
to the Trademark Act, adding Section 2(e)(5) and amending Section 23(c), is directly
relevant because the issue, functionality, is the same. See In re Minnesota Mining
and Mfg. Co., 335 F.2d 836, 142 USPQ 366, 368 (CCPA 1964), citing, In re Deister
Concentrator Co., 289 F.2d 496, 129 USPQ 314 (CCPA 1961).
Morton-Norwich identifies the following factors to be considered in determining
whether a particular design is functional:
1. the existence of a utility patent disclosing the utilitarian advantages of
the design;
2. advertising materials in which the applicant touts the design’s
utilitarian advantages;
3. the availability to competitors of functionally equivalent designs; and
4. facts indicating that the design results in a comparatively simple or
cheap method of manufacturing the product.

Morton-Norwich, 213 USPQ at 15-16. It is not required that all four factors be
proven in every case; nor do all four factors have to weigh in favor of functionality to
support a refusal. Nevertheless, in reaching our decision, we will review all four
factors. See AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB
2013). The examining attorney has the burden of making a prima facie showing
that the applicant’s mark is functional. In re Becton, Dickinson & Co., 102 USPQ2d
at 1376.
II. Analysis
Applicant manufactures retaining wall blocks, usually of concrete and sold under
the brand name “Pyzique,” which are used to make retaining walls and other
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landscape structures such as free-standing walls, steps, borders, and raised planter
beds.4 As can be seen from the drawing above, Applicant’s blocks are trapezoidal in
shape and have various grooves or lines molded in to them. Applicant, in its
response to the Examining Attorney’s request for information, described the
purpose of the features comprising the applied-for mark as follows:
(1) The three horizontal grooves on the top of the block
may be, but do not have to be used, for alignment of the
block. The number of grooves, the placement of the
grooves, and the length of the grooves are solely a design
choice.
(2) The first groove and the third groove of the three
horizontal grooves on the top of the block may be, but do
not have to be used, to arbitrarily set back a block placed
over the block by 5/8”. The middle groove cannot be used
to set back a block placed over the block by 5/8”. The
number of grooves, the placement of the grooves, the
length of the grooves, and the 5/8” dimension are solely a
design choice.
(3) The vertical groove located on the top of the block may
be, but does not have to be used, to split the block in half.
The placement and length of the vertical groove is solely a
design choice.
(4) The tri-face grooves of the block may be, but do not
have to be used to split off corners of the block. The
number of tri-face grooves, the position of the tri-face
grooves, and length of the tri-face grooves are solely a
design choice.
(5) The side alignment grooves may be, but do not have to
be used, to align the block. The number of grooves, the
placement of the grooves, and the length of the grooves
are solely a design choice.

4 Applicant’s Response, December 5, 2013; Dec. of Paul Adam; http://www.pyzique.com/
HTML/home.html.
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* * *
(7) The trapezoidal shape of the block may be, but does
not have to be, used to form a curved wall from the blocks.
The trapezoidal shape is solely a design choice.5
From the foregoing explanation provided by Applicant, we conclude that each of
the features shown in the drawing, e.g., the trapezoidal shape, the horizontal
alignment grooves, the vertical splitting groove, and the corner grooves for beveling
the faces, all may be used by the builder to facilitate the construction of the
retaining wall or other landscape project. The question before us is whether the
mark as a whole is functional.
A. The Existence of a Patent
We begin with the first Morton-Norwich factor pertaining to the existence of a
utility patent disclosing utilitarian advantages of the applied-for design. Applicant
does not have a utility patent but instead claims ownership of an expired design
patent, U.S. Design Patent No. 352789. Applicant argues that “a design patent
cannot properly be obtained on a configuration or design feature that is primarily
functional” thus “Applicant’s design patent demonstrates that the U.S. Patent and
Trademark Office viewed Applicant’s design ‘as not dictated by function alone.’”6
The patent claims “[t]he ornamental design for a retaining wall block, as shown and
described.” Various figures showing different views of the claimed design are
reproduced below.

5 Applicant’s Response, June 23, 2014.
6 Applicant’s Br. at 12.
Serial No. 85851688
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The court in Morton-Norwich stated that when a party owns a design patent,
this “at least presumptively, indicates that the design is not de jure functional.”
Morton-Norwich, 213 USPQ at 11, n.3 (citations omitted). However, the “existence
of a design patent, while some evidence of non-functionality, is not alone sufficient
evidence.” In re American Nat’l Can Co., 41 USPQ2d 1841, 1843 (TTAB 1997). See
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also, In re Caterpillar, Inc., 43 USPQ2d 1335, 1339 (TTAB 1997) (“The fact that a
configuration design is the subject of a design patent, as in this case, does not,
without more, establish that the design is non-utilitarian and serves as a
trademark.”).
We do not find Applicant’s registration of U.S. Design Patent No. 352789 to
establish the applied-for mark as not functional inasmuch as the design patent
block and the applied-for mark have significant differences. Representative views of
the design patent block and the applied-for mark appear below.

When we compare the two blocks we find that the design patent block features
heavily textured front and back faces whereas the applied-for mark has smooth
front and back faces.7 Additionally, the applied-for mark has a “vertical groove” on
the top side whereas the design patent block shows no such groove. These
differences, especially the differences in the texture of the block faces, suggest that
the applied-for mark is far less ornamental than Applicant’s design patent block.
That is, the applied-for mark is missing the most ornamental and decorative feature

7 None of Applicant’s renditions of its mark shows the back face of the block. Nevertheless,
Applicant does not claim that the back face of the block is textured, nor does the bottom
view rendition show any texture in relief on the back face.
Serial No. 85851688
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of the design patent block, namely the highly textured block faces. Given these
significant differences between the design patent block and the applied-for mark,
Applicant’s ownership of the design patent does not establish the applied-for block
configuration as non-utilitarian. “Absent identity between the design patent and the
proposed mark, the presumption [that a mark is not functional under Section
2(e)(5)] loses force. . . .” In re Becton, Dickinson and Co., 102 USPQ2d at 1377.
B. Advertising Touting the Mark’s Utilitarian Features
We next turn to the second Morton-Norwich factor: advertising by the applicant
that touts the design’s utilitarian advantages. Morton-Norwich, 213 USPQ at 15.
An applicant’s own advertising promoting the utilitarian aspects of its product
design is strong evidence supporting a functionality refusal. In re Van Valkenburgh,
97 USPQ2d 1757, 1761 (TTAB 2011). The Examining Attorney argues that the
following excerpts from Applicant’s own advertising materials and website extol
specific utilitarian advantages of the applied-for configuration:
• “[The] trapezoidal shape provides its own interlock by imposing forces on
adjacent stones that deter shifting and is an excellent choice for stone
steps.”8

• “You may wish to take advantage of Pyzique’s tri-face option. Place a
stone chisel in the corner tri-face groove of the face that will be exposed.
One hit with a hammer on the chisel at each corner will give the tri-face
option.9

8 Office Action, January 2, 2014, http://www.pyzique.com/HTML/pictures/pictures.html.
9 Id.
Serial No. 85851688
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• “One hit with a hammer on a chisel placed on the corner triface groove
creates yet another look. . . .”10

• “Retaining walls are not built straight up unless expensive geogrid
materials are used. Walls must have a horizontal force equal to or greater
than the horizontal force of the soil being retained, otherwise the wall will
fail. Pyzique is designed with a 5/8” set back for each row (5/8” horizontal
tilt per 4” of wall height) to impose a horizontal force against the retained
soil.”11

• “Set the center side alignment groove directly above the backmost 5/8” set
back groove of the stones in the next lower layer . . . Use this visual
alignment for each successive layer of stones.”12
In addition, Applicant submitted an excerpt from its own web page touting the
benefits of its retaining wall blocks:
PYZIQUE, the one stone does it all system. . . . Each stone
has two faces that allow many types of projects such as
Free-standing walls, steps, borders, raised planter beds
and PYZIQUE’s exclusive BBQ. . . . PYZIQUE is a single
stone system that can build many types of projects. . . .
Each trapezoidal shaped PYZIQUE Stone has two faces
allowing many projects beyond retaining walls to be
built. . . . The PYZIQUE Stone builds straight and curved
retaining walls, shadow box walls, bump-out walls, steps,
patio barrier walls, BBQ grills, outdoor kitchens, stone
fence, lawn and paver edge, and much more.13
We find that the foregoing references directly address the utilitarian advantages
of Applicant’s applied-for mark. Applicant touts the “trapezoidal shape” as “an
excellent choice for stone steps.” Similarly, Applicant touts the ease with which the
face of a block can be beveled using the corner grooves: “One hit with a hammer on

10 Id., http://www.pyzique.com/HTML/pictures/pictures.html.
11 Id., http://www.pyzique.com/HTML/installation/installation.html.
12 Id.
13 Applicant’s Response, December 5, 2013, http://www.pyzique.com/HTML/home.html.
Serial No. 85851688
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the chisel at each corner will give the tri-face option.” Applicant also touts the
alignment lines as a way of arranging the blocks “to impose a horizontal force
against the retained soil” to counter-act forces that might shift the position of the
blocks. Applicant’s own web pages touts the benefit of these features as a whole
when it declares the blocks to be a “one stone does it all system” and a “single stone
system that can build many types of projects.”
We conclude that the advertising evidence submitted by the examining Attorney
supports a finding that Applicant’s mark is functional.
C. Availability of Alternative Designs
We now turn to the third Morton-Norwich factor: Whether functionally
equivalent designs are available to competitors. Morton-Norwich, 213 USPQ at 16.
We note, however, that the mere fact that other designs may be available does not
necessarily mean that applicant’s design is not functional. See TrafFix Devices, 58
USPQ2d at 1007; In re Bose, 772 F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985); In re
Van Valkenburgh, 97 USPQ2d at 1763.
Regarding the trapezoidal shape of the applied-for mark, the Examining
Attorney introduced a number of generally trapezoidal-shaped retaining wall blocks
available to consumers from the Home Depot and Lowe’s hardware stores. The
following two examples are representative:
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14
15

The record shows that these blocks are trapezoidal in shape in order to enable
the construction of straight or curved walls without gaps between the blocks. The
product description for Home Depot’s “Gray Concrete Garden Wall Block” states the
“blocks are trapezoidal to allow for the construction of either a straight or a curved
wall.” The Examining Attorney also introduced articles explaining how to build
walls and other projects with retaining wall blocks. These articles tout the benefits

14 Office Action, June 5, 2013.
15 Id.
Serial No. 85851688
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of the trapezoidal shape. For example, an article from the Today’s Homeowner
website states: “[t]he stones are often slightly wedge-shaped to allow you to create
gentle curves.”16
We find that the trapezoidal shape is preferred because no other shape provides
the ability to build straight or curved walls without requiring customers to cut the
blocks with a saw or hammer and chisel. Accordingly, the trapezoidal shape is
superior to other shapes because it allows the blocks to be formed into straight or
curved walls without modification. This saves on both construction time and
materials.
Regarding the three horizontal grooves and the center vertical groove on the
sides of the block, which are used to align the blocks, we find that none of the
alternatives submitted by the Examining Attorney or the Applicant directly
correlate to these features. Some of the blocks described in the record use a pin and
channel system to lock the blocks together but we do not find that this feature
serves the same purpose as Applicant’s alignment grooves. Similarly, some of the
blocks such as the “Versa-Lok Retaining Wall System”17 use a ¾” setback rather
than Applicant’s 5/8” setback but we do not find such a small difference in setback
to be significant.
Regarding the grooves at each corner, neither Applicant nor the Examining
Attorney has submitted any examples of design alternatives with precisely these

16 Office Action, July 25, 2014, www.todayshomeowner.com/how-to-build-a-stackable-block-
retaining-wall.
17 Applicant response, December 5, 2013.
Serial No. 85851688
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same features. However, the “Keystone Garden Wall” block is sold in both a straight
front as well as a “triplane” front.18 This suggests that Applicant’s block is superior
in design since it is a single block that can be modified to either a flat or “triplane”
front. This saves on construction time and simplifies the ordering of materials.
Regarding the vertical groove on the top of Applicant’s block, used to split the
block, again, none of the blocks described in the record can be considered alternative
designs. One block, the “Allan Block” 19 described in user instructions submitted by
the Examining Attorney has “pre-marked splitting notches” but these serve the
same purpose as Applicant’s groove and thus cannot be considered an alternative.
Rather, most of the blocks described in the record require cutting with a saw or
scoring the block before using a hammer and chisel to split the blocks. The relative
ease with which Applicant’s block can be split using the vertical groove suggests
that Applicant’s block is superior in design compared to competitor’s designs.
In sum, we find that the record does not show that functionally equivalent
designs comprising the features in Applicant’s applied-for mark are available to
competitors, either individually or as a whole, and thus this third Morton-Norwich
factor weighs in favor of finding the mark to be functional.
D. Comparative Methods of Manufacture
We next consider the fourth Morton-Norwich factor, whether the design of
Applicant’s product results from a comparatively simple or inexpensive method of

18 Id.
19 Office Action, July 25, 2014.
Serial No. 85851688
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manufacture. Applicant submitted the declaration of Paul Adam, the inventor of the
blocks, stating that the price of Applicant’s blocks is similar to those of other
manufacturers, and that Applicant’s blocks do not result from a comparatively
simple or cheap method of manufacture.20 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. Thus, the fourth Morton-Norwich factor is neutral.
E. Balancing the Factors
The Morton-Norwich factors pertaining to advertising touting the utilitarian
advantages of the design and to the lack of functionally equivalent alternative
designs favor a finding of functionality.
When we view the applied-for mark as a whole, we find that the described
features aid in the installation of the block and give Applicant’s product a
significant advantage in versatility over blocks without these features. It is the
aggregation of these features that make Applicant’s blocks a “one stone does it all
system.”21 That is, the trapezoidal shape, the horizontal and vertical alignment
grooves, the splitting groove, and the corner grooves for beveling the faces, taken
together, are all “essential to the use or purpose of the article” as described by
Applicant, namely, “a single stone system that can build many types of projects.”22

20 Dec. of Paul Adam, Applicant’s Response, December 5, 2013.
21 Applicant’s Response, December 5, 2013, http://www.pyzique.com/HTML/home.html.
22 Id.
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See TrafFix Devices, 58 USPQ2d at 1006. Accordingly, we find that the Examining
Attorney has made a prima facie showing that Applicant’s product design is
functional within the meaning of Section 23(c). Applicant’s declaration and other
evidence do not rebut the Examining Attorney’s showing.
Decision: The refusal to register Applicant’s mark, the configuration of a multi-use
stone retaining wall block, is affirmed.