Pingel Enterprise, Inc.

Trademark Trial and Appeal Board

Apr 14, 1998

No. 74421666 (T.T.A.B. Apr. 14, 1998)

Paper No. 17
GDH/gdh
4/14/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
______
Trademark Trial and Appeal Board
______
In re Pingel Enterprise, Inc.
______
Serial No. 74/421,666
______
Douglas B. White of Douglas B. White & Associates for applicant.
Ronald R. Sussman, Senior Trademark Examining Attorney, Law
Office 108 (David E. Shallant, Managing Attorney).
______
Before Sams, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Pingel Enterprise, Inc. has filed an application to
register the configuration reproduced below as a trademark for
"land vehicle parts; namely[,] fuel filters and valves".1

1 Ser. No. 74/421,666, filed on August 9, 1993, which alleges dates of
first use of January 1977.
Ser. No. 74/421,666
2
Applicant states in the application that "[t]he mark consists of
a design of a fuel valve for motorcycles"2 and that "[t]he lining
on the drawing [of the mark] indicates surface texture and
shading and does not indicate color."3 Registration of the
configuration on the Principal Register is sought on the basis of
a claim of acquired distinctiveness pursuant to the provisions of
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
Registration has been finally refused under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127,
on the ground that the configuration sought to be registered is
de jure functional and thus is unregistrable, irrespective of any
claim of acquired distinctiveness.4 Alternatively, on the basis
of the same statutory provisions, registration has been finally
refused on the ground that, even if applicant's configuration is
only de facto, rather than de jure, functional, it has not
acquired distinctiveness as an indication of origin for
applicant's goods.5

2 Applicant, in its brief, states further that "[t]he mark for which
registration is sought consists of the image of a high performance
motorcycle petcock fuel valve." Such image or design, we note, also
incorporates a fuel filter. However, inasmuch as it appears that the
type of fuel valve and filter combination at issue herein is known in
the trade simply as a petcock, it will be so referred to herein.
3 In addition, we note that the term "Pingel" and the other matter
shown in broken or dotted lines does not form part of applicant’s
putative mark. See Trademark Rule 2.51(d) and TMEP §1202.03(c).
4 It is well settled, of course, that "[e]vidence of distinctiveness is
of no avail to counter a de jure functionality rejection". In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
5 Applicant states in its brief that the "mark is used as a product
configuration mark and is also used as a logo on printed materials,
packaging, and point of sale displays for both catalog and retail
sales of ... Applicant's motorcycle products." However, for purposes
Ser. No. 74/421,666
3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register on each ground.
The evidence of record in this appeal, all of which was
furnished by applicant, consists of the following:6
(i) The declaration of Wayne Pingel,
applicant’s president since its inception,
which among other things sets forth yearly
sales and advertising figures for applicant’s
petcocks from 1978 to 1994; contains the
assertions that:
"The actual valve of Applicant
represented in the subject
trademark is machined from extruded
aluminum or brass stock. In that
manufacturing process any desired
external shape or surface
ornamentation can be applied, and
Applicant’s choice of a hexagonal
shape was arbitrary and non-
functional. Most valves
manufactured by competitors use a
cheaper die cast process, and while
that process of manufacture is less
expensive, the variety of external
surface shapes available with
either process is unlimited";
and is accompanied by exhibits consisting of
sample advertising for and magazine articles
about applicant’s goods, industry catalogs
showing alternatively available designs of
petcocks, form letters from dealers attesting
to their recognition of the appearance of

of determining the issues of de jure functionality and acquired
distinctiveness, it simply makes no difference in this appeal whether
we regard the matter which applicant seeks to register, as shown on
the drawing submitted with the application, as either the product
configuration of applicant’s petcock or a "logo" thereof. Compare In
re Universal Filters, Inc., 218 USPQ 456, 459 (TTAB 1983) [design
mark, as used on nameplate, is not an accurate depiction of product’s
configuration and thus could not be de jure functional].
6 The quoted descriptions of the items listed in subparagraphs (iii)
through (vii) are from applicant’s February 20, 1996 response to the
Office action of September 19, 1995.
Ser. No. 74/421,666
4
applicant’s petcock configuration as a
trademark, and copies of applicant’s two
utility patents covering certain features for
its goods;
(ii) The affidavit of Alan D. Wilks,
Ph.D., and Jeffrey G. Knoll, P.E., of Packer
Engineering, Inc., an engineering consulting
firm, which attests to a review and
accompanying report by such firm with respect
to "[a]pplicant’s fuel valve as depicted in
its trademark application, Serial No.
74/421,666," including an installation video
and the "opinion of Packer Engineering, Inc."
that:
"1.) The configuration of the
subject valve body does not
yield a utilitarian advantage
over valves having other valve
body configurations;
2.) Competitors of PINGEL® do not
need to use a hexagonally
shaped valve body in order to
make an equally competitive
product;
3.) Alternative valve body designs
are available which provide
similar utility as the subject
valve; and
4.) The shape of the PINGEL® valve
body is not functional in the
sense of utility, installation
or manufacture";
(iii) A "copy of the installation
instructions for a Harley-Davidson reserve
metering valve," for which applicant's
petcock is marketed as a substitute;
(iv) An "actual Harley-Davidson [reserve
metering] valve demonstrating its diverse
appearance while providing the identical
function";
(v) An "actual Pingle [fuel] valve, the
appearance of which is the subject of this
[application for] registration";
Ser. No. 74/421,666
5
(vi) A "photograph of Applicant’s [fuel]
valve employing the ’rotary twist knob’ ...
variation of the valve [which] retained the
basic hexagonal appearance ... but differed
slightly in the actuation means" in that a
rotary twist knob was utilized instead of the
lever or control arm shown in the
configuration sought to be registered; and
(vii) A copy of applicant’s 1995
"catalog [as] referred to in the Packer
Engineering report and showing a number of
alternative variations of the [fuel] valve
design."
Turning first to the issue of whether applicant’s
petcock configuration is de jure functional, we note that the
Supreme Court, in the case of Qualitex Co. v. Jacobsen Products
Co. Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995), recently
reaffirmed the importance of the functionality doctrine in
trademark law by pointing out that:
The functionality doctrine prevents trademark
law, which seeks to promote competition by
protecting a firm’s reputation, from instead
inhibiting legitimate competition by allowing
a producer to control a useful product
feature. It is the province of patent law,
not trademark law, to encourage invention by
granting inventors a monopoly over new
product designs or functions for a limited
time, 35 U.S.C. §§154, 173, after which
competitors are free to use the innovation.
If a product's functional features could be
used as trademarks, however, a monopoly over
such features could be obtained without
regard to whether they qualify as patents and
could be extended forever (because trademarks
may be renewed in perpetuity). See Kellogg
Co. v. National Biscuit Co., 305 U.S. 111,
119-120[, 39 USPQ 296, 300] (1938) (Brandeis,
J.); Inwood Laboratories, Inc. [v. Ives
Laboratories, Inc.], [456 U.S. 844 (1982)]
... at 863[, 214 USPQ 1 at 9] (White, J.,
concurring in result) ("A functional
characteristic is 'an important ingredient in
the commercial success of the product,' and,
after expiration of a patent, it is no more
Ser. No. 74/421,666
6
the property of the originator than the
product itself") (citation omitted).
Functionality doctrine therefore would
require, to take an imaginary example, that
even if customers have come to identify the
special illumination-enhancing shape of a new
patented light bulb with a particular
manufacturer, the manufacturer may not use
that shape as a trademark, for doing so,
after the patent had expired, would impede
competition--not by protecting the reputation
of the original bulb maker, but by
frustrating competitors’ legitimate efforts
to produce an equivalent illumination-
enhancing bulb. See, e.g., Kellogg Co.,
supra, at 119-120 (trademark law cannot be
used to extend monopoly over "pillow" shape
of shredded wheat biscuit after the patent
for that shape had expired). This Court
consequently has explained that, "[i]n
general terms, a product feature 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," that is, if
exclusive use of the feature would put
competitors at a significant non-reputation-
related disadvantage. Inwood Laboratories,
Inc., 456 U.S., at 850, n. 10. ....
In line therewith, it has long been settled law that,
as stated, for example, in In re Bose Corp., 215 USPQ 1124, 1126
(TTAB 1982), aff’d, 772 F.2d 186, 227 USPQ 1 (Fed. Cir. 1985):
A shape or configuration of an article
which is in its concept essentially or
primarily utilitarian or functional cannot
function as a trademark under the Federal
trademark statute, and cannot be registered
either on the Principal or Supplemental
Register. In re Deister Concentrator Co.,
[Inc., 289 F.2d 496,] 129 USPQ 314 (CCPA
1961); Best Lock Corp. v. Schlage Lock Co.,
[413 F.2d 1195,] 162 USPQ 552 (CCPA 1969); In
re Honeywell, Inc., 187 USPQ 576 (TTAB 1975),
aff’d, [532 F.2d 180,] 189 USPQ 343 (CCPA
1976); In re Water Gremlin Co., [635 F.2d
841,] 208 USPQ 89 (CCPA 1980); In re Lighting
Systems, Inc., 212 USPQ 313 (TTAB 1981);
[and] In re Teledyne Industries, Inc., 212
USPQ 299 (TTAB 1981). This rule applies
Ser. No. 74/421,666
7
irrespective of whether [an] applicant may
have established a de facto secondary meaning
in the configuration of its goods due to the
existence of a patent claiming the
configuration as a patentable feature or
extensive advertising and promotion of the
configuration over a period of time. In re
Water Gremlin Co., supra, at [9]0-91.
Accordingly, the threshold issue in this
appeal is whether the configuration ...
sought to be registered here is or is not
dictated primarily by functional or
utilitarian considerations.
In determining such an issue, the court in the leading
case of In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (CCPA 1982), outlined several general factors to be
considered when evidence thereof is of record (emphasis by the
court):
Keeping in mind ... that "functionality"
is determined in light of "utility," which is
determined in light of "superiority of
design," and rests upon the foundation
"essential to effective competition," ...
there exist a number of factors, both
positive and negative, which aid in that
determination.
Previous opinions of this court have
discussed what evidence is useful to
demonstrate that a particular design is
"superior". In In re Shenango Ceramics,
Inc., 53 CCPA 1268, 1273, 362 F.2d 287, 291,
150 USPQ 115, 119 (1966), the existence of an
expired utility patent which disclosed the
utilitarian advantage of the design sought to
be registered as a trademark was evidence
that it was "functional". .... It may also
be significant that the originator of the
design touts its utilitarian advantages
through advertising. ....
Since the effect upon competition "is
really the crux of the matter," it is, of
course, significant that there are other
alternatives available. ....
Ser. No. 74/421,666
8
It is also significant that a particular
design results from a comparatively simple or
cheap method of manufacturing the article.
....
Applicant, in its brief, asserts that "[t]he [fuel]
valve image which is the subject of this appeal can be [further]
described as a composite of features consisting of (1) a
hexagonal shaped valve body with (2) an extension neck covered by
a filter sleeve, (3) an actuating lever and (4) a protruding
valve outlet." Perhaps because, when installed in a motorcycle
gasoline tank and connected to a fuel line, only the hexagonally
shaped fuel valve body itself and the actuating lever arm of
applicant’s petcock are visible, applicant tends to focus its
arguments on a claimed lack of functionality of such features.
However, while contending in its brief that "[t]he present
application does not seek to control or prohibit the use of a
bulbous valve housing, an extension neck for a reserve valve [and
filter], an actuating lever, nor a fuel outlet," applicant
significantly admits that "[c]learly, these features are
commonplace for all reserve metering petcock valves," including
the one for which the product configuration at issue herein is
sought to be registered as a trademark.
Nevertheless, applicant contends in particular that the
hexagonal shape of its petcock is not functional since the shape
does not provide any advantage during installation of the valve.
Applicant points to the instructions for both its petcock and the
Harley-Davidson model which it replaces as indicating that such
valves "are designed to be hand held during installation." The
Ser. No. 74/421,666
9
fact that two motorcycle magazine articles, which respectively
appeared in the August 1995 issue of Hottest Custom Iron and the
March 1995 edition of Thunder Alley, instruct readers to install
applicant’s petcock by utilizing a wrench, with the jaws thereof
wrapped with electrical or masking tape to avoid marring the
chrome finish of the valve, to hold the valve in place while the
final tightening of the adapter nut or fitting is made with
another wrench, does not mean that the hexagonal shape of the
valve body is functional, applicant contends. Specifically,
applicant maintains that merely because "the hexagonal appearance
of the valve body invites the use of a taped open-end wrench
during installation," in contravention of the instructions
provided by applicant, does not mandate a finding that the valve
body is shaped just for such a purpose.
Applicant urges, instead, that the proper manner of
installing its petcock is set forth in the conclusion of the
Packer Engineering report, which is that "the petcock valve
should be held by hand while an adapter nut is tightened with a
wrench." According to applicant:
The Packer Engineering report is not only
consistent with the manufacturer’s
instructions and decades of mechanics’
experience, but it is also consistent with
the varied and diverse competing petcocks on
the market ..., all of which are to be
installed the same way into a Harley-Davidson
fuel tank -- hand held.
The lack of functionality of a hexagonal
body is further evidenced by the fact that
none of the competing petcocks have adopted a
hexagonal body even though Applicant’s
hexagonal valve body has been in commercial
production for nearly two decades and fully
Ser. No. 74/421,666
10
available to all competitors. While the
Examiner argues that the hexagonal body
satisfies a need in the industry, the market
has proved that a hexagonal valve body as an
element of this mark presents no utility as a
product configuration, and even less when
used as a logo. ....
The fact that the look of Applicant’s
valve might invite one to unnecessarily apply
an open-end wrench instead of using one’s
hand cannot be said to have rendered that
feature "functional" in a trademark context.
In other words, that a look might suggest an
unintended misuse of a feature certainly
cannot mean that a function dictated the
look. ....
Applicant also contends that, "[i]n addition to the
[fuel] valve body, the actuating lever and the valve outlet in
Applicant’s composite mark provide a small contribution to the
appearance of the petcock, and cannot be entirely ignored in the
look of the overall mark." In minimizing the contribution of
such features to the utility of the design, applicant asserts
that, "[w]hile Applicant’s lever and outlet must perform specific
functions, those functions do not dictate their actual external
appearance and positioning, or their contribution to the overall
appearance of the composite mark."
Finally, with respect to the filter element of its
petcock design, applicant similarly diminishes the degree to
which such feature is dictated by its utilitarian function,
insisting that:
The filter covered extension neck of
Applicant’s petcock valve is only required to
extend, as do all extensions for all reserve
valves of this type. But like the neck of
the "Fantastik" spray bottle [in Morton-
Norwich, supra at 16], it serves an inherent
purpose while its exterior adds incidentally
Ser. No. 74/421,666
11
to the overall appearance of the composite
mark. .... [T]he extension neck for petcock
valves can present a non-functional exterior
appearance, particularly when an ornamental
shape, design or covering is applied to the
exterior. Here, the appearance of
Applicant’s extension neck is decorated by a
sleek mesh sleeve with a flattened hat shaped
extremity. This sleeve provides a function
to the extent that it acts as a filter, but
other aspects of its appearance (sleek look
with flattened hat) are also ornamental. But
most importantly, other exterior appearances
for the extension neck are equally as
available. Size, shape, contour, sleeve
coverage, extremity closure, and surface
features are but a few of the design tools
available to a competing valve to achieve a
differing look. A striking example of an
extension neck with a filter sleeve on a
competing valve is the one sold by Harley-
Davidson, submitted as evidence herein ....
In short, applicant urges that because, in terms of shape, size
and/or appearance, none of the principal features which
contribute to the overall look of its petcock design is essential
to the use of its product or to the use of petcocks generally,
such a design is not de jure functional.
The Examining Attorney, on the other hand, maintains
that consideration of the evidence of record in light of the
Morton-Norwich factors establishes a prima facie case of de jure
functionality for the configuration which applicant seeks to
register and that applicant has failed to rebut such a case.7
Among other things, the Examining Attorney observes that,
contrary to applicant’s contention that the hexagonally shaped

7 It is settled that it is incumbent upon the applicant to prove that
the configuration or design of its goods is not de jure functional if
a prima facie case is established that the configuration or design is
functional in law. See, e.g., Textron, Inc. v. U.S. Int’l Trade
Comm’n, 753 F.2d 1019, 224 USPQ 625, 629 (Fed. Cir. 1985); In re R.M.
Ser. No. 74/421,666
12
body of its petcock is arbitrary and provides no utilitarian
advantage in terms of installation or otherwise, the motorcycle
magazine articles plainly contradict applicant’s position. As
explained by the Examining Attorney (emphasis in original):
It must be understood that motorcycle
fuel tanks are fitted with threading on the
underside which is designed to accept a fuel
valve. The casing of [the body of]
applicant’s fuel valve, like all motorcycle
fuel valves, is threaded in order that it may
be secured to the underside of a motorcycle
fuel tank by means of an adapter nut. In
order for the valve to be installed onto the
fuel tank, the valve must be threaded onto
the tank. This requires a turning motion be
applied to the valve and/or the adapter nut
during installation. As the valve is turned
into the tank, the resistance becomes greater
as the valve is tightened onto the tank. A
particular torque must be employed in order
that fuel does not leak out of the tank at
the point of installation. This necessitates
that some degree of force be applied either
to the valve, or the adapter ring, and if the
ring, then the valve body must be held in
place while this force is applied in order
that the valve is positioned properly for
ease of use, and in order that the connection
to the fuel line (the "orifice") is in the
proper position for installation.
The familiar hexagonal shape of today’s
nuts and bolts is no accident. The hexagonal
shape allows that there is always a parallel
side to any of the flat surfaces on the nut
or bolt. Thus, an open[-]end wrench may be
applied to any of the flat surfaces as an aid
to turning. A larger number of flat surfaces
would result in a smaller surface area for
the wrench, resulting in a greater number of
stripped nuts and bolts. Fewer flat surfaces
would require that the wrench be turned in a
greater arc before the wrench may be removed
and reapplied to the nut or bolt for turning;
a handicap in tight surroundings. Six sides
have proven over time to be the optimum

Smith, Inc., supra; and In re Teledyne Industries, Inc., 696 F.2d 968,
217 USPQ 9, 11 (Fed. Cir. 1982).
Ser. No. 74/421,666
13
number for this purpose. Suffice it to say
that the hexagonal shape has become the
standard shape for the heads of nuts and
bolts, as well as any device which requires
aid in turning by a wrench, and that wrenches
and sockets have been designed to accommodate
this shape.
Applicant would have us believe that it
is merely an accident of aesthetics that its
threaded outer casing is designed in a
hexagonal shape which is coincidentally
exactly the right size to fit a 25 millimeter
open[-]end wrench; that the ability to
tighten the [fuel] valve onto the tank with a
wrench designed for the purpose as opposed to
using pliers with rags on the jaws or using
only one[’]s own hands provides no advantage
in installation, and is, in fact, an
"unintended misuse" of the product. ....
What applicant characterizes as "misuse" is
in the eyes of others ... a clear and obvious
installation advantage.
In view thereof, the Examining Attorney asserts that
the motorcycle magazine articles show that the use of two
wrenches, taped to avoid scarring the chrome finish of
applicant’s petcock, provide a simpler and better method of
installation than applicant’s recommended instructions and which
would not be possible if the body of the fuel valve, like the
adapter nut or fitting, were not hexagonally shaped to
accommodate the shape of an open-end wrench. Moreover, while
applicant’s hand-held method of petcock installation may be quite
easy when the underside of a motorcycle fuel tank is unobstructed
by the heads and cylinders of a large engine, the Examining
Attorney also points out that, "[d]epending upon the particular
model of motorcycle being worked on, [and] because of engine
components in the way, there may not even be enough room to turn
the valve [by hand] in a complete circle when threading it onto
Ser. No. 74/421,666
14
the tank." Use of a protectively taped open-end wrench, the
Examining Attorney notes, would facilitate installation in such
circumstances, provided that the valve body of the petcock is
hexagonally shaped, like applicant’s, to fit the wrench. As to
the findings of the Packer Engineering report, the Examining
Attorney additionally notes that (emphasis in original):
This report analyses [sic] the package
instructions and the valve and indicates that
a wrench is not required in the installation
of the valve and therefore, the shape of the
valve body provides no particular advantage
during installation. The report does not
specifically say that the applicant’s method
of installation is superior, although it
implies as much when discussing the
disadvantage of the wrench (scratching the
chrome). Actually, the report ... only
argues that a wrench is not required in the
installation of the valve. It does not
answer the question as to what is the best
way to install the valve.
Thus, as to the hexagonal shape of the body of applicant’s
petcock, the Examining Attorney concludes that "[t]o give the
applicant a monopoly via the trademark laws of this important
feature would violate public policy, as any manufacturer of fuel
valves should be free to employ a hexagonal shaped valve body in
order to take advantage of the fact that a wrench on the body
makes the valve easier to install, notwithstanding possible
alternative but less satisfactory methods of installation."
With respect to the other principal features of
applicant’s petcock design, namely, the actuating lever, valve
outlet and filter element, the Examining Attorney essentially
argues that such features are dictated primarily by the functions
they are designed to perform. The Examining Attorney concedes
Ser. No. 74/421,666
15
that "the ’actuating means,’ or lever which is used to open and
close the [fuel] valve could be made [by] employing a number of
different, yet equally satisfactory designs, although the optimum
placement of this handle is somewhat limited." Nevertheless,
like the knurled rotary twist knob variation demonstrated by
applicant in the record, the Examining Attorney appears to
suggest that an actuating lever or control arm is one of only a
few basic, superior designs for controlling the operation of a
petcock and thus must be regarded as functional. As to the valve
outlet or orifice, the Examining Attorney contends that its look
and placement are dictated by the make and model of the
motorcycle with which the petcock is designed to work.
Specifically, the Examining Attorney asserts, and applicant has
not denied, that:
The [valve outlet or] orifice is a particular
outside diameter in order that it exactly fit
the inside diameter of the motorcycle’s fuel
line. The slight bulge at the end is used to
keep a fuel line clamp around the fuel line
from pulling off, and is a common feature of
all such fuel line connectors as shown by the
many examples of competitive fuel valves of
record. The placement of the orifice is
dictated by the placement of the fuel line of
the particular make and model of the
motorcycle for which the valve is designed.
This is all quite evident based upon common
sense as well as a comparison of applicant’s
valve with the alternative valves submitted
as evidence ... in the [installation]
videotape, and in the many magazine articles
and advertisements of record. ....
Lastly, as to the filter element, which applicant
refers to as having an "extension neck ... decorated by a sleek
mesh sleeve with a flattened hat shaped extremity," the Examining
Ser. No. 74/421,666
16
Attorney accurately points out that the extension neck is
actually a fuel tube and that the sleek mesh sleeve with a
flattened hat-shaped extremity serves as a filter screen, with a
crimped end, for the valve. According to the Examining Attorney:
The evidence shows that all fuel valves
employ this type of fine mesh filter around
the fuel tube, and all appear to be equally
sleek. The flattened hat is another way of
saying that rather than being flattened
perpendicular to the sides, the end is
crimped, which would likely be a less
expensive method of manufacture giving the
applicant a slight competitive advantage in
this regard. .... [The extension neck or
fuel tube] is a particular height so as to
create a reserve of fuel in the tank [and],
thus, its height is dictated by the tank it
is inserted into. ....
While it is clear from the above that applicant and the
Examining Attorney are diametrically opposed in their views, we
find upon consideration of each of the Morton-Norwich factors
that the petcock configuration in issue is de jure functional and
hence unregistrable. Turning first, in this regard, to a review
of the utility patents furnished by applicant, we note that it is
well settled that the existence of one or more utility patents
which disclose the superior utilitarian advantages of a design
generally is adequate, and frequently is conclusive or
incontrovertible, evidence of the de jure functionality of a
configuration. See, e.g., Best Lock Corp. v. Schlage Lock Co.,
supra at 556 and In re Shenango Ceramics, Inc., supra. Although
neither applicant nor the Examining Attorney has specifically
discussed this factor in their briefs, it is apparent that while
applicant’s utility patents pertain to the internal operation of
Ser. No. 74/421,666
17
its reserve metering fuel valve, such operation nevertheless
primarily dictates the overall outward appearance or design of
the petcock with respect to the location of the actuating lever,
fuel line outlet and filter screen extension, in relation to the
valve body, and the size or length of the standpipe enclosed by
the filter screen extension.
In particular, applicant’s U.S. Patent No. 4,957,138,
which issued on September 18, 1990, and its U.S. Patent No.
4,250,921, which issued on February 17, 1981, respectively
contain the following figures as illustrations of the preferred
embodiments of its inventions.8
The figure reproduced on the left above is from the ’138 patent,
which discloses an anti-siphoning device for a reserve metering

8 We note that, unlike a design patent, the figures appearing in a
utility patent do not actually define the claimed subject matter;
instead, they merely illustrate embodiments of the claimed invention.
However, the figures in a utility patent are part of the required
disclosure of the invention.
Ser. No. 74/421,666
18
valve, and is described as "a perspective view of a reserve
metering fuel valve in accordance with the present invention
having a standpipe protruding upwards therefrom and a filter
screen enveloping the standpipe, and showing the location and
positioning of the anti-siphon sleeve adhered to the inside of
the filter screen." Significantly, in addition to the objects of
the invention, which are to provide (i) "a device for eliminating
the tendency of the reserve metering valves to siphon the reserve
fuel via the filter screen," (ii) "an uncomplicated and
inexpensive solution to the siphoning problem" and (iii) "a
device for eliminating the siphoning problem which may be easily
retro-fitted to existing valves," the background of the invention
contains the following description of the prior art:
Reserve metering valves employing a
standpipe are generally old in the art and
are particularly popular as fuel control
valves. Generally, reserve-metering valves
comprise a body member exhibiting multiple
orifices and conduits therein. A valve
member is mounted within this body to
selectively connect certain conduits to the
outgoing orifice. Typically, one conduit
would be connected to the standpipe and
arranged to draw fuel therethrough. A second
conduit would be connected to an inlet at a
lower point within the tank and arranged to
draw fuel therethrough upon selection by the
control valve.
The figure depicted on the right above is from the ’921
patent, which covers a reserve metering valve, and is described
as "a front elevation pictorial view of the preferred embodiment
of the present invention." In the background of the invention it
is noted that while "[p]rior valves have attempted to provide

Ser. No. 74/421,666
19
reserve metering capability by providing resetable mechanisms and
linkages which detect fluid level and shut off fuel flow," such
"prior approaches have generally been bulky, complicated, and
generally inapplicable to motorcycle applications where miniature
size, simplicity, and extreme reliability are demanded." Besides
stating that the objects of the invention are to provide (i) "a
valve for a motorcycle fuel line which may be operated quickly
and which provides both a reserve metering capability and an
absolute fuel shut off" and (ii) "a reliable valve apparatus
which involves a minimum of components and is accordingly
economical to manufacture," the ’921 patent also describes the
operation of the invention as follows:
[T]here is shown a preferred embodiment
of the present invention having at it’s [sic]
lower extremity a lever 12 for operating the
valve and at it’s [sic] upper extremity it’s
[sic] normal inlet port 14 covered by a fuel
filter screen 16. Below the normal inlet 14
there is a reserve inlet 18 again located
under the fuel filter screen. These inlets
provide access to an internal passage ... of
the valve section member ... fitted within
[the] casing. .... This valve is arranged
for mounting within a fuel tank by thread
means 17 by gravity feed.
Selection of inlets is accomplished by a
valve selection member rotated by control
handle 12 within the casing chamber. This
chamber has an outlet port 32 formed in it’s
[sic] side for coupling to an external fuel
line. .... When the fuel level in the tank
drops below the normal inlet port 14, flow
would be interrupted until the operator moves
control arm 12 to the reserve position ...
In this reserve position secondary inlet port
18 in the valve casing becomes aligned with
the internal opening ... to the passageway of
the valve selection member. Flow will begin
again through openings 18 ....
Ser. No. 74/421,666
20
The ’921 patent also describes "an alternative embodiment of the
present invention with a spring biased port selection mechanism"
which "is controlled by an attached [knurled] dial". Both the
preferred and alternative embodiments are described by the ’921
patent as "an improved reserve valve which provides ... an
uncomplicated assembly of a reciprocal or rotatable selection
member which selects inlets at different elevations to
distinguish a low fuel level and provide a reserve meter." The
’921 patent additionally confirms that the distance between the
inlet ports on the standpipe or filter extension extremity
"define[s] a predetermined reserve volume in the fuel tank."
The foregoing not only makes it plain, as previously
noted, that the configuration of applicant’s petcock has the
overall outward appearance or design which it does because such
features as the actuating lever, fuel line outlet and filter
screen extension, in relation to the valve body, and the size or
length of the standpipe enclosed by the filter screen extension,
collectively work best when so integrated or combined, but that
the configuration, including the anti-siphon sleeve and threaded
valve body, is a superior design for a motorcycle petcock. See,
e.g., In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 4-6 (Fed. Cir.
1985) [loudspeaker configuration] and In re Bio-Medicus, Inc., 31
USPQ2d 1254, 1258-60 (TTAB 1993) [blood pump configuration].
Allowing applicant trademark rights in its petcock configuration
would therefore hinder effective competition in the motorcycle
fuel valve market.
Ser. No. 74/421,666
21
With respect to the advertising for applicant’s
product, we admittedly find nothing which explicitly promotes
such utilitarian advantages, as disclosed by applicant’s utility
patents for its petcock configuration, as the simplicity and
reliability of operation of its design. Advertising for
applicant’s product, as well as the printed packaging therefor,
nevertheless tout the speed and ease with which applicant’s
petcock design can be installed, using phrases such as "Quick,
easy installation on your Harley-Davidson" and "Easy To Install
In Minutes Without Tank Removal". Moreover, applicant’s 1995
catalog generally describes its line of petcocks, including the
one with the hexagonal valve body which is at issue herein, as
follows (emphasis added):
Along with the original Hex valve, a
"Designer Line" of Power-Floï›› valves has
been added offering a diamond shape and, a
round shape with either: smooth, lightning,
flame or vertical groove designs. Power-Floï››
fuel valves feature highly polished aluminum
or highly polished chrome plated brass
finishes with either 1/4" NPT, 3/8" NPT, or
H-D metric thread including adapter, [and]
standard 5/16" nipples .... Other features
include ... a stainless steel filtering
screen and an easy turn lever for the
on/off/reserve positions.
Thus, with respect to stressing such advantageous features of its
petcock configuration as its speed and ease of installation,
filter element and easy turning lever, applicant’s advertising
and promotional materials provide some evidence that those
features are necessary elements of a superior petcock design
which others should be permitted to copy, absent patent
Ser. No. 74/421,666
22
protection therefor, in order to compete effectively in the
motorcycle fuel valve marketplace.
As indicated by the Federal Circuit in In re Bose
Corp., supra at 6, where a product feature "is the best, or at
least one, of a few superior designs for its de facto purpose, it
follows that competition is hindered" by recognition of trademark
rights therein. The record in this case reveals that, contrary
to applicant’s contentions, there are at most only a very limited
number of alternative designs which are available for motorcycle
petcocks and even a lesser number of alternatives which are used
by competitors.9 Applicant itself, as shown by both the
photograph of its knurled knob or twist dial model and the
designs reproduced below from its 1995 catalog, offers several
alternative petcock designs:10

9 Of the alternatives demonstrated by applicant, we have not accorded
any weight to those designs which lack an integral filter mesh or
screen. Plainly, such designs are simply not viable alternatives
since, while they will provide for a metered fuel reserve and
otherwise act as a fuel valve, the absence of a fuel filter element
means that, in order to obtain the same degree of functionality as
applicant’s petcock, a separate fuel filter would have to be
introduced somewhere in the fuel line system. It is intuitively
obvious, however, that an integrated combination of fuel valve and
filter for installation into a motorcycle fuel tank is less prone to
leakage of fuel than a separately connected fuel valve and filter.
10 From left to right above, such variations are described in
applicant’s catalog as a "Lightning Strike Design," a "Vertical Groove
Design," a "Diamond Design," a "Smooth Round Design" and a "Flamed
Design".
Ser. No. 74/421,666
23
The record indicates, however, that such designs are merely minor
variations of the basic design disclosed by applicant’s utility
patents and, inasmuch as one of those patents has yet to expire,
none of the designs presently is entirely available to
applicant’s competitors. More importantly, none of applicant’s
alternative designs, with the exception of its spring-based dial
actuated model and its diamond patterned version, features a
hexagonally shaped valve body.
Clearly, unlike a round shape, a hexagonal shape on the
valve body for a petcock offers a significant installation
advantage since it makes possible the use, by those inclined to
do so, of an open-end wrench or wrenches to position and/or
tighten the valve in place. Utilizing an open-end wrench or two
particularly eases the installation of applicant’s petcock in
instances where turning the valve body or holding it in place by
hand would otherwise be difficult due to spacial restraints. As
the Examining Attorney points out in his brief (emphasis in
original):
It seems clear that the hexagonal shape
of the valve body will tempt many, if not
most people[,] to utilize a wrench on the
body of the valve during installation.
Whether this is "unintended misuse" or simply
common sense is irrelevant. And this is true
notwithstanding the report from ... Packer
Engineering ..., which shows and discusses a
Ser. No. 74/421,666
24
no doubt quite adequate method of
installation. It is[,] however, probably not
the best method of installation considering
the happy coincidence that a 25 millimeter
open[-]end wrench, or an adjustable wrench
(with tape on the jaws, of course)[,] will
greatly facilitate installation. This
remains true whether it was the intention of
applicant when designing the valve or simply
a lucky accident.
Furthermore, directly contrary to the sworn statements in both
Ser. No. 74/421,666
25
the Pingel declaration and the Wilks and Knoll affidavit and
glaringly at odds with the opinions in the Packer Engineering
report, a careful reading of the installation instructions which
accompany the packaging for applicant’s petcock reveals that, in
the case of its "1/4" NPT AND 3/8" NPT" models, the hexagonally
shaped or "Hex valve" is to be installed, unlike the round shaped
or "Round valve," with the use of a protectively taped wrench
(emphasis added):11
4a. Round valve: Install the valve into the
tank or adapter by hand until the nipple is
facing the proper direction and the valve
feels tight and secure.
4b. Hex valve: Install the valve into the
tank or adapter with an adjustable wrench
using masking tape, duct tape, etc. on the
jaws to prevent scratches on the valve. Pull
the wrench around until the nipple outlet is
facing in the proper direction and the valve
feels tight and secure.
There simply is no doubt, therefore, that the hexagonally shaped
valve body of applicant’s petcock configuration offers a
significant advantage in installation, as the motorcycle magazine
articles relied upon by the Examining Attorney also make clear.

11 While the statements relied upon by applicant to support the
registrability of the configuration at issue may only be inadvertently
inconsistent, they would appear at this juncture to be materially
false and misleading. However, in fairness, we observe that in the
case of its "H-D METRIC & NUT" model, the pertinent installation
instructions recommend use of a protectively covered wrench only to
tighten the adapter nut after the valve and nut assembly has been
threaded into the tank (emphasis added):
5. To align the hose nipple for proper fuel line
positioning, hold the nut with one hand and then turn only
the valve clockwise as viewed from the bottom of the valve
to the desired position. Now securely tighten the adapter
nut with an adjustable wrench using masking tape, duct tape,
etc. on the jaws to prevent scratching the surface.
Ser. No. 74/421,666
26
As to alternative configurations which are actually
available to competitors, the record shows that such alternatives
are basically reproductions of the stock or standard Harley-
Davidson petcock for which applicant’s product is a replacement.
A representative sample of such designs, many of which also
feature a hexagonally shaped valve body and/or adapter nut, is
reproduced below:
Applicant, as noted earlier, has admitted, as a comparison of the
above designs with applicant’s configuration plainly shows, that
such features as "a bulbous valve housing, an extension neck for
a reserve valve [and filter], an actuating lever, ... [and] a
fuel outlet" are "[c]learly ... commonplace for all reserve
metering petcock valves". Other than the type of filter element
employed, the only readily discernible difference in applicant’s
Ser. No. 74/421,666
27
configuration from that shown by competitors’ petcock designs is
that applicant’s actuating lever, due to the manner of operation
dictated by the utility patent for its fuel valve, is axially
located in relation to the valve housing while the actuating
lever in competitive products is mounted on the side of the valve
body. The record reveals, moreover, that a capped tubular screen
filter, like the ones shown above, is one of only two alternative
designs, with the other being the crimped mesh filter utilized by
applicant and which, by the very nature of the use of a fine
screen mesh, provides a "sleek" appearance.
It is plain from this record that, contrary to
applicant’s assertions, there are but two basic designs for
motorcycle petcocks: applicant’s configuration and the standard
Harley-Davidson design which competitors have been free to copy
with minor variations. Thus, as stated by the Federal Circuit in
In re Bose Corp., supra at 6: "In this respect, this case is
unlike Morton-Norwich where ’an infinite variety’ of container
shapes remained available to competitors." Here, competitors in
the petcock replacement market essentially have only the stock
Harley-Davidson design to copy. The design of a motorcycle
petcock, including such necessary features as an actuating lever,
filter screen and extension neck, simply is not infinitely
variable, but is, instead, limited by operational and spacial
constraints12 to the two fundamental approaches shown by this

12 Plainly, a control arm cannot be so long as to risk inadvertent
engagement of the reserve or shutoff functions, nor can the filter
screen surrounding the extension neck extend beyond the inside height
of the fuel tank.
Ser. No. 74/421,666
28
record. Applicant’s configuration, like the stock or standard
design it replaces, owes its appearance to the fact that the
design thereof simply works better. Moreover, as explained
earlier, applicant’s configuration is a superior design in terms
of the ease of installation provided by its hexagonally shaped
valve body. As such, there is plainly a competitive need, upon
expiration of applicant’s utility patents, for competitors to
copy applicant’s design, in order to effectively compete in the
marketplace for replacement motorcycle petcocks, since there is
an absence of a sufficient or meaningful variety of alternative
petcock designs which perform the same functions equally well.
A final factor for consideration is whether applicant’s
petcock configuration results from a comparatively simple or
inexpensive method of manufacturing. As stated in the utility
patents covering applicant’s product, both the anti-siphoning
device (shown as the dual bands within the upper portion of the
filter element of applicant’s configuration) and the petcock
itself are designed, respectively, to provide "an uncomplicated
and inexpensive solution to the siphoning problem" and "a
reliable valve apparatus which involves a minimum of components
and is accordingly economical to manufacture". That applicant,
despite the inherent advantages of a design which is simple and
less expensive to manufacture than other petcocks, has, however,
deliberately chosen a more complex and expensive manner in which
to manufacture its product does not mean that the configuration
thereof is not de jure functional. Specifically, as stated in

Ser. No. 74/421,666
29
the Pingel affidavit, that applicant has decided to produce its
petcock by employing the more involved and costlier process of
having it "machined from extruded aluminum or brass stock" rather
than utilizing, as is the case with "[m]ost valves manufactured
by competitors[,] ... a cheaper die cast process," does not serve
to avoid a finding of de jure functionality for its product
configuration. See, e.g., In re Bio-Medicus Inc., supra at 1265.
Nevertheless, in the event that our holding of de jure
functionality is ultimately reversed, we turn to the alternative
issue of whether applicant has demonstrated that its petcock
configuration has acquired distinctiveness as an indication of
origin for its product. Applicant asserts that its petcock
design has acquired distinctiveness as a result of continuous use
and "extensive advertising ... covering a period exceeding 16
years" during which "the mark was carried on packaging and point
of sale displays". In addition to the sales and advertising
figures mentioned in the Pingel declaration,13 applicant relies

13 Specifically, applicant’s president lists the following "gross sales"
and "[a]dvertising expenditures" over a 17-year period:
YEAR SALES ADVERTISING
1978 $32,695 $3,780
1979 $41,985 $3,878
1980 $41,889 $2,496
1981 $66,215 $3,381
1982 $55,243 $4,028
1983 $87,111 $6,421
1984 $93,971 $6,939
1985 $132,781 $16,521
1986 $156,657 $10,442
1987 $215,901 $10,465
1988 $299,351 $20,760
1989 $363,575 $21,000 (approx.)
1990 $607,669 $21,000 (approx.)
1991 $827,130 $21,150
1992 $1,069,981 $32,968
Ser. No. 74/421,666
30
upon form letters from dealers for its motorcycle petcock which
attest to their recognition of the appearance of applicant’s
configuration as a trademark.14 In particular, applicant insists
that:
[C]orrespondence was submitted from a
sampling of 31 consumers familiar with
products of this type attesting to the mental
association and recognition of Applicant’s
mark. While Applicant’s counsel assisted
these consumers in appropriately wording
their support for this registration, that
fact, as a matter of law, does not make these
submissions any less honest or less valid.
We concur with the Examining Attorney, however, that
applicant’s showing is insufficient to establish acquired
distinctiveness. In particular, while applicant is correct that
the virtual identity in language found in the dealer letters, due
to their having been drafted by applicant’s attorney, is not in
and of itself fatal to the probative value thereof insofar as a
showing of acquired distinctiveness is concerned,15 their lack of

1993 $1,456.571 $35,463
1994 $1,811,850 $43,577
14 By and large, each letter reads in substance as follows:
We have been engaged for many years in the business of
buying and selling products for the motorcycle industry. Of
the many products we handle, the hex-shaped fuel valve
manufactured by Pingle Enterprise, Inc. has been highly
successful and has come to symbolize their product line.
Currently, the appearance of this valve is recognized by
those of us in the industry as unique to Pingel Enterprise,
Inc. and synonymous with the quality and goodwill of that
company. We accordingly urge the United States [Patent and]
Trademark Office to recognize the significance of the
appearance of this valve and to grant a trademark
registration on it.
15 See, e.g., In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396,
399 (CCPA 1972) [fact that affidavits were drafted by applicant’s
attorney and were practically identical in wording "detracts little or
Ser. No. 74/421,666
31
probative value lies, instead, in the fact that they reveal
absolutely nothing as to whether the ultimate purchasers of
motorcycle petcocks recognize or otherwise regard applicant’s
petcock configuration as a source indicator. The dealer letters
are all limited exclusively to what "those ... in the industry"
recognize as being "unique" to applicant. However, as the
Examining Attorney, quoting from In re Semel, 189 USPQ 285, 288
(TTAB 1975), persuasively points out: "It is well settled that
the assertions of retailers, who know full well from whom they
are buying, that they themselves recognize a particular
designation [or design] as a trademark ... cannot serve to
establish that members of the purchasing public, who come to the
marketplace without such specialized knowledge, would in fact
recognize the designation [or design] as an indication of
origin." See also In re Meyer & Wenthe, Inc., 267 F.2d 945, 122
USPQ 372, 376 (CCPA 1959) [it was incumbent upon applicant to
submit proof that its mark is distinctive, not only to experts in
the field, but to purchasing public] and In re Pennzoil Products
Co., 20 USPQ2d 1753, 1758 (TTAB 1991) [declarations from
marketers of automotive oil products lacked persuasiveness as to
purchasing public’s primary understanding of the term "MULTI-VIS"
since, given their long-standing business relationships as
customers of applicant, it is not surprising that declarants are
aware that product bearing such term originates from applicant].

nothing from their sufficiency to make out a prima facie case of
trademark recognition"].
Ser. No. 74/421,666
32
With respect to the sales and advertising amounts
attested to by applicant’s president, we agree with the Examining
Attorney that, in the absence of any demonstrated promotion of
applicant’s petcock configuration as a mark, applicant’s use of
such design for over 16 years and the general growth in its
annual sales figures and advertising expenditures during that
period simply do not suffice to establish that the purchasing
public for motorcycle fuel valves has come to view applicant’s
petcock configuration as a trademark. While the sales figures
may be said to demonstrate a growing degree of popularity or
commercial success for applicant’s product, such evidence alone
does not demonstrate that the configuration thereof has become
distinctive. See, e.g., In re Bongrain International (American)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)
[growth in sales may be indicative of popularity of product
itself rather than recognition of a term or design as denoting
origin] and WLWC Centers, Inc. v. Winners Corp., 221 USPQ 701,
707 (M.D. Tenn. 1983) [popularity in sales alone cannot establish
secondary meaning]. Similarly, while the advertising and
promotional expenditures might otherwise be indicative of efforts
by applicant to develop distinctiveness for the configuration it
seeks to register, such outlays alone are not determinative of
the success of those attempts. See, e.g., In re Semel, supra at
287 (TTAB 1975) ["in evaluating the significance of advertising
figures ..., it is necessary to consider not only the extent of
Ser. No. 74/421,666
33
advertising but also whether the use of the designation [or
design] therein has been of such nature as to create in the minds
of the purchasing public an association of the designation [or
design] with the user and/or his goods"] and Ralston Purina Co.
v. Thomas J. Lipton, Inc., 173 USPQ 820, 824 (S.D.N.Y. 1972)
[promotional expenditures indicate efforts to establish secondary
meaning, but do not determine the success thereof].
More importantly, in this case there is a complete
absence of any advertising or promotional uses of applicant’s
petcock configuration as a mark. Instead, applicant’s catalog
and advertisements show, as accurately observed by the Examining
Attorney, that the petcock configuration is used solely as an
illustration of applicant’s product:
In every instance the valve is merely shown.
There is nothing to indicate that this silent
testimony has somehow educated consumers to
view the configuration as a trademark, rather
than merely a picture of the goods. Further,
many of the advertisements do not even show
the whole valve; many of the "elements " for
which applicant claims trademark significance
are missing from some of the advertising
material.
In any case, all of the examples of
advertising material submitted as evidence
are merely pictures of applicant’s product.
None show the configuration used in the
manner of a mark. .... People do not
ascribe trademark significance to everything
[to which] they are exposed. .... A thing
must be used in the manner of a mark before a
person will understand that it is supposed to
be a mark.
Ser. No. 74/421,666
34
In fact, the sole indications which we have been able to find in
which applicant refers to and arguably promotes the design or
appearance of its product as a trademark are contained in the
statement, appearing in fine print on the back of the packaging
for its petcock, that "The appearance of this valve is a
trademark of Pingel Enterprise, Inc." and the further statement,
which is again buried in the fine print of the installation
instructions for the product,16 that "PINGEL® Fuel Delivery
Systems are covered under one or more of the following patents:
4,250,921; 4,957,138 & 330,712; other patents pending and the
appearance is a trademark of Pingel Enterprise, Inc."
Accordingly, considering the totality of the evidence
presented and assuming that applicant's petcock configuration is
only de facto rather than de jure functional, we find that
applicant has not met its burden of establishing a prima facie
case of acquired distinctiveness. Even as to the so-called logo
use of such design, purchasers and prospective consumers would
regard the depiction of applicant's petcock configuration as
nothing more than a graphical representation of applicant's
product. Furthermore, absent any advertising or other uses which
promote the asserted trademark significance of applicant's
petcock configuration, it is unlikely that purchasers and
prospective consumers would even take notice of or appreciate the

16 Such instructions, however, are printed on the inside of the
packaging for applicant’s product and thus are not visible until after
the package is opened.
Ser. No. 74/421,666
35
statements on applicant’s packaging and installation instructions
which claim that the appearance of its product is a trademark for
a motorcycle fuel valve and filter. Consequently, in order to
overcome the refusal, more evidence than that which has been
offered, including, in particular, representative advertisements
showing extensive promotion of applicant’s petcock configuration
as a trademark for its product and customer recognition thereof,
would be necessary in order to demonstrate that the configuration
which applicant seeks to register has in fact acquired
distinctiveness in the marketplace for motorcycle petcocks.
Decision: The refusal to register is affirmed on each
ground.
J. D. Sams
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board