Rieke Corp.

Trademark Trial and Appeal Board

Jul 21, 1997

EX (T.T.A.B. Jul. 21, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 21, 97
Paper No. 13
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rieke Corporation
________
Serial No. 74/611,247
_______
James M. Durlacher of Woodard, Emhardt, Naughton, Moriarity
& McNett for Rieke Corporation.
Barbara Gaynor, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 15, 1994, applicant applied to register the
configuration shown below

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on the Principal Register for what were subsequently
identified by amendment as "container closures as installed
in metal drums, namely, a crimped-in-place flange and drum
end embossment combination." Use since September 3, 1943
was claimed. The mark was described as consisting of "the
distinctive design configuration of a closure flange which
is crimped in place within an embossment of a metal drum."
Applicant explained that the lining on the drawing is for
shading purposes only and does not represent color.
Registration was initially refused under Sections 1, 2
and 45 of the Act on the ground that the configuration
sought to be registered is functional. Further, the
Examining Attorney held that even if the proposed mark is de
facto functional, rather than de jure functional, because
the design is not inherently distinctive, it would only be
registrable on the Principal Register with a showing of
acquired distinctiveness under Section 2(f) of the Act.
Responsive to the refusal to register, applicant argued
that registration on the Principal Register is appropriate
because the configuration has acquired distinctiveness. In
support of this claim, applicant submitted six pieces of
evidence.
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The first is the affidavit of Philip Keating, President
of applicant. He states that he has worked for applicant
for thirty-two years; that one of applicant's competitors is
the American Flange Manufacturing Company in Carol Stream,
Ohio, which has, for at least fifty years, produced a
flange/embossment combination with an octagonal lip around
its periphery where the flange is anchored into the raised
metal embossment; that the American Flange Company's product
is constructed in a manner similar to the way applicant's
product is constructed, in that the embossment is crimped
around the lip of the flange, but that the shape of the
crimped embossment when the American Flange Company's
product is used is octagonal, whereas "the Rieke Corporation
product shape involves a series of peripheral indentations
corresponding to the flange serrations"; that both products
meet the applicable performance standards for such goods;
that both are equally feasible, efficient and competitive
designs; that the resulting configurations of the crimped
embossments are different; and that "the series of
peripheral indentations representative of the Rieke design
are distinctive and clearly different from the resultant
appearance of the American Flange Company design."
Applicant also submitted a copy of an "early operating
and service manual" which explains to the operators of
presses used to install applicant's closures what
applicant's dies are and how to use them to build
applicant's closures into steel drums. The configuration of
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the flange crimped into the embossment is shown in this
manual, but neither the text not the illustrations
emphasizes the appearance of the installed flange or claims
the configuration as applicant's trademark.
The next exhibit is a copy of applicant's annual report
for 1950. The configuration which is the subject of this
application is shown on the cover of the report as well as
elsewhere in it. It is not, however, claimed or identified
as a trademark for applicant's goods.
The fourth exhibit to applicant's response is a copy of
a more recent catalog for applicant's goods. In connection
with a picture of the complete embossment, flange and plug
assembly, the text of the catalog notes that "the serrations
are locked into the drum metal completely around the
perimeter of the drum embossment."
Two affidavits were also submitted in support of
applicant's claim. One is from Roger P. Thomas, an employee
of applicant for twenty-nine years, who was the sales vice
president at the time of his affidavit. Mr. Thomas states
that applicant has distributed catalogs with detailed
information concerning applicant's flange/embossment
combination for the last fifty years, with twenty-two
hundred going out in 1995 alone. The other affidavit is
from applicant's marketing vice president, Eric T. Rieke,
who has been an employee of applicant for thirty-one years.
Mr. Rieke states that applicant has sold an average of ten
million units embodying its flange/embossment combination
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per year for the last twenty years; that once the drum is
fitted with applicant's flange, resulting in the described
configuration, the drum goes to a filler, and then to an
end user, it is returned, reconditioned (cleaned) and then
returned to the filler; that this cycle is repeated three to
five times each year, resulting in the presentation of the
flange/embossment combination to the users thereof somewhere
between thirty to fifty million times each year.
The Examining Attorney withdrew the refusal based on de
jure functionality. She concluded that applicant had not
established secondary meaning, so she suggested that
applicant amend the application to seek registration on the
Supplemental Register.
Applicant responded with argument and additional
evidence on the issue of acquired distinctiveness. Three
declarations were submitted. One is from Larry Rysavy, the
vice president of Third Coast Packaging, which is in the
business of packaging petroleum products. Another is from
Jerry Billups, the vice president for sales and marketing of
Republic Container, a manufacturer of steel drums. The
third declaration is from William Megargle, who is Packaging
Manager of FMC Corporation, Agricultural Chemical Group, a
manufacturer of agricultural chemicals. Each of these three
gentlemen attests to decades of experience in his field, and
each states that as part of his job he frequently sees metal
drums which are to be filled with particular products; that
while he has seen different flange styles over the years, he
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is familiar with the "unique serration design used by Rieke
Corporation and the distinctive appearance of the flange and
neck finish once the Rieke Corporation combination is
crimped into a preformed boss on the container lid." Each
declarant offers his opinion that the distinctive appearance
of the Rieke Corporation combination functions as a
trademark, indicating the source of origin for the goods.
None of these men has seen any similar design from a
different source of origin, and each recognizes the
configuration sought to be registered as an indication that
applicant is the source of it. Each man attests to his
opinion that the shape and geometry of the embossment when
it is crimped over applicant's flange is generally
recognized by others in the container filling field as an
indication that the container closure emanates from
applicant because of its unique design and applicant's long
and widespread use of the combination.
Applicant also filed a notice of appeal. The appeal
was instituted, but action on it was suspended and the
application was remanded for reconsideration by the
Examining Attorney. She was not persuaded by applicant's
evidence and argument, however, and the application was
returned to the Board for resumption of action on the
appeal.
Applicant filed a brief, attaching a copy of the file
of Registration No, 1,732, 470, which issued to the
aforementioned American Flange and Manufacturing Co., Inc.
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on November 17, 1992. Applicant made arguments based on the
issuance of this registration, the subject matter of which
is apparently American Flange's container closure flange and
embossment configuration.
The Examining Attorney filed her appeal brief,
objecting to the untimely submission of the above-referenced
registration file with applicant's brief. Her objection is
well taken. Under Trademark Rule 2.142(d), the record in
the application closes with the filing of the notice of
appeal. Additional evidence is not admitted unless the
Board grants a request to consider it. In the case at hand,
applicant did not make such a request, so we have not
considered this exhibit or the arguments made based on it.
The law is well settled with respect to the issue of
whether a configuration of a product is registrable. "A
design configuration is considered to be unregistrable when
it has been determined to be de jure, as opposed to de
facto, functional. An item which is de facto functional may
be registrable, while one which is de jure functional may
never be registered even if it has been shown to possess
some recognition in the trade." In re Peters, 6 USPQ2d
1390, 1391 (TTAB 1988). In order to hold the design in
question de jure functional, it must be shown not just that
the item has a function, but also that the performance of
that function is enhanced by the particular configuration in
which the design is executed. In re R. M. Smith, 734 F.2d
1482, 222 USPQ 1 (Fed. Cir. 1984). A configuration which
Ser No. 74/611,247
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embodies a design which is superior to other available
designs for achieving its purpose is de jure functional and
it is not registrable on either register. In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA
1982). If, however, the design is a feature of the goods
which is only one of many equally feasible, efficient and
competitive alternatives, then it is considered to be merely
de facto functional and may be registered on the
Supplemental Register or on the Principal Register if it is
inherently distinctive or if it has acquired distinctiveness
under Section 2(f) of the Act. In re R. M. Smith, supra; In
re Ovation Instruments, Inc., 201 USPQ 116 (TTAB 1968).
The functionality refusal was withdrawn, so the sole
issue is whether the de facto functional configuration
applicant seeks to register is registrable because it has
acquired distinctiveness under the provisions of Section
2(f) of the Act.
To establish secondary meaning, applicant must show
that the primary significance of its flange/embossment
configuration in the minds of the people who purchase and
use drum closures is not the product, but rather is an
indication of the producer. Distinctiveness is typically
established with evidence of how long the mark has been
used, the type and amount of advertising of the mark, and
any other evidence that shows that the purchasers of the
goods in question associate the proposed mark with a
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particular source. In re Pennzoil Products Company, 200
USPQ 753 (TTAB 1991).
Applicant correctly points out that, contrary to the
position taken at one point by the Examining Attorney during
the prosecution of the application, applicant has the burden
of proof with respect to establishing a prima facie case of
acquired distinctiveness. In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443 (TTAB 1994); Yamaha International Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). Applicant does not have to meet the more
stringent standard of "clear and convincing evidence"
espoused by the Examining Attorney in her second Office
Action. Rather, the less strict standard of the
preponderance of the evidence is all that is required in
order to create the required prima facie case of
distinctiveness. The question is whether it is more likely
than not that the proposed mark does in fact function as a
trademark for the goods identified in the application.
For the reasons set forth below, we find that applicant
has established a prima facie case that the configuration
does function as applicant's trademark, and that
registration on the Principal Register is therefore
appropriate under the provisions of Section 2(f).
Our conclusion is based on the evidence submitted by
applicant showing that applicant's use of the configuration
since 1943 has resulted in its recognition by purchasers and
Ser No. 74/611,247
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users of applicant's product as an indication of their
source.
Mr. Keating's affidavit establishes that applicant's
design is not necessary for competitors to copy in order to
compete effectively. That the American Flange product has
competed with applicant's goods for fifty years without
incorporating the configuration used by applicant may help
show that the design is not de jure functional, but it does
not establish secondary meaning for applicant's
configuration.
In a similar sense, the older operating and service
manual shows the configuration, so it establishes that the
goods have embodied the configuration sought to be
registered for a long time, but the manual does not
emphasize the design or otherwise call attention to it as
applicant's trademark. The same can be said for applicant's
1950 Annual Report and the recent catalog. The serrations
are illustrated and even described, but these exhibits do
not demonstrate a basis upon which we could conclude that
the configuration is regarded as a source indicator for
these goods.
The affidavits and declarations, however, do establish
a prima facie case of distinctiveness for applicant's
configuration. Mr. Thomas provides information regarding
the extent of use and promotion of goods embodying the
design. Mr. Rieke gives us details of the huge volume of
these products sold and circulating in the various
Ser No. 74/611,247
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industries which make use of the drums in which applicant's
products are installed.
Even more significant, though, are the three additional
declarations submitted with applicant's response to the
final refusal to register. All three of the declarants are
experienced professionals in the field of drums. One makes
drums. One is in the packaging business which uses drums.
One makes agricultural chemicals which are shipped in drums.
Each of these men states in no uncertain terms that the
configuration sought to be registered is unique to
applicant's products and signifies the source of those
products, distinguishing them from competing goods made by
others. This is extremely persuasive evidence that the
effect of applicant's long use of the design and whatever
promotion it has been given over the fifty-plus years since
it was adopted has been to create an association between the
configuration and applicant as the single source of the
products in which it is embodied.
Although the Examining Attorney contends that this
evidence falls short of establishing distinctiveness because
applicant did not provide "any information which would
assist the examining attorney in determining the value of
its customer declarations," we find that the declarations
speak for themselves and provide all the information
necessary in order to conclude that applicant has at a
minimum shown prima facie that the configuration has
acquired distinctiveness. The suggestion by the Examining
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Attorney that she needed to know what percentage of
applicant's customers is represented by the three
declarations in order to determine their probative value is
without legal or logical support. There is absolutely
nothing in this record to contradict the conclusions of
these declarants or even to call into question their
conclusions. For the Board to reject this evidence and
conclude that the configuration has not acquired secondary
meaning would be rank speculation on our part.
For the reasons set forth above, we hold that applicant
has established a prima facie case of acquired
distinctiveness under Section 2(f) of the Act, and that the
refusal to register must therefore be reversed.
In order that any registration which may ultimately
issue to applicant based on this application will accurately
portray applicant's mark, however, it is suggested that
applicant submit an amended drawing and an amended
description of its mark for the text of the application.
From the affidavits, declarations and arguments put
forth by applicant, it is apparent that the present
description of the mark is not detailed enough to provide
adequate notice to competitors of exactly what applicant's
mark is. Although the existing language does refer to the
"design configuration of a closure flange which is crimped
in place within an embossment of a metal drum," no reference
is made to the feature or characteristic which the record
shows is the key element in which the secondary meaning has
Ser No. 74/611,247
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developed: the serrations created when the embossment is
crimped down over the twenty outwardly projecting portions
of the flange. In order to correct this deficiency and to
describe with greater accuracy the source-indicating aspect
of the design, applicant should amend the application to
describe the mark as "the configuration of a closure flange
with serrated, outwardly projecting portions when it is
crimped in place within the embossment of a metal drum,
resulting in a multifaceted appearance along the periphery
of the flange where the embossment is crimped over it."1
Correspondingly, although the drawing shows this aspect
of the configuration clearly and in solid black lines, the
drawing also shows in solid black lines other matter which
applicant does not appear to consider to be part of its
trademark. In accordance with Trademark Rule 2.51(b)(3),
which requires the use of broken lines to indicate matter
not claimed as part of the mark, a new drawing should be
submitted in which the hole in the flange and the threaded
portion thereof are represented in broken lines, just as the
surface of the drum is shown in the existing drawing.

1This language is suggested, but if applicant devises
alternative wording that adequately describes its mark, that
language would solve the problem with the present description.
Ser No. 74/611,247
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In order to facilitate the entry of the amended
description of the mark and the amended drawing, the Board
will hold the application file for sixty days following the
mailing of this ruling before forwarding the application to
publication.
R. L. Simms
R. F. Cissel
E. W. Hanak
Administrative Trademark Judges
Trademark Trial & Appeal Board
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