Shuttsco, Inc.

Trademark Trial and Appeal Board

Mar 1, 2000

No. 74511435 (T.T.A.B. Mar. 1, 2000)

Paper No. 20
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 1, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Shuttsco, Inc.
________
Serial No. 74/511,435
_______
H. Jay Spiegel of H. Jay Spiegel & Associates for Shuttsco,
Inc.
Tomas Vlcek, Managing Attorney, Law Office 115
_______
Before Simms, Seeherman and McLeod, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Shuttsco, Inc. has applied to register the color
orange, as shown below, for a “snow removal hand tool
having a handle with a snow removing head at one end, the
head being of a solid uninterrupted construction without
prongs.1 The following description of the mark is of

1 Application Serial No. 74/511435, filed April 12, 1994 and
asserting first use and first use in commerce on December 3,
1979.
Ser No. 74/511,435
2
record: “The mark consists of the color orange as applied
to the head of the goods. The dotted outline of the goods
is intended to show the position of the mark and is not a
part of the mark.” The drawing is lined for the color
orange.
A final refusal of registration has issued pursuant to
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. 1051,
1052 and 1127, on the grounds that the asserted mark is de
jure functional and that, even if it were not de jure
functional, applicant has not demonstrated that it has
acquired distinctiveness as a trademark.2
Applicant has appealed, and the case has been fully
briefed. Applicant had requested an oral hearing, but
subsequently withdrew this request.
Applicant’s snow removal hand tool is similar to a
scraper/brush which is used to remove snow from an
automobile. Although the identification is not so limited,

2 Applicant does not contend that the color orange for its snow
removal hand tool is inherently distinctive, and this issue is
not before us.
Ser No. 74/511,435
3
in fact applicant’s product is made of foam so that it will
not scratch a car’s surface.
The Examining Attorney asserts that the color orange
for applicant’s snow removal hand tool is de jure
functional because it is a high visibility color, and “high
visibility is an important safety and utility feature of
the goods.” Brief, p. 4. The Examining Attorney has
submitted a number of articles taken from the NEXIS data
base which make reference to the visibility of the color
orange. These references, however, are to the visibility
of the color orange in general, rather than to orange as a
color for a snow removal hand tool. For example, some of
the references are to the color orange for hunting gear
because it is easier to see in the woods or in the water.
The Examining Attorney has made of record four articles
which refer to orange in terms of visibility in snow:
Headline: Poles will help firefighters
find hydrants buried in snow; bright
orange marks will also help residents
digging out from snow to find them.
“The Morning Call,” February 3, 1996
…an enormous soccer field; I watched
two games being contested
simultaneously, each played with a
bright orange ball that’s easier to see
atop the snow.
“Skiing,” March 1994
Standard white golf balls were
substituted with bright yellow, orange
Ser No. 74/511,435
4
and fuchsia golf balls to make them
easier to see. Still, trying to find
golf balls in the snow was like looking
for a blind date in a crowded
auditorium.
“St. Louis Post-Dispatch,” January 2,
1989
The colors that make your car most
visible depend upon lighting, weather
and traffic conditions, according to
engineers at Daimler-Benz in German.
White is best in most situations.
Bright yellow and orange are best in
heavy snow or white sand.
“U.S. News & World Report,” January 9,
1984
Although these articles show that orange is a color
with high visibility in snow, in order to prove that orange
is de jure functional for a snow removal hand tool the
Examining Attorney must show that the color confers a
competitive advantage.
The Examining Attorney asserts that the orange color
is a safety feature because if the goods are stepped on
while on the ground “the wooden handle would swing up
rapidly, striking the person who stepped on it.” Brief, p.
4. It is not clear to us that the snow removal hand tool
could be stepped on in such a way that the handle would
swing up as the Examining Attorney suggests. The Examining
Attorney’s statement brings to mind cartoon images of a
character stepping on the hard edge of a rake, causing the
handle to hit the character in the face. But applicant’s
Ser No. 74/511,435
5
goods are not rakes, but a hand tool with a relatively
short handle which could not fly up in such a fashion.
More importantly, these goods are not the type of equipment
which is typically left on the ground. Applicant’s
president has submitted a declaration stating that
consumers typically store these snow removal tools in a
closet in their home or in the trunk or back seat of their
vehicle. When they desire to use the tool, they remove it
from its storage area, use it on the vehicle, and then
return it to its storage area.
The Examining Attorney also asserts that the high
visibility of the orange color is a utility feature because
it “makes the goods easier to find if laid down,
particularly in a heavy snowfall, which would help prevent
loss of the goods.” Brief, p. 4. The Examining Attorney
points to a statement made by one of applicant’s customers
in which, in addition to stating that “the bright orange
color of the head unit on you [sic] Sno-Rake is a very
important factor in the recognition of your product,” added
that “the bright color is also extremely helpful for
gathering up and finding the Sno-Rakes after use. They
definitely stand out in the snow.”
Applicant, on the other hand, has explained, as
indicated above, that the product is typically not placed
Ser No. 74/511,435
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in the snow, but is taken from its storage space and used
to remove snow from the car, and then returned to its
storage space. This manner of use appears to us to be more
logical for a snow removal hand tool than leaving the tool
in the snow, since one assumes that not only can snow
usually be removed from a car without the need to take
breaks, but that one would do so because the snow removal
would be preparatory to driving the car.
The fact that the orange color makes the snow removal
tool easy to see does not establish that the orange color
per se gives the snow removal tool greater utility.
Although the Examining Attorney speculates that the color
orange would make the tool easier to spot if it were
dropped, it appears that, in the circumstances in which the
tool is used, almost any color (except for white and
perhaps some grays and beiges) would serve that function
adequately.
Accordingly, based on the record before us, we find
that the Office has failed to establish that the color
orange is de jure functional for a snow removal hand tool.
In saying this, we recognize the limited resources
available to the Examining Attorney, and point out that we
might come to a different conclusion in an inter partes
Ser No. 74/511,435
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proceeding, where we would have the benefit of evidence
from those in the trade.
The Examining Attorney has also refused registration
on the ground that applicant has not shown that the color
orange functions as a trademark for its goods because it
has not acquired distinctiveness. As noted above,
applicant has not argued that the color orange is an
inherently distinctive trademark, but that it has acquired
distinctiveness.
In support of its claim of acquired distinctiveness,
applicant has submitted the declaration of its president,
Katy Shutts, attesting to use of the mark since December
1979; sales of orange snow removal tools in the ten-year
period from 1988 through 1997 amounting to over 270,000
units, with sales increasing from the 11,000 to 18,000
range in the earlier years, to the 30,000 to 47,000 range
in more recent years. Advertising expenditures during this
same period were in excess of $213,000, with $70,000 spent
in 1997. The advertisements submitted by applicant do not
explicitly reference the orange color of the snow removing
head, but they do depict the tool in the color orange, and
otherwise prominently use the color orange for graphics and
text. As a result, they visually make the connection
between applicant’s goods and the color orange. In
Ser No. 74/511,435
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addition, an advertisement by one of applicant’s
distributors, A-B&C Enterprises, Inc., for applicant’s “SNO
RAKES®” prominently includes the phrase “The Orange-Headed
Original!” Ms. Shutts also testified that on virtually
every business day she receives telephone calls from past
or prospective customers, and that “at least once a day, on
average, customers who phone Applicant inquire to make sure
that they are speaking to the company that sells the orange
snow removal tool.”
Applicant has also submitted a number of letters from
customers which make reference to the orange color of the
snow removal tool. These include the following comments:
I was so impressed with the SNO-RAKE, I
bought one for my wife and bought
several more as Christmas gifts—always
asking for “the orange one.”
In the 12 years we’ve been carrying Sno
Rakes—the orange original one—we’ve
never had a complaint….
May I please have some information on
your snow brushes. [A]lso send some
prices. Need to order some of the
orange snow rakes. Have purchased them
[b]efore with a different co. Have my
own co. now.
This is to confirm my order For Two
Orange Headed Snow Rakes.
Used your orange colored snow brush to
clean snow from my car.
Ser No. 74/511,435
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Well, it’s that time of year again.
Check out the old Orange snow rake,
it’s just around the corner. I’ll give
you people credit, that orange snow
rake is just about bullet proof. I do
need a couple extra this year, and keep
up the good job. That Orange snow rake
is Great.
The Examining Attorney has dissected these various
pieces of evidence, pointing to various cases in which, for
example, 16 years of use was not found to be conclusive or
persuasive. However, when the evidence submitted by
applicant is considered in its entirety, we find that it is
sufficient to make out a prima facie case that the orange-
colored head of the snow removal tool has acquired
distinctiveness as a trademark indicating that source of
the snow removal hand tool in applicant.
The only evidence of competitive uses of a snow
removal hand tool is one with a black inner rectangle
enclosed in a red outer rectangle. The Examining Attorney
has not submitted evidence with respect to similar hand
tool products, such as ice scrapers or snow brushes, from
which we could conclude that there are other users of the
color orange for such goods. Although the Examining
Attorney has made of record evidence regarding snow
shovels, showing that they are available in colors such as
blue, red, orange, yellow and silver, and NEXIS articles
Ser No. 74/511,435
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referencing orange snow shovels, this material is simply
not sufficient to rebut applicant’s evidence of acquired
distinctiveness.
Decision: The refusals on the grounds of de jure
functionality and lack of acquired distinctiveness are
reversed.
E. J. Seeherman
L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/511,435
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Simms, Administrative Trademark Judge, concurring:
I agree with the majority but wish to add the
following comments. It may well be that a plaintiff in an
opposition or cancellation proceeding could demonstrate
that orange is a color widely used in connection with snow
and ice removal implements, say, for example, orange ice
scrapers, orange-bristled snow brushes, orange snow
shovels, etc. If it is successfully shown in such a
proceeding that the general public has been sufficiently
exposed to this color for such closely related goods (say,
for example, on the shovel part of several competing snow
shovels) so that consumers would be unlikely to view, or to
have come to view, the color orange on the head or
“business part” of applicant’s snow removal tool as an
indication of origin, then a different result might well be
reached on the question of registrability of applicant’s
asserted mark. However, because of the limited resources
of the Examining Attorney, I do not believe that this has
been sufficiently demonstrated in this ex parte case.
R.L. Simms
Administrative Trademark Judge
Trademark Trial and Appeal Board