Sunbeam Corp.

Trademark Trial and Appeal Board

Jul 2, 1997

EX (T.T.A.B. Jul. 2, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 2, 1997
Paper No. 17
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sunbeam Corporation
________
Serial No. 74/426,733
_______
Paul D. Bangor of Thorp Reed & Armstrong for Sunbeam
Corporation
Richard Cole, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney)
_______
Before Rice, Simms and Seeherman, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sunbeam Corporation has applied to register the
configuration shown below as a mark for "electric food
blenders for domestic use."1 Applicant has provided the
following description of its mark:
The mark consists of the configuration of the base portion
of the blender.

1 Application Serial No. 74/426,733, filed August 18, 1993, and
asserting first use and first use in commerce as early as 1962.
Ser No. 74/426,733
2
Applicant has also indicated that the lining in the drawing
has been used to illustrate the contours of the base, and is
not intended to represent any color. Consequently, the
statement, "The lining in the drawing is for shading
purposes only" has been entered in the application.

Registration was finally refused on the ground that the
configuration is not inherently distinctive, and in the
action denying applicant's request for consideration, the
Examining Attorney clarified that this refusal was made
pursuant to Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. 1051, 1052 and 1127, because the configuration does
not function as a trademark.
Applicant appealed from the refusal. The case has been
fully briefed, but applicant did not request an oral
hearing.
The question which we must decide in this appeal is
whether the configuration shown in the drawing is inherently
Ser No. 74/426,733
3
distinctive, that is, whether it immediately functions as a
trademark, in that consumers will understand upon viewing
applicant's blenders that the configuration identifies the
source of the blenders.
The record before us is very sparse. In fact, other
than the specimen photographs and brochures, no evidence has
been introduced. Although the Examining Attorney has
asserted that the configuration is a common shape, and is
not unique or unusual for goods in this field, he has not
submitted any evidence, such as pictures of other blender
configurations, in support of this point. Cf. In re E. S.
Robbins Corp., 30 USPQ2d 1540 (TTAB 1992), in which the
Examining Attorney made of record photocopies of catalogs
showing products having designs similar to applicant's
configuration.
Moreover, the Examining Attorney has practically
conceded that the undulating portion of the configuration is
inherently distinctive.
The ONLY thing this Examiner can see as
POSSIBLY unusual (or distinctive) is
that the sides "undulate" slightly as
they progress upward from the bottom of
the base. That is, instead of having
perfectly flat sides (which would be
easier to keep clean) the base has
"rounded spaced-apart ribs which
circumscribe the base..." in the precise
words of the applicant (Response of
August 15, 1994). The Examiner is
willing to concede that perhaps this
particular, specific portion of the
configuration is NOT dictated by any
functional requirements and MAY possess
Ser No. 74/426,733
4
sufficient originality to qualify as
being "inherently distinctive."
Brief, pp. 3-4.
In view of this apparent concession, and the lack of
any evidence to the contrary, we are constrained to find
that the undulating portion of the configuration is
inherently distinctive.
The Examining Attorney goes on, in his brief, to state
that "having conceded this, however, the Examiner must point
out that THIS issue is not what this appeal is all about."
Essentially, it is the Examining Attorney's position that
certain elements of the configuration, such as the round top
into which the blender container fits, and the rubber or
plastic feet on which the blender rests, are functional, and
therefore the configuration as a whole, which includes these
elements as well as the undulating portion, is not
inherently distinctive.
We agree with the Examining Attorney that the round
upper portion of the blender base, and the feet on which the
base rests, are functional. Quite simply, there are a
limited number of shapes that may be used for the base of a
blender container, and a circular shape is one of the most
basic. There is also no question that small rubber or
plastic feet, such as those shown in the drawing of
applicant's configuration will, when applied to the base of
a blender give it stability when it is in use, and prevent
it from marring the surface of the counter on which it
rests.
Ser No. 74/426,733
5
Applicant does not dispute the functional nature of
these features. However, applicant asserts that "the
overall configuration of the base of Applicant's blender is
not so superior in de facto function or economy of
manufacture that recognition thereof as a trademark would
hinder competition in the blender trade." Reply brief,
p. 3. Essentially, applicant is relying on those cases in
which the issue of de jure functionality has been
considered, and in which the fact that certain elements of a
configuration have some utility has not resulted in the
overall configuration being found de jure functional.
However, these cases are inapposite to the present
situation, in which the issue is not whether the
configuration is de jure functional, but whether it is
inherently distinctive.
By depicting the round upper portion of the base, and
the feet, in solid lines, applicant is asserting a claim of
exclusive rights to these features. However, because of the
functional nature of these features, as discussed above,
competitors should not be precluded from using a round
fitting into which a round blender container is placed, nor
should they be precluded from using feet at the base of
their blenders. Just as a party must disclaim exclusive
rights to a generic or descriptive element in a composite
mark which as a whole is inherently distinctive, the
applicant herein may not obtain exclusive rights to these
Ser No. 74/426,733
6
functional and non-distinctive features by combining them
with an inherently distinctive feature.
Accordingly, applicant's configuration, as presently
depicted in its drawing, may not be registered. However,
applicant is allowed thirty days from the mailing date of
this opinion in which to submit a new drawing, in which the
functional and non-registrable features of its mark, namely,
the circular upper portion of the base, and the feet, are
depicted in broken lines. See Trademark Rule 2.51(d), TMEP
807.03(a). If such a drawing is submitted, this decision
will be set aside, and the application will be approved for
publication.
Decision: The refusal to registesr is affirmed.
J. E. Rice
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/426,733
7
Simms, Administrative Trademark Judge, concurring in part
and dissenting in part:
While I agree with the majority that applicant should
submit an amended drawing showing the functional features in
broken lines, I would also remand this case for the purpose
of allowing the Examining Attorney to submit evidence (of
which he apparently wishes us to take judicial notice) in
support of his argument that applicant's base configuration
of its blender is a mere refinement of the shapes of other
blenders on the market and would not therefore be perceived
as a trademark. While I realize that it is unusual to
permit remands for this purpose, I believe that it may be
justified in this case.
Applicant's attorney has, on the one hand, argued that
the shape of its base, including the rounded and spaced rib
design which flares into a wider base (see below), is so

Ser No. 74/426,733
8
"unusual and unexpected for a blender base that one could
assume without proof that it will automatically be perceived
by customers as an indicia of origin" (Amendment, filed
August 15, 1994, page 3). However, applicant has also
argued that the manner in which this shape would be viewed
by consumers is not dispositive of the issue of inherent
distinctiveness, and that it is not important that consumers
associate this design with a particular source. Brief, 2.
Applicant argues, I believe incorrectly, that it is,
therefore, improper to focus on how the shape would be
viewed by consumers. To me, that is the heart of this case.
Other parts of applicant's arguments appear to focus on the
lack of de jure functionality of applicant's configuration.
However, that is not the issue before us. As can be seen,
there is some confusion as to the issue before us.
Blenders are relatively common household appliances.
Nevertheless, I do not believe that it is appropriate to
take judicial notice of the ordinary or usual shape (if
Ser No. 74/426,733
9
there is one) of such an appliance. The Examining Attorney
argues that the shape of applicant's base is but a mere
refinement of the relatively common basic round (or square)
shape of the base of a blender. As such, according to the
Examining Attorney, applicant's rounded and ribbed design
would be considered as simply an ornamentation and not a
trademark for applicant's goods.
In view of the foregoing and because of the confusion
in this record, I would remand this case to the Examining
Attorney for entry of the required amended drawing as well
as the submission of evidence supporting the Examining
Attorney's position that this design is a relatively common
shape or a mere refinement of common blender base shapes.
R. L. Simms
Administrative Trademark Judge
Trademark Trial and Appeal Board