Sutro Product Development, Inc.

Trademark Trial and Appeal Board

Aug 1, 2013

No. 77418246 (T.T.A.B. Aug. 1, 2013)

Hearing: Mailed:
06/18/2013 8/1/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sutro Product Development, Inc.
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Serial No. 77418246
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Charles R. Cypher, Esq. for Sutro Product Development, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Quinn, Masiello and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Sutro Product Development, Inc. filed, on March 10, 2008,
an application under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), to register on the Supplemental Register a
sound mark for “eye glasses; optical glasses; [and] sun
glasses.” The sound mark is described as follows: “A series of
three, regularly spaced, repeated clicks, wherein the clicks
resemble the sound of a small object striking another metal
object.” Applicant claims first use anywhere and first use in
commerce on February 24, 2006.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77418246

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The trademark examining attorney refused registration under
Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), on
the ground that the proposed mark, when used in connection with
the goods, “comprises a feature of the identified goods that
serves a utilitarian purpose” and, accordingly, is functional.
When the refusal was made final, applicant appealed.1
Applicant and the examining attorney filed briefs, and both
appeared at an oral hearing.
The examining attorney maintains the following position:
Functionality refusals have not been limited
to design elements. A color has been held
to be functional if it yields a utilitarian
or functional advantage, for example, yellow
or orange for safety signs. Using color as
an analogy, sounds must also be refused if
the sound yields a utilitarian or functional
advantage, or results naturally from a
feature providing such an advantage.

Applicant’s mark is the sound of a small
metal object striking another metal object.
The metal objects are struck in order to
provide resistance to the hinges on the
eyewear so that the temples “lock” into the
open or closed position. Applicant’s brief
states “the click sounds are primarily due
to the shape and material of the cam
surfaces, the shape and materials of the cam
follower that mates with the cam surfaces,
and the spring that biases the cam
surfaces.” ... The clicking sound is thus
functional because the steps necessary to

1 The examining attorney also originally refused registration under
Sections 1, 2 and 45 of the Trademark Act, U.S.C. §§ 1051-1052 and
1127, on the ground that the proposed mark fails to function as a
trademark for the goods. When applicant amended its application to
seek registration on the Supplemental Register, the examining attorney
withdrew the “fails to function” refusal.
Serial No. 77418246

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eliminate it would increase the cost of
producing the product, or at the very least
would require a third party to vary its
method of manufacture from the method
described under the applicable utility
patents.

Because resistant hinges in eyewear
(including hinges similar in kind to the
applicant’s) contain cam elements, cam
followers, and spring mechanisms that slide,
roll, or rub on the surface of each other,
the hinges produce friction when in
operation. Since sound is a common
byproduct of friction, it follows that sound
is a natural byproduct of the operation of
eyewear hinges. Because applicant’s goods
involve a ratcheting mechanism that involves
metallic components rubbing against each
other to provide resistance, the sound
produced is merely a natural byproduct of
the friction created by the functional hinge
mechanism, and any similar design will
naturally produce a similar or even
identical sound.

Put another way, because the clicking sound
naturally emanates as a result of the
friction caused by the surfaces within the
functional resistance hinge rubbing or
striking against each other, and because
eliminating such a sound would require an
additional step in the manufacturing
process, the sound itself is also a
functional feature of the goods.
(Brief, pp. 4, 6, 7, 9).

The examining attorney asserts that to muffle the sound created
by the hinges, lubricants and bearings would need to be added to
reduce the friction, thereby increasing the difficulty and cost
of manufacturing the product. Also relied upon is applicant’s
advertising which, according to the examining attorney, touts
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the functionality of the proposed mark; the advertising states
that applicant’s “Three Click Hinge” is “10X stronger than a
conventional hinge” and that it is “unmatched in strength,
durability and fit.” The examining attorney concludes that
eyewear hinges incorporating a cam element and spring that
provide resistance to their opening and closing “are either
functional or utilitarian, or both.” The fact that two third-
party utility patents covering eyeglass hinges fail to mention a
sound does not mean, according to the examining attorney, that
the actual operation of the hinges does not, in fact, create a
sound. In support of the refusal the examining attorney
introduced dictionary definitions of the word “friction”;
examples of applicant’s advertising; and excerpts of third-party
websites.
Applicant argues that its proposed sound mark is not
functional. More specifically, applicant contends that while
the third-party patents may cover hinges for eye glasses, the
patents do not cover any sound; that its advertising, while
touting superior hinges, does not tout any functionality of the
sound made by the hinges; that alternative designs exist, with
or without sound; and that the cost of manufacture of
applicant’s goods is not reduced by the sound made by operation
of the hinges. In support of its arguments, applicant
submitted, in pertinent part, the declaration of Jeff Sand, the
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designer of applicant’s goods; copies of two third-party utility
patents covering spectacle hinges; and excerpts of third-party
websites. The record also includes videos submitted as
specimens showing how the “three click” sound is produced when
the eyeglass frames are opened and closed.
Section 2(e)(5) of the Trademark Act, 15 U.S.C. §
1052(e)(5), provides that registration of a product design may
be denied if it “comprises any matter that, as a whole, is
functional.” A product feature is functional and cannot serve
as a trademark “when it is essential to the use or purpose of
the device or when it affects the cost or quality of the
device.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citations omitted). To
afford registration to functional designs would inhibit
legitimate competition by, in effect, granting a monopoly to a
non-reputational, or nonsource-identifying, feature of a
product. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.
159, 34 USPQ2d 1161, 1163-64 (1995); and In re Bose Corp., 772
F.2d 866, 227 USPQ 1, 6 (Fed. Cir. 1985) (“If the feature
asserted to give a product distinctiveness is the best, or at
least one, of a few superior designs for its de facto purpose,
it follows that competition is hindered”).
The term “friction” is defined as “surface resistance to
relative motion; the rubbing of the surface of one body against
Serial No. 77418246

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that of another.” The Random House Dictionary (2010).
Applicant summarizes, accurately in our view, the sum of the
examining attorney’s argument based on the functionality of the
sound created by the friction of eyeglass hinges:
The resistance provided by the hinge against
the opening and closing of the temples is a
functional feature of [the] goods. The
resistance to opening and closing of the
hinges is due to friction. The sound which
applicant seeks to register is a natural
byproduct of the friction created by the
functional feature. It would increase the
cost to manufacture the product to eliminate
the sound, therefore the sound is a
functional feature.
(Brief, p. 8).

It is important to note at the outset that the examining
attorney does not attribute any functional features to the
“click” sound itself, or to the fact that there are three clicks
instead of another number of clicks. Rather, the examining
attorney maintains that the sound is a necessary by-product of a
functional feature and, thus, cannot be registered. When the
Board asked the examining attorney at the oral hearing if there
was any case law on point to support his “by-product” theory
behind the functionality refusal, the examining attorney replied
in the negative. And we are unaware of any such case law.2 On

2 In a different context, the Board has held that sounds emitted in the
course of a product’s ordinary function can never be inherently
distinctive and can only be registered on a showing of secondary
meaning. In re Powermat Inc., 105 USPQ2d 1789 (TTAB 2013); Nextel
Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009);
and In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009). However, this
Serial No. 77418246

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the other hand, if the “by-product” sound were “essential” to
the use or purpose of the goods, then it would fall within the
traditional definition of functionality.
A determination of functionality generally involves
consideration of the following factors (known as the Morton-
Norwich factors):
1. Whether a utility patent exists that
discloses the utilitarian advantages of the
design sought to be registered;

2. Whether applicant's advertising touts the
utilitarian advantages of the design;

3. Whether alternative designs are available
that serve the same utilitarian purpose; and

4. Whether the design results from a
comparatively simple or inexpensive method
of manufacture.

See In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d
1372, 1377 (Fed. Cir. 2012), citing In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). These
factors are not exclusive, however, for functionality “depends
upon the totality of the evidence.” Valu Eng'g, Inc. v. Rexnord
Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002); and
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d
1120, 1122 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995).

is far from finding that such sounds are functional and always
unregistrable. Moreover, there is no evidence before us to indicate
that sound is emitted from eyeglasses in the course of their ordinary
function.
Serial No. 77418246

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The first Morton-Norwich factor is whether a utility patent
discloses the utilitarian advantages of the proposed mark.
“[T]he disclosure of a feature in the claims of a utility patent
constitute strong evidence of functionality,” and “statements in
a patent's specification illuminating the purpose served by a
design may constitute equally strong evidence of functionality.”
Becton, Dickinson, 102 USPQ2d at 1377 (citations and internal
quotations omitted); accord Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1920 (TTAB
2011); and In re Dietrich, 91 USPQ2d 1622, 1627 (TTAB 2009).
Here, we also consider the technical information introduced into
the record by the examining attorney and applicant.
The record includes two third-party utility patents (Reg.
Nos. 3837735 and 3957360) covering hinges for eyeglasses.
Applicant submitted this evidence and concedes that “these
patents show that a hinge that resists opening and closing is a
utilitarian feature” and “[t]he functional feature that is the
subject of the utility patents is the resistance of the hinges.”
(Brief, p. 12). Applicant is quick to point out, however, that
the patents do not mention sound in any manner.
To the extent that the examining attorney concludes the
eyeglass hinges are functional, we would agree only insofar as
it has been shown that it is useful to be able to “lock” one’s
eyeglasses in an open or closed position. (There is nothing of
Serial No. 77418246

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record to indicate that there is any purpose for locking one’s
eyeglasses in the two intermediate positions between open and
closed – the positions at which one would hear the first and
second clicks.) Moreover, the third-party patents do not even
mention sound, let alone identify any sound caused by the hinges
as a functional feature of the eyeglasses. We do not agree that
a clicking sound is functional simply because the sound is a
“by-product” of the friction caused by a functional eyeglass
hinge.
So as to be clear, applicant does not own and has never
applied for any utility patents covering its hinges or any sound
caused by their operation. Further, Jeff Sand, one of
applicant’s founders, cleared up an incorrect statement in
applicant’s literature when he stated the following in his
declaration:
It should also be noted that any of
Applicant’s literature that states that
patents are pending for applicant’s eye wear
is also inaccurate. Applicant is not
seeking to patent its spectacles or spring
hinge.

The absence of a utility patent covering the sound sought to be
registered is a factor in applicant’s favor.
With respect to the second Morton-Norwich factor, the
examining attorney contends that applicant’s advertising
promotes the utilitarian advantages of the “Three Click Hinge,”
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and is “strong” evidence of functionality, whereas applicant
asserts that it is touting the hinge, not the sound, in the
advertising. The examining attorney, in his brief (p. 8), makes
specific reference to the following statements in the
advertising: “[w]e’ve introduced the Ratchet Hinge™, a
combination of form and function that is unmatched in strength,
durability and fit”; the hinge “is integrated into the frame for
incredible strength and durability”; and the hinge “allows the
use of a lighter, more comfortable spring, keeping the frame
centered on the face without oppressive pressure.” The
examining attorney also highlights the following additional
claims in the advertising: “[T]he new Three Click Hinge used in
this collection addresses the weakest point in conventional
eyewear construction. The hinge uses a revolutionary 3-D lance
design that anchors the hinge into the frame from all
directions,” and the “Three Click Hinge” is “10X stronger than a
conventional hinge.” The examining attorney concludes that
“nothing in the record would explain why consumers would
encounter the phrase ‘Three Click Hinge,’ and go on to only
relate the utilitarian advantages to the term ‘Hinge.’ To the
contrary, since nearly all eyewear contains a hinge mechanism,
consumers would regard the ‘Three Click’ element as having the
utilitarian advantage of being ‘unmatched in strength,
durability and fit.’” (Brief, p. 8)(emphasis in original).
Serial No. 77418246

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We agree with applicant’s assessment on this point, and
fail to find any touting of functional advantages deriving from
the sound made by the hinge (as opposed to the functional
advantages of the hinge itself) when the eyeglass frames are
opened or closed. There certainly are no statements to the
effect that applicant’s hinge is better because of the sound it
emits when the eyeglasses are opened or closed or because of any
feature that necessarily creates such a sound. We readily
recognize that applicant touts the benefits of its hinges, but
nowhere does applicant tout the sound made by the hinges as
having utilitarian advantages. Indeed, what appears to be
touted is the “3-D lance design that anchors the hinge into the
frame from all directions.” This factor weighs in applicant’s
favor.
We turn to consider the other Morton-Norwich factors. As
noted earlier, applicant introduced the declaration of Jeff Sand
who indicates that he is an industrial designer and inventor.
More specifically, Mr. Sand designed the spring hinge used in
applicant’s eyewear that creates the three-click sound sought to
be registered. Mr. Sand made the following pertinent statements
which relate to functionality, more specifically, the factors
dealing with alternative designs and cost of manufacture:
The series of regularly spaced, repeated
clicks produced by the spring hinge used in
[applicant’s] eyewear when the temples of
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the spectacles are moved from a fully opened
to fully closed position and vice versa is
not a feature of the product that is
essential to the use or purpose of the
article, or affects the cost or quality of
the article, or is a feature that is needed
by competitors.

I could have designed the spring hinge used
in [applicant’s] eyewear to make no
appreciable sound at all when operated while
still maintaining the spring hinge’s other
features.

The temples of the spectacles are “locked”
into the open or closed position due to the
intersection of the cam surface of the hinge
and the spring biased cam follower of the
hinge. Indentations, slots or grooves are
provided in the cam surface of the hinge and
when the spring pushes the cam follower into
one of these slots, the hinge resists
movement out of this position. There is no
need for movement of the cam follower with
respect to the cam surface to produce a
sound for the cam follower and cam surface
to provide resistance to movement. This
resistance to movement out of the groove by
the follower can often be felt although
nothing is heard when the follower moves
from one groove to the next.

The same resistance to movement from a
selected position can be provided by a cam
surface and cam follower that produces no
appreciable sound when the hinge is operated
as is provided by a cam surface and cam
follower that does produce sound.

While this resistance to moving from a
selected position may be considered a
feature that adds to the quality of the
spectacles, the design features of the
spring hinge in [applicant’s] eyewear that
create sound when the spring hinge is
operated do not create or have an
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appreciable affect [sic] on the spring
hinge’s resistance to moving.

First, there are numerous ways to create
sounds due to the operation of the hinges
between the temples of the glasses and the
frames whether a spring hinge is used or
not, yet it is my experience that most, if
not almost all, commercially available
spectacles do not make an appreciable sound
when the temples are folded against the
frames or opened for wearing. This suggests
to me that an audible indicator that the
temples are either closed or opened is not a
feature that is necessary to compete in the
marketplace, and thus this is not a feature
that needs to be available so that other
manufacturers can successfully compete with
[applicant].

Second, even if an audible indicator of
whether the temples were closed or opened
was an important, competitive feature, other
spring hinges could be economically designed
to make numerous variations of click sounds
rather than the series of regularly spaced,
repeated clicks used in [applicant’s]
eyewear. The click sounds are primarily due
to the shape and material of the cam
surfaces and the spring that biases the cam
surfaces. If the profiles or transitions of
these mating surfaces are smooth then almost
all appreciable sound of the parts moving
against each other can be eliminated, such
that no “clicks” are produced. It would be
possible to make some of the grooves in the
cam surface smooth and others abrupt such
that as the temples are moved from opened to
closed position there could be variations in
the number as well as the spacing of the
clicks. There could be no clicks, one
click, or, I believe, as many as five
clicks. A competitor designing such a hinge
would not have to add to the cost of his
hinge to create these variations in sound.
Also, in response to another statement by
the Examiner, Applicant’s web site does
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describe the particular design of our spring
hinge as enabling the spring of the hinge to
be lighter. This statement is inaccurate.
[Applicant does] in fact use a relatively
light spring in the hinge; however, the
spring used by Applicant is also used in
other conventional spring hinge eyewear, and
Applicant merely chose the relatively
lighter spring because it made the clicks
more resonate. The fact that I designed our
spring hinge to produce a series of
regularly spaced, repeated clicks did not
allow me to use a particular spring that
would be more cost effective.

The availability of alternative designs can, in some cases,
be relevant to show that the design sought to be registered
“preserves competition by ensuring competitors the right to
compete effectively.” Valu Eng’g, 61 USPQ2d at 1428. However,
the mere fact that other designs are available does not
necessarily mean that applicant's design is not functional.
Bose, 227 USPQ at 5-6.
As highlighted by Mr. Sand, there are alternative designs
available to competitors, ranging from designs that produce no
sound, to others that produce a different number of click sounds
than the three clicks comprising applicant’s proposed mark.
This factor is in applicant’s favor.
The last Morton-Norwich factor to consider is whether the
design results from a comparatively simple or inexpensive method
of manufacture. The examining attorney essentially contends
that the three-click sound is a natural by-product of the
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friction inherent in the operation of applicant’s resistance
hinge, and that it would add to the cost of the hinge to
eliminate the sound. Applicant “agrees with the Examiner that
the distinct sound produced by the operation of Applicant’s
resistance hinge is a natural by-product of the friction
developed between the cam surface and the cam follower of
Applicant’s hinge.” (Reply Brief, p. 2). Applicant disagrees,
however, that competitors would be placed at a significant
competitive disadvantage if applicant gains trademark rights in
the sound sought to be registered.
Mr. Sand, who has experience in the eyeglasses field,
states “it is my experience that most, if not almost all,
commercially available spectacles do not make an appreciable
sound when the temples are folded against the frames or opened
for wearing.” Further, Mr. Sand indicates, as shown in his
declaration highlighted above, that the mating cam surfaces
could be smooth, thereby eliminating all sound, or that the
grooves in the cam surfaces could be made alternatively smooth
and abrupt, thereby creating variations in the number of clicks
when the eyeglasses are opened and closed. In fact, as
mentioned in the article (relied upon by the examining attorney)
from the Cornell Center for Materials Research regarding the
reduction of friction, smoothing the surfaces is the first
solution. Mr. Sand stated credibly that “[a] competitor
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designing such a hinge would not have to add to the cost of his
hinge to create these variations in sound.” As summed up by
applicant, a competitor can use replacement components or
utilize cam surfaces and cam followers that are designed
differently from the start rather than modifying applicant’s
design (by grinding down the surfaces, and/or adding lubricants
or bearings), and as such could make a resistance hinge that
sounded differently or made no sound at all, but was no more
expensive to produce than applicant’s product. We agree. This
factor weighs in applicant’s favor.
As spelled out by applicant, the hinges in its eyeglasses
could have been designed to not produce any sound, yet the hinge
would still have all of its functional features. The sound, in
and of itself, has no appreciable effect on the hinge’s
resistance to movement. Thus, while the hinge movements produce
the sound, the sound is not dictated by functionality.
After carefully considering all the arguments and evidence
submitted by applicant and the examining attorney, including
those not specifically discussed herein, we cannot conclude that
the examining attorney has met his burden of establishing a
prima facie case of functionality. In re R.M. Smith, Inc., 734
F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984). See also In re
Howard Leight Industries LLC, 80 USPQ2d 1507, 1509 n.7 (TTAB
2006) (“In ex parte proceedings before the Board, ... the Office
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has the initial burden of establishing a prima facie case of
functionality.”). Neither the fact that there are clicks nor
the fact that there are three of them is “essential” to making a
resistance hinge. The examining attorney quite simply has not
shown how applicant's proposed sound mark is functional or how
it would hinder competition to recognize applicant’s claim of
trademark rights in it.
Decision: The refusal to register is reversed. The
application will proceed to registration on the Supplemental
Register.