The Black & Decker Corp.

Trademark Trial and Appeal Board

Dec 28, 2006

No. 76570453 (T.T.A.B. Dec. 28, 2006)

Hearing: Mailed: December 28, 2006
October 5, 2006 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Black & Decker Corporation
________

Serial No. 76570453
_______

William G. Pecau of Steptoe & Johnson LLP for The
Black & Decker Corporation.

Linda Estrada, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Hairston, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

The Black & Decker Corporation seeks registration on
the Principal Register pursuant to Trademark Act Section
2(f) of the mark depicted below for “metal door hardware,

THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB
Ser No. 76570453
2
namely, knobs, levers, leversets, handles and handle sets
sold with deadbolt keys, and key blanks sold to supplement
or to replace deadbolt keys for knobs, levers, handles and
handle sets.”1

The following description of the mark is of record: “The
mark consists of the design of a key head.” The following
lining statement is also of record: “The dotted outline of
the key is not part of the mark, but is merely intended to
show the position of the mark.”
Registration has been finally refused on the ground
that the proposed mark comprises a configuration of the
goods which is not inherently distinctive, and thus would
not be perceived as a mark, because the trademark examining
attorney has found applicant’s attempted showing of

1 Application Serial No. 76570453, filed January 16, 2004,
claiming a date of first use and first use in commerce of July
23, 1982. The application was assigned from Baldwin Hardware
Corporation, the original applicant at the time of filing, to The
Black & Decker Corporation. The assignment was recorded with the
USPTO Assignment Division at Reel 2982, Frame 0453.
Ser No. 76570453
3
acquired distinctiveness to be insufficient.2 The refusal
has been appealed and both applicant and the examining
attorney have filed briefs. An oral hearing was held at
which counsel for applicant and the examining attorney were
present.
The sole issue on appeal is whether the applied-for
mark has acquired distinctiveness. Applicant carries the
burden of proving a prima facie case of acquired
distinctiveness. Yamaha Int’l. Corporation v. Hoshino
Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
There is no set amount of proof necessary to demonstrate
acquired distinctiveness.
In support of its acquired distinctiveness claim,
applicant relies on the declaration of its vice president
for marketing, Bernie Kropfelder, who states that applicant
has been using the applied-for mark in the United States
since 1982. Further, according to Mr. Kropfelder, “[t]he
Baldwin Key Head Design mark has been extensively
advertised and promoted through retail stores, promotional
materials distributed to the trade and media, advertising
in the media and trade publications, and on Baldwin
Hardware’s web site;” and that from 2000 to 2004, applicant

2 We note that the present examining attorney was not the
original examining attorney for this application.
Ser No. 76570453
4
spent more than $20 million on advertising and marketing
products identified by the Baldwin Key Head Design mark,
and during the same period earned over $500 million in
sales revenues. (Kropfelder declaration ¶¶ 5-6).
In addition, applicant submitted the declaration of
its marketing manager, Judith Drey, who attests that she
has been involved in marketing Baldwin hardware for over
thirteen years. According to Ms. Drey, Baldwin metal door
locksets are “prestigious products” and “some retail for as
much as $800”; that “the high quality of Baldwin locksets
and other door hardware is well recognized by the trade and
consumers”; that “[t]he octagonal Baldwin Key Head Design
is an arbitrary design that is a source identifier for
Baldwin door hardware”; that “it is an industry practice to
use different and identifiable key head designs for
locksets and keys”; that “other high end door lockset
manufacturers use distinctly different configurations for
their key heads”; that “Baldwin promotions have featured
the Baldwin Key Head Design prominently as a source
identifier for Baldwin door hardware”; that “Baldwin has
distributed for more than 4 years large quantities of
Baldwin Key Design [lapel]3 pins that are used by

3 While the declaration recites the word “label,” it is clear
that the intended word is “lapel.”
Ser No. 76570453
5
salespersons at the point-of-sale”; and that since 2001
Baldwin has used “an octagonal Baldwin Logo for all its
advertising and promotional materials that reflect the
octagonal shape of its Key Head Design mark.” (Drey
declaration ¶¶ 1-8). Accompanying the Kropfelder and Drey
declarations are examples of applicant’s advertising and
promotional materials. We note, in particular, a contest
entry card that features a prominent photograph of a
Baldwin key in the upper left-hand corner and a product
sheet that features a prominent photograph of a Baldwin key
along with the wording “A premium brand in door hardware,
Baldwin says quality .. the Baldwin key says prestige.”
Also accompanying the declarations are photographs of the
key heads of other manufacturers of door locksets.
Applicant also submitted ten customer declarations;
eight from retailers who sell applicant’s goods, and two
from consumers who have purchased applicant’s goods. The
eight form letters from the retailers read, in pertinent
part, as follows:
1. I am the _________ of ________, a retailer of
hardware and home improvement industry [products]
for_____ years. I make the following statements
on my personal knowledge.

2. Based on my experience in the industry, I am
very familiar with door hardware and locksets.
Baldwin Hardware Corporation sells a full line of
door hardware, including keys and key blanks.
Ser No. 76570453
6

3. One of the most popular lines of door
hardware sold by my company is the Baldwin
Hardware line of lock products. This line is
identified by a unique and distinctive key head
design that has a specific octagonal shape. I am
not aware of any other key design that uses a
similar octagonal shape design.

4. The octagonal shape design key head design is
unique and creates a recognizable and distinctive
appearance for Baldwin Hardware Keys. Further,
Baldwin Hardware has engaged in considerable
efforts to advertise and promote this key head
design as identifying its products to consumers
and members of the trade. In my opinion,
consumers have come to recognize this key head
design as identifying Baldwin Hardware products
and distinguishing them from other competitor’s
products. Baldwin Hardware has a reputation for
high end quality in the industry.

The two form letters from consumers read, in pertinent
part, as follows:
2. I purchase hardware and home improvement
products. I am familiar with the distinctive
octagonal shape of Baldwin Hardware Keys. I own
Baldwin Hardware Keys having the octagonal shape
on its key head that I use with my Baldwin door
locks.

3. When I see the octagonal shape key head
design, I associate it only with Baldwin Hardware
door hardware and no other manufacturer of keys,
locks or door hardware.

Finally, applicant submitted five third-party
registrations for marks consisting of other key head
designs for door hardware such as keys, locks, key blanks,
knobs, levers and leversets.
Ser No. 76570453
7
Applicant asserts that the foregoing evidence clearly
shows that its particular key head design has come to be
perceived as a source indicator for its goods.
The examining attorney, however, argues that the
evidence is insufficient. The examining attorney maintains
that applicant’s advertising and promotional materials do
not evidence that applicant’s key head design is promoted
as a trademark, that is, there is no “look for” advertising
and promotion. The examining attorney acknowledges that
applicant’s sales and advertising figures are high, but
argues that in the absence of this type of advertising and
promotion, the high advertising and sales figures show only
the commercial success of applicant’s goods, not that the
key head design has acquired distinctiveness as an
indication of the source of the goods. Insofar as the
customer affidavits are concerned, the examining attorney
maintains that the eight form letters from retailers are
not persuasive because the retailers are biased since they
have all dealt with applicant, and the customer affidavits
are few in number. While the examining attorney maintains
that applicant’s evidence is insufficient to establish
acquired distinctiveness, the examining attorney did not
submit any evidence that undercuts applicant’s position.
Ser No. 76570453
8
That is, there is no evidence of use of very similar key
head designs by others.
After careful consideration of the arguments and
evidence of record, we find that applicant’s showing is
sufficient to establish a prima facie case of acquired
distinctiveness and the examining attorney has not rebutted
that showing. The record reflects that applicant has used
the mark which it seeks to register continuously for
twenty-four years. Applicant’s key head design is
prominently displayed in several of its advertising and
promotional materials and on lapel pins worn by
salespersons. Further, as the examining attorney
acknowledges, applicant’s sales and advertising figures are
substantial. Indeed, for the period 2000–2004, applicant’s
total sales have exceeded a half a billion dollars and its
advertising expenditures have exceeded $20 million.
After reviewing applicant’s evidence of record, we
recognize that there is no “look for” advertising or
promotion of the octagonal key head design. In certain
cases, the Board has been critical of an applicant’s claim
of acquired distinctiveness when the product design sought
to be registered merely appears in advertising materials
and there is no evidence of the promotion of the product
design in such materials. See e.g., In re Edward Ski
Ser No. 76570453
9
Products, Inc., 49 USPQ2d 201 (TTAB 1999) [no evidence that
the configuration of a ski mask promoted as an indication
of origin]; and In re Pingel Enterprises Inc., 46 USPQ2d
1811 (TTAB 1988) [no advertising or promotion of trademark
significance of the product configuration]. In this case,
however, the absence of “look for” advertising or promotion
does not mean that consumers do not recognize the design as
applicant’s trademark. Here, applicant’s marketing
manager, Ms. Drey, has stated that it is an industry
practice for manufacturers of door locksets to use
different and identifiable key head designs for their
locksets and keys. We note that this Board has previously
considered industry practices in acknowledging that colors
operate as source indicators for wire rope. See e.g.,
Amsted Industries Inc. v. West Coast Rope & Rigging Inc., 2
USPQ2d 1755, 1757 (TTAB 1987) [“A rather unusual aspect of
how color is generally applied to one or more strands of
wire rope as an industry practice was the subject of
considerable testimony and evidence. Even though the
third-party registrations attached to applicant’s brief are
not in evidence, supra, note 4, there is no doubt, on
opposer’s record, that a number of suppliers of wire rope
utilize one or more distinctively colored wire rope strands
to serve as indicators of origin and have registered these
Ser No. 76570453
10
indicia as trademarks”) and Wire Rope Corporation of
America, Inc. v. Secalt S.A., 196 USPQ 312, 315 (TTAB 1977)
[“Insofar as the nature of the use of colored strands in
the wire products field is concerned, it is not disputed
that it is the custom, as previously indicated, for
manufacturers to use different colors for application to
their wire rope or cable for identification purposes and
that purchasers do recognize the individual colors as
source indicia”). Here, applicant has submitted
photographs of ten key heads from other manufacturers of
door locksets that are different from applicant’s key head
design and five third-party registrations for marks
consisting of key head designs for door hardware. In other
words, the evidence in this case shows that it is common
for manufacturers of door hardware to use key head designs
as source indicators. This makes it all the more likely
that consumers would perceive applicant’s applied-for mark
as a trademark. Cf. In re Upper Deck Co., 59 USPQ2d 1688,
1693 (TTAB 2001) [“[T]he common use of holograms for non-
trademark purposes means that consumers would be less
likely to perceive applicant’s use of holograms as
trademarks”]. The record also shows that applicant’s
octagonal key head design is unlike the key head designs
used by other manufacturers of door locksets. Compare In
Ser No. 76570453
11
re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001)
[Applicant failed to meet its high evidentiary burden where
its guitar configuration was extremely similar to those
used by other guitar manufacturers]. In short, the absence
of “look for” advertising or promotion of applicant’s key
head design is not a critical factor in this case.
Further, in this case, there is competent evidence of
consumer recognition of the octagonal key head design as a
trademark. The language in both the retailer and the
ultimate consumer declarations is clear as to what is
understood to represent applicant’s applied-for mark. We
disagree with the examining attorney’s assessment that the
eight retailer declarations are biased and therefore
entitled to little weight. There is simply no evidence to
suggest that these retailers were predisposed to say that
applicant’s goods are identified by the octagonal key head
design. Finally, while the two declarations from the
ultimate consumers of applicant’s goods are not an
overwhelming number, we must consider applicant’s evidence
in its entirety.
Based on this record in its totality, and for the
reasons discussed above with particular consideration given
to the industry practice, we find that applicant has
established a prima facie case that the applied-for mark
Ser No. 76570453
12
has become recognized as indicating applicant and the metal
door hardware it sells.
Decision: The refusal to register is reversed.