Thomas P. Muchisky

Trademark Trial and Appeal Board

Sep 23, 2002

No. 75576465 (T.T.A.B. Sep. 23, 2002)

Hearing: Paper No. 18
July 16, 2002 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomas P. Muchisky
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Serial No. 75/576,465
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Lionel L. Lucchesi of Polster, Lieder, Woodruff & Lucchesi,
L.C. for Thomas P. Muchisky.
Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Hanak, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
By application serial no. 75/576,465, applicant seeks
registration of the design depicted below:
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 75/576,465
2
Applicant claims to have used the design since 1967
for goods identified as “head and cable assembly for use in
conjunction with professional use massage machines.” The
description in the application reads: “The mark consists of
the configuration of a head and cable assembly used in
conjunction with professional massage machines. The head
assembly consists of a circular, cup-shaped attachment on
the end of a cable. The cable terminates in a reinforced
plug end that connects to professional massage machines.”
Registration is sought under Section 2(f) of the Lanham
Act, 15 U.S.C. §1052(f).
Originally, applicant identified the goods as
“professional use massage machines,” and the description of
the design read, “the mark consists of a three-dimensional
appearance of a massage assembly.” The specimens of use
show massage machines that include a head and cable
assembly.
In her initial Office action, the examining attorney
refused registration of applicant’s design on the theory
that applicant was seeking registration of the functional
configuration of the head and cable assembly that is a part
of applicant’s various massage machines. However, she also
acknowledged that certain functional product designs may be
registered as marks if shown to have acquired
Ser No. 75/576,465
3
distinctiveness and, therefore, the examining attorney
required the applicant to submit evidence of acquired
distinctiveness. She also required an amended description
of the design and, depending upon the exact nature of the
portion of its goods that applicant sought to register as a
mark, suggested that amendment of the drawing might be in
order. Finally, she noted that the identification of goods
appeared too broad because she concluded from her
comparison of the drawing and specimens that applicant was
seeking to register the configuration of only a portion of
applicant’s goods. The examining attorney therefore
suggested amendment of the identification to list only that
portion of the massage machines, i.e., the head and cable
assembly, depicted in the drawing. The suggestion was for
applicant to adopt the proposed amended identification “if
accurate.”1
In the response to the Office action, applicant
adopted the suggested description of the mark and the
suggested identification of goods, which are those that we
recited earlier in this decision. Applicant also argued
against the functionality refusal and argued that his head
1 We note that the Office action closed with the following: “If
the applicant has any questions or needs assistance in responding
to this Office action, please telephone the assigned examining
attorney.” The examining attorney’s phone number followed her
signature.
Ser No. 75/576,465
4
and cable assembly is an inherently distinctive design. In
the alternative, applicant argued that the configuration
has acquired distinctiveness; and applicant included a
declaration attesting to substantially exclusive and
continuous use of his mark in commerce for “more than 30
years” preceding the filing date of the application.
The examining attorney continued her refusal to
register the configuration as not inherently distinctive
and found the declaration of applicant to be insufficient
evidence of acquired distinctiveness. Applicant submitted
additional evidence of acquired distinctiveness, which the
examining attorney found unpersuasive. The refusal to
register the configuration, because of its asserted non-
distinctiveness and lack of acquired distinctiveness, was
made final. Applicant appealed. Applicant and the
examining attorney have filed briefs and oral argument was
held.
We must first clarify the issue on appeal, as there
has been some confusion on the point. Applicant, in his
responses to the examining attorney’s first two Office
actions (i.e., the two “non-final” Office actions) argued
in the alternative that the configuration is inherently
distinctive or has acquired distinctiveness. Further, in
his reply brief on appeal, applicant appears to maintain
Ser No. 75/576,465
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the alternative positions. However, during prosecution of
the application, the United States Supreme Court issued its
decision in Wal-Mart Stores Inc. v. Samara Brothers Inc.,
529 U.S. 205, 54 USPQ2d 1065 (2000). That decision held
that trade dress in the nature of a product design cannot
be inherently distinctive and is protectible only on a
showing of acquired distinctiveness. Id. Thus, the
question whether applicant’s product design is, as
applicant initially argued, inherently distinctive, is not
before us.
In his initial brief, applicant presented the issues
on appeal as whether his configuration is “de jure
functional” and [assuming it is not] whether there is
sufficient evidence of acquired distinctiveness. The
examining attorney, in her brief, clarified that she had
not issued a de jure functionality refusal and focused her
arguments solely on the evidence of acquired
distinctiveness. Applicant, in his reply brief, noted a
footnote in the examining attorney’s brief that referred to
certain elements of the head and cable configuration as de
jure functional, and applicant objected to the reference.
It is clear from a reading of the footnote, however, that
the examining attorney did not refer to the entire
configuration as de jure functional and used the footnote
Ser No. 75/576,465
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for the sole purpose of explaining why she had not made
final an earlier requirement that applicant submit an
amended drawing showing de jure functional elements of the
overall configuration in dotted or broken lining. See
Trademark Rule 2.52(a)(2)(ii), formerly 2.51(d), 37 C.F.R.
§ 2.52(a)(2)(ii); see also, TMEP Section 807.03(a). Thus,
whether the configuration of applicant’s product is de jure
functional is not a question before us.
The sole question on appeal is whether there is
sufficient evidence of acquired distinctiveness to support
registration of “the configuration of a head and cable
assembly used in conjunction with professional massage
machines” for goods identified as “head and cable assembly
for use in conjunction with professional use massage
machines.” During oral argument, applicant’s counsel
argued, for the first time during the prosecution of the
application, that the proposed mark consists not just of
the head and cable assembly, but the head and cable
assembly coiled or looped in the specific manner shown in
the drawing. [See the reproduction at the outset of this
decision.] Counsel acknowledged that the assembly does not
remain in this position when used in conjunction with
applicant’s professional massage machines, but argued that
it is always stored and displayed in this manner. The
Ser No. 75/576,465
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examining attorney countered that she had not previously
considered the looping or coiling of the assembly to be an
aspect of the mark and noted that it is not mentioned in
the mark description, which highlights the head assembly
and plug end: “The mark consists of the configuration of a
head and cable assembly used in conjunction with
professional massage machines. The head assembly consists
of a circular, cup-shaped attachment on the end of a cable.
The cable terminates in a reinforced plug end that connects
to professional massage machines.”
Counsel for applicant suggested that he had been
misled into agreeing with the mark description and
identification of goods suggested by the examining attorney
in the initial Office action, thereby implying that, had he
not been misled, counsel would have made reference to the
coiled or looped display of the product in his description
of the mark. We see no merit in counsel’s argument or
suggestion that the description of the mark might have been
stated differently had he not been misled by the examining
attorney.
The description proffered by the examining attorney
was prefaced by the statement that a “clear and concise
description of the mark should also be included” in an
application seeking registration of a product configuration
Ser No. 75/576,465
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and by a statement that any such description “may be in the
following form.” Finally, as noted infra, applicant was
invited to telephone the examining attorney with questions
or if he otherwise needed assistance in responding to the
Office action. We therefore consider the question of the
registrability of applicant’s product configuration shown
in the drawing vis a vis the description of record. Thus,
the particular loop or coil aspect shown in the drawing is
not considered an element of the design, as it is not
referenced in the description.2
Turning to the identification of goods and applicant’s
counsel’s claim that he was misled into adopting the
suggestion of the examining attorney, we also see no merit
in this contention. As we have already noted, applicant
was invited to consider adopting the identification
suggested by the examining attorney, if the identification
was accurate. Accordingly, the question we must resolve is
whether applicant has demonstrated that his cable and head
2 At the oral hearing, the examining attorney noted that the
particular loop or coil shown in the drawing is not, in any
event, shown in the specimens. In the drawing, the plug end of
the assembly is perpendicular to the head end and is pointing at
the head end. In the depictions in the specimens, the plug end
is turned 90 degrees and is inserted into a massage machine, so
it does not point toward the head; or the plug plugs into a
massage machine and ends up parallel to the head end, not
perpendicular to it.
Ser No. 75/576,465
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assembly has acquired distinctiveness as a mark for such
assemblies, not for entire professional massage machines.
The Supreme Court has explained that “consumer
predisposition to equate [product design] with the source”
of the product “does not exist,” and that “even the most
unusual of product designs” is intended to render the
product more appealing, not to identify source. Wal-Mart,
supra, 54 USPQ2d at 1069. It is against this backdrop that
we must consider applicant’s evidence of acquired
distinctiveness. Moreover, it is applicant's burden to
prove acquired distinctiveness. Yamaha International
Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc.,
267 F.2d 945, 122 USPQ 372 (CCPA 1959). As this Board has
noted, the burden of showing acquired distinctiveness in a
product configuration is significant. See In re Gibson
Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001); and In re
Ennco Display Systems Inc., 56 USPQ2d 1279, 1283-84 (TTAB
2000).
The evidence of acquired distinctiveness includes the
declaration of applicant, in which applicant attests to
more than 30 years of substantially exclusive and
continuous use in commerce prior to the application filing
date and contends that the head and cable assembly “is
Ser No. 75/576,465
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recognized in the trade and by consumers of the goods sold
by companies owned by Applicant, i.e., eccentric-head,
cable-driven massage machines, as being the trademark of
GPI and PGF (including acquisitions thereof) and denoting
goods of GPI and PGF (including acquisitions thereof).” In
addition, when responding to an Office action, counsel
reported that applicant’s “predecessor in interest used the
same mark for at least an additional ten (10) years.”3
Counsel also has asserted that applicant had more than
$2 million in annual U.S. sales for each of the four years
from 1995 through 1998 and more than $3 million in sales in
1999; and that applicant spent an average of $129,000 per
year on print and convention advertising in the U.S. for
each of the years from 1995 through 1999, ranging from a
low of $107,000 in 1997 to a high of $159,000 in 1999.4
3 GPI and PGF are acronyms for companies for which applicant
states he is CEO and majority shareholder. The examining
attorney has not questioned applicant’s reference to the head and
cable assembly as “the trademark of GPI and PGF” and as denoting
the goods of those companies, rather than as the trademark of
applicant. In addition, there is nothing in applicant’s
declaration or anywhere else in the record that reveals the
existence of a predecessor to applicant; and counsel does not, in
his brief, make further mention of a period of 10 years use by a
predecessor. Thus, we have discounted this reference.
4 Counsel’s report of these figures does not specifically state
that the advertising expenditures were in the U.S., but the
figures follow the report of U.S. sales and precede the report of
worldwide sales. Also, in applicant’s brief, the sum of a second
set of advertising figures is referenced as the total for
worldwide advertising. Thus, the first set of advertising
Ser No. 75/576,465
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Finally, applicant relies on exhibits he submitted,
specifically copies of brochures or advertisements for
applicant’s massage machines, and on reprints of pages from
the World Wide Web that the examining attorney made of
record.5 Applicant contends that these “clearly demonstrate
that persons in the trade promote their devices by
depicting the goods.” Also, applicant contends that much
of his advertising and that of his distributors is “‘image
advertising’ that features Applicant’s mark” and,
therefore, discriminating, professional purchasers would
undoubtedly recognize applicant’s head and cable assembly
as an indication of source.
The examining attorney, in contrast, notes that none
of applicant’s advertising promotes the look of the head
and cable assembly of applicant’s professional massage
machines as a mark for the head and cable assemblies or,
for that matter, the machines themselves. It is the
examining attorney’s contention that the photographs of
applicant’s goods will be viewed by consumers as nothing
more than that and “[do] not aid potential purchasers in
figures has been considered as the set of U.S. figures and the
second set of advertising figures as the worldwide figures.
5 The World Wide Web pages include reprints of advertisements
for, or descriptions of, various types of cables, and various
types of massage units, most apparently for personal use, but
some apparently considered “professional” models.
Ser No. 75/576,465
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understanding the significance of the head and cable
assembly design as a trademark.” We agree. See, in this
regard, Gibson Guitar, supra, 61 USPQ2d at 1952 (Board was
not persuaded that consumers would understand from
photographs that the guitar configuration was meant to be a
source-identifier); see also, In re Edward Ski Products
Inc., 49 USPQ2d 2001, 2005 (TTAB 1998).6
We also agree with the examining attorney that the
absence of any affidavits or declarations from
distributors, purchasers or users of applicant’s goods
undermines applicant’s contention that the head and cable
assembly has become recognized as a mark indicating
applicant as the source of head and cable assemblies for
professional massage machines. It is not sufficient that
applicant intend that consumers identify the product
configuration with applicant; it is the actual recognition
6 We also note, in regard to the photographs of applicant’s
products, that the head and cable assemblies shown do not match
the precise contours of the assembly shown in the drawing,
insofar as the drawing shows a cable of uniform diameter between
the head and plug ends, while the photographs show cables with
varying diameters, specifically, cables with thicker sections
near the head and plug ends. The examining attorney did not
raise any question about whether the drawing is a substantially
exact representation of the design shown in the specimen
photographs and nor do we. However, the difference suggests that
applicant may vary the type of cable he uses in manufacturing his
product. Varying the contours of the product would, we believe,
tend to make it less likely that consumers of applicant’s product
have come to recognize a particular design of the assembly as a
mark.
Ser No. 75/576,465
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by consumers that is significant. Cf. Edward Ski Products,
supra, 49 USPQ2d at 2005, where declarations from
distributors who would be expected to know source of
products bought for resale were discounted as evidence of
acquired distinctiveness and there were no declarations
from ultimate purchasers.
Turning to the sales and advertising figures, the
record provides no context in which to assess this
evidence. We have no indication of the size of the market
for professional massage machine head and cable assemblies.
Moreover, we have no information about the nature or
frequency of the conventions that applicant attends and no
information about the reach of applicant’s advertising.
Thus, the weight to be accorded applicant’s sales and
advertising figures is limited. See Gibson Guitar, supra,
61 USPQ2d at 1952 (no information provided to assess
applicant’s relative position in the marketplace).
In his brief, counsel asserts that applicant’s
declaration of more than 30 years of substantially
exclusive and continuous use of the head and cable assembly
“is sufficient to support registrability.” We disagree.
The mere fact that a product has been on the market for a
long period of time may be solely attributable to the value
of the product and does not, per se, indicate any
Ser No. 75/576,465
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recognition of the design of the product as indicating the
producer rather than the product. See Braun Inc. v.
Dynamics Corp., 975 F.2d 815, 827, 24 USPQ2d 1121, 1133
(Fed. Cir. 1992) (“[L]arge consumer demand for Braun's
blender does not permit a finding the public necessarily
associated the blender design with Braun.”); see also,
Ennco, supra, 56 USPQ2d at 1283 (TTAB 2000) (burden on
applicant attempting to show acquired distinctiveness is to
show that primary significance of design has become
identification of the producer).
Decision: The refusal of registration of applicant’s
product design as a functional configuration devoid of
acquired distinctiveness is affirmed.