Trico Products

Trademark Trial and Appeal Board

Jul 20, 2006

No. 76394238 (T.T.A.B. Jul. 20, 2006)

Mailed:
20 July 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trico Products Corporation
________

Serial Nos. 76393303 and 76394238
_______

Anne F. Downey of Downey & Downey for Trico Products
Corporation.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Drost, Zervas, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Trico Products Corporation (applicant) filed two
applications to register the marks shown below on the
Principal Register for “automobile windshield wiper blades”
in Class 12.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. Nos. 76393303 and 76394238
2
76393303

76394238

Both applications were filed April 8, 2002, and allege
a date of first use and first use in commerce of November
30, 2000. The marks in the applications are described as
follows:
Serial No. 76393303: The mark consists of the design
of an automotive windshield wiper blade featuring a
stripe running longitudinally on the sidewall of the
blade. The dotted lines show the relative position of
the rubber wiping element in relation to the
windshield wiper superstructure, and no claim is made
to the areas within the dotted lines as part of the
mark.

Serial No. 76394238: The mark consists of a
contrasting color used on a stripe on the wiping
element of an automotive windshield wiper blade. The
wiping element is a dark color and the stripe is a
light color.

Packaging for the goods is set out below.
Ser. Nos. 76393303 and 76394238
3

The examining attorney ultimately refused registration and
applicant seeks review of the examining attorney’s
determinations that the “proposed mark of a windshield
wiper design is ornamental and thus not a trademark under
Sections 1, 2 and 45 of the Trademark Act; the finding that
the mark has not acquired distinctiveness under Trademark
Act Section 2(f) and the finding that it seeks registration
of phantom (multiple) marks and not one mark under
Trademark Act Section 1.” Examining Attorney’s Brief
(Serial No. 76393303) at 1.1
Preliminary Issues
Applicant points out (76394238 Reply Brief at 1-2)
that:
Indeed, it appears that the entire [examining
attorney’s] Brief [in Serial No. 76394238] is simply a
copy of the 76393303 Brief, and thus certain
references in the Brief are erroneous because they
pertain to 76393303 but not to 76394238. For example,

1 In both cases, the examining attorney also made, but ultimately
did not pursue, a refusal on the ground that the designs were
functional.
Ser. Nos. 76393303 and 76394238
4
the Brief references certain dates of Responses to
Office Action etc., but some of the dates pertain to
76393303 and not 76394238.

We agree that the ‘238 brief appears to be a close copy of
the ‘303 brief.2 Indeed, the ‘238 brief in effect requests
that it be consolidated with itself inasmuch as it requests
that “the Board consolidate a final decision on this case
with Ser. No. 76/394238.” Brief at 2. The brief also
refers to the mark as “a stripe running longitudinally on
the sidewall of the blade.” See, e.g., ‘238 Brief at 2.
This is obviously the mark in the ‘303 appeal.
Despite this confusion, it is clear that the examining
attorney intended to refuse registration of the ‘238 mark
on the grounds that it was ornamental, a phantom mark, and
that it had not acquired distinctiveness. The marks in
both cases are essentially depicted the same and the
difference concerns how the marks are described. It does
not appear necessary to further delay this appeal in order
to remand the case to the examining attorney when it is
clear that he intended the same arguments to apply in both
cases. Unless the final refusal or denial of the request
for reconsideration indicate otherwise, we will consider

2 However, we note that on page one of the examining attorney’s
‘303 and ‘238 briefs, the correct serial numbers are indicated
and on page 3, the briefs distinguish between evidence of record
“in the file” (the ‘303 brief) and the same evidence of record
“in Ser. No. 76/393303” (the ‘238 brief).
Ser. Nos. 76393303 and 76394238
5
that the examining attorney intended the same rationale to
apply to the refusals in this case.
As indicated above, the examining attorney has
requested that the cases be consolidated. Applicant has
opposed the consolidation arguing that there are distinct
issues in the cases. Separate briefs have been filed in
both cases and to minimize any confusion, we deny the
request to consolidate but we are issuing a single opinion
that covers both cases.
Serial No. 76394238
Inherent Distinctiveness/Ornamentation
We will begin with the ‘238 application. In that
application the mark is described as a “contrasting color
used on a stripe on the wiping element of an automotive
windshield wiper blade. The wiping element is a dark color
and the stripe is a light color.”3

3 Applicant did provide one complete wiper blade. On that
specimen, the wiper blade is black with a thin brown stripe at
the bottom of the blade.
Ser. Nos. 76393303 and 76394238
6
In opposing the motion to consolidate, applicant argued
(Reply Brief at 2) that there is an additional issue in
this case, i.e., “whether a contrasting color mark can be
held inherently distinctive post-Wal-Mart v. Samara,” 529
U.S. 205, 54 USPQ2d 1068 (2000). Applicant argues that the
examining attorney has not addressed the issue in his
brief, and that the board should “conclude that the issue
is conceded.” Reply Brief at 3. We decline to do so.
First, the examining attorney has consistently maintained
that the mark is ornamental (Brief at 3 and 5). Obviously,
if a mark is refused registration on the ground that it is
ornamental, by definition, the examining attorney is
holding that the mark is not inherently distinctive.
Indeed, in the denial of the request for reconsideration at
2, the examining attorney advised applicant of this very
point. “Please note, the ornamental refusal is a rejection
that the mark is inherently distinctive.” Therefore, if
the examining attorney was conceding that the mark was
inherently distinctive, the examining attorney would have
withdrawn the ornamental refusal.
“An ornamental design can be inherently distinctive if
it is arbitrary and distinctive and if its principal
function is to identify and distinguish the source of the
goods to which it is applied, ornamentation being merely
Ser. Nos. 76393303 and 76394238
7
incidental. However, a design which is a mere refinement
of a commonly-adopted and well-known form of ornamentation
for a class of goods would presumably be viewed by the
public as a dress or ornamentation for the goods.” In re
Soccer Sport Supply Company, Inc., 507 F.2d 1400, 184 USPQ
345, 347 (CCPA 1975). See also Seabrook Foods, Inc. v.
Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291
(CCPA 1977) (“In determining whether a design is arbitrary
or distinctive this court has looked to whether it was a
‘common’ basic shape or design, whether it was unique or
unusual in a particular field, [or] whether it was a mere
refinement of a commonly-adopted and well-known form of
ornamentation”) (footnotes omitted). We do not need to
address applicant’s question of whether a contrasting color
mark can ever be inherently distinctive because in
applicant’s case, even under the traditional analysis, its
mark is not inherently distinctive.
One test for whether a design is inherently
distinctive is whether a “buyer will immediately rely on it
to differentiate the product from those of competing
manufacturers.” In re Hudson News Co., 39 USPQ2d 1915,
1922 (TTAB 1996), aff’d w/o opinion, 114 F.3d 1207 (Fed.
Cir. 1997). It is difficult to see how consumers will
immediately rely on applicant’s “contrasting color used on
Ser. Nos. 76393303 and 76394238
8
a stripe” on a wiper blade to differentiate applicant’s
products from others. We note that applicant’s stripe is
not simply a specific color combination applied to a
product. Even specific combinations of colors have been
held to be non-inherently distinctive. See In re David
Crystal, Inc., 296 F.2d 771, 132 USPQ 1, 2 (CCPA 1961)
(registration denied for red and blue bands on white socks)
and Plastilite Corp. v. Kassnar Imports, 508 F.2d 824, 184
USPQ 348, 350 (CCPA 1975) (yellow and orange fishing floats
neither inherently distinctive nor registrable under
Section 2(f)). Stripes have been held to be ornamental
designs used to dress up various products. In re General
Tire & Rubber Co., 151 USPQ 214 (TTAB 1966) (white wall
tires) and In re Chung, Jeanne & Kim Company, Inc., 226
USPQ 938, 941 (TTAB 1985) (“[I]t is a common practice among
manufacturers of athletic shoes to apply stripes[,] strip,
or bar designs to the sides of their shoes”).
In applicant’s case, the contrasting color refers to
that part of applicant’s wiper blade that is different from
the rest of the blade inasmuch as it reflects the Teflon
stripe that is contained in applicant’s blade. See Trico
website (“The Teflon blade itself has a color strip
highlighting its presence to the consumer”). The design is
a slight variation from the traditional design of a wiper
Ser. Nos. 76393303 and 76394238
9
blade. Goodyear Tire and Rubber Co. v. Interco Tire Corp.,
49 USPQ2d 1705, 1719 (TTAB 1998) (“Similarly, while no
other manufacturer or seller of tires markets a tire which
features a pattern of three different length lugs in which
the larger lugs extend appreciably beyond the sidewall,
such a design is in essence a mere refinement of long-
standing two-stage lug designs”). Indicating the presence
of a different material on an item by showing that material
in a different color is a logical and ordinary way to
indicate that there is another material present. Consumers
would understand the commercial impression of applicant’s
wiper design stripe as simply indicating the presence of a
Teflon substance rather than a trademark. Therefore, we
conclude that applicant’s design is not “of such a nature
that its distinctiveness is obvious.” In re Owens-Corning
Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 422
(Fed. Cir. 1985). We add that the stripe design is very
difficult to notice on applicant’s goods. When consumers
do notice applicant’s contrasting stripe on its wipers,
they would likely view it as mere ornamentation.
Phantom Mark
We now address the examining attorney’s refusal on the
ground that applicant’s mark is a phantom mark. A “phantom
mark” is “a word, alpha-numeric designation, or other
Ser. Nos. 76393303 and 76394238
10
component [of a mark] that is subject to change.” TMEP
1214 (4th ed. rev. April 2005). The examining attorney
argues “that the “contrasting color stripe windshield wiper
blade design is considered to encompass several marks as
the contrast between certain parts of the blade could be
reproduced in many colors such as yellow/red, blue/green or
gray brown. Alternatively, the windshield wiper could be
in a dark color and the stripes represented in a red, blue,
yellow, green or any other color.” Denial of request for
reconsideration at 2. The examining attorney relies on the
case of In re International Flavors and Fragrances Inc.,
183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999). In that
case, the marks were LIVING XXXX FLAVORS and LIVING XXXX
FLAVOR. The XXXX represented "a specific herb, fruit,
plant or vegetable.” 51 USPQ2d at 1515.
We are also aware of a Commissioner’s decision that
was very close to the facts of this case involving a stripe
on an athletic shoe. In re Athletic Shoe Company, 102 USPQ
417 (Asst Comm’r 1954) (“Registration must be refused
because no color is identified, and applicant is not
entitled to a registration covering broadly all colors
contrasting with the rest of the shoe”). However,
applicant relies on the case of In re Data Packaging Corp.,
453 F.2d 1300, 172 USPQ 396 (CCPA 1972). In that case, the
Ser. Nos. 76393303 and 76394238
11
mark for computer tape reels “consisted of a narrow annular
band mounted on the front reel flange, adjacent to and
concentric with the hub of the reel, in a color which
contrasts with the reel flange.” 172 USPQ at 396. The
court held:
We agree with appellant and the dissenting member of
the board that there is no reason why a registration
may not be obtained which covers the use of the mark
regardless of its color… Similarly, it seems to us,
there is no reason why an applicant should not be able
to obtain a single registration of a design mark
covering all the different colors in which it may
appear, that is to say, not limited to a particular
color.

172 USPQ at 397.4
We follow the precedent of the Court of Appeals for
the Federal Circuit and its predecessor, the
Court of Customs and Patent Appeals. As a panel decision,
the International Flavors case did not and, indeed could
not, overrule the Data Packaging case. Furthermore, there
is nothing inconsistent between those cases. In
International Flavors, the public was left to guess as to
what the limits of the marks were. In Data Packaging, the
mark, as here, is what is set out in the application, a

4 The court also went on to hold that International Braid Co. v.
Thomas French & Sons, Ltd., 150 F.2d 142, 66 USPQ 109 (CCPA 1945)
was overruled to the extent that it was inconsistent with the
Data Packaging opinion. 172 USPQ at 398.
Ser. Nos. 76393303 and 76394238
12
contrasting stripe.5 Data Packaging pointed out that it
“seems well established that a single registration of a
word mark may cover all its different appearances potential
as well as actual.” 172 USPQ at 397. Similarly,
applicant’s mark is not an unregistrable phantom mark under
Data Packaging, and we reverse the examining attorney’s
refusal to register on this ground.
Acquired Distinctiveness
We now turn to the issue of acquired distinctiveness.
The examining attorney made it clear that “it is agreed
that the acquired distinctiveness claim would overcome this
refusal.” Denial of request for reconsideration at 2.
However, the examining attorney went on to find that “the
Office has made the determination that the applicant has
failed its evidentiary burden [of] establishing acquired
distinctiveness.” Id. It has long been held that the
applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,

5 The mere fact that some information may be missing from a mark
does not make it unregistrable. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812-13 (Fed. Cir. 2001)
(“The Director further argues here that, because the area code in
the (212) mark was subject to change, it is a phantom mark that
is not registerable … Although the registration of the “(212) M-
A-T-R-E-S-S” mark is a “phantom” mark, the use of which we have
questioned, … it is apparent in the present case that the missing
information in the mark is an area code, the possibilities of
which are limited by the offerings of the telephone companies”).
Ser. Nos. 76393303 and 76394238
13
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
Furthermore, “logically that standard becomes more
difficult as the mark’s descriptiveness increases.” Yamaha
Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001, 1008 (Fed. Cir. 1988).
However, the statute is silent as to the weight of
evidence required for a showing under Section 2(f)
except for the suggestion that substantially exclusive
use for a period of five years immediately preceding
filing of an application may be considered prima facie
evidence.

As observed by our predecessor court, the exact kind
and amount of evidence necessarily depends on the
circumstances of the particular case, and Congress has
chosen to leave the exact degree of proof necessary to
qualify a mark for registration to the judgment of the
Patent Office and the courts. In general, the greater
the degree of descriptiveness the term has, the
heavier the burden to prove it has attained secondary
meaning.

Id. (quotation marks, brackets, and citations
omitted).
We now consider applicant’s evidence of acquired
distinctiveness. Applicant has provided a declaration from
its Production Engineering Manager. We have set out a
substantial portion of the declaration below.
2. Trico is the world’s number one manufacturer of
wiper blades. Our company employs 6,000 persons and
has facilities throughout the globe, including 8
manufacturing plants and numerous sales and
Ser. Nos. 76393303 and 76394238
14
engineering offices… Over 55% of the automobiles
manufactured in North America come equipped with Trico
blades. Our blades on an annual basis, when placed
end-to-end, would circle more than half way around the
Earth...

5. The packaging for the Teflon-coated wiper blade
prominently features the color mark and the stripe
design mark...

8. Sales of the Teflon-coated blade product, in its
special packaging, have grown steadily since the
launch of the product in 2001. Trico’s sales
department informs me of the following gross sales
figures for US sales:

Fiscal Year 2001 almost $1 million
Fiscal Year 2002 over $5 million
Fiscal Year 2003(ended April 2003) over $10 million

9. Millions of units of the Teflon-coated blade
product, in its special packaging, have been sold in
the US since 2000.

11. Trico has made a substantial investment in
promoting the Teflon-coated product. Advertising
expenditures have totaled nearly $3 million, just for
placement of ads alone (exclusive of advertisement
production costs).

12. The product has been featured in Popular Mechanics
magazine, receiving the Editor’s Choice Award. It has
also been promoted by Lauren Fox, a nationally
recognized premier automotive expert.

Some excerpts from applicant’s website include the
following:
Studies show that consumers consistently choose
products with Teflon over similar products and are
willing to pay a premium for Teflon-enhanced products.
In fact, 97% of men and women recognize the Teflon
name, making it an extremely marketable product. This
translates to higher unit sales and increased profit
margins for distributors! The Teflon blade itself has
Ser. Nos. 76393303 and 76394238
15
a color strip highlighting its presence to the
consumer.

Winter Teflon® Blade has a rubber boot which
protects the metal blade frame from becoming clogged
with snow and ice. The extra benefit of Winter
Teflon® Blades is its exclusive wiping edge with
Teflon® resin, which provides longer life and a
smoother wipe.
No other winter blade line can offer the unique
benefits of Winter Teflon® Blade:
Longer life
- Wiping edge with Teflon® resin enhances
weatherproofing to repel rain, snow and ice
Smoother wipe
- Non-stick, low friction properties
- No chattering or squeaking
You will know you have a TRICO Winter Teflon®
Blade by the distinctive color strip on the rubber
edge and the blade’s blue end cap.

We first address applicant’s “look for” evidence,
which may often be critical in showing that the mark has
acquired distinctiveness. In re The AFA Corp., 196 USPQ
772, 775 (TTAB 1977) (“[W]hat is significant is the fact
that not only has applicant intended its color arrangement
to function as a trademark for its goods, but applicant, in
its advertising, has sought to develop trademark
recognition of its gold and black configuration by using in
its advertising material and price lists such phrases as
‘Gold and Black Means AFA,’ and ‘Look for the
characteristic gold and black that identifies the Fogmaster
7401 Mist-Jet Fogger’”).
Ser. Nos. 76393303 and 76394238
16
First, both references to the applicant’s strip are
buried in substantial text and it certainly does not call
out to purchasers. Indeed, it would take some effort to
even discover these statements. Second, and more
importantly, it is hard to see on what basis consumers
would use this information to conclude that applicant’s
stripe is its trademark. In the first excerpt, the
statement follows several sentences discussing another
party’s trademark6 “TEFLON.” Only after the importance of
the trademark “TEFLON” is discussed does the literature
inform the reader that the “Teflon blade itself has a color
strip highlighting its presence.” While there is a picture
of the goods at this point on the website, the picture
appears to highlight the presence of the TEFLON material
and not to indicate a mark used to distinguish the goods.
To the extent that this evidence suggests a trademark, it
is more likely to be considered as a trademark for TEFLON.
The same is true in the second reference. The reference to
the strip occurs after an extended discussion of the
benefits of TEFLON on the wiper blade. This literature
primarily indicates that consumers and distributors can

6 See Trico’s website (“TRICO, the top name in wiper products,
has teamed up DuPont Teflon, the world’s most slippery
substance…”).
Ser. Nos. 76393303 and 76394238
17
distinguish wiper blades with and without TEFLON by the
TEFLON-indicating stripe rather than by distinguishing the
blades of applicant from those of others. Therefore, we do
not find that these references to the stripe to be very
significant in demonstrating that applicant’s marks have
acquired distinctiveness. Even if purchasers waded through
applicant’s literature and relied on the statement, it is
simply not clear whether they would perceive it as
applicant’s trademark as opposed to an indication that its
wipers have a TEFLON component to it. See In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990) (“[W]hile applicant
tells its customers to look for the ‘familiar blue and
white E-A-R pillow-pak package,’ it is not at all clear
that the asserted public recognition as a trademark of
applicant's container is attributable to the shape rather
than to the blue and white colors”). We point out that
there is no evidence that any prospective purchasers
actually recognize applicant’s design as its trademark.
We also have considered applicant’s evidence contained
in the declaration of its production manager. We start by
noting that some of its evidence demonstrates recognition
that applicant’s blade with a TEFLON-edge has been popular
because of the improvements made to a traditional wiper
blade by the addition of TEFLON. For example, it is
Ser. Nos. 76393303 and 76394238
18
unlikely that its wiper has been recognized by Popular
Mechanics magazine (receiving the Editor’s Choice Award),
and by an automotive expert simply because of the
contrasting stripe in the wiper blade. Instead, this
recognition has been the result of the technical advantages
of using TEFLON on a wiper blade. See Trico’s website
(“The new TRICO Teflon blade has been scientifically
engineered to last longer and wipe smoother than other
blades”). There is no evidence that there is anything in
either the Popular Mechanics magazine or automotive expert
endorsement that in any way shows that the contrasting
stripe is a trademark that is used to distinguish
applicant’s wiper blades from those of others.
Next, we address the advertising expenditures and
sales volumes. At least with the evidence of advertising
in this record, we do not find that this advertising has
promoted applicant’s contrasting stripe design as
applicant’s trademark, even if there were extensive
expenditures. As we indicated above, it is not at all
clear that prospective purchasers would conclude that this
stripe was applicant’s trademark. Furthermore, the sales
volume evidence is not, by itself, evidence of recognition
of trademark recognition.
Ser. Nos. 76393303 and 76394238
19
The only evidence presented by Seabrook on secondary
meaning is the sales volume of its products. Although
such evidence may have relevance in establishing
secondary meaning (see In re Hollywood Brands, Inc.,
41 CCPA 1001, 214 F.2d 139, 102 USPQ 294 (1954)), it
is not necessarily indicative of recognition of the
mark by purchasers as an indication of source of the
goods. See In re International Spike, Inc., 190 USPQ
505, 507 (TTAB 1976), and cases cited therein. There
is no persuasive evidence that the design portion of
Seabrook's mark has acquired secondary meaning, such
as might be shown by a consumer survey or by
advertising emphasizing the design portion of the mark
to potential customers coupled with a showing that
such advertising had consumer impact.

Seabrook Foods, 196 USPQ at 291.
Similarly here, the sales volume is not indicative of
trademark recognition as opposed to the alleged
technological improvements in applicant’s wipers. See
In re Bongrain Int'l (American) Corp., 894 F.2d 1316, 1318,
13 USPQ2d 1727, 1729 (Fed. Cir. 1990) (growth in sales may
be indicative of popularity of product itself rather than
recognition as denoting origin); In re Sunburst Products
Inc., 51 USPQ2d 1843, 1848 (TTAB 1999) (“Furthermore, the
claimed popularity of applicant's watches may well result
from other features of its products which are deemed
superior by the purchasing public”) (footnote omitted).
See also In re Candy Bouquet International Inc., 73 USPQ2d
1883, 1889 (TTAB 2004) (“This evidence shows only the
popularity of applicant’s services, not that the relevant
customers of such services (namely, ordinary consumers)
Ser. Nos. 76393303 and 76394238
20
have come to view the term CANDY BOUQUET as applicant’s
source-identifying mark”). There is no other evidence that
shows trademark recognition and the advertising portion
that supposedly points to the contrasting stripe, as
discussed previously, is not evidence that consumers would
recognize applicant’s design as a trademark.
While applicant argues that its mark is “unique”
(Reply Brief at 18), this “uniqueness” appears to be
because applicant has “teamed up with DuPont Teflon, to
create the ultimate ‘Premium’ wiper blade.” Trico website.
“The extra benefit of Winter Teflon® Blades is its
exclusive wiping edge with Teflon® resin.” Id. While we
have considered applicant’s claim of exclusivity, we are
not persuaded that they shows acquired distinctiveness of
its trademark as opposed to the blades “exclusive wiping
edge with Teflon® resin” as a result of applicant’s teaming
up with DuPont, the provider of TEFLON resin. We add that
even if competitors had been free to adopt a design similar
to applicant’s, “a particular configuration does not become
distinctive merely because no other manufacturer uses that
particular configuration.” In re Parkway Machine Corp., 52
USPQ2d 1628, 1633 (TTAB 1993).
Ser. Nos. 76393303 and 76394238
21
We conclude that applicant has not met its burden of
demonstrating that its ‘238 mark has acquired
distinctiveness.
Serial No. 76393303
We now address the issues raised in the appeal for
Serial No. 76393303. The design in that case is simply a
wiper blade “featuring a stripe running longitudinally on
the sidewall of the blade.”

The examining attorney (Brief at 1) has described the
issues as follows:
Applicant has appealed the examining attorney’s
finding that its proposed mark of a windshield wiper
design is ornamental and thus not a trademark under
Sections 1, 2 and 45 of the Trademark Act; the finding
that the mark has not acquired distinctiveness under
Trademark Act Section 2(f) and the finding that it
seeks registration of phantom (multiple) marks under
Trademark Act Section 1.

Phantom Mark
We have already addressed the issue of whether
applicant’s mark in Serial No. 76394238 was a phantom mark.
Based on the In re Data Packaging Corp. case (453 F.2d
1300, 172 USPQ 396 (CCPA 1972)), we rejected the examining
attorney’s argument that the mark in that case was a
Ser. Nos. 76393303 and 76394238
22
phantom mark. Similarly, in this case, we again hold that
the Data Packaging case controls the outcome and, for the
reasons we expressed in the discussion of the Serial No.
76394238 application, we reverse the refusal to register on
the ground that applicant’s mark is a phantom mark.
Ornamentation
To the extent that applicant is arguing that the
76393303 design is not ornamental, we reject that argument
for the same reason that we discussed in the 76394238 case.
Applicant’s stripe running longitudinally on the sidewall
of the blade at the bottom of its wiper is simply an
ornamental feature of its goods. “An ornamental design can
be inherently distinctive if it is arbitrary and
distinctive and if its principal function is to identify
and distinguish the source of the goods to which it is
applied, ornamentation being merely incidental. However, a
design which is a mere refinement of a commonly-adopted and
well-known form of ornamentation for a class of goods would
presumably be viewed by the public as a dress or
ornamentation for the goods.” In re Soccer Sport Supply
Company, Inc., 507 F.2d 1400, 184 USPQ 345, 347 (CCPA
1975). As we found with applicant’s design in the 76394238
application, the addition of a stripe on applicant’s blade
is simply a minor refinement of the common blade design.
Ser. Nos. 76393303 and 76394238
23
This refinement reflects the presence of a new material
(TEFLON coating) on the wiper blade. This slight
refinement would be viewed as the addition of a new
material to the blade and not a trademark for applicant’s
goods. Also, the record reflects that wiper blades can
come in different colors. See, e.g., http://amos.shop.com.

Based on the facts of record, prospective purchasers would
not “immediately rely on [applicant’s stripe running
longitudinally on the sidewall of the blade at the bottom
of its wiper] to differentiate the product from those of
competing manufacturers.” In re Hudson News Co., 39 USPQ2d
1915, 1922 (TTAB 1996), aff’d w/o opinion, 114 F.3d 1207
(Fed. Cir. 1997). In applicant’s case, the stripe on the
blade reflects where part of applicant’s wiper blade is
different from the rest of the blade inasmuch as it
reflects the Teflon stripe that is contained in applicant’s
Ser. Nos. 76393303 and 76394238
24
blade. See Trico website (“The Teflon blade itself has a
color strip highlighting its presence to the consumer”).
Consumers would more likely understand the stripe as simply
indicating the presence of a Teflon substance rather than a
trademark. Therefore, we conclude that applicant’s design
is not “of such a nature that its distinctiveness is
obvious.” In re Owens-Corning Fiberglas Corporation, 774
F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985). When
consumers would encounter applicant’s contrasting stripe on
its wipers, they would view it as mere ornamentation.
Acquired Distinctiveness
The last issue we address is whether applicant’s
76393303 mark has acquired distinctiveness because even an
ornamental mark may be registered on the Principal Register
if it has acquired distinctiveness. We incorporate our
discussion of the case law and the evidence in the section
involving Serial No. 76394238. The declaration evidence
and the website evidence is virtually the same, if not
identical, in both cases. Our conclusion is also the same;
applicant has not demonstrated that its design of a wiper
blade featuring a stripe running longitudinally on the
sidewall of the blade has acquired distinctiveness. To the
extent that it is not inconsistent with our discussion of
the issues in Serial No. 76393303, we also rely on our
Ser. Nos. 76393303 and 76394238
25
previous explanation of why the evidence of acquired
distinctiveness is not sufficient.
We conclude that applicant has not met its burden of
demonstrating that its ‘303 mark has acquired
distinctiveness.
Decision: The examining attorney’s refusals to
register applicant’s designs in Serial Nos. 76393303 and
76394238 on the ground that they are phantom marks are
reversed. The examining attorney’s refusals to register
applicant’s designs on the Principal Register in Serial
Nos. 76393303 and 76394238 on the ground that they are
ornamental and not inherently distinctive and that
applicant has not shown that the marks have acquired
distinctiveness are affirmed.