Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE E S ROBBINS CORPORATION
Serial No. 73/822,816
June 29, 1992
Robert W. Adams of Nixon & Vanderhye, P.C.
Michael C. Mason
Law Office 14
R. Ellsworth Williams, Managing Attorney
Before Rice, Rooney and Hanak
Opinion by Hanak
E S Robbins Corporation (applicant) seeks to register the design shown below for "plastic mats for use under chairs." [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
In the Final Office Action dated May 22, 1991, the Examining Attorney attached "product information sheets for similar goods to those of the applicant," and stated that "this evidence would tend to indicate that chair mats are sold in a variety of shapes and sizes and that no shape is inherently distinctive." [FN2] The Examining Attorney went on to note that with regard to applicant's alternative claim of acquired distinctiveness pursuant to Section 2(f) of the Lanham Trademark Act, the Examining Attorney could not accept such a claim "due to the very limited time of use [of the alleged mark], the lack of evidence promoting the shape of the goods as a trademark and the nondistinctive nature of the mark."
Subsequently, the applicant appealed the final refusal to register to this Board. Applicant and the Examining Attorney filed briefs. A hearing was held before this Board on February 27, 1992 at which counsel for applicant and the Examining Attorney were present.
There are two issues before this Board. First, is applicant's claimed mark inherently distinctive, that is, does it immediately function as a trademark? Second, if applicant's claimed mark is not inherently distinctive, has it acquired distinctiveness through use, advertising and/or promotion?
With regard to the first issue, one point needs to be clarified at the outset. At page three of his brief, the Examining Attorney states that "once the applicant has submitted evidence under Section 2(f) of the Trademark Act, the applicant concedes that the configuration sought to be registered is not intrinsically distinctive." In this case, applicant initially did not seek to register its design pursuant to Section 2(f). When it entered its amendment dated December 12, 1990, applicant made clear that its position was still that its design was inherently distinctive, and that in claiming the benefits of Section 2(f), it was doing so "without prejudice." Thus, under the facts of this particular case, applicant's alternative claim of acquired distinctiveness pursuant to Section 2(f) does not constitute an admission that its design is not inherently distinctive. In re Schaefer Marine, Inc., 223 USPQ 170, 174 n. 7 (TTAB 1984).
Turning to the merits of the question of inherent distinctiveness, applicant argues that "the design mark of the subject application is unique." In this regard, applicant notes that "the Examiner did not cite any prior chair mats having a design that is like the applicant's." (Applicant's brief p. 6). Furthermore, applicant relies upon the affidavits of its president, executive vice president and one of its customers. Each of these three affidavits contains language which is identical or virtually identical to the following:
*2 Significantly, to best of his knowledge and information no person (other than applicant) has used or is using the identical design mark or a design mark confusingly similar thereto in connection with the manufacturer and/or sale of chair mats. As a result, in his opinion, the design mark that is the subject of this application is inherently distinctive do to its unique shape and overall appearance.
It is true that the Examining Attorney has not made of record specimens of chair mats which are identical to the design of the chair mat for which applicant seeks registration. Thus, in one sense, applicant's chair mat design is unique in that it is a "one and only." Webster's New World Dictionary of the American Language (2d ed. 1970).
However, the Examining Attorney has made of record photocopies of office products catalogs showing chair mats which have designs that are somewhat similar to applicant's design. Indeed, applicant's own catalog entitled "The Perfect Touch" contains pictures of other chair mat designs which are similar to the design for which applicant seeks registration. For example, applicant's "The ARC" chair mat design (pictured at left) is fairly similar to the design for which applicant seeks registration, which applicant labels "The ELIPSE" (pictured at right).
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Thus, while applicant's applied for design may be unique in the sense that it is a "one and only," the record demonstrates that said design is not unique in the sense it has an "original, distinctive, and peculiar appearance." In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960) quoting with approval from Ex parte Haig & Haig, Ltd., 118 USPQ 229, 230 (Asst.Comm.1958). In other words, the record demonstrates that applicant's applied for design is not inherently distinctive or unique in the sense that the term "distinct" is defined as "clearly perceived or marked off" or "unmistakable," or in the sense that the term "unique" is defined as "highly unusual, extraordinary." Webster's New World Dictionary of the American Language (2d ed. 1970).
If the concept of inherent distinctiveness was defined as meaning simply "one and only," then one could obtain a registration for a design which, while "unique" in this sense, differed only slightly from the designs of other competing products and/or containers. There would be no need that the applied for design have an "original, distinctive and peculiar appearance" as required by the Haig & Haig ("Pinch bottle") and McIlhenny ("Tabasco bottle") cases.
Turning to the question of whether applicant's design has acquired distinctiveness, we find that it has not. In support of its claim of acquired distinctiveness, applicant relies upon its use of the design for three years; its sales during 1990 of $7700 worth of chair mats of this design; the manner in which it has advertised this design; and the three aforementioned affidavits. We find that applicant's length of use and sales are limited, and have not caused this design to have acquired distinctiveness.
*3 Moreover, as applicant's own affidavits and advertising make clear, applicant's design has been advertised to emphasize its aesthetic and functional appeal, and not to emphasize its source identifying characteristics. Applicant's executive vice president notes that in applicant's advertising, "reference is made to the 'appealing shape' and 'graceful, sensuous shape' of this chair mat." (Newman affidavit ¶ 5). Furthermore, applicant's executive vice president has stated that "he has personally heard customers state that they have purchased the mat because they liked and wanted that particular shape (i.e., the design mark)." (Newman affidavit ¶ 7). In other words, applicant's executive vice president has indicated that purchasers buy applicant's chair mat design not because it serves to indicate products emanating from applicant, but rather because they like and want the particular shape of the design. Moreover, the affidavit of applicant's customer states that "he has purchased these specially designed chair mats from applicant because of this unique design (shape)." (Elliott affidavit ¶ 4). Thus, applicant's customer has not stated that he has purchased this chair mat design because it indicates a chair mat emanating from applicant, but rather because the design is "unique" and "specially designed." [FN3]
Decision: The refusal to register is affirmed. [FN4]
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. The application was filed on August 31, 1989 with a claimed first use date of June 23, 1989.
FN2. This matter was handled by three Examining Attorneys. Unless otherwise noted, they will be referred to collectively as "the Examining Attorney."
FN3. It should be noted that the first Examining Attorney refused registration not only on the basis that applicant's chair mat design was not distinctive, but also on the basis that it was de jure functional. The second Examining Attorney withdrew the claim that applicant's chair mat design was de jure functional, and thus we have not considered this issue.
FN4. In reaching our decision, we did not rely upon the "newly discovered" evidence that the third Examining Attorney sought to introduce at the oral hearing. See this Board's order of April 30, 1992.