TTAB - Trademark Trial and Appeal Board - IN RE EBSCO INDUSTRIES, INC. Serial No. 74/101,177 December 24, 1996



Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 74/101,177

December 24, 1996


Robert J. Veal of Veal & Associates for EBSCO Industries, Inc.



Cora Moorhead



Trademark Examining Attorney



Law Office 4



(Sharon R. Marsh, Managing Attorney)



Before Sams, Rice and Seeherman



Administrative Trademark Judges



Opinion by Seeherman



Administrative Trademark Judge



 EBSCO Industries, Inc. has applied to register the configuration shown below as a mark for fishing lures. [FN1] The mark is described as consisting of "the configuration of the shape of a fishing lure."





 This application has had a rather long examination history. Initially applicant's configuration was refused registration pursuant to Sections 1, 2 and 45 of the Trademark Act, on the ground that the configuration is functional, and pursuant to Section 2(e)(1) on the ground that it is merely descriptive because it is a representation of the goods. In response, applicant amended the application to seek registration pursuant to the provisions of Section 2(f), and submitted evidence of acquired distinctiveness consisting of applicant's representation, through its attorney, of information regarding the length of use of the mark and advertising expenditures, and the declarations from twelve people with extensive experience with the sport of fishing.



 The Examining Attorney thereupon approved the application for publication, and the mark was in fact published in the June 30, 1992 Official Gazette. A number of letters of protest were filed on July 28, 1992, and on January 4, 1993, jurisdiction over the application was restored to the Examining Attorney by order of the Assistant Commissioner for Trademarks.



 The Examining Attorney thereupon issued another Office action, stating that after having reviewed the letters of protest and the evidence submitted with them, she was refusing registration on the grounds that the configuration was functional, and that applicant's evidence of acquired distinctiveness was not persuasive because the applied-for design is commonly used for a lure known as a chugger. Applicant submitted an extensive response, in which it stated that the only functional feature in its lure--a feature which is found in all fishing lures known as chuggers or poppers--is a "concave or cupped mouth which creates a noise when the lure is jerked through the water." Applicant has asserted that it makes no claim to this feature apart from the overall configuration. With its response applicant also submitted a number of form declarations attesting that applicant's lure is recognizable and distinguishable from other chuggers and poppers. The Examining Attorney then issued a final refusal, asserting that applicant's configuration was both functional and non-distinctive, and refusing registration pursuant to Sections 1, 2 and 45, on the ground that the applied-for configuration is de jure functional.



 Applicant thereupon filed a request for reconsideration and withdrew its election to proceed under Section 2(f) of the Trademark Act, asserting that its configuration is inherently distinctive. Applicant also filed a notice of appeal. It appears that the Examining Attorney did not recognize that the references to the Section 2(f) claim in the request for reconsideration were to indicate withdrawal of this claim, because she maintained the refusal to register the mark pursuant to Section 2(f), and stated that applicant had not met its burden of proving the distinctiveness of the mark under Section 2(f). While the Examining Attorney asserted in this action that the primary function of applicant's lure is to imitate live fish food in order to catch fish, she stated that registration was refused pursuant to Sections 1, 2 and 45 because the applied-for design is a non-distinctive configuration of the goods.



  *2 Understandably, there has been some confusion as a result of the Examining Attorney's actions as to the grounds for refusal. While it would have been the better practice for the Examining Attorney to clearly delineate each ground of refusal, and the statutory basis therefor, we believe that the procedural safeguards have been met, and that applicant has had an opportunity to respond to the refusals based on both the grounds of functionality and of lack of distinctiveness. [FN2] Moreover, in its brief applicant has proceeded on the assumption that registration has been refused on both grounds. Thus, the two issues before us on appeal are:

   1. Is applicant's configuration of a fishing lure de jure functional? and

   2. If the configuration is not de jure functional, is it inherently distinctive, such that it will be perceived as a trademark for fishing lures without any evidence of acquired distinctiveness?

Both grounds for refusal are based on Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. 1051, 1052 and 1127.



 We affirm the refusals of registration on both grounds.



 We turn first to the issue of functionality. At the outset, we think it useful to describe the precise goods for which applicant desires to register its configuration. The application identifies the goods as "fishing lures," but it is clear from the record that applicant's configuration is applied to a specific type of fishing lure known as a "chugger" or "popper." Applicant acknowledges that these lures share a common functional feature, namely, a concave or cupped mouth which creates a bubbling or gurgling sound when the lure is jerked through the water. Response to Office action filed December 21, 1993, p. 16. Applicant has specifically disclaimed the shape of the face of the lure apart from the overall design. Id., p. 22. [FN3]



 In In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16  (CCPA 1982), the Court made it clear that the fact that an article has utility does not necessarily mean that it is de jure functional; rather, the question is whether the configuration of the article is a superior design and therefore, in the interest of effective competition, should not be exclusively appropriated by a single entity. Among the factors which the Morton-Norwich court found useful to consider in making such a determination were:

   1) the existence of a utility patent which disclosed the utilitarian advantage of the design sought to be registered;

   2) advertising in which the applicant touts the utilitarian advantages of the design;

   3) the availability of other alternatives; and

   4) whether the design results from a comparatively simple or cheap method of manufacturing the article.

In In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982), the Court added that the Patent and Trademark Office, in making a prima facie case of de jure functionality, could also use support from technical articles and the like.



  *3 We acknowledge that the record shows no evidence of a utility patent. We also agree with applicant that the advertising materials on which the Examining Attorney relies do not tout the utility of the configuration of applicant's lure. Moreover, applicant has shown that the configuration sought to be registered does not result from a cheaper method of manufacture; as the affidavit of applicant's director of administration shows, applicant's lure is made by injection molding of plastic, and there is no appreciable cost difference in creating a mold for one lure shape as opposed to another.



 The evidence does, however, show that applicant's lure configuration is a superior design to the alternative lure shapes which are of record.



 The Complete Book of Lurecraft, by R. Moheny (1987), states that for a fishing lure to accomplish its intended purpose, it must first attract the attention of fish and then cause them to strike at it. Fish attraction may be accomplished by such factors as "the color, shape, movement, scent, sound, or even the taste of the lure." Id., p. 11. The popper "stays right at the surface regardless of speed. The popper is hydrodynamically unsound, so it swims an erratic path, producing a lot of noise and bubbles as it moves. This surface agitation may be a very important aspect of attraction for some species--and it often triggers an instant strike from largemouth bass." Id. at 27.



 The article "Secret Bait of the Pros" by Tim Tucker, ("Short Casts," Jan. 1987), discusses applicant's POP'R chugger, which applicant acknowledges to be the lure having the configuration sought to be registered. The article describes this bait as "deadly," and states that it has produced victories in several national fishing tournaments. The secret to the bait is that it can be used with a different fishing technique from that normally employed for chuggers.

   All agree that the key to the POP'R is the sound it makes when worked quickly across the water. The pros describe it as a noise similar to that of a frantic shad skipping across the surface to avoid a predator. It is a sound not usually associated with chuggers, which usually displace so much water when popped that they emit a "BLURP" noise.



 Rick Clunn, a fishing champion, explains in the article:

   You need enough clarity for the fish to move to the bait. [The POP-R lure] will bring fish up from deeper depths [better] than anything I've ever seen, but the key is that water clarity.

   You can catch fish on it in muddy water, but it's not nearly as effective. You have to slow it down and when you do, it loses its special little talent.



 Clunn also said that heavy line is critical for the proper action from this chugger because it keeps the lure on the surface better, where it can work.



 Another article about the genesis of a Japanese copy of a lure with a configuration like applicant's refers to creating a copy having "the same optimum fishing performance as the original Pop-R." "Enter the Rico," B.A.S.S. Times (Dec. 1991)



  *4 The evidence of record indicates that applicant's configuration is superior to that of competing fishing lures, in that this hydrodynamic shape allows the lure to be fished in a manner different from other chuggers, and by so doing to create a sound and movement that attracts fish better than other lures. In this connection, we note that expert bass fishermen assert that lures which have better action in the water catch more fish. "Enter the Rico," B.A.S.S. Times (Dec. 1991).



 Applicant claims that there are a number of feasible alternative chugger or popper configurations, pointing to, inter alia, a photograph showing 15 lures in Fishing with Artificial Lures, eight photographs, submitted by applicant, of lures other than the one shown using applicant's applied-for configuration, and the following quotation from a "New York Times" article (June 25, 1990):

   Poppers...come in many sizes and shapes, from the cigar-like Atom popper to the Biggs pencil popper, which is shaped like an elongated tear. In between them is the slab-sided Ballistic Missile, made by Spofford.



 As applicant has pointed out, its configuration differs from several of the lures pictured in the photographs, in that applicant's lure tapers from front to back asymmetrically, with the base flattened, while the other lures taper symmetrically. Although this difference is very subtle, it does provide a superior design in terms of the movement of which the lure is capable and, thus, the other lures which are similar to applicant's but are symmetrical, are not functionally equivalent alternatives.



 The photographs also show other lures which are not as similar to applicant's. However, we do not view these as equally feasible alternatives. Aside from the fact that they cannot be fished in the same way that applicant's lure can, the evidence of record makes it clear that certain lures are better for certain situations and for catching certain fish than are other lures. For example, the same "New York Times" article quoted above states that "Spofford's needlefish lure, which slithers along the surface, can also be a killer, particularly when bass and Atlantic bonito are concentrating on sand eels." Thus, to the extent that a lure of a particular shape has the appearance of the prey that the fish to be caught are currently feeding on, a fisherman would have a preference for that lure, since it would be more effective for catching fish at that particular time.



 Accordingly, we find that applicant's configuration of a fishing lure is de jure functional. [FN4] We therefore affirm the refusal of registration on this ground.



 In order to render a complete opinion, we now turn to the refusal based on the ground that applicant's lure configuration does not function as a mark. We will assume, for purposes of discussing this refusal, that the configuration is not de jure functional. [FN5] As we indicated in our review of the procedural history of this file, applicant had, during the early stages of prosecution, sought registration on the basis that the configuration had acquired distinctiveness. Applicant subsequently withdrew this Section 2(f) claim, and its position in this appeal is that the configuration is inherently distinctive. Thus, applicant is effectively asserting that consumers, not familiar with applicant's lure, will nonetheless recognize that the configuration of the lure identifies the source of the lure.



  *5 Applicant bases its position on the differences between its configuration and those of other lures, most notably the fact that its lure tapers asymmetrically, while others taper symmetrically. Applicant also points to two sets of declarations it has submitted. Applicant asserts that these 20 declarations are from "consumers who all aver that they are able to recognize and distinguish the Appellant's design from others by its shape." Brief, p. 18.



 The first set of declarations are from people who identify themselves as fishing enthusiasts, and state, in general, that they can identify applicant's lure by its shape.

   Larry Anderson: "I am familiar with many types of fishing lures by the shapes of those lures, and believe I can identify some of them as to who makes the lure by the particular shape of the lure. One of the lures that I believe I can identify in this way is the Pop-R lure.... This PRADCO lure is sufficiently different in its overall shape that I believe I can identify it by name, as well as its manufacturer, just from viewing the overall shape of the lure relatively close up to it. I think that I can distinguish this lure from others on the basis of this shape.

   Covey Bean: "In the course of my fishing experience, I have had occasion to come to be thoroughly familiar with many types of fishing lures, including the 'POP-R' manufactured and sold by PRADCO.... The 'POP-R' lure is sufficiently distinct and different in its configuration that I am able to identify that lure and its manufacturer without difficulty when the lure is only seen in silhouette or in profile....

   Larry Bozka: I am familiar with the Pop-R fishing lure.... I have fished with the PRADCO Pop-R, and I know its shape and configuration. I could recognize the lure from such shape and configuration and know who its manufacturer was, even though it did not carry any names or any identification thereon.



 It is clear that the only evidentiary value of these declarations goes to the issue of whether the configuration of applicant's lure has acquired distinctiveness as a source indicator, rather than to the issue of the inherent distinctiveness of the shape as a trademark. [FN6] That is, each of the declarants has stated that he is familiar with the lure and that, as a result of this familiarity, he recognizes the configuration as indicating source of the lure in applicant.



 The second set of declarations is even less persuasive. These eight declarations do not indicate why the declarants are qualified to make their attestations, e.g., the declarations do not identify the declarants, as was the case with the prior set, as having a lengthy experience in fishing, or having any role in the sport. The only information given for the each declarant, other then name and address, is that "I am familiar with various fishing lures which are known as 'chuggers' and 'poppers."' There is no information as to how and why they are familiar with these lures.



 These declarations also deserve little weight because we have doubts as to whether they actually reflect the views of the declarants. As the Examining Attorney has pointed out, the declarations are forms, with the declarant filling in only his name and address. The fact that form declarations are used is not necessarily a fatal flaw. However, in this case, each declaration makes reference to "the 'POP-R" which is shown in the attached drawing," yet none of the declarations contains such a drawing. We have serious concerns as to the degree of consideration given to the declarations by the declarants when the missing drawing was not noticed, particularly since the focus of the declaration is supposed to be the configuration shown in that drawing.



  *6 Moreover, the substantive comments made in the declarations do not show that the configuration sought to be registered is inherently distinctive as a source identifier. The declarations state that different types of lures are distinguishable by the variations in their body shapes and that, with respect to the POP'R lure, "the face in conjunction with the unique body shape is readily recognizable and distinguishes the lure from other chuggers or popper lures to the extent that other lure manufacturers have admittedly copied this distinct shape...." To the extent that these declarations have any probative value at all, it is with respect to whether the configuration has acquired distinctiveness as a mark.



 Thus, even if we accept that fishermen who are unfamiliar with applicant's lure will note the subtle differences between applicant's applied-for configuration and the shape of other lures, there is no evidence that such fishermen will regard the shape of applicant's lure as indicating a particular source of the lure.



 Accordingly, we find that the applied-for configuration is not inherently distinctive as a trademark for fishing lures.



 Decision: The refusals of registration on the grounds that the configuration is de jure functional and is not inherently distinctive as a trademark are affirmed.



J. D. Sams



J. E. Rice



E. J. Seeherman



Administrative Trademark Judges



Trademark Trial and Appeal Board



FN1. Application Serial No. 74/101,177, filed September 28, 1990, and asserting first use and first use in commerce as of May 1969.



FN2. Although the Examining Attorney did not realize that applicant withdrew its claim of acquired distinctiveness, it is implicit in her finding that applicant's evidence was insufficient to demonstrate acquired distinctiveness that she does not believe the configuration is inherently distinctive.



FN3. If applicant is ultimately successful in this appeal, it should file an amended drawing in which the cupped mouth is shown in dotted lines in order to indicate that applicant disclaims exclusive rights to this feature.



FN4. We recognize that, in addition to the body shape of the configuration, the applied-for design also includes a tail. However, applicant has focused its discussion of functionality on the body shape of its lure, and we have therefore done the same. We also note that, in its response filed December 21, 1993, applicant stated that "it does not contend that it has the exclusive right to...the use of a skirt...." In any event, because of the demonstrated superiority of the body shape of applicant's lure, the applied-for configuration as a whole must be considered de jure functional, and applicant cannot appropriate to itself this superior design even if it were to add a non-functional feature.



FN5. Once a configuration has been found de jure functional, evidence of inherent or acquired distinctiveness is of no avail to counter a de jure functionality rejection. In re R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).



FN6. We specifically make no finding as to whether the evidence submitted by applicant would be sufficient to prove acquired distinctiveness, as that issue is not before us.



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