Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CORNING GLASS WORKS
Serial No. 584,295
January 14, 1988
Milton M. Peterson for applicant
G.T. Glynn
Trademark Examining Attorney
Law Office 3
(Myra K. Kurzbard, Managing Attorney)
Before Sams, Rice and Krugman
Members
Opinion by Rice
An application has been filed by Corning Glass Works to register upon the Principal Register the design mark shown below (in reduced size)
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for "lenses and lens blanks for optical and ophthalmic use," use since June 2, 1976 being asserted. [FN1] It is stated in the application that the mark is a design composed of five closely spaced raised ribs applied to an optical lens blank pressing by molding the rib design transversely of the peripheral edge of the pressing; that the design is shown in the drawing by solid lines; that the configuration of the pressing is shown in dotted lines, since it is not a part of the mark and no claim is made to it as part of the mark; and that the dotted lines serve only to show the position of the mark on the goods. The specimens submitted with the application are described therein as five copies of a photograph of a lens with such a pattern molded thereon. A photocopy of the photograph (whereon someone has circled two appearances of the design) is shown below:
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Registration has been refused, under Sections 1, 2, and 45 of the Trademark Act of 1946, 15 U.S.C. 1051, 1052, and 1127, on the ground that applicant's asserted mark is a nondistinctive, ornamental design and as such does not serve to identify applicant's goods and distinguish them from the goods of others. In this regard, it is the Examining Attorney's position that purchasers of applicant's goods would perceive applicant's design not as an inherently distinctive trademark but rather as "a mere ornamental design of five commonplace, vertical rib-line markings."
The only evidence submitted by the Examining Attorney is a copy of a third-party registration (No. 892,431) of a design mark for multifocal ophthalmic lenses and lens blanks. That design [FN2] is shown below (the arrows pointing to the mark on the drawing were added by the Examining Attorney):
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According to the Examining Attorney, the registration "displays an inherently distinctive, unique design mark for lenses and lens blanks, as contrasted to the bland, commonplace ornamental design of applicant, which lacks inherent distinctiveness and does not possess eye-catching qualities for the consumer found in R892,431."
Applicant has submitted the affidavit of Mr. Richard W. Thompson, who has been employed by applicant since 1976 (the year when applicant first used the design sought to be registered) and is now manager of product and market development in applicant's Optical Products Department. Mr. Thompson's affidavit reads, in part, as follows:
4. As part of my employment, I have become familiar with the purpose and practice at Corning of molding a pattern of five parallel ribs transverse of the peripheral edge on an ophthalmic lens blank. The sole purpose of this molded pattern is to provide a means of identifying a particular line of Corning lens blanks.
*2 5. The molded pattern was purposely located on the edge of the blank so that it would not appear in a finished lens. It is desirable, however, to provide an identifier on the blank itself, rather than on an envelope or package. Such external markings can, and do, become separated, exchanged, or otherwise ineffective as an identifier in some situations.
6. I am familiar with the procedure involved in customer finishing of a lens from a blank. In general, this involves grinding and polishing both surfaces to specific curvatures, and grinding the edge to impart the desired lens peripheral contour to fit in the frame. The latter step, known as edge finishing, removes the transverse ribs pattern so that it does not appear in the final lens product.
A design which has ornamental value may nevertheless be registered if it also functions as a trademark. As we stated in In re Chung, Jeanne & Kim Co., Inc., 226 USPQ 938 (TTAB 1985), at page 941,
The fact that a design serves as an ornamental or decorative feature of the goods to which it is applied does not necessarily preclude it from also serving as a trademark to distinguish the goods, but unless the design is inherently distinctive, i.e., is of such nature that its distinctiveness is obvious, evidence must be submitted to prove that the purchasing public does recognize the design as a trademark which identifies the source of the goods. [citations omitted] Among the factors to be considered in determining whether a design is inherently distinctive are "whether it [is] a 'common' basic shape or design, whether it [is] unique or unusual in a particular field, [and] whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods ..." [citation omitted].
In the present case, applicant's design is not a common basic shape or design, such as a circle or a square, and there is no evidence that designs such as applicant's are common in the field of goods for which registration is sought. Nor does the evidence which is of record indicate that applicant's design is a "mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods."
To the contrary, the record indicates that applicant's lenses and lens blanks are sold to lens finishers, who grind and polish these goods to produce the final lens products, and in so doing remove applicant's design. Thus, the design does not appear on the finished lens, and has significance solely to lens finishers, who constitute the (only) relevant purchasing public for applicant's goods. Obviously, the ornamentation of the edge of a lens would be of no value to these customers, who are going to grind off any such design. We agree with applicant's argument, in this regard, that "it can hardly be said that applicant applies ribs to a blank as a means of aesthetic appeal to these customers." Further, the registration made of record by the Examining Attorney serves, if anything, to support the registration sought by applicant since the registered mark is a design consisting of a series of straight lines applied to lenses, and was registered on the Principal Register without resort to the provisions of Section 2(f) of the Act, signifying that it was found to be inherently distinctive.
*3 Under the circumstances, we conclude, on the basis of the record before us, that applicant's design has no real ornamental value or significance, and that it is registrable on the Principal Register as an inherently distinctive mark. [FN3]
Decision: The refusal to register is reversed.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 584,295, filed February 24, 1986.
FN2. It is stated in the registration that the mark comprises a plurality of lines extending generally transversely on the surface separating the upper portion of the segment and the body of the lens.
FN3. Applicant contends that one of the major issues in this case is who has the burden of proof, it being applicant's position that the initial burden of proof falls upon the Examining Attorney. As applicant has noted, the Board has held, in In re Kwik Lok, 217 USPQ 1245, 1246-1247 (TTAB 1983), that the issue of whether an asserted mark is inherently distinctive is a question of fact, not law, and that "where the subject matter put forward for registration comprises a common shape or something not ordinarily perceived as a trademark, the Examining Attorney's evaluation that it is not inherently distinctive is entitled to a presumption which must be overcome by persuasive evidence to the contrary." In the instant case, applicant's design might appear at first blush to fall into the category of "something not ordinarily perceived as a trademark." However, the evidence offered by applicant clearly overcomes that "first blush appearance" and any presumption that might arise therefrom. In short, no matter who is said to have the burden of proof, our ultimate decision in this case would be the same.