HowardLeight Industries, LLC

THIS OPINION IS CITABLE

AS PRECEDENT OF THE

TTAB

Mailed:

July 5, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re Howard Leight Industries, LLC

________

Serial No. 76439661

_______

Robert D. Hornbaker of Freilich, Hornbaker, and Rosen for

Howard Leight Industries, LLC.

Alain Lapter, Trademark Examining Attorney, Law Office 108

(Andrew Lawrence, Managing Attorney).1

_______

Before Grendel, Holtzman and Drost, Administrative

Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register

of the matter depicted below

1

A different Trademark Examining Attorney handled this

application prior to appeal.

Ser. No. 76439661

for goods identified in the application, as amended, as

“earplugs for noise protection formed of slow recovery

resilient foam material.”2 The application includes the

following description of the mark: “The mark consists of a

bullet-shaped earplug with a vertical axis, a rounded

bottom, and a radially outwardly flared top.”

The Trademark Examining Attorney has issued a final

refusal of registration on the ground that the matter

sought to be registered is functional and thus

unregistrable under Trademark Act Section 2(e)(5), 15

U.S.C. §1052(e)(5), and on the alternative ground that if

the matter is not functional, it is a configuration of the

goods which has not acquired distinctiveness and which thus

is not registrable pursuant to Trademark Act Section 2(f),

15 U.S.C. §1052(f).

Applicant has appealed the final refusal. The appeal

is fully briefed;3 no oral hearing was requested. The

evidence of record on appeal consists of the following: the

application file, including the product packaging submitted

2

Serial No. 76439661, filed August 5, 2002. The application is

based on use in commerce under Trademark Act Section 1(a), 15

U.S.C. §1051(a). April 9, 1987 is alleged to be the date of

first use and the date of first use in commerce.

3

Because a premature final refusal was issued and then

withdrawn, the operative main brief for applicant in this case is

its September 29, 2005 Supplemental Appeal Brief, and the

Addendum thereto filed on October 12, 2005.

2

Ser. No. 76439661

as applicant’s specimens of use; applicant’s expired U.S.

(Utility) Patent No. 4,774,938, entitled “SLOW RECOVERY

EARPLUG WITH LARGELY IMPENETRABLE SURFACE”; a photograph of

eight earplugs asserted by applicant to be alternative

earplug designs; twenty design patents for earplugs,

asserted by applicant to be alternative earplug designs;

samples of applicant’s advertising and promotional

materials; and the Declaration of applicant’s vice-

president, Mark Hampton.

After careful review of the evidence and the arguments

of counsel, and for the reasons discussed below, we affirm

the refusal to register on the ground that the matter

sought to be registered is functional, and also affirm on

the alternative ground that the matter sought to be

registered has not acquired distinctiveness.

Functionality

Trademark Act Section 2(e)(5)4 precludes registration

of “any matter that, as a whole, is functional.”5 The

4

This provision of the statute applies only to applications

filed after October 30, 1998. Technical Corrections to Trademark

Act of 1946, Pub. L. No. 105-330, §201(b), 112 Stat. 3064 (1998).

The present application was filed on August 5, 2002.

5

“The term ‘as a whole’ existed under prior decisional law and

refers to the entirety of the mark itself, rather than the

entirety of the class of goods in connection with which the mark

3

Ser. No. 76439661

Supreme Court has stated: “In general terms, a product

feature is functional if it is essential to the use or

purpose of the article or if it affects the cost or quality

of the article.” Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10

(1982). The Supreme Court has called this “Inwood

formulation” the “traditional rule” of functionality.

TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.

23, 58 USPQ2d 1001, 1006 (2001).

The functionality doctrine is intended to encourage

legitimate competition by maintaining the proper balance

between trademark law and patent law. As the Supreme Court

observed in Qualitex Co. v. Jacobson Products Co., 514 U.S.

159, 34 USPQ2d 1161, 1163-64 (1995):

The functionality doctrine prevents

trademark law, which seeks to promote

competition by protecting a firm’s

reputation, from instead inhibiting

legitimate competition by allowing a

producer to control a useful product

feature. It is the province of patent

law, not trademark law, to encourage

invention by granting inventors a

monopoly over new product designs or

functions for a limited time, after

which competitors are free to use the

innovation. If a product’s functional

features could be used as trademarks,

is used.” Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268,

61 USPQ2d 1422, at n.6 (Fed. Cir. (2002).

4

Ser. No. 76439661

however, a monopoly over such features

could be obtained without regard to

whether they qualify as patents and

could be extended forever (because

trademarks may be renewed in

perpetuity). That is to say, the

Lanham Act does not exist to reward

manufacturers for their innovation in

creating a particular device; that is

the purpose of the patent law and its

period of exclusivity. The Lanham Act,

furthermore, does not protect trade

dress in a functional design simply

because an investment has been made to

encourage the public to associate a

particular functional feature with a

single manufacturer or seller.

The Federal Circuit, our primary reviewing court,

looks at four factors when it considers the issue of

functionality: (1) the existence of a utility patent

disclosing the utilitarian advantages of the design; (2)

advertising materials in which the originator of the design

touts the design’s utilitarian advantages; (3) the

availability to competitors of functionally equivalent

designs; and (4) facts indicating that the design results

in a comparatively simple or cheap method of manufacturing

the product. Valu Engineering Inc. v. Rexnord Corp., 278

F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In

re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ

9, 15-16 (CCPA 1982). These are known as the Morton-

Norwich factors.

5

Ser. No. 76439661

The first Morton-Norwich factor is the existence of a

utility patent disclosing the utilitarian advantages of the

design. For purposes of this factor, we consider not only

utility patents which are currently extant, but also

expired utility patents. See TrafFix Devices Inc., supra,

58 USPQ2d at 1005-1007.6

Regarding the evidentiary value of utility patents in

the functionality determination, the Supreme Court has

instructed as follows:

A prior patent, we conclude, has vital

significance in resolving the trade dress

claim. A utility patent is strong evidence

that the features therein claimed are

functional. If trade dress protection is

sought for those features the strong evidence

of functionality based on the previous patent

adds great weight to the statutory presumption

that features are deemed functional until

proved otherwise by the party seeking trade

dress protection. Where the expired patent

claimed the features in question, one who seeks

to establish trade dress protection must carry

the heavy burden of showing that the feature is

not functional, for instance by showing that it

is merely an ornamental, incidental or

arbitrary aspect of the device.

6

Abandoned utility patent applications likewise are probative

evidence under the first Morton-Norwich factor. See Valu

Engineering Inc., supra, 61 USPQ2d at 1429.

6

Ser. No. 76439661

TrafFix Devices Inc., supra, 58 USPQ2d at 1005.7 The Court

further explained (in reference to the patented road sign

design at issue in TrafFix):

In a case where a manufacturer seeks to protect

arbitrary, incidental, or ornamental aspects of

features of a product found in the patent

claims, such as arbitrary curves in the legs or

an ornamental pattern painted on the springs, a

different result might obtain. There the

manufacturer could perhaps prove that those

aspects do not serve a purpose within the terms

of the utility patent. [The patent and its

prosecution history must be examined] to see if

the feature in question is shown as a useful

part of the invention.

TrafFix, supra, 58 USPQ2d at 1007.8 Professor McCarthy

notes in this regard: “Prior case law cautions that a

7

The “statutory presumption that features are deemed functional

until proved otherwise” to which the Court refers is applied in

trade dress infringement actions brought under Trademark Act

Section 43(a). See Trademark Act Section 43(a)(3), 15 U.S.C.

§1125(a)(3). In ex parte proceedings before the Board, by

contrast, the Office has the initial burden of establishing a

prima facie case of functionality. Likewise, the plaintiff in an

inter partes proceeding before the Board bears the initial burden

of establishing a prima facie case of functionality. If such

prima facie case is established, the burden then shifts to the

applicant (or registrant) to prove nonfunctionality. See Valu-

Engineering Inc., supra, 61 USPQ2d at 1429, and cases cited

therein. While the Section 43(a)(3) statutory presumption of

functionality is not applicable in Board proceedings, we

understand the Supreme Court’s instructions in TrafFix, quoted

above, to require us to regard a utility patent as “strong

evidence” entitled to “great weight” in our determination of

whether the Office (or an inter partes plaintiff) has established

a prima facie case of functionality. If such prima facie case is

supported by the existence of a utility patent claiming the

design feature(s) in question, the burden shifts to the applicant

(or registrant) to prove nonfunctionality.

7

Ser. No. 76439661

utility patent must be examined in detail to determine

whether the disclosed configuration is really primarily

functional or is just a non-functional shape that happens

to be described or pictured as an incidental detail in a

patent disclosure.” J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition, §7:89 (4th ed. 2006).

Similarly, as McCarthy notes at §7:89.1, the Court of

Customs and Patent Appeals has stated that “[a] patent may

not be evidence of functionality in regard to things of a

‘purely arbitrary’ or ‘mere design’ nature which happen to

be disclosed in the patent but which are not attributed any

functional significance therein.” Best Lock Corp. v.

Schlage Lock Co., 413 F.2d 1195, 162 USPQ 552, 556

(C.C.P.A. 1969).

However, if the patent discloses the functionality of

the design,

...this evidence is particularly entitled to

great weight if the patent was applied for by

the same person who now asserts trademark

significance in the same configuration. A kind

of estoppel arises. That is, one cannot argue

8

Professor McCarthy has pointed out that non-functional elements

of an invention, such as “arbitrary curves” or a painted

“ornamental pattern,” should not and do not appear in the claims

of a utility patent as asserted by the Supreme Court in the

quoted language; “[t]herefore, the Court must have been referring

to non-functional features that appear in a patent disclosure.”

J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition, §7:89 (4th ed. 2006).

8

Ser. No. 76439661

that a shape is functionally advantageous in

order to obtain a utility patent and later

assert that the same shape is non-functional in

order to obtain trademark protection.

Functional patent protection and trademark

protection are mutually exclusive. As one

court stated, when the configuration is

disclosed in a functional patent, and the

patent expires, the public “now has its

inning.”

McCarthy, supra, at §7:89.1.

Before we turn to the patent evidence in this case, we

must address applicant’s argument regarding the evidentiary

value to be accorded to the various portions of the patent.

Applicant argues (Supplemental Appeal Brief at 12-13) that

the Trademark Examining Attorney erred in looking to the

claims made in applicant’s patent, and implies that we too

should not or may not look to those claims in determining

functionality. Applicant cites In re Bose, 772 F.2d 866,

227 USPQ 1 (Fed. Cir. 1985), where the court stated:

The board did not err in looking to the

patents, as it stated, only insofar as the

disclosure contained “evidence of the

functionality of the outline shape sought to be

registered as a trademark.” In re Deister

Concentrator Co., 289 F.2d 496, 501, 129 USPQ

314, 319 (CCPA 1961). Cf. Cable Electric

Products, Inc. v. Genmark, Inc., [770 F.2d

1015], 226 USPQ 881, 891 [] (Fed. Cir.

1985)(readability of patent claims on structure

is not test of functionality for trademark

purposes).

9

Ser. No. 76439661

In re Bose, 227 USPQ at 6 (emphasis in original).

We are not persuaded by applicant’s argument. We note

that in the cited reference in In re Deister Concentrator

Co. (129 USPQ at 319), the court did not distinguish

between patent claims and patent disclosures, stating

merely that “[w]e, therefore, see no reason to consider

appellant’s patents except to the extent they may contain

evidence of the functionality of the outline shape sought

to be registered as a trademark.” Likewise, despite the

Bose court’s language in its Cable Electric Products

citation parenthetical quoted above, we note that the court

in Cable Electric Products had simply stated that

[i]n resolving the question of product design

functionality for purposes of the Lanham Act,

section 43(a), the fact finder is to consider

the appearance of the products in issue.

Reference to utility patent claims that are, or

have been, asserted to read on either product,

or to the appearance of the device depicted in

figures included in the patent specification

supporting such claims, must be done with

caution. ... Claims may be capable of reading

on many devices of strikingly different

configuration. Thus, even the fact that the

claims read on two commercial devices in the

marketplace is not support in itself for a

finding that one is a copy of the other or

confusingly similar thereto for section 43(a)

purposes. ... Hence, for purposes of

evaluating the existence or impact of product

copying, the relevance of patent figures

depends on the extent to which their appearance

is replicated in the actual marketplace product

10

Ser. No. 76439661

of the patentee. We have been shown no Ninth

Circuit precedent to the contrary.

Cable Electric Products, supra, 226 USPQ at 891 (emphasis

in original). The court’s analysis thus appears to relate

to the relevance of the patent claims to the confusing

similarity issue in a Section 43(a) false designation of

origin case, rather than to the pertinence, vel non, of the

patent claims to the functionality issue.

In any event, to the extent that the Bose court’s

above-quoted statement might be read as standing for the

proposition that patent claims are irrelevant to the

functionality determination, we believe that it is

superseded by the Supreme Court’s decision in TrafFix, in

which the Court repeatedly referred to a patent’s claims as

evidence of functionality. See TrafFix, 58 USPQ2d at 1005,

1006 (emphasis added): “[a] utility patent is strong

evidence that the features therein claimed are functional”;

“[w]here the expired patent claimed the features in

question, one who seeks to establish trade dress protection

must carry the heavy burden of showing that the feature is

not functional...”; “[i]n the case before us, the central

advance claimed in the expired utility patents (the

Sarkisian patents) is the dual-spring design”; “...the

strong evidentiary inference of functionality based on the

11

Ser. No. 76439661

disclosure of the dual-spring design in the claims of the

expired patents”; “[t]he rationale for the rule that the

disclosure of a feature in the claims of a utility patent

constitutes strong evidence of functionality is well

illustrated in this case.”

Finally, although we may and must look to the patent’s

claims in determining functionality, we are not limited to

review of the claims. As noted by Professor McCarthy in

his discussion of TrafFix, “...while the Court continually

talked about the evidentiary weight of what appeared in the

patent claims, in fact the Court did not restrict the

evidentiary use of a utility patent to its claims. The

Supreme Court used both disclosures in the specification

and argument made in the prosecution history as persuasive

evidence of functionality.” McCarthy, supra, at §7:89.

Likewise, McCarthy notes that “[i]t is proper to look to

the disclosure (as distinguished from the claims) in a

utility patent as evidence of the functionality of a shape.

The Trademark Board has held that each embodiment of the

invention described in a utility patent is equally

functional for purposes of trademark law.” McCarthy,

supra, at 7:89.1, citing In re Bose, supra, and In re

Edwards Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999).

12

Ser. No. 76439661

Thus, in this case, we have reviewed applicant’s

utility patent as a whole, including its claims, in

determining functionality under the first Morton-Norwich

factor.

The evidence of record in this case includes

applicant’s now-expired U.S. Patent No. 4,774,938. We have

examined this utility patent in detail, and we set forth

below what we deem to be those excerpts from the patent

which are pertinent to our analysis and/or helpful to the

reader in understanding applicant’s invention:

SLOW RECOVERY EARPLUG WITH LARGELY IMPENETRABLE

SURFACE

ABSTRACT

An earplug of the slow recovery type is

described, which has open cells for expelling

gas to the outside during compression, but

which resists the entry of water through the

outside and the soiling of the outside by dirt.

The earplug includes a body formed of pressure-

molded slow recovery resilient foam material

forming multiple gas-filled shells. The plug

body has a surface region forming a skin

wherein the average cell cross-sectional area

is less than half that of cells at the center

of the body, and is less than one-tenth

millimeter, the surface region being primarily

continuous.

BACKGROUND OF THE INVENTION

Slow recovery earplugs, such as the type

described in U.S. Pat. No. Re. 29,487 have

gained wide acceptance. Such earplugs can be

13

Ser. No. 76439661

rolled in the fingers to a small diameter,

inserted into the ear, and allowed to expand

over a period of between a few seconds to a few

minutes to completely fill the end of the

user’s ear canal. Such earplugs have been

previously formed by punching cylinders out of

a thick sheet of slow recovery material, which

is generally an open cell foam that allows air

to escape when squeezing the earplug before

insertion. Such earplugs easily pick up water

or other fluids which hamper their use. Also,

the multiple cut cells at the surface tend to

pick up dirt, especially when a worker with

dirty hands rolls the earplug between his

fingers to compress it prior to insertion. A

slow recovery earplug which resisted soiling

and the pickup of water at its surface would be

more sanitary and have a longer lifetime of

use.

(Column 1, lines 1-23.)

SUMMARY OF THE INVENTION

In accordance with one embodiment of the

present invention, a slow recovery earplug is

provided, which resists soiling especially

during squeezing of the earplug to fit into the

ear. The earplug includes a main body formed

of pressure-molded slow recovery resilient foam

plastic material that forms multiple gas-filled

shells. The average cell diameter within the

body decreases at locations progressively

closer to the outside surface of the earplug,

to provide a somewhat smooth surface which is

devoid of large cells that could pick up dirt.

The surface region forms a smooth skin that is

largely imperious [sic – impervious] to solid

and liquid contaminants. ...

The novel features of the invention are set

forth with particularity in the appended

claims. The invention will be best understood

from the following description when read in

conjunction with the accompanying drawings.

(Column 1, lines 25-42.)

...

14

Ser. No. 76439661

DESCRIPTION OF THE PREFERRED EMBODIMENT

Fig. 1 illustrates a slow recovery earplug

10 which includes a largely bullet-shaped main

body portion 12 and a flared rear end 14. As

indicated in Fig. 2, the main body portion is

designed to be compressed to the configuration

shown at 12A (FIG. 2) so it can be inserted

into the ear canal C of a person. During a

period of about one minute, the earplug expands

to near its uncompressed configuration, and

presses against the walls of the ear canal to

block noise. ...

(Column 1, line 62 to Column 2, line 5. Emphasis

added.)

...

The present earplug 10 is pressure molded

from a slow recovery urethane foam material.

This is accomplished by mixing the foam

materials, placing them in a mold having a

cavity of the shape shown in FIG. 1, and

closing the mold, with a very small opening for

escape of air such as a slit of about 0.2

millimeters width. The amount of foamable

material is sufficient to fill a cavity of a

volume greater than that of the finished

15

Ser. No. 76439661

earplug, so the material expands to the full

size of the cavity and then presses with

considerable pressure against the walls of the

cavity. ...

(Column 2, lines 18-28. Emphasis added.)

...

The flanged or flared rear end 14 of the

earplug limits the depth of insertion of the

earplug into the ear, and also provides a

region to be grasped to remove the earplug from

the ear canal. Because of the flange, users

tend to roll only the bullet-shaped or largely

cylindrical body 12, while leaving the flanged

end 14 at its full size. This reduces the

possibility of deep insertion of the compressed

earplug into the ear, and it reduces the

difficulty of removing the earplug. ...

(Column 3, lines 27-35. Emphasis added.)

...

What is claimed is:

1. An earplug comprising:

an earplug body having a main body portion

forming a largely cylindrical outer surface and

constructed to enable its reception in the ear

and having outer walls adapted to directly

contact the surface of the ear canal, said body

formed of pressure-molded slow recovery

resilient foam plastic material forming

multiple gas-filled open cells which permits

rolling of the main body portion to a

temporarily reduced diameter, with the average

cross-sectional area of cells being less near

substantially the entire largely cylindrical

surface of the main body portion than at the

middle of the cross-section of the main body

portion, said out walls being porous to allow

the escape of air.

2. The earplug described in claim 1

wherein:

said plastic material is a urethane foam which

has been molded under a pressure of at least

about 0.5 psi in a closed mold.

16

Ser. No. 76439661

3. The earplug described in claim 1

wherein:

said largely cylindrical main body portion has

a predetermined length and has a diameter of

about 11 millimeters along most of its length,

and said body is formed of urethane foam.

4. The earplug described in claim 1

wherein:

said body has a flared rear end of greater

diameter than said main body portion, said main

body portion having a predetermined length and

being of substantially uniform width along most

of its length, whereby to encourage rolling of

only the main body portion but not the rear

end.

5. An earplug comprising:

an earplug body having a largely bullet-shaped

main body portion having an outer surface of a

substantially circular cross-section of a width

of about 11 millimeters for fitting into a

human ear canal, and having a flared rearward

portion of greater diameter than said main body

portion, said body constructed of a pressure-

molded slow recovery urethane foam forming

multiple cells;

said main body portion having numerous gas-

filled visible open cells that are each of a

diameter of a plurality of thousandths inches,

the average cross-sectional area of said

visible open cells in a region within one-half

millimeter of said substantially circular outer

surface being less than half the average cell

cross-sectional area of said visible cells

within the central 5 millimeters of the width

of said main body portion.

6. The earplug described in claim 5

wherein:

said visible cells include a plurality of

large cells of diameters of a plurality of

tenths of millimeters, in each square

millimeter of said central 5 millimeters of

width; and

said main body portion has a pressure-molded

skin of a thickness on the order of one-

twentieth millimeter, which is substantially

continuous.

(Column 4, line 29 to column 6, line 10. Emphasis added.)

17

Ser. No. 76439661

It appears that a primary focus of the patented

invention is the composition of the foam material out of

which the earplug is formed (i.e., the foam consists of

gas-filled cells which are larger in the center of the

earplug than at the outside surface of the earplug, in

order to better resist soiling and the pickup of water).

However, it is clear that the patent also specifically

discloses and claims the functional advantages of the shape

of the earplug, i.e., the shape depicted in applicant’s

trademark application drawing and in applicant’s

description of the mark. That description of the mark

states that “[t]he mark consists of a bullet-shaped earplug

with a vertical axis, a rounded bottom, and a radially

outwardly flared top.” Claim 5 of the patent, in very

similar terms, claims “an earplug comprising: an earplug

body having a largely bullet-shaped main body portion ...

and having a flared rearward portion of greater diameter

than said main body portion.” (Column 4, lines 62-68.)

The patent’s Description of the Preferred Embodiment

likewise specifically identifies an earplug which includes

“a largely bullet-shaped main body portion 12 and a flared

rear end 14” (Column 1, lines 65-67), and states that the

earplug is formed by placing the foam materials “in a mold

18

Ser. No. 76439661

having a cavity of the shape shown in FIG. 1” (Column 2,

lines 19-21).

The elements of the shape of the earplug, as disclosed

and claimed in the patent, are not arbitrary or ornamental

flourishes, nor are they merely incidental to the design

and function of the earplug. Claim 1 specifies that the

main body portion of the earplug has “a largely cylindrical

outer surface” which is “constructed to enable its

reception in the ear and having outer walls adapted to

directly contact the surface of the ear canal.” (Column 4,

lines 30-35.) The cylindrical shape thus is not arbitrary

or ornamental but instead serves an essential function,

i.e., it allows the body of the earplug to directly contact

the surface of the human ear canal, which likewise is

cylindrical in shape. (FIG. 2 at C.) The patent

repeatedly refers to the cylindrical shape of the main body

portion of the earplug.

Likewise, the flanged or flared rear end of the

earplug is not an arbitrary or incidental design flourish,

but rather is essential to the proper functioning of the

earplug. “Because of the flange, users tend to roll only

the bullet-shaped or largely cylindrical body 12, while

leaving the flanged end 14 at its full size. This reduces

the possibility of deep insertion into the ear, and it

19

Ser. No. 76439661

reduces the difficulty of removing the earplug.” (Column

3, lines 30-35.) See also Claim 4, which specifies that

the earplug “has a flared rear end of greater diameter than

said main body portion, ... whereby to encourage rolling of

only the main body portion but not the rear end.” (Column

4, lines 56-61.)

In the patent’s Description of the Preferred

Embodiment, the text at Column 1, line 68 to column 2, line

5, reads as follows:

As indicated in Fig. 2, the main body portion

is designed to be compressed to the

configuration shown at 12A (FIG. 2) so it can

be inserted into the ear canal C of a person.

During a period of about one minute, the

earplug expands to near its uncompressed

configuration, and presses against the walls of

the ear canal to block noise.

Applicant repeatedly argues that this language establishes

that the shape of its earplug is not essential to the use

or purpose of the earplug, and thus is not functional under

the law, because it shows that “any shape, formed of slow

recovery foam material, will work, provided it is larger

than the ear canal.” (Supplemental Appeal Brief at 3, 6,

10, 13, 15, and 17.) Applicant argues that the description

in the patent refers to the “bullet-shaped main body

portion” and the “flared rear end” only incidentally, and

20

Ser. No. 76439661

notes that the Abstract in the patent describes the

invention without mentioning these features. Applicant

argues that claims 1-4 of the patent likewise make no

mention of the “bullet-shaped main body portion,” and that

they therefore are not limited to earplugs having such a

configuration.

We are not persuaded by these arguments. Rather, we

find that applicant’s expired utility patent is strong

evidence of the functionality of the earplug configuration

applicant seeks to register. The bullet-shaped main body

portion is one of only a few possible reasonable variations

of the “cylindrical” shape repeatedly claimed and disclosed

in the patent. The bullet-shaped main body (which allows

for direct contact with the cylindrical surface of the ear

canal) and the flared rear end (which helps prevent too-

deep insertion and assists in removal of the earplug) are

specifically claimed in Claim 5 of the patent, and are

specifically disclosed in the first sentence of the

patent’s Description of the Preferred Embodiment. These

features are more than merely de facto functional; rather,

the patent shows that the earplug is in this shape because

it works better in this shape. Both the disclosures and

the claims of the patent reveal that the shape of the

earplug is not a mere arbitrary, ornamental or incidental

21

Ser. No. 76439661

flourish, but rather serves an essential function in the

use of the earplug, and affects the quality of the earplug.

In short, applicant’s expired utility patent

demonstrates the utilitarian advantages of the earplug

design at issue, and we find that the first Morton-Norwich

factor accordingly weighs heavily in favor of a finding of

functionality.

There is no evidence of record showing that applicant

touts the utilitarian advantages of its earplug design in

its advertisements, nor that the design results in a

comparatively simple or cheap method of manufacturing the

product. The second and fourth Morton-Norwich factors

accordingly do not support a finding of functionality in

this case, and these factors are neutral in our analysis.

The third Morton-Norwich factor contemplates

consideration of evidence of the availability to

competitors of functionally equivalent designs. Regarding

the applicability of this factor after the Supreme Court’s

decision in TrafFix, the Federal Circuit has noted, first,

that the Court in TrafFix

reaffirmed the “traditional rule” of Inwood

that “a product feature is functional if it is

essential to the use or purpose of the article

or if it affects the cost or quality of the

article.” The Court further held that once a

product feature is found to be functional under

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Ser. No. 76439661

this “traditional rule,” “there is no need to

proceed further to consider if there is

competitive necessity for the feature,” and

consequently “[t]here is no need ... to engage

... in speculation about other design

possibilities. ... Other designs need not be

attempted.”

Valu Engineering Inc. v. Rexnord Corp., supra, 61 USPQ2d at

1427. (Citations omitted.) The Federal Circuit then

continued:

Nothing in TrafFix suggests that consideration

of alternative designs is not properly part of

the overall mix, and we do not read the Court’s

observations in TrafFix as rendering the

availability of alternative designs irrelevant.

Rather, we conclude that the Court merely noted

that once a product feature is found functional

based on other considerations9 there is no need

to consider the availability of alternative

designs, because the feature cannot be given

trade dress protection merely because there are

alternative designs available. But that does

not mean that the availability of alternative

designs cannot be a legitimate source of

evidence to determine whether a feature is

functional in the first place.

Id.

In this case, as discussed above, we find that

applicant’s expired utility patent, which specifically

discloses and claims the utilitarian advantages of

9

The Federal Circuit’s footnote 5, inserted at this point in the

quoted language, reads: “For example, a feature may be found

functional where the feature ‘affects the cost or quality of the

device.’ TrafFix, 121 S.Ct. at 1263.”

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Ser. No. 76439661

applicant’s earplug configuration and which clearly shows

that the shape at issue “affects the ... quality of the

device,” is a sufficient basis in itself for finding that

the configuration is functional, given the strong weight to

be accorded such patent evidence under TrafFix. Thus,

under the Supreme Court’s TrafFix test as interpreted by

the Federal Circuit in Valu Engineering, because these

“other considerations” (i.e., the disclosures and claims of

the patent) establish the functionality of the design,

“there is no need to consider the availability of

alternative designs, because the feature cannot be given

trade dress protection merely because there are alternative

designs available.” Valu Engineering, supra, 61 USPQ at

1427.

However, even if we consider the evidence of

alternative designs that appears in the record, we conclude

that such evidence is insufficient to overcome the contrary

evidence of the functionality of applicant’s design as

specifically disclosed and claimed in applicant’s expired

utility patent, giving due weight to the patent as required

by TrafFix.

Applicant has submitted a photograph of eight earplugs

of various shapes, along with the drawings from twenty

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Ser. No. 76439661

design patents for earplugs.10 Many of these alternative

earplug designs do not appear to be functional equivalents

to applicant’s design because they lack either (or both) of

the design features claimed and disclosed in applicant’s

expired utility patent, i.e., the cylindrical main body

portion which allows the earplug to conform to the shape of

the human ear canal, and the flared rear end which helps

prevent too-deep insertion of the earplug and which aids in

removing the earplug. Applicant’s earplug shape clearly is

one of but few possible alternative designs which provide

these features and serve these functions.

However, even if some of these alternative designs are

deemed to be functionally equivalent designs and thus are

evidence in support of a finding of non-functionality, we

find that this evidence is simply outweighed, in our

functionality analysis, by the clear and strong evidence of

10

These are U.S. Patent Nos. D329,897, D335,342, D340,282,

D341,656, D423,664, D307,635, D253,723, D371,840, D89,947,

D97,038, D195,322, D234,321, D235,483, D236,162, D242,743,

D264,249, D262,491, D273,614, D296,524 and D298,356. Only the

first six of these patents covers earplugs formed of slow

recovery resilient foam material; the other fourteen are not

formed of such material. The significance of this distinction is

not explained by applicant or readily apparent, but applicant

filed an Addendum to Supplemental Brief in which it took pains to

make the distinction, and in its briefs applicant repeatedly

describes as relevant alternative designs only those earplugs

which are made of slow recovery resilient foam material. (See

Supplemental Appeal Brief at 3, 6, 10, 13, 15, and 17.) In an

abundance of caution, however, we have considered all twenty

design patents in our analysis under the third Morton-Norwich

factor.

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Ser. No. 76439661

functionality contained in applicant’s expired utility

patent.

For the reasons discussed above, we find that the

earplug design depicted in applicant’s trademark

application drawing is functional. Although there is no

evidence of functionality under the second and fourth

Morton-Norwich factors, and even if we consider the

alternative design evidence of record under the third

Morton-Norwich factor, we find that the strong evidence of

functionality disclosed by applicant’s expired utility

patent, under the first Morton-Norwich factor and in

accordance with the Supreme Court’s decision in TrafFix,

simply outweighs any contrary evidence which might support

a finding of non-functionality.

Applicant’s utility patent for the earplug has

expired, and we are not persuaded by applicant’s contention

that the earplug configuration, with its functional

advantages as disclosed and claimed in the patent, is now

entitled to trademark registration. Rather, we find that

the evidence of record establishes, prima facie, that

applicant’s design is functional, and that applicant has

failed to rebut that presumption. Registration of the

design as a trademark is barred under Trademark Act Section

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Ser. No. 76439661

2(e)(5), and we affirm the Trademark Examining Attorney’s

refusal on that ground.

Acquired Distinctiveness

Because applicant’s design is functional, any evidence

of distinctiveness is of no avail to applicant in support

of registration. See TrafFix, supra, 58 USPQ2d at 1007

(“Functionality having been established, whether MDI’s

dual-spring design has acquired secondary meaning need not

be considered”). See also M-5 Steel Mfg. Co. v. O’Hagin’s

Inc., 61 USPQ2d 1086 (TTAB 2001). However, in the interest

of completeness, should applicant appeal and ultimately

prevail on the issue of functionality, we also shall

consider applicant’s contention that its design has

acquired distinctiveness and thus is registrable pursuant

to Trademark Act Section 2(f).

A product configuration is not inherently distinctive,

and (if non-functional) may be registered on the Principal

Register only upon a showing of acquired distinctiveness

under Section 2(f). See Wal-Mart Stores, Inc. v. Samara

Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000). The

burden of establishing acquired distinctiveness is on the

applicant, who must establish acquired distinctiveness by a

preponderance of the evidence. Yamaha International

27

Ser. No. 76439661

Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6

USPQ2d 1001 (Fed. Cir. 1988).

In support of its acquired distinctiveness claim,

applicant relies on the July 24, 2003 declaration of

applicant’s vice-president, Mark Hampton. In the

declaration, Mr. Hampton states: that he believes that the

earplug design has become distinctive as a mark due to

applicant’s substantially exclusive and continuous use for

over fifteen years; that, in the years 2000-2002, applicant

sold a total of over one billion earplugs incorporating the

design in the United States, and sold over 294 million

earplugs to purchasers outside the United States; that

sales of the earplugs have been made in all fifty states,

to hundreds of customers; and that applicant’s advertising

expenditures over the past three years (dating from July

2003) were approximately $1,564,000.

Also of record are samples of applicant’s

advertisements. One includes a prominently-featured logo

depicting MAX® in stylized letters, a large picture of the

earplug, and the following text:

Maximum Security

MAX® disposable earplugs control the toughest

noise problems. Their NRR33 rating provides

the highest protection available anywhere. The

ultra-soft, contoured polyurethane foam is easy

on the ears. And the price is easy on any

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Ser. No. 76439661

budget. For protection, for comfort, for

value, MAX rules.

Try 100 pairs of MAX earplugs FREE. Just call

877.618.1905. You’ll like what you don’t hear.

Another advertisement likewise includes the stylized MAX®

logo in large size, a picture of the goods, and the

following text:

The highest NRR rating available!

MAX (NRR 33) pre-shaped foam earplugs feature a

smooth outer skin for maximum user comfort.

The NRR 33 rating makes the MAX the best-

selling highest-rated disposable earplug in the

U.S. The smooth, soil-resistant skin helps

prevent dirt from penetrating the surface prior

to insertion. Attenuation tested in accordance

with ANSI S3.19-1974. Coral color, packed in

poly bags.

This advertisement then identifies various models as

follows: MAX-1, MAX-1-PB, MAX-30, MAX-30-PB and MAX-5.

Applicant also has submitted a photograph of its trade show

booth, at which is featured a large sign bearing a

photograph of the earplug along with text which we cannot

discern. Applicant’s specimens of record are packaging for

the earplugs, which bears the stylized logo mark MAX® in

large size along with a drawing of the goods.

We find that the evidence of record fails to

establish, prima facie, that applicant’s earplug

configuration has acquired distinctiveness as a trademark.

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Ser. No. 76439661

Applicant’s claim of substantially exclusive11 and

continuous use for over fifteen years does not suffice, in

this case, to demonstrate acquired distinctiveness. See In

re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001)(sixty-

six years of use insufficient to establish acquired

distinctiveness). Applicant’s asserted U.S. sales12 of over

one billion units in the years 2000-2002 is not

particularly probative evidence of acquired

distinctiveness, because although this seems like a large

number, we cannot determine on this record what percentage

of the market this number makes up. See id. (“As for the

sales of 10,000 in a two-year period, again there is no

evidence to show whether this is a large number of sales of

guitars vis-à-vis the sales of other companies”).13

Moreover, although the sales figures might demonstrate that

applicant has been successful in marketing its earplugs and

11

We note that a few of the “alternative designs” submitted by

applicant appear to look very similar to applicant’s design, but

we have no evidence as to the extent of use of these other

designs or what effect their marketing might have had on

applicant’s claim of acquired distinctiveness.

12

Applicant’s sales of earplugs outside the United States are not

probative evidence on the question of acquired distinctiveness in

the United States.

13

We note that one of applicant’s advertisements asserts that

“[t]he NRR 33 rating makes the MAX the best-selling highest-rated

disposable earplug in the U.S.” We find that this statement,

even assuming its accuracy, is too vague and qualified to be

reliable proof of applicant’s share of the market for earplugs.

30

Ser. No. 76439661

that customers find applicant’s earplugs to be quality

merchandise worth purchasing, we cannot determine, from the

sales figures, that purchasers view the shape of the

earplug as a mark.

Applicant’s asserted advertising expenditure of over

$1.5 million in the past three years likewise does not

persuade us that applicant’s earplug configuration has

acquired distinctiveness as a trademark. Indeed, there is

nothing in applicant’s advertisements or packaging from

which we could determine that purchasers have been

conditioned or educated to look to the shape of the

earplugs, per se, as a source indicator. The

advertisements include no “look for” instructions which

might encourage purchasers to view the shape of the earplug

as a trademark. Secondary meaning occurs when “in the

minds of the public, the primary significance of [the

configuration] is to identify the source of the product

rather than the product itself”. Wal-Mart Stores, Inc.,

supra, 54 USPQ2d at 1068. The photographs or drawings of

the earplugs contained in applicant’s advertisements and

packaging would be used by purchasers to identify the

product itself, and not the source of the product.

Although applicant is correct in contending that goods may

be sold under more than one mark, in this case applicant’s

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Ser. No. 76439661

advertisements and packaging encourage purchasers to view

only the designation MAX® as the trademark for the goods;

the shape of the goods would not be perceived as a mark.

In short, assuming that applicant’s earplug design is

not functional, we find that applicant has failed to

establish, prima facie, that the design has acquired

distinctiveness as a trademark. The design therefore is

not registrable on the Principal Register pursuant to

Section 2(f).

Decision: The Section 2(e)(5) functionality refusal

is affirmed. Alternatively, we affirm the refusal on the

ground that the configuration, if not functional, is non-

distinctive and has not acquired distinctiveness.

32