Duramax Marine, LLC v. R.W. Fernstrum & Company

This Opinion is

Citable as Precedent

Hearing: Mailed:

of the TTAB

July 12, 2005 August 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Duramax Marine, LLC

v.

R.W. Fernstrum & Company

_____

Opposition No. 91119899

to application Serial No. 75701707

filed on May 10, 1999

_____

D. Peter Hochberg of D. Peter Hochberg Co., L.P.A. for

Duramax Marine, LLC.

Marc A. Bergsman and Samuel D. Littlepage of Dickinson

Wright PLLC for R.W. Fernstrum & Company.

______

Before Grendel, Rogers and Zervas,

Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

R.W. Fernstrum & Co. [applicant] seeks to register the

depiction shown below as a service mark in International

Class 40, for services identified as “manufacture of marine

heat exchangers to the order and specification of others”

[hereinafter may be referred to as applicant's custom

manufacturing services]. The application was filed on May

10, 1999, claiming 1975 as the date of first use of the

mark, and first use of the mark in commerce, in connection

Opposition No. 91119899

with the services. Applicant also alleges first use of the

mark in another form as of 1955, and that such use was in

commerce. A description of the proposed mark states that

"the mark consists of a drawing of a marine heat exchanger."

Registration is sought under Section 2(f) of the Trademark

Act, 15 U.S.C. § 1052(f) ("Except as expressly excluded in

[other] subsections … nothing herein shall prevent the

registration of a mark used by the applicant which has

become distinctive of the applicant's goods in commerce.").

Pleadings in the Opposition

Duramax Marine, LLC [opposer] has filed a notice of

opposition. Opposer asserts it "is now and has been engaged

in the manufacture and sales [sic] of external cooling

systems for marine engines" and that such systems "are

commonly called keel coolers." Amended Opposition ¶ 1.

(Both parties have referred to marine heat exchangers as

"keel coolers"; so shall we.1) Opposer asserts that

1

For the reader unfamiliar with keel coolers, in the image

comprising the proposed mark, the two smokestack-like vertical

2

Opposition No. 91119899

applicant and other companies manufacture and sell keel

coolers "having a flat, grid like surface formed by uniform

and parallel spaced rectangular tubes"; that keel coolers so

designed have been a "success"; and that, when applicant's

patents covering keel cooler designs expired, opposer began

copying the designs in the expired patents and engaging in

"direct competition" with applicant. Opp. ¶ 2. Opposer

also asserts it has become "widely known" for its marine

products, including keel coolers, and has a "favorable

reputation." Opp. ¶ 3.

In regard to applicant and its business, opposer

asserts that applicant has been manufacturing and selling

keel coolers "like that" shown by the proposed mark "for

over fifty years"; that the keel cooler shown by the mark is

"very similar" to the "detailed drawing of a functional"

keel cooler in U.S. Patent No. 4,338,993; that applicant has

used "views and drawings" of keel coolers "like that" of the

extensions on either end of the keel cooler are inflow and

outflow connections, through which fresh water or a mix of fresh

water and antifreeze flow. The water or water/coolant mixture

cools the inboard engine of a boat, keeping the engine from

overheating. The heat created by the engine is carried by the

water or coolant mixture from the engine compartment to the keel

cooler, the external surface of which is exposed to the fresh or

salt water through which the boat is traveling. The heat

dissipates and the cooled water or coolant mixture is then

returned to the engine. The ends of the keel cooler are called

headers. When installed on or in the hull of a boat, the header

extensions through which water or the coolant mixture flow are

inside the hull and connected to the engine by tubing. The rest

of the keel cooler is outside the hull, so that it remains

exposed to the body of water through which the boat travels.

3

Opposition No. 91119899

proposed mark in a functional manner, for example, in

installation publications; that the mark "is nearly an exact

drawing" of a keel cooler applicant manufactures and sells

under the mark GRIDCOOLER; and that the mark is not an

arbitrary, fanciful or stylized keel cooler but "is a

picture of a functional and utilitarian product… and is…

equivalent to the utilitarian shape itself." Opp. ¶¶ 4-11.

Opposer also claims that the mark is "merely

descriptive of the goods with which it is used"; that

opposer and "at least" one other party make and market keel

coolers similar to applicant's mark; that there is no

distinction between applicant's keel cooler, the mark in the

application, and the keel cooler of "at least one other

independent manufacturer"; that if applicant obtained a

registration, opposer would not be able to "show drawings or

photographs" of its keel coolers; that opposer and others

"displaying and demonstrating" their keel coolers or

publishing "photographs or drawings" of keel coolers would

"run the risk of being sued for trademark infringement" by

applicant, if it obtained a registration; and, even though

the keel cooler designs of applicant "are in the public

domain," applicant could obtain "a perpetual monopoly in a

drawing of its design." Opp. ¶¶ 12-18.

In our construction of the amended opposition, set

forth above, we have read the pleading for its fair and

4

Opposition No. 91119899

reasonable import. For example, when opposer asserts in

paragraphs 9-11, respectively, "Applicant's application

Serial No. 75/701,707 does not…/is not…/is…," we have taken

these as references to the mark in the application and not

the application document per se. Also, as noted in the

Board's order of March 10, 2004, the Board interprets the

amended notice of opposition as setting forth claims that

the proposed mark is descriptive, is functional, and lacks

acquired distinctiveness.2

Applicant, in its amended answer to the amended

opposition, admitted paragraphs 1, 5, 7, 9-10 and 13 without

qualification. By the first three of these admissions,

applicant has admitted that opposer manufactures and sells

keel coolers, and that such keel coolers have "a flat, grid-

like surface formed by uniform and parallel spaced

rectangular tubes similar to those shown in" the drawing in

the involved application; that the drawing of the keel

cooler in the involved application is "very similar" to the

drawing of a keel cooler in U.S. Patent No. 4,338,993, which

"is a detailed drawing of a functional" keel cooler; and

that an "article has been written about Applicant" and it

included a photograph or drawing "very much like the drawing

2

Whether the proposed mark has acquired distinctiveness is

relevant only to the claim that the proposed mark is descriptive.

Matter that is functional under Section 2(e)(5) of the Trademark

Act is excluded from consideration for registration under Section

2(f) of the Trademark Act.

5

Opposition No. 91119899

in" the involved application. By its admission of

opposition paragraphs 9-10, applicant has admitted that its

mark "does not create an overall arbitrary and fanciful

impression," and "is not a stylized and fanciful

illustration of" the keel coolers "with which it is used."

Finally, applicant has admitted (opp. ¶ 13) that opposer and

"at least one other" party "have been marketing" keel

coolers "very similar to that shown in" the involved

application.

By certain partial or qualified admissions of

opposition paragraphs 2, 6 and 8, applicant has admitted

"that Opposer copied certain functional features of

Applicant's keel cooler product and that it is aware of one

other company (apart from Opposer) that has recently engaged

in the manufacture and sale of marine heat exchangers having

a flat, grid like surface formed by uniform and parallel

spaced rectangular tubes," although it denies that the

design of its keel cooler "is in the public domain"; has

admitted that it has used the document attached to the

opposition as exhibit B; and has admitted that the drawing

in the [involved] application depicts its GRIDCOOLER [keel

cooler] from a particular perspective."

Applicant has either expressly or effectively denied

all other allegations in the opposition. In addition, as an

affirmative defense, applicant has asserted that opposer "is

6

Opposition No. 91119899

estopped from now opposing or otherwise challenging the

federal registration of" the involved mark, because of a

"Settlement and Mutual Release Agreement." Applicant

attached a copy of the agreement to its answer, and it was

separately introduced into the record.

The Record

The extensive record developed at trial includes, from

opposer, a June 1, 2004 notice of reliance on a variety of

items, and testimony depositions from eight witnesses,

introducing 68 exhibits;3 and from applicant, six notices of

reliance and one testimony deposition (with exhibits).

In its notice of reliance, opposer states that it

relies on: copies of two registrations owned by applicant

(one for applicant's word mark GRIDCOOLER4 and the other for

a composite design mark5 showing a globe and a drawing of a

3

The total number of exhibits is smaller, as opposer has had

some of the exhibits discussed by multiple witnesses.

4

Registration No. 941,382, on the Principal Register, for

"external cooling system for marine engines and installed upon

the hulls of watercraft" (twice renewed).

5

Registration No. 2,357,354, on the Principal Register, for

"external cooling system for marine engines, namely, heat

exchangers" (affidavits under Sections 8 and 15 filed, pending).

7

Opposition No. 91119899

keel cooler that, if not the same as that in the involved

application, is very similar)(Tab A of the Notice of

Reliance); applicant's responses or revised responses to

various discovery requests (Tabs B, C and D);6 excerpts,

including exhibits, from the discovery depositions of,

respectively, Sean Fernstrum, applicant's vice president of

operations, and Paul Fernstrum, applicant's president and

CEO (Tab E); and certain materials presented as printed

publications or official records (Tab F). We note, however,

in regard to the items submitted under Tab F, that applicant

filed, and the Board granted, a motion to strike seven of

the thirteen items so submitted. As a result, the only

items remaining in the record from the Tab F group of

6

The materials under Tabs B and C are responses to

interrogatories and requests for admissions. The materials said

to be under Tab D were reported by opposer to comprise 296 pages

identified in a revised response to a certain document request

and documents relating to a survey conducted by applicant and

identified in response to a different document request.

As noted in the Board's order of August 10, 2004, opposer's

notice of reliance did not include the referenced 296 pages or

survey documents. As also noted in that order, a party is not

permitted to introduce, by notice of reliance, documents received

from an adverse party pursuant to requests for production. TBMP

Section 704.11 (2nd ed. rev. 2004). However, because the

parties' various evidentiary submissions involve some

duplication, the 296 pages of produced documents on which opposer

relies found their way into the record when introduced as exhibit

3 to the discovery deposition of Sean Fernstrum (Tab E of

opposer's notice of reliance); and the survey documents were

introduced by applicant into the opposed application file, during

its prosecution, and are also present in the file contents for

applicant's Registration No. 2,357,354, which was introduced into

the record for this proceeding by one of applicant's notices of

reliance. We note, too, that applicant's attorney stipulated to

the authenticity of the documents produced by applicant. See p.

202 of the discovery deposition of Sean Fernstrum.

8

Opposition No. 91119899

submissions are copies of five patents and the file history

of an abandoned trademark application filed by applicant,

Serial No. 75382250. In its brief, applicant refers to the

trademark application as the "abandoned application for the

configuration of the GRIDCOOLER."

The witnesses called by opposer to provide testimony

are Michael W. Brakey, president of Brakey Consulting, Inc.,

which has opposer as one of its clients; Jeffrey Leeson, a

member of opposer's engineering staff; Richard Lockhart,

opposer's sales manager; George Kyle McHugh, of McHugh

& Associates; Steven Garver, who identified himself as "in

charge of the Commercial Division" of an entity known as

Donovan Marine; David L. Culpepper, an attorney that

represented Donovan Marine in a legal action also involving

applicant; Todd P. Boudreaux, "owner/president" of East Park

Radiator; and Paul M. Boudreaux, owner and president of

Ashton Marine.

Applicant, by its notices of reliance, has introduced

additional excerpts from the discovery depositions of Sean

Fernstrum and Paul Fernstrum;7 the entire file history for

trademark Registration No. 2,357,354; copies of nine patents

intended to "demonstrate the variety of alternative designs

available for marine heat exchangers"; opposer's responses

to applicant's first set of requests for admissions; and a

7

See Trademark Rule 2.120(j)(4), 37 C.F.R. § 2.120(j)(4).

9

Opposition No. 91119899

notice of reliance on opposer's non-response to applicant's

fourth set of requests for admissions, which includes a

submission of many documents applicant intended opposer to

authenticate by responding to the specific requests for

admission.

Objections to Opposer's Brief, Evidence

Applicant, in its brief, has asserted objections to

Sections IV(B) and (C) of opposer's trial brief, claiming

that they are mere argument unsupported by evidence and are,

in any event, arguments with no relevance to the issues

presented by this case. We agree that the latter of the two

disputed sections, which focuses on a false advertising case

between the parties, is irrelevant to the issues presented

by this opposition. It has had no influence on our decision

of this case. Moreover, to the extent that opposer's

discussion of that civil action may have been intended to

help establish the reliability of Michael Brakey as a

witness in regard to issues present in this opposition, we

note that our assessment of his testimony, and applicant's

objections thereto, have not been influenced in any way by

opposer's recounting of the false advertising action, Mr.

Brakey's role therein or the disposition of that action.

In contrast, we find the section IV(B) discussion of

certain consolidated trademark and trade dress civil actions

relevant to this case, at least insofar as those cases

10

Opposition No. 91119899

resulted in a settlement agreement that applicant asserts

precludes opposer from pursuing this opposition. Applicant,

concerned that the discussion is nothing more than an

attempt to prejudice the Board against applicant, may rest

assured that opposer's discussion of those cases has not led

the Board to favor, or disfavor, either opposer's claims or

applicant's affirmative defenses in this opposition. The

claims and defenses in this case have been considered on

their merits.

More specifically, it is the settlement of the civil

actions that is placed in issue in this case by applicant's

affirmative defenses, not the claims, defenses or evidence

submitted in those civil actions. Because we find the

settlement agreement (Brakey exh. 10; Sean Fernstrum test.

dep. exh. 33) and the incorporated term sheet (Brakey exh.

9) from the civil actions clear enough to be interpreted

without resort to parol evidence as to the intent of the

parties that signed those items, we have had no need to

resort to testimony of any witnesses, or opposer's

discussion in its brief of such testimony, to discern the

relevance of the settlement agreement to this case.8 The

8

Opposer's representation in section IV(B) of its brief of

Michael Brakey as "an expert on keel coolers" "prepared to

testify" in the consolidated civil actions has not influenced our

consideration of his testimony in this opposition or of

applicant's objections thereto.

11

Opposition No. 91119899

agreement and incorporated term sheet are as relevant as

their words clearly indicate.

Applicant has also asserted numerous objections to

certain passages from the testimony of Michael Brakey, and

to exhibits introduced during the Brakey testimony

deposition. Applicant's first objection is to certain parts

of the Brakey testimony, as well as exhibit 11 (a copy of a

decision on a motion for a preliminary injunction issued in

a civil action), because they relate to the civil actions

which applicant asserts are irrelevant, and in particular,

exhibit 11 relates to the false advertising case. We have

already discussed the essence of this objection, above, in

relation to arguments in opposer's brief to which applicant

has objected, and need not repeat the discussion here. We

note, however, that to the extent Mr. Brakey was asked by

opposer's counsel to testify to the accuracy of the contents

of exhibit 11, the testimony was: "Having read this prior to

today and having skimmed over it, it seems to go right along

with my recollection of the trial or the hearing, I should

say maybe." "Maybe" is not definite testimony, and the

indefiniteness of the testimony may be viewed as providing

good reason not to accord any weight to this portion of the

Brakey testimony or associated exhibit 11. Regardless, we

stress that exhibit 11 and the associated testimony have not

been considered because they are irrelevant.

12

Opposition No. 91119899

Applicant's next objection to the Brakey testimony, and

related exhibits, is that he improperly testified as an

expert without ever having been identified by opposer, in

response to discovery requests from applicant, as an expert

to be called at trial. Applicant's objection manifested

itself in two different ways during the testimony deposition

of Mr. Brakey. First, when Mr. Brakey was discussing

applicant's involved application and a prior, abandoned

trademark application filed by applicant, applicant's

counsel objected on the basis that Mr. Brakey is not an

expert in trademark law. Second, when Mr. Brakey was

discussing structural elements of keel coolers,

predominantly applicant's keel coolers, applicant's counsel

objected on the basis that Mr. Brakey either was not

qualified as an expert or was not identified as an expert

that would be discussing keel cooler design at trial. The

objection that Mr. Brakey is not a trademark expert was not

maintained in applicant's brief, which only maintains an

objection to "Brakey's expert testimony regarding the

functionality of the GRIDCOOLER design." Thus, the first

basis for objection to the Brakey testimony and exhibits was

waived. The second objection, i.e., as to purported expert

testimony by Mr. Brakey on opposer's claim of functionality,

was maintained in applicant's brief but is largely

13

Opposition No. 91119899

irrelevant because little, if any of the Brakey testimony or

exhibits actually addresses the question of functionality.

Matter proposed for registration may be refused

registration, either ex parte or through presentation of

proper proof in an opposition, if the matter is shown to be

"essential to the use or purpose of the product or if it

affects the cost or quality of the product." See TrafFix

Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58

USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products

Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64

(1995); Inwood Laboratories, Inc. v. Ives Laboratories,

Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982). Thus,

for the Brakey testimony or exhibits which applicant finds

objectionable to be considered as testimony on

functionality, expert or otherwise, the testimony would at

least have to address these factors or matters of fact

relevant to these factors.9 We find that the focus of the

questions, testimony and exhibits occasionally wanders near

matters relevant to these factors, but never actually

addresses them. Much of the transcript of Mr. Brakey's

testimony is filled with arguments of counsel. See, for

example, the passage from the middle of page 65, where

9

We leave aside, for the moment, whether a claim of

functionality brought against an application to register matter

as a mark for services, rather than as a trademark for a product,

would require evidence of a different type.

14

Opposition No. 91119899

counsel for applicant interrupts the witness while he is

responding to a question, through the middle of page 71,

when counsel for opposer abandons any attempt to obtain a

complete answer to his question and, instead, moves on to

the next exhibit. Much of the transcript is also filled

with requests by counsel for opposer that Mr. Brakey review

and read from certain exhibits. Occasionally, the exhibits

contain statements that might be considered relevant to a

functionality inquiry, for example, brochures from applicant

which Mr. Brakey characterizes as discussing the merits or

advantages of applicant's keel coolers (p. 73), or

advertisements by applicant that state, "The FERNSTRUM

GRIDCOOLER® is the simplest and most dependable form of

fresh water cooling available." (p. 119, witness reading

from exhibit 5/AO). Mr. Brakey, however, does nothing more

than read from these exhibits, which had already been

entered into the record by opposer's notice of reliance, and

does not actually testify about whether features shown in

applicant's proposed mark are "essential to the use or

purpose of" custom-manufactured keel coolers or affect the

cost or quality of custom manufacturing services or the

resulting products. If the testimony of Mr. Brakey has any

probative value, it is limited to the question whether the

design proposed for registration is a realistic or stylized

depiction of an actual keel cooler. We therefore overrule

15

Opposition No. 91119899

applicant's objection that the testimony of Mr. Brakey

constitutes improper expert testimony on the question of

whether the matter proposed for registration is functional.

We also overrule applicant's objection to opposer's

introduction of Brakey exhibits 2-5. Exhibit 2 is the file

for the involved application, which is automatically of

record; exhibit 3 is the file for applicant's abandoned

application for the configuration of the GRIDCOOLER, which

was separately introduced by opposer's notice of reliance;

exhibit 4 is a catalog from applicant that was separately

introduced during the testimony of opposer's witness Richard

Lockhart10; and exhibit 5 consists of 145 pages of various

materials, of which all but one page have Bates numbers

matching materials produced by applicant and separately

entered into the record by opposer's notice of reliance on

portions of the discovery deposition of Sean Fernstrum, and

exhibits thereto.

We overrule applicant's objection to Brakey exhibit no.

7, a copy of expired U.S. Patent No. 4,338,993, issued to

applicant. Mr. Brakey's testimony was as follows: "Q. Are

you familiar with that patent? A. This one escapes my

10

Even though the catalog is one of applicant's, applicant

objected to its introduction during the Lockhart deposition on

the ground that opposer did not produce it during discovery.

This objection, if it had any merit, was not maintained in

applicant's brief and so the catalog is of record. Mr. Brakey

identified it as a catalog that came from a file maintained by

Mr. Lockhart.

16

Opposition No. 91119899

memory." (p. 127) Nor was his recollection refreshed when

counsel for opposer directed his attention to a different

patent, which cited to the patent in exhibit 7. (p. 128—"…I

may have seen this in the past, but I don't recollect it.").

Nonetheless, this particular patent was entered into the

record as an exhibit to the discovery deposition of Sean

Fernstrum. Thus, it is a moot point whether it also comes

in as an exhibit to the Brakey testimony deposition. Of

course, since Mr. Brakey was unable to testify about the

patent, its value, if any, is limited to what the patent

shows on its face.

Opposer's Standing

Applicant advances two arguments why opposer should not

be heard on the merits of its claims. First, applicant

asserts that opposer has no standing. There is no doubt,

however, that opposer and applicant are competitors; that

the keel cooler depicted by the proposed mark is identical,

or nearly so, to the depiction of a keel cooler in

applicant's expired U.S. Patent No. 4,338,993; and that

opposer has manufactured and marketed a keel cooler having

the same overall appearance as that depicted in the expired

patent.11 Nonetheless, applicant essentially argues that

11

Opposer, by failing to respond to a request for admission from

applicant, admitted that "the mark sought to be registered" by

the involved application "is not disclosed in [U.S.] Patent No.

4,338,993." "Disclosure" being a term of art in patent law, the

17

Opposition No. 91119899

opposer has contracted away its standing, asserting that

opposer agreed in a settlement agreement to limit the type

of keel cooler it would manufacture and advertise. Second,

applicant argues that the same settlement agreement that

resulted in opposer's relinquishment of its standing also

estops opposer from pursuing the opposition. Thus, while

applicant's two arguments are rooted in the same agreement,

i.e., the agreement settling various consolidated civil

actions, the arguments are different in kind.12

The Trademark Act allows for the filing of an

opposition to an application by any person, including a

juristic person, "who believes that he would be damaged by

the registration of a mark upon the principal register." 15

U.S.C. § 1063. See also, Young v. AGB Corp., 152 F.3d 1377,

47 USPQ2d 1752, 1755 (Fed. Cir. 1998). At the pleading

stage, an opposer must allege facts in support of both

standing and grounds for opposition. Young at 1755.

"Standing is the more liberal of the two elements and [if

admission is that the patent does not disclose a particular mark

proposed for registration. However, the similarities between the

drawing of the invention disclosed in the patent and the drawing

of a keel cooler in the involved application are unmistakable and

admitted by applicant. See Opp. ¶ 5 and applicant's

corresponding answer.

12

Opposer was not a party to the agreement, but it is undisputed

that a predecessor was. Consequently, we have referred to

opposer as if it were a party to the agreement. While the

parties dispute the effect of the agreement, there is no dispute

that whatever effects it has, it binds the parties to this

opposition.

18

Opposition No. 91119899

not admitted or conceded] requires only [proof] that the

party seeking cancellation [or opposing registration] is

likely to be damaged by the registration." Cunningham v.

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.

Cir. 2000).13 "A belief in likely damage can be shown by

establishing a direct commercial interest." Id.

Applicant's admission of paragraphs 1, 5 and 13, and

its partial admission of paragraph 2, of the amended notice

of opposition, would be sufficient to establish opposer's

commercial interest in this matter. Also, the record

provides evidence that would be sufficient to prove

opposer's interest even absent the admissions. Applicant

asserts, however, that it and opposer are parties to a

settlement agreement; that the agreement includes terms by

which opposer agreed to restrict itself to the manufacture

of a keel cooler of a type different from that which was

disclosed in applicant's expired patents and which applicant

continues to manufacture; and that opposer also agreed that

any advertising of its keel cooler would clearly depict the

cooler in a way that would show it to be different from

13

Young explains that the "linguistic and functional similarities

between the opposition and cancellation provisions of the Lanham

Act mandate" consistent construction. Young, 47 USPQ2d at 1755.

Thus, the Cunningham statement that standing is the more liberal

of the two main elements a plaintiff must plead is equally

applicable to oppositions.

19

Opposition No. 91119899

applicant's keel cooler. Opp. Br. pp. 23-27.14 In short,

applicant asserts that opposer agreed to manufacture only a

keel cooler with a beveled head, and to utilize advertising

that would "clearly display the beveled end(s) of the

header(s)" configured in accordance with the agreed

restrictions on manufacturing. Thus, applicant concludes,

opposer cannot be damaged by applicant's registration of the

depiction of a keel cooler that does not have beveled

headers, and opposer therefore lacks standing. We disagree.

As a competitor, opposer has an interest in seeing that

any other competitor in the field of keel cooler

manufacturing and sales does not register a depiction of a

keel cooler that is, assertedly, descriptive. Even assuming

that opposer is, by the settlement agreement, barred from

manufacturing a keel cooler in the form represented by the

depiction, the exclusive registration of assertedly

descriptive matter by a competitor might provide that

competitor with an advantage, for example, in marketing its

products. Cf. Eastman Kodak Co. v. Bell & Howell Document

Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed.

Cir. 1993) (Board found standing in opposer even though

14

The settlement agreement was introduced into the record

numerous times, including through the Brakey and Culpepper

testimony depositions taken by opposer and the Sean Fernstrum

testimony deposition taken by applicant. The term sheet that

served as the basis for the settlement agreement was introduced

through the Brakey and Culpepper depositions.

20

Opposition No. 91119899

proposed marks sought to be registered by applicant, and

challenged by opposer as descriptive, were not in use by

either party, having been applied for under intent to use.

Though the Board dismissed the claim of descriptiveness by

opposer, a competitor, without prejudice to later filing of

a cancellation case if the proposed marks should eventually

be registered, and appeal was taken from such dismissal, the

standing determination was not challenged or reviewed on

appeal).

In addition, the settlement agreement contemplates a

possible future right of opposer to manufacture and sell

keel coolers without being restricted to the type with a

beveled header, i.e., it could one day manufacture and sell

a keel cooler looking like that depicted in applicant's

expired patent and in the proposed mark. See Settlement

Agreement ¶ 11. If, however, that right did not arise until

more than five years after applicant's mark were registered,

and if the registration were asserted against opposer,

opposer would be barred by the Lanham Act from then

challenging the mark as descriptive. See 15 U.S.C. § 1064.

Opposer's prospective interest in one day using the proposed

mark, is a sufficient pleading of standing. Cf. Windsurfing

International Inc. v. AMF Inc., 828 F.2d 755, 4 USPQ2d 1052

(Fed. Cir. 1987) (The Federal Circuit distinguishes USPTO

proceedings from declaratory judgment actions in the federal

21

Opposition No. 91119899

district courts, explaining that those courts do not issue

advisory opinions and mere interest alone by a competitor

does not establish standing to initiate a declaratory

judgment action).15

Accordingly, we find that opposer has sufficiently

pleaded standing to pursue the opposition. Moreover, we

find the record to contain sufficient proof of the

allegations related to standing. We therefore must consider

applicant's alternative argument that opposer is nonetheless

estopped from pursuing the opposition by virtue of the

settlement agreement.

Equitable Estoppel

For this argument, applicant correctly observes that

the settlement agreement, in paragraph 15, specifies that

applicant would withdraw, with prejudice, its application

"to federally register the configuration of its one-piece

keel cooler product as a trademark" but that this paragraph

15

In contrast, we reject opposer's argument that it might, even

while bound by the agreement and while manufacturing keel coolers

with beveled heads, utilize drawings or pictures of a keel cooler

in marketing materials or installation manuals that would not

clearly show the beveled header, that this might prompt applicant

to assert a registration of the involved mark against opposer,

and therefore opposer would be damaged by issuance of the

registration. This argument regarding standing contemplates

opposer doing, while bound by the agreement, that which it has

expressly agreed to not do, i.e., utilize marketing materials

which fail to show that its keel coolers have a beveled header.

Opposer's standing can in no way be derived from this posited set

of circumstances and is derived only from the circumstances we

discuss above.

22

Opposition No. 91119899

also provides that "[n]othing herein shall preclude

[applicant] from seeking to register, in two dimensional

design format, its trademark logo featuring its one-piece

keel cooler as part of said design."

At this point, a bit more explanation is in order about

the relationship of applicant's abandoned configuration mark

application, the nature of the civil actions, the settlement

of the civil actions, and applicant's filing of two other

applications, including the involved application. Some of

these subjects have been alluded to already in this

decision. The explanation is derived from various materials

in the record.

Applicant's prior configuration application sought

registration of aspects of trade dress in the nature of

product design, i.e., the application sought to register

some aspects of the overall design of a particular style of

keel cooler produced by applicant.16 That particular style

is illustrated by the drawing of the involved application,

but in the configuration application, the unclaimed features

of the overall design were displayed in broken or dotted

lining. The configuration application naturally sought

registration of the claimed aspects of the trade dress for

actual keel coolers, not custom manufacturing of keel

16

The application sought registration on the Principal Register,

under Section 2(f) of the Lanham Act.

23

Opposition No. 91119899

coolers. Three parties, including opposer, opposed that

application and the oppositions were pending when the same

parties were involved in the civil actions. Thus, when

applicant agreed, in the agreement settling those actions,

to withdraw with prejudice its configuration application, it

resulted in the three oppositions being sustained. The

civil actions were settled by the parties first agreeing to,

and signing, a term sheet. The final signature, by opposer,

was added May 10, 1999. Later, in July 1999, a more

detailed settlement agreement was signed.

Applicant filed the application involved in this

opposition on May 10, 1999, i.e., on the date the final

signature was added to the settlement term sheet by opposer.

A few weeks later, on May 28, 1999, applicant filed

application Serial No. 75715815, for the mark shown, supra,

in footnote 5. The marks in these two applications both

include what applicant asserts is a two-dimensional line

drawing of a keel cooler and what opposer believes to be a

very realistic and accurate depiction of one model of keel

cooler produced by applicant. The mark in the later-filed

of the two applications, however, also included an image of

a globe, set as a backdrop for the image of the keel cooler.

Another difference between the two applications is that the

involved application seeks registration of the keel cooler

image for keel cooler custom-manufacturing services, while

24

Opposition No. 91119899

the application with the composite globe and keel cooler

design sought registration of the composite mark for keel

coolers per se. The later-filed application for the

composite mark was not opposed and the mark in that

application has registered.

In arguing that opposer is estopped from pursuing this

opposition, applicant relies not only on the paragraph of

the settlement agreement reserving applicant's right to seek

registration of a trademark logo, but also on paragraph 17,

which is a "covenant not to sue" applicant, by two of the

three parties adverse to applicant in the civil actions,

specifically, Duramax and East Park Radiator & Battery Shop,

Inc. That covenant releases applicant "of and from any and

all damages, attorneys' fees, punitive damages, equitable

and injunctive relief, costs, demands, rights, claims or

causes of action of whatsoever kind, whether now known or

hereafter discovered, arising in any way out of the facts

and/or claims asserted (or which could have been asserted)

by DMI, Fernstrum and East Park in the [civil actions] or

arising in any way from the facts asserted in said [civil

actions]."

As noted earlier in this opinion, opposer was not a

party to the settlement agreement, but references in the

agreement to Duramax, opposer's predecessor, have been taken

as the equivalent of references to opposer. Thus, by

25

Opposition No. 91119899

paragraph 17 of the settlement agreement, opposer expressly

covenanted not to sue applicant and released applicant from,

among other things, "claims or causes of action of

whatsoever kind, whether now known or hereafter discovered,

arising in any way out of the facts and/or claims asserted

(or which could have been asserted)" by "DMI," which means

Donovan Marine Inc., and "East Park," which means East Park

Radiator & Battery Shop, Inc. While this language does not

refer to facts or claims that were asserted or which could

have been asserted by opposer's predecessor in the civil

actions, that is because opposer's predecessor was not a

party in the civil actions and only intervened in the

settlement of the actions. Opposer does not argue that it

is not bound by the agreement because it bars only claims or

causes of action that were asserted or could have been

asserted by DMI and East Park, and is silent as to claims

that could have been asserted by opposer's predecessor.

Because opposer's predecessor intervened and made itself a

party to the settlement agreement, we view the covenant

paragraph as covering any claims or causes of action that

opposer's predecessor could have asserted in the civil

actions, or could later have asserted if "arising in any way

from the facts asserted" in the civil actions.

Applicant argues, in essence, that this opposition is

precisely the type of claim or cause of action that opposer

26

Opposition No. 91119899

is estopped from asserting, because it arises out of the

facts that provided the basis for the claims that were

asserted in the civil actions. Estoppel is particularly

warranted, according to applicant, because it specifically

secured in the settlement agreement an acknowledgment of its

right to file the involved application; and if applicant is

held not to have obtained, through the settlement agreement,

a promise that opposer would not oppose the application,

then applicant "received no consideration for the

abandonment of its prior [configuration] application."

Brief, p. 30. Applicant also asserts that allowing opposer

to pursue the opposition would render the settlement

agreement "valueless and without meaning" to applicant and

would only encourage the parties to litigate their disputes,

rather than to settle them. Brief, p. 31.

There is an overriding public policy, applicant argues,

that encourages settlement of litigation and requires that

parties be held to the terms of their agreements. Brief, p.

28, citing numerous cases. The question here, however, is

not what public policy promotes but, instead, what do the

terms of the involved settlement mean. In answering that

question, we may not interpret the settlement agreement "on

the subjective intentions of the parties" and must instead

focus "on the objective words of their agreement."

Novamedix Ltd. v. NDM Acquisition Corp., 166 F.3d 1177,

27

Opposition No. 91119899

1180, 49 USPQ2d 1613, 1616 (Fed. Cir. 1999), relying on

United States v. Armour & Co., 402 U.S. 673, 681-82 (1971).

It is not impermissible to interpret an agreement in a way

that favors one party, and where parties disagree, "an

interpretation that fails to meet one party's purpose will

very likely meet the other party's purpose." Novamedix, 49

USPQ2d at 1616. Armour, however, cautions that any

agreement "embodies as much of those opposing purposes as

the respective parties have the bargaining power and skill

to achieve" and an agreement must therefore "be discerned

within its four corners, and not by reference to what might

satisfy the purposes of one of the parties." 402 U.S. at

681-82.

In the agreement involved herein, the parties did not

include a forum clause directing that the laws of any

particular state apply. Neither party has argued for

application of any particular law in interpreting the

agreement. We apply the law of Louisiana. See Restatement

(Second) of Conflict of Laws § 188 (1971; electronic version

current through June 2005). The contract was negotiated in

Louisiana, two of the four parties are domiciled there, it

is the place of performance for numerous promises, and the

district court there retained jurisdiction over the parties

for the purpose of enforcing the agreement. We also note

that the eighth "Whereas" clause of the settlement agreement

28

Opposition No. 91119899

references the parties' agreement to the provisions in the

term sheet "which each of the parties prefers to the hope of

gaining balanced against the danger of losing." This phrase

is almost precisely a phrase that appears in section 3071 of

Title XVII of the Civil Code of Louisiana ("A transaction or

compromise is an agreement between two or more persons, who,

for preventing or putting an end to a lawsuit, adjust their

differences by mutual consent, in the manner which they

agree on, and which every one of them prefers to the hope of

gaining, balanced by the danger of losing.") (emphasis

added). The parties' use of this phrase strongly suggests

that, notwithstanding the absence of a forum clause, they

anticipated that the law of Louisiana would govern the

settlement agreement.

"Louisiana law provides that waivers of the right to

bring future claims must be clear and are narrowly

construed." Brennan's Inc. v. Dickie Brennan & Company

Inc., 376 F.3d 356, 71 USPQ2d 1400, 1408 (5th Cir.

2004)(citations omitted). Applicant's interpretation of the

settlement agreement, reached by tying paragraphs 15 and 17

together and by construing the latter too broadly, is

unwarranted and contrary to Louisiana law.

We note, in particular, that applicant, in one of its

requests for admissions, asked opposer to admit that "[t]he

purpose of the Settlement and Mutual Release Agreement

29

Opposition No. 91119899

executed by [the parties] was to settle the claims asserted

in the three civil actions." Request no. 6. The request

was admitted, and applicant introduced the response in the

record. Applicant has not put into the record an admission

by opposer, if any was obtained, that a purpose of the

settlement agreement was to allow applicant to file

applications to register marks that would be free of

possible opposition. The mere fact that the agreement

includes provisions relating to the USPTO, specifically, (1)

applicant's agreement to abandon its configuration

application and reservation of right to file a different

application for a two-dimensional logo, and (2) applicant's

agreement not to challenge any application opposer might

later file for a two-dimensional design mark, do not dictate

that settlement of prior oppositions to applicant's

configuration application or ensuring that subsequent

applications by applicant would be free of opposition were

primary purposes for the parties to enter into the

settlement agreement.

We also note that the term sheet signed by the parties,

and which served as the basis for the later settlement

agreement17, includes a provision stating "Fernstrum and

17

The settlement agreement acknowledges the term sheet, states

that the term sheet was filed in the record for the civil

actions, and states that the parties entered into the agreement

to implement the transactions contemplated by the term sheet.

30

Opposition No. 91119899

Duramax will release any and all claims that either party

has or had against the other arising out of the sales and

manufacture of a one-piece keel cooler." (emphasis added)

It is clear that this provision in the term sheet was the

basis for paragraphs 16 and 17 in the settlement agreement.

Therefore, we find this to provide additional support for a

narrow construction of the covenant not to sue as one

related to claims arising out of trade dress concerns and

issues related to use of marks, not registration of marks.

Opposer was the last of the parties to sign the term

sheet, on the same day that applicant filed the application

involved herein, applicant having signed the term sheet five

days earlier. Thus, when applicant filed the application,

it knew that the term sheet included (1) a provision

providing for reciprocal releases of claims related to sales

and manufacture of one-piece keel coolers and (2)

specifically obligated applicant not to oppose any

application opposer might later file for its keel cooler

design. Knowing these facts, when the settlement agreement

was negotiated, and with knowledge that its application was

already on file with the USPTO, applicant was free to

attempt to negotiate a provision that opposer would not

oppose that application. Applicant clearly did negotiate at

least one additional provision to be included in the

agreement that was not in the term sheet, specifically, the

31

Opposition No. 91119899

provision specifying that applicant would be able to apply

for "its trademark logo featuring its one-piece keel cooler

as part of said design." Viewed in this context, the

absence of any provision in the settlement agreement

specifically barring opposer from opposing the already-filed

application is telling. See Robin v. Sun Oil Co., 548 F.2d

554, 558 (5th Cir. 1977) ("We interpret the contract to mean

just what it says and no more. Counsel in this case were

competent maritime lawyers. They knew how to use other

words if they chose to do so.").

One final point that must be noted is that the involved

application does not qualify under paragraph 15 of the

settlement agreement. That paragraph reserves applicant's

right to seek registration of a "logo featuring its one-

piece keel cooler as part of said design." (emphasis added)

The mark in the involved application displays only the one-

piece keel cooler and is not part of a composite logo.

Thus, even if applicant were correct in asserting that

paragraph 17 of the settlement agreement estops opposer from

opposing any application contemplated by paragraph 15, the

involved application does not qualify. Cf., Brennan's,

supra, 71 USPQ2d at 1407-08 ("the fact that Brennan’s

permitted Dickie to engage in certain specified uses without

fear of liability does not mean that Dickie is thereby

immunized from trademark liability for all unauthorized

32

Opposition No. 91119899

uses.")(emphasis in original); and Chromalloy American Corp.

v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187, 190-91

(Fed. Cir. 1984)(settlement agreement placed certain marks

which might later be adopted and used by Kenneth Gordon

"outside the force of the injunction" it accepted by virtue

of the agreement, but language of settlement agreement did

not bar Chromalloy from asserting likelihood of confusion

based on use, and merely barred Chromalloy from asserting

the right to use was barred by the injunction provision).

We hold that the settlement agreement does not estop

opposer from opposing the involved application. In so

holding, we have not relied on any parol evidence offered by

either party as to what it understood the purpose of the

settlement agreement to be and, instead, have relied on the

agreement and term sheet themselves.18 Finally, we note

that much of the case law on which applicant has relied for

its estoppel argument either addresses only the general

principle that settlement of litigation is to be encouraged,

a point with which we do not disagree, or is inapposite

because it involves cases in which a party was trying to

remake or avoid an agreement, and we do not find opposer to

be making such an attempt. Contrary to applicant's

18

Applicant's request that opposer admit the purpose of the

settlement agreement was to settle the civil actions supports our

view of the import of the agreement, i.e., as one not intended to

bar the instant opposition, but we would reach the same

conclusion even without that admission in the record.

33

Opposition No. 91119899

contention, opposer is not the party trying to avoid the

terms of the settlement agreement. If applicant "desires to

reform or renegotiate the … agreement in accordance with its

alleged interpretation, this is not the appropriate forum

for doing so." Danskin, Inc. v. Dan River, Inc., 498 F.2d

1386, 182 USPQ 370 (CCPA 1974).

Functionality

As noted earlier, matter proposed for registration may

be refused registration in an opposition proceeding if the

matter is shown to be "essential to the use or purpose of

the product or if it affects the cost or quality of the

product." See TrafFix Devices, Inc. v. Marketing Displays,

Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co.

v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d

1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10

(1982). In the case at hand, we are not, however, faced

with an application seeking to register matter as a mark for

a product but, rather, as a mark for services, specifically,

the custom manufacturing of a product for another.

Applicant relies heavily on the fact that it seeks

registration of its asserted mark for services, not for

goods, and stresses that it is not seeking registration of a

product configuration. Opposer, in contrast, has

strenuously argued that applicant's custom manufacturing

34

Opposition No. 91119899

services are such in name only, and that the keel coolers it

manufactures, or at least that type of keel cooler which is

ably illustrated by the proposed mark, is essentially a

single product that merely is adapted in, for example, width

or length, to fit a particular boat. To be sure, the record

is unclear as to what percentage of the keel coolers sold by

applicant is attributable to purchase of "stock" items and

what percentage is attributable to custom manufacturing.

Compare the testimony of Sean Fernstrum with applicant's web

site:

Q. Does Fernstrum keep keel coolers or marine heat

exchangers in inventory?

A. Considering our -- our wide range of models, we

keep a -- a relatively small number of coolers in

stock; more-common models that would be needed

say, in emergency situations. So, no, we don't

keep a great number in stock. We're a job shop.

We -- build to the order and specification of our

customers.

Test. Dep. Sean Fernstrum, pp.8-9

"Because approximately 30% of all units we

manufacture are custom designs, we can easily

tailor a unit to your specific application."

Applicant's web site, submitted as Fernstrum exh.

20 [Bates page no. 000114]

Notwithstanding that there may be a difference of

opinion between the parties, and lack of certainty in the

record, regarding what percentage of applicant's keel

coolers is custom manufactured,19 it is abundantly clear

19

In the discovery deposition of Sean Fernstrum, generally at

pages 106-126, the witness attempts to explain the apparent

35

Opposition No. 91119899

that applicant does offer custom manufacturing services and

that it touts the adaptability of its designs and

manufacturing as contributing to the asserted superiority of

its products. There is no requirement that a party seeking

registration of a mark for custom manufacturing services

only produce custom manufactured goods, or even that a

particular percentage of its goods be custom manufactured.

Thus, though opposer would have us ignore the identification

of services in applicant's application, and essentially

treat it as an application to register a trademark for goods

rather than a service mark for services, we find no basis

for doing so.

Another point on which the parties have a difference of

opinion relates to the proposed mark itself. Opposer

essentially asserts that the image of the keel cooler is so

realistic as to be the equivalent of a photograph, or

perhaps a technically precise drawing ("It is either a line

drawing made from a photograph … or an exact drawing." …

"There is nothing ornamental, fanciful or arbitrary in the

drawing….") Brief, p. 18.20 Applicant, on the other hand,

discrepancy between applicant's web site and his statements, in

contrast, that 80 to 90 percent of applicant's keel coolers are

"built to order by custom design" and "stock units" are "fairly

insignificant." We find the explanation difficult to follow.

Nonetheless, as discussed above, it is not necessary to this

decision to determine precisely what percentage of applicant's

keel coolers results from its custom manufacturing services.

20

While opposer has pleaded distinct, alternative claims that the

proposed mark is functional or descriptive and devoid of acquired

36

Opposition No. 91119899

argues that the proposed mark "is a partial representation

of but one of many different [keel cooler] designs" used by

applicant and "is not a three-dimensional representation of

the product, it is not drawn to scale, and it is not used in

technical drawings of the product." (emphasis in original)

Brief, p. 1.

Applicant makes too much of what the mark assertedly is

not; and it is worth distinguishing here between the mark

drawing, as an element of the application, and the mark

itself. No drawing of a trademark that is the subject of an

application for registration is presented in true three-

dimensional form. Even an application to register a

configuration of a product depicts a mark in two-dimensional

form, perhaps from a view that yields a perspective of

depth, as in applicant's abandoned configuration

application. The fact that a drawing of a mark is in two

dimensions will not preclude the mark from being refused as

functional. See In re Deister Concentrator Co., Inc., 289

F.2d 496, 129 USPQ 314 (CCPA 1961) (Mark described as a

"substantially rhomboidal outline" "applied to the goods" by

fashioning the ore concentrating and coal cleaning table in

such shape refused registration as functional; depiction of

mark in two dimensions by four lines forming a rhomboid);

distinctiveness, both claims rely on opposer's contentions

regarding the nature of the depiction of applicant's keel cooler.

37

Opposition No. 91119899

and In re North American Phillips Corporation, 217 USPQ 926

(TTAB 1983) (Mark described as a "triangularly shaped plate

having smoothly rounded corners and having three circular

openings therein" and which was a configuration of the face

plate of an electric razor refused registration as

functional; depiction of mark in two dimensions, as if

viewed directly from the front, with no perspective of

depth).

As for applicant's contention that the mark is not

drawn to scale, the record does not reveal exactly how this

contention can be tested. Moreover, if we are to take as

correct applicant's contention that each keel cooler is

essentially created specifically for a particular boat and

application, then few keel coolers would be alike and any

illustrative drawing of a keel cooler would almost assuredly

be out of scale to most of applicant's keel coolers.

Nonetheless, we note that applicant used almost precisely

the same drawing, but for the presentation of some matter in

dotted lines, in its application seeking to register the

configuration of its keel cooler as a mark. If the drawing

was sufficiently close in scale to an actual keel cooler, so

that it could serve as a drawing in a configuration

application, it cannot now be seriously contended that the

drawing is significantly out of scale. See, in this regard,

the discovery deposition of Paul Fernstrum, at pages 76-77:

38

Opposition No. 91119899

"Q. (By Mr. Hochberg) In other words, they're nearly

identical; is that correct? A. Yeah." See also, the cross-

examination of Sean Fernstrum, during his testimony

deposition, at pages 122-123: "Q. Okay. Let's go to exhibit

25. Now, the--there's a picture of a keel cooler shown in

the upper center of the page. That's what you contend is--

is an example of your logo. A. Yes. … Q. And this is

pretty much the way a real keel cooler would look, isn't it?

A. Yes."

Finally, as for applicant's contention that the mark

drawing is not used as a technical drawing in items such as

installation manuals, we find no significant distinctions

between the characteristics of the drawings used in

installation instructions, as illustrated by the exhibit

reproduced on page 35 of applicant's brief, and the drawing

of the mark in the application. In fact, exhibit no. 17 to

the testimony deposition of Sean Fernstrum, a GRIDCOOLER

catalog, shows the full panoply of images of keel coolers

that applicant uses in marketing materials. There are, in

that catalog, the keel cooler and globe design, the keel

cooler design sought to be registered by the involved

application, illustrations of "common installations" for

applicant's GRIDCOOLER that are remarkably similar to the

depictions on page 35 of applicant's brief, and other images

and photographs. We see little, if any, difference between

39

Opposition No. 91119899

the degree of stylization of the depiction of the involved

mark in the catalog and the depictions of keel coolers in

common installations.

In short, despite all the things that applicant says

its mark drawing is not, it is the admitted equivalent of

the drawing of a keel cooler configuration applicant earlier

sought to register (albeit without the dotted or broken

lining utilized in that application), and "is pretty much

the way a real keel cooler would look," and we find the

drawing to be essentially the same as the drawing in

applicant's expired U.S. Patent No. 4,338,993 (albeit viewed

from a different angle). Thus, there is nothing about the

depiction of the keel cooler in the involved application

that is so highly stylized or unlike an actual keel cooler

that would preclude a finding of functionality on that basis

alone.

We do agree with applicant, however, that there is a

significant difference between an application to register

trade dress in the nature of product design as a mark for

the product itself (e.g., applicant's abandoned

configuration application) and an application to register a

two-dimensional drawing that may look very much like such a

product, but is used on labels, catalogs, brochures, and in

various other ways as a mark for services. The inquiry

regarding functionality may need to be decidedly different

40

Opposition No. 91119899

in the latter set of circumstances and this opposition is

therefore a case of first impression for the Board.

The vast majority of the functionality cases deal with

product design or product packaging. Indeed, applicant

contends that opposer has not cited in its brief "a single

case where a two-dimensional mark used in connection with

services has been held functional." Brief, p. 2. Opposer

does not directly rebut the argument in its reply brief, and

that may be because there is no reported case law dealing

with such a combination, i.e., a case involving a two-

dimensional mark, not trade dress, and involving services,

wherein the mark was held not a mark but, rather,

functional. Cf. Fotomat Corp. v. Photo Drive-Thru, Inc.,

425 F.Supp. 693, 193 USPQ 342 (D.N.J. 1977) (hereafter,

Fotomat NJ). In the Fotomat NJ case, the district court, on

plaintiff's motion for a preliminary injunction enjoining

defendant from use of a logo and trade dress of a drive-

through kiosk providing various retail and photofinishing

services, found that defendant had not rebutted the

presumptive validity of plaintiff's registered logo, and

granted the injunction as to defendant's logo, but the court

also found that the plaintiff's kiosk trade dress was

primarily functional and therefore denied the preliminary

injunction as to defendant's use of its own kiosk. There

are other cases brought by the Fotomat Corporation wherein

41

Opposition No. 91119899

its kiosk trade dress was found protectible rather than

functional. See Fotomat Corp. v. Ace Corporation, 1980 U.S.

Dist. LEXIS 16114, 208 USPQ 92 (S.D. Cal. 1980) and Fotomat

Corp. v. Steven Cochran, d/b/a Quick Stop Photo, 437 F.Supp.

1231, 194 USPQ 128 (D. Kan. 1977). The significance of

these three cases, however, is not whether the kiosk trade

dress was or was not held to be functional for services, but

that even in the one case where the kiosk trade dress was

held functional, a fairly accurate depiction of the kiosk,

registered as a logo, was not held functional. It is also

noteworthy that, in that particular case, the defendant did

not even challenge the logo as functional. Fotomat NJ, 193

USPQ at 353 ("The defendants have offered no evidence which

rebuts the statutory presumption … that Fotomat's service

mark was validly registered … and that Fotomat has exclusive

right to use the mark in commerce….").

We recognize that the instant case is significantly

different from the Fotomat cases, and from similar cases

involving trade dress in the nature of building design

(interior or exterior) claimed to be a mark for services.

Specifically, in the case at hand, the services are not

restaurant services or retail sales of photographic

products, but are custom manufacturing of a specific type of

item, once-patented, for which the patent has expired.

Applicant's competitors or would-be competitors, save for

42

Opposition No. 91119899

the voluntary restriction opposer took on itself via the

settlement agreement, are free to manufacture the

once-patented item; and even are free to manufacture the

item in varying sizes, to the order and specification of

customers. Thus, the case at hand presents, more than cases

involving restaurant or retail kiosk trade dress, a much

closer question regarding whether any manufacturer of the

formerly patented item should be free to utilize, in

advertising its goods for sale, a realistic depiction of the

item.

Opposer has advanced some compelling arguments why

applicant should not be permitted to register what is in

essence the two-dimensional depiction of the formerly

patented product that appeared in the patent itself, even

for services. Nonetheless, we must balance against

opposer's argument for the extension of existing case law on

functionality what is shown by the record to be long use of

the keel cooler depiction by applicant in the manner of a

logo. Further, opposer has not discussed whether, when

custom manufacturing services are involved, we should still

apply the TrafFix test for functionality (a three-

dimensional product design is functional if it is "essential

to the use or purpose of the product or if it affects the

cost or quality of the product") to the product that results

from purchasing the services, or whether the test should be

43

Opposition No. 91119899

adapted and focus on whether use of the two-dimensional

design to be registered is essential to anyone who would

provide the same service, or would, if unavailable, affect

the cost or quality of the service.

Opposer has failed to persuade us that an extension of

existing law to cover the circumstances of this case is

warranted. We decline to sustain the opposition on

opposer's claim of functionality. We add, however, that our

decision does not foreclose the extension of TrafFix to

service marks if circumstances in a future case warrant such

an extension.

Descriptiveness and Acquired Distinctiveness

We now turn to opposer's second claim. Opposer

essentially contends that the depiction of a keel cooler

that applicant seeks to register is descriptive and that it

has not acquired distinctiveness. “Where, as here, an

applicant seeks a registration based on acquired

distinctiveness under Section 2(f), the statute accepts a

lack of distinctiveness as an established fact.” Yamaha

International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6

USPQ2d 1001, 1005 (Fed. Cir. 1988) (emphasis in original).

This means that opposer is not required to advance evidence

44

Opposition No. 91119899

of descriptiveness and may concentrate its case on the

question of acquired distinctiveness.21

As Yamaha explains, when matter proposed for

registration under Section 2(f) is approved by the USPTO for

publication, there is a presumption that the examiner found

a prima facie case of acquired distinctiveness by the

applicant for registration. Id., 6 USPQ2d at 1004. In an

opposition, "the opposer has the initial burden to establish

prima facie that the applicant did not satisfy the acquired

distinctiveness requirement of Section 2(f)." Id., 6 USPQ2d

at 1005. "If the opposer does present its prima facie case

challenging the sufficiency of applicant's proof of acquired

distinctiveness, the applicant may then find it necessary to

present additional evidence and argument to rebut or

overcome the opposer's showing…." Id.

The case at hand having been completely tried, "the

only relevant issue … is which party should prevail on the

entire record" regarding acquired distinctiveness, and it is

therefore unnecessary to discuss the shifting of burdens or

whether prima facie cases have been made out by either

21

Notwithstanding that an opposer challenging an application

seeking registration under Section 2(f) need not prove

descriptiveness or lack of inherent distinctiveness, the kind and

amount of evidence of acquired distinctiveness required to secure

a registration will necessarily vary with the subject matter for

which registration is sought, Yamaha, 6 USPQ2d at 1008, and an

opposer's submission of evidence that matter is highly

descriptive therefore may benefit its attempt to ratchet up the

kind and quantity of evidence of acquired distinctiveness

required in a particular case.

45

Opposition No. 91119899

party. Id., 6 USPQ2d at 1006. However, under this

analysis, the "ultimate burden of persuasion" is on the

applicant. Id. Finally, the standard for applicant to meet

is preponderance of the evidence, "although logically that

standard becomes more difficult to meet as the mark's

descriptiveness increases." Id., 6 USPQ2d at 1008.

In securing the examining attorney's approval of the

involved mark for publication, applicant based its claim of

acquired distinctiveness solely on a survey. Applicant did

not, however, directly introduce the survey into evidence in

the opposition; and though opposer referenced it in a notice

of reliance, opposer essentially assumed that, because the

survey was filed in the application, and the application is

automatically part of the record in this opposition, opposer

did not have to attach the survey documents to its notice of

reliance and mere reference to them was sufficient. Neither

the submission of the survey to the examining attorney nor

opposer's mere reference to it in a notice of reliance makes

it a part of the record. See British Seagull Ltd. v.

Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB 1993), aff’d, 35

F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied,

514 U.S. 1050 (1995).

Applicant did file a notice of reliance on the contents

of the file for its Registration No. 2,357,354 and, more

specifically, on a response to an office action by which

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Opposition No. 91119899

applicant set forth a claim of acquired distinctiveness of

the composite globe and keel cooler mark (see footnote 5,

supra). The survey documents were included with that

response. By the terms of the notice of reliance, however,

applicant stated not that it was relying on the registration

file contents to support its claim of acquired

distinctiveness but, rather, to establish that opposer and

others in the marine industry, not having objected to that

application, "did not find that the registration of that

mark would bestow upon applicant a right of ownership in

that drawing of the keel cooler to which it was not

otherwise entitled." Applicant's First Notice of Reliance

Under Trademark Rule 2.122(e) (July 30, 2004). Further,

applicant did not, in its brief, present any argument on

acquired distinctiveness that relied in any way on the

survey. Accordingly, to the extent that applicant might

have had a right to rely on the notice of reliance not as

evidence of what opposer and others purportedly believed

about the composite globe and keel cooler mark, but also as

evidence of the acquired distinctiveness of the involved

mark, applicant has waived any such right by not addressing

this evidence in any way in the arguments in its brief on

acquired distinctiveness. Accordingly, we have given no

consideration to the survey.22

22

Had applicant argued for the survey as evidence of acquired

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Opposition No. 91119899

"In most oppositions to registrations under Section

2(f), prevailing opposers have presented some evidence that

the mark has not acquired distinctiveness, such as others'

use of the proposed mark or similar marks." Yamaha, 6

USPQ2d at 1008-07. In this case, opposer's evidence of use

of the proposed mark, or similar marks, as evidence that

applicant's proposed mark has not acquired distinctiveness,

is extremely limited. There is testimony that has been

offered to the effect that the proposed mark could be seen

as a depiction of a keel cooler of various parties. See,

e.g., trial testimony depositions of George McHugh, pages

10-12 ("Could be East Park, could be Duramax, Fernstrum,

could be any one of the three of them."); of Steven Garver,

pages 7-9, who testified that no one from applicant ever

told him the proposed mark was a Fernstrum trademark and the

depiction of a keel cooler could just as readily be a

depiction of a DuraCooler or an East Park keel cooler; and

of Todd P. Boudreaux, who discussed East Park's use of the

depiction in some ads, as well as applicant's demand that

East Park cease using the depiction. Also, exhibits 30 and

32 to the testimony deposition of Sean Fernstrum show use of

distinctiveness, we would have rejected the argument. The survey

tested for recognition only of tubing used in applicant's keel

coolers, and did not test for recognition of either entire keel

coolers or the involved illustration of a keel cooler.

48

Opposition No. 91119899

depictions of opposer's DuraCooler in, respectively, an

advertisement and in an installation manual.

The testimony of various witnesses for opposer that the

Fernstrum depiction could be perceived as a depiction of the

keel coolers of others because, for a time, Fernstrum was

not the only manufacturer of a grid-like keel cooler with

rectangular headers, is not testimony that others used the

Fernstrum depiction. There is, in fact, no evidence of use

of the proposed mark by others, apart from the evidence

regarding use by East Park of what was asserted by applicant

to be the Fernstrum keel cooler logo mark. The dearth of

evidence of use of the proposed mark, however, is not

surprising because, for a long time, the protection of the

patent laws secured to applicant alone the right to produce

a keel cooler looking like that illustrated by the proposed

mark.23 As for evidence of use of a similar keel cooler

depiction, there is only the referenced evidence showing use

by opposer of depictions of the DuraCooler design.24

23

In addition, though not clearly established by the record,

applicant suggests that the industry may be rather limited,

referencing only three other companies "actively manufacturing

and selling keel coolers," and that two of those only entered the

market during the period of time applicant has been using its

design. Brief, p. 38.

24

We note that Yamaha discusses the value of evidence of use of

the proposed mark "or similar marks." In stating that we view

the use of the DuraCooler depictions to be "similar" to

applicant's proposed mark, we do not use that term in the sense

that we would if we were discussing likelihood of confusion, and

we are, at this point, unconcerned with whether prospective

purchasers of a keel cooler or custom manufactured keel cooler

49

Opposition No. 91119899

Applicant argues that the acquired distinctiveness of

its keel cooler design is demonstrated by the following

evidence: (1) use of the design on a substantially

exclusive and continuous basis since 1975; (2) during this

period of use, applicant has promoted its logo in marine

industry trade journals, at marine industry trade shows, and

during personal sales visits; (3) average annual expenditure

of approximately $120,000 on print and trade show

advertising during the five years prior to Sean Fernstrum's

testimony deposition; (4) personal sales calls by

applicant's employees or by manufacturer's representatives

or distributors, during which literature and promotional

materials featuring the keel cooler design are distributed;

(5) that an estimated 90 percent of the relevant marine

industry has been exposed to the logo and an estimated 75

percent of companies in the industry have actually purchased

one of applicant's keel coolers; (6) that East Park Radiator

and Battery Company, a competitor, intentionally copied the

design and used it in ads, but stopped when confronted by

applicant; and (7) that applicant has already registered,

could tell them apart. Rather, the issue is whether the proposed

mark or depictions similar in kind are used in the field, because

that is to be considered in the calculus of how highly

descriptive the images are for consumers and, as a result, how

much evidence of acquired distinctiveness is necessary to find

applicant's proposed mark registrable.

50

Opposition No. 91119899

under Section 2(f), its composite globe and keel cooler logo

(see supra, footnote 5). Brief, pp. 40-44.25

The record clearly supports applicant's claim to

substantially exclusive and continuous use and its claim

that the design, or at least variations of it, have been

widely reproduced in sales and promotional materials, in

advertisements, and on promotional items. However, as

between mere use of the design and actual promotion of the

design, the record is mixed. Sean Fernstrum testified that

during personal sales calls, the attention of customers is

drawn to the appearance of the GRIDCOOLER, particularly the

rectangular heads ("A rectangular head means it's a

25

Applicant obtained effective admissions from opposer that

opposer "intends to use the design of its keel cooler" as a

trademark and service mark. Applicant's Second Notice of

Reliance Under Trademark Rule 2.120(j), requests no. 128 and no.

129. However, applicant did not rely on these as support for an

argument that depictions of keel coolers can function as marks.

Moreover, opposer's DuraCooler ad and installation manual both

utilize TM designations with the word DuraCooler, but make no

claim that the depiction of the keel cooler is a mark. See exhs.

30 and 32 to test. dep. of Sean Fernstrum.

Because opposer's admissions were technical and obtained when

opposer failed to respond to applicant's requests for admissions,

and because evidence of opposer's advertising of its keel coolers

does not corroborate the essence of the admissions, we do not

find the technical admissions to favor either party on the

question of acquired distinctiveness. Accordingly, under the

circumstances of this case, we do not consider the admissions to

provide significant support for the proposition that depictions

similar to the proposed mark are used by others (which would

support opposer's position) or to support the proposition that

such depictions are routinely perceived in the industry as marks

(which would support applicant's position). Cf. Yamaha, 6 USPQ2d

at 1009 (Board had broad discretion in its weighing of testimony

from experts that guitar head designs other than that sought to

be registered by the applicant in that case could serve as source

indicators).

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Opposition No. 91119899

Fernstrum Gridcooler keel cooler. Nobody else uses that

rectangular head."). Test. dep. at pp. 19-20. Later, he

testified that outside sales representatives are instructed

to promote the grid-like appearance as well as the

rectangular heads. Test. dep. at 61. On cross-exam, the

witness testified that instructions to sales representatives

on this subject are only provided verbally. Test. Dep. at

112. Applicant's ads do not show the same focus. In an ad

placed in 2003 in the directory for the International

Workboat Show, applicant references "a confusing world of

look-alikes" and references its "one-piece header

construction" without referencing such headers as being

rectangular. Sean Fernstrum exh. 22. And a January 2000 ad

in Workboat magazine includes the tag line "Look For The

Grid… Find Fernstrum Quality," and does not mention headers.

Sean Fernstrum Exh. 23. There is little if any other

evidence approximating the type that could be said to

condition customers to look for a particular feature.

While the image of applicant's keel cooler is widely

used, there is little evidence of "look for" advertising or

actual promotion of the logo. In addition, the various ads,

catalogs, brochures and promotional materials do not display

the design in a uniform manner. In some, the foreground of

the image is on the right and it runs back to the left,

while in others the image is reversed and the foreground,

52

Opposition No. 91119899

like the drawing in the involved application, is on the

left, running back to the right. In some depictions, the

design is superimposed over a globe, but the globe design is

not always the same. The design may be a line drawing, or

it may have large dark areas, so that the contrast between

elements often differs. In short the display of the design

is not consistent and there is little evidence customers are

educated to look for any particular design. In addition,

there is the testimony of Steven Garver, who testified that

he has sold keel coolers from both opposer and applicant but

was never told by anyone from applicant that the image of

its keel cooler was a trademark.

Another difficulty we have weighing the Sean Fernstrum

testimony and exhibits is that the extent of distribution of

promotional items, brochures and the like is uncertain.

Sean Fernstrum used one word – "thousands" – to indicate how

many of various exhibits were produced or distributed. This

response was given for exhibits 4, 6, 7, 9, 12, 13, 14, 15,

21, 24, 25, 26, and 29. There were said to be "hundreds" of

a banker's bag distributed, and "over 10,000" of exhibits

16, 17 and 18. We simply do not find the testimony very

compelling, for it appears that the numbers are mere vague

estimates.

Next, we consider applicant's promotional expenditures.

Opposer, in cross-examining Sean Fernstrum, sought

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Opposition No. 91119899

information on the size of applicant's business, so as to

compare the amount spent on promotion with sales realized.

Applicant refused to provide the information. Thus, while

we have testimony about promotional expenses, we do not have

information about sales. On the other hand, we conclude

that sales have not been insignificant, insofar as the

testimony of the witness that 75 percent of companies in the

industry have "on and off" made purchases from applicant.

Likewise, we do not find the annual amount spent on

advertising and promotion insignificant, although we do not

find it particularly substantial for a company that does

national advertising and promotion, attends trade shows,

distributes promotional items and maintains a web site.

We note at this juncture in our consideration of

applicant's asserted evidence of acquired distinctiveness,

that it would be virtually impossible to sort out the

advertisements, catalogs and other publications, or to break

down the promotional expenses, all discussed above, into

evidence that supports applicant's sales of goods and

evidence that supports its marketing of custom manufacturing

services. Certainly, not all the ads or promotional

expenses support a claim of acquired distinctiveness of the

involved design for custom manufacturing services. We have

not, however, attempted to divine which individual items of

evidence, or what portion of promotional expenses do support

54

Opposition No. 91119899

the claim, because we find that even if all the evidence

were considered to provide proper support for the claim of

acquired distinctiveness for the design and services in the

involved application, it would be insufficient evidence.

Turning back to other asserted evidence of acquired

distinctiveness, applicant contends that even opposer's

witnesses recognize the involved design. In particular,

applicant relies on numerous passages from the testimony

deposition of Michael Brakey. However, the passages noted

by applicant are not as supportive of applicant's contention

as it would have us believe. The discussions on page 79

involve the Fernstrum composite globe and keel cooler

design. It does not follow from the characterization of the

witness that the composite is well known that the design of

a keel cooler alone would be well known as indicating

applicant. Likewise, the testimony of the witness on pages

96, 97 and 101 is more accurately characterized as testimony

that the photocopies of the ads are of poor quality and

that, relative to the difficult to see images of boats, the

image of applicant's keel cooler is of good quality. This

can scarcely be considered testimony that the image of the

keel cooler is a widely known mark; and the mere fact that

the witness refers to "the Fernstrum keel cooler" in

discussing the images in the ads does not necessarily

indicate that the design is perceived as a mark, for each of

55

Opposition No. 91119899

the ads includes the Fernstrum name. Applicant also relies

on passages from the testimony of Todd Boudreaux and Paul

Boudreaux, but the referenced passages do not discuss the

proposed mark and are more properly read as statements that

applicant's keel cooler is a product well known in the

industry.

Building on its assertion that Todd Boudreaux viewed

the GRIDCOOLER logo, as opposed to the product itself, as

well known in the trade, applicant also asserts that when

East Park Radiator and Battery Company used the Fernstrum

image in advertising, it amounted to intentional copying.

Such copying, applicant correctly asserts, can be

significant evidence of secondary meaning. We do not view

the record, however, as providing strong support for

applicant's allegation of intentional copying of a well

known logo. First, the testimony of the witness was not

that the logo was well known, but that the product was well

known. Second, it is undisputed that East Park Radiator and

Battery Company was at one time repairing applicant's

products. It is just as likely, on this record, that East

Park's use of the Fernstrum image in an advertisement was

innocent and without knowledge that Fernstrum claimed rights

in the image alone, rather than intentional. There is no

evidence of record that East Park, even after it began

manufacturing a keel cooler that looked the same as

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Opposition No. 91119899

applicant's, did so in an effort to pass off such product as

a Fernstrum product.

The final piece of evidence of acquired distinctiveness

that we consider is applicant's reliance on its prior

registration of the composite globe and keel cooler design,

itself registered under Section 2(f). Applicant relies on

Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), but that rule

allows that a prior registration of "the same mark" may be

accepted as evidence of acquired distinctiveness. What

constitutes "the same mark" is rather strictly construed.

See Section 1212.04(b) of the Trademark Manual of Examining

Procedure (4th ed., April 2005). We do not find applicant's

composite globe and keel cooler design mark to constitute

the same mark as that which it now seeks to register. We

also note that the only evidence of acquired distinctiveness

provided to the examining attorney to secure registration of

the composite mark was the survey already referenced

herein.26 We have previously discussed this survey as an

item on which applicant placed no reliance whatsoever in its

brief, essentially waiving any claim to it as evidence of

acquired distinctiveness. Applicant cannot rely on the

survey indirectly by relying on a registration that issued

26

The examining attorney had required applicant to disclaim the

image of the keel cooler on the ground that it is descriptive.

Applicant then amended the earlier application to assert acquired

distinctiveness.

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Opposition No. 91119899

when an examining attorney accepted the survey. The Board

is not bound in this case to accept the survey simply

because the examining attorney accepted it in a prior

application. Moreover, as we have noted, supra, in footnote

22, had applicant argued that the survey was significant

evidence of acquired distinctiveness, we would have rejected

the argument.

Weighing all the evidence in the record on acquired

distinctiveness, and because we find the depiction of the

keel cooler proposed for registration to be highly

descriptive, we do not find sufficient evidence to support

applicant's claim of acquired distinctiveness.

Decision

Applicant's affirmative defenses that opposer does not

have standing and is equitably estopped from bringing this

opposition are denied. The opposition is dismissed as to

opposer's claim that the proposed mark is functional for

applicant's identified services. The opposition is

sustained as to opposer's claim that the proposed mark is

descriptive and has not been shown to have acquired

distinctiveness.

58