Mag Instrument, Inc. v. The Brinkmann Corporation

THIS OPINION IS A

PRECEDENT OF

THE TTAB

Hearing: Mailed:

February 25, 2010 July 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

Mag Instrument, Inc. Opposition No. 91163534

(Serial No. 76548626)

v.

The Brinkmann Corporation

_____ _____

The Brinkmann Corporation Opposition No. 91164169

(Serial No. 76484030)

v.

Opposition No. 91164340

Mag Instrument, Inc. (Serial No. 78357215)

______

Anna E. Raimer, Esq. of Jones Day for Mag Instrument, Inc.

Gary A. Clark, Esq. of Sheppard, Mullin, Richter & Hampton

LLP for The Brinkmann Corporation

______

Before Cataldo, Taylor, and Wellington, Administrative

Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

This case comprises three consolidated opposition

proceedings.

Oppositions Nos. 91163534, 91164169 and 91164340

First, in Opposition No. 91163534, Mag Instrument, Inc.

(hereinafter “Mag Instrument”) has opposed an application

filed by The Brinkmann Corporation (hereinafter “Brinkmann”)

to register the mark MAGNUM MAXFIRE on the Principal

Register for “hand-held portable lights, namely flashlights

and spotlights” in International Class 11.1 Mag

Instrument’s opposition is based on allegations that Mag

Instrument has prior use of confusingly similar marks,

including a famous family of “MAG” marks, on flashlights

and/or related accessories, under Section 2(d) of the Act.

Mag Instrument pleaded ownership of numerous registrations

for marks consisting, in whole or in part, of the term MAG,

including the registered mark MAG-NUM STAR for “flashlight

bulbs.”2 In its answer, Brinkmann denied the salient

allegations of the complaint and asserted a “Morehouse”

defense based on its ownership of a prior registration of

what Brinkmann contends is a mark substantially similar to

its applied-for mark, for identical or substantially similar

goods.

In the second proceeding, Opposition No. 91164169,

Brinkmann has opposed Mag Instrument’s application to

register the following configuration mark (hereinafter,

1

Serial No. 76548626, filed on October 3, 2003, under Section

1(b) (intent-to-use).

2

Registration No. 1245187, issued July 12, 1983; Sections 8, 9

and 15 affidavits accepted and granted; renewed.

2

Oppositions Nos. 91163534, 91164169 and 91164340

“dual band mark”) on the principal register under Section

2(f) (acquired distinctiveness):

for “flashlights.”3

The application contains the following description of

the mark:

The mark consists of two bands that encircle the barrel

of the flashlight. The outline of the flashlight is

not part of the mark but is merely intended to show the

position of the mark.

Brinkmann opposes registration of this dual band mark

on the grounds that it is “functional” because it

“represents the charging rings” of applicant’s flashlights

and this design “is essential to the use or purpose of the

[flashlight] or it affects the cost or quality of the

[flashlight]” (Not. of Opp., para. 7); and that the mark

“has not become distinctive of [applicant’s flashlights].”

(Id., para. 9).

Mag Instrument, in its answer, denies the allegations

that its proposed dual band mark is either functional or

that it lacks distinctiveness.

3

Oppositions Nos. 91163534, 91164169 and 91164340

In the third proceeding, Opposition No. 91164340,

Brinkmann has opposed Mag Instrument’s application to

register the mark MAG STAR on the principal register for

Electric flashlight accessories sold together or

separately, namely rechargeable batteries, battery

chargers, electrical converters, power cords, charger

cradles, flashlight recharger adapters for use with

vehicle cigarette lighters, battery packs for

flashlights, voltage converters, foreign plug adapters

in International Class 9; and

Flashlights and related parts, component parts and

accessories therefor, namely replacement flashlight

lamps, combination lens holder/anti-roll units adapted

to fit on the barrels of flashlights and leather and

nylon carrying holsters and belt holders in

International Class 11.

Brinkmann pleads ownership of the registered mark

MAXSTAR for “electric lanterns”4 and alleges that Mag

Instrument’s use of the MAG STAR mark on the aforementioned

goods is “likely to cause confusion, to cause mistake, and

to deceive customers, potential customers and others,

thereby injuring [Brinkmann] and the consuming public.”

(Not. of Opp., para. 9).

Mag Instrument, in its answer, denies the salient

allegations of the opposition.

3

Serial No. 76484030, filed January 21, 2003, under Section

1(a), based on an allegation of first use anywhere and in

commerce on December 31, 1982.

4

Reg. No. 1565777, issued on November 14, 1989, renewed.

4

Oppositions Nos. 91163534, 91164169 and 91164340

Consolidation

The three opposition proceedings were consolidated at

the discovery stage.5 Thus, the proceedings were tried

together and arguments were presented in combined briefs.

The Record

The record automatically includes the pleadings and the

files of all involved applications. Trademark Rule

2.122(b).

The parties also submitted the trial testimony, with

accompanying exhibits, of the following individuals: James

L. Zecchini, a Vice President for Mag Instrument; J. Baxter

Brinkmann, CEO and owner of Brinkmann; Gus Hawthorn,

Director of Engineering for Mag Instrument; Anthony Maglica,

President of Mag Instrument; and Professor Martin J. Siegel,

an expert witness testifying on behalf of Mag Instrument.6

In addition, Mag Instrument filed two notices of

reliance that include: copies of registrations owned by Mag

5

Pursuant to Board order (dated March 17, 2006). Opposition No.

91163534 was designated the “parent” proceeding and, as such, is

the file containing all orders and submissions subsequent to the

consolidation order.

6

Both parties designated portions of the record, including

documents and testimony, as “confidential.” We have, of course,

considered all evidence of record, but are mindful of the

portions designated as “confidential” and thus refer to such

materials in only general terms where practical. Therefore, any

omission of specific reference to these materials, or any other

evidence, should not be construed as indicating that such has not

been considered.

5

Oppositions Nos. 91163534, 91164169 and 91164340

Instrument,7 copies of registrations owned by Q-Beam

Corporation and Brinkmann, copies of documents produced by

Brinkmann in response to Mag Instrument’s discovery

requests,8 and copies of Brinkmann’s responses to certain

interrogatories propounded by Mag Instrument.

Brinkmann filed a notice of reliance upon the status

and title copies of three registrations that it owns.

Both parties filed briefs in their respective positions

as both plaintiff and defendant in these consolidated

proceedings. In addition, counsel for both parties

presented arguments at an oral hearing held before the Board

on February 25, 2010.

Evidentiary Objections

Both Mag Instrument and Brinkmann have raised

objections to evidence introduced (and relied upon) by the

other.

1. Zecchini Testimony and Exhibits M128 and M132

Relying on the “best evidence rule,” Brinkmann has

objected to certain deposition testimony of Mr. Zecchini

involving sales summaries and related exhibits, marked as

7

Status and title copies were submitted for the registrations

owned by Mag Instrument via the second notice of reliance and in

accordance with the Board’s December 24, 2008 order.

8

Documents produced (in discovery) are generally not proper

matter for submission under a notice of reliance alone, unless

they are otherwise suitable for such introduction, e.g., they are

printed publications or government records. However, in a paper

filed September 26, 2008, Brinkmann specifically conceded that we

may treat the “documents as being of record.”

6

Oppositions Nos. 91163534, 91164169 and 91164340

M128 (MAG CHARGER mark flashlight advertising/sales summary)

and M132 (WHITE STAR mark lamp sales summary) and moves to

strike said testimony and exhibits.9 Brinkmann asserts that

Mag Instrument “failed to produce or make available any of

the original invoices or other sales database information

that was used to prepare the sales summary information set

forth in the [objected exhibits]” (Statement of Evid.

Objections, p. 5) in violation of the “best evidence rule.”

Brinkmann also raises a hearsay objection because Mr.

Zecchini either “admitted” or it “would seem apparent” that

he did not prepare the exhibits and Mag Instrument cannot

therefore “rely on the exhibits for the truth of the matters

asserted therein.” Id. at p. 6.

The aforementioned objections are not well-taken and

are overruled.

The “best evidence rule” is a common law proposition

that has been codified in Rule 1002 of the Federal Rules of

Evidence, which states: "To prove the content of a writing,

recording, or photograph, the original writing, recording,

or photograph is required, except as otherwise provided in

these rules or by Act of Congress." However, the rule has

9

While the motion to strike discusses Exhibits M128 and M132, in

its prayer for relief Brinkmann requests that Exhibits M128 and

M130, not M132, be stricken. We disagree with Mag Instrument’s

contention that the inconsistency renders the objections

“defective,” but we construe Brinkmann’s objections based on the

“best evidence rule” as being asserted and directed only to

Exhibits M128 and M132, not Exhibit M130.

7

Oppositions Nos. 91163534, 91164169 and 91164340

been described as “one of preferences, not absolute

exclusion.” 6 Weinstein’s Federal Evidence Section 1004.01

(2nd Ed. 1997). Thus, there are a string of exceptions to

the rule and these are set forth in the subsequent rules,

including “[t]he original is not required, and other

evidence of the contents of a writing...is admissible

if...the writing...is not closely related to a controlling

issue.” Fed. R. Evid. Rule 1004(4). In this case, we find

that Exhibits M128 and M132 are not “closely related to a

controlling issue” and, as such, are not susceptible to Rule

1002. That is, Mag Instrument introduced the summaries for

purposes of demonstrating a level of use for products

bearing the MAG CHARGER and WHITE STAR marks from which one

may possibly gauge the degree of success or exposure of

products bearing those marks. Said purposes are not closely

related to the controlling issues involved in the likelihood

of confusion analysis.

As to Brinkmann’s hearsay objections to Exhibits M128

and M132, including the deposition testimony relating to the

exhibits, we find them to be without merit in view of the

fact that the exhibits are summaries of business information

that were prepared by individuals under Mr. Zecchini’s

supervision. In addition, Mr. Zecchini testified that he

had the requisite knowledge and was personally aware of the

information contained in the exhibits based on his position

8

Oppositions Nos. 91163534, 91164169 and 91164340

within Mag Instrument. Cf., Crash Dummy Movie, LLC v.

Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir.

2010).

Accordingly, Brinkmann’s objections to Exhibits M128

and M132, including the deposition testimony relating to the

exhibits, are overruled.

2. Zecchini Testimony and Exhibits Relating to Third-Party

Use

Brinkmann objects to certain deposition testimony of

Mr. Zecchini and related exhibits (M135-M140) on the grounds

that the exhibits comprise internet website printouts that

have not been authenticated and that they constitute

hearsay.

As to Brinkmann’s objection based on the exhibits not

having been properly authenticated, we find that this

objection was not timely raised and has been waived. See

TBMP § 707.03(c) (2d ed. rev. 2004); see also, Pass &

Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984)

(objection on grounds of improper identification or

authentication of exhibits waived since defects could have

been cured if made during the deposition).10

10

Subsequent to the filing of the subject exhibits, the Board

modified its handling of internet materials; specifically, “if a

document obtained from the Internet identifies its date of

publication or date it was accessed and printed, and its source

(e.g., the URL), it may be admitted into evidence” because it is

considered to be self-authenticating in the same manner as a

printed publication in general circulation in accordance with

Trademark Rule 2.122(e). See Safer, Inc. v. OMS Investments,

9

Oppositions Nos. 91163534, 91164169 and 91164340

As to Brinkmann’s objection that Exhibits M135-M140

contain hearsay, we sustain this objection to the extent

that applicant is offering these articles for the truth of

the matters asserted therein, i.e., as proof that there are

actually third-party products in use that function in the

manner advertised. Mag Instrument may also not rely on Mr.

Zecchini’s testimony concerning the existence or veracity of

the subject matter of the materials and, in that regard, the

testimony is stricken. Despite sustaining the hearsay

objection and striking the testimony of Mr. Zecchini related

to these exhibits, we decline to strike the materials in

their entirety and find them admissible solely for what they

show on their face. This probative value is strictly

confined to showing that the public may have been exposed to

those internet websites and therefore may be aware of the

information or advertisements contained therein. See Life

Zone Inc. v. Middleman Group Inc., supra, 87 USPQ2d at 1956

n.5; Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50

(TTAB 1999); Logicon, Inc. v. Logisticon, Inc., 205 USPQ

767, 768 n.6 (TTAB 1980); TBMP § 704.08.

In sum, the testimony relating to Exhibits M135-140 is

stricken. The exhibits themselves are not stricken, but as

Inc., 94 USPQ2d 1031 (TTAB 2010). Here, upon review of the

internet printouts contained in the subject exhibits, we note

that each indicates the URL and date accessed.

10

Oppositions Nos. 91163534, 91164169 and 91164340

explained above they have very limited probative value in

these consolidated proceedings.

3. Declarations of Susan Hwang and Ping Chu

Mag Instrument argues that the declarations of Susan

Hwang and Ping Chu which were submitted in support of

Brinkmann’s objections (discussed above) are “inadmissible.”

Although it does not appear that Brinkmann sought to

introduce the declarations into the evidentiary record, for

the sake of clarity, we note that these declarations do not

form part of the record and were only considered for

purposes of deciding the evidentiary objections raised by

Brinkmann.

4. Brinkmann Testimony

(a) Regarding Alleged Utility Design Features

Mag Instrument objects to the testimony of Mr.

Brinkmann concerning any possible utilitarian advantages of

Mag Instrument’s flashlights (including its battery

recharging feature) over competitors’ products.

Essentially, Mag Instrument argues that to opine in that

subject area requires “specialized knowledge within the

scope of Rule 702 [governing use of an expert witness]”, and

that no foundation was laid to establish that Mr. Brinkmann

is qualified as an expert witness. Brinkmann, on the other

hand, contends that Mr. Brinkmann was merely “identifying

and describing the flashlights [of Mag Instrument and

11

Oppositions Nos. 91163534, 91164169 and 91164340

competitors] and their uses with particular focus on their

rechargeable features.” Brinkmann’s Response (filed June

11, 2009), p. 4. And, “to the extent that Mr. Brinkmann

made a comparison of the advantages or benefits of the MAG

CHARGER flashlight over the four ‘alternative’ flashlights,

he did so as a person whose duties and responsibilities, as

president of Brinkmann, regularly include such activity.”

Id.

We do not construe Mr. Brinkmann’s testimony as expert

witness testimony. Rather, we agree with Brinkmann that Mr.

Brinkmann testified in his capacity as president of a

competitor of Mag Instrument and, based on his years of

experience in the industry, that he is generally familiar

with flashlight products. We find that his testimony

is not based on “scientific, technical, or other specialized

knowledge,” as contemplated by Fed. R. Evid. 702. Mr.

Brinkmann’s opinions concerning the features or advantages

of the flashlights clearly fall within the scope of

expertise of that expected from an individual who is not an

expert witness but has experience and knowledge in the

industry. Accordingly, Mag Instrument’s objection to this

testimony is overruled.

(b) Regarding Settlement Negotiations

Mag Instrument has objected to the testimony of Mr.

Brinkmann concerning “negotiations and specific terms of a

12

Oppositions Nos. 91163534, 91164169 and 91164340

confidential settlement agreement reached between [the

parties] as part of an earlier litigation.” The testimony

was submitted under seal and Brinkmann did not cite to this

testimony in its main brief or reply brief. Accordingly,

this objection is not an issue; for sake of clarity, Mr.

Brinkmann’s testimony on this subject has not been

considered.

5. Deposition Questions Involving Alternative Designs

Mag Instrument has objected to questions posed by

counsel for Brinkmann during the depositions of Messrs.

Zecchini, Hawthorn and Siegel, all Mag Instrument witnesses.

Specifically, counsel for Brinkmann asked the deponents

whether they would consider certain alternative flashlight

designs as infringing on Mag Instrument’s applied-for dual

band trademark. Mag Instrument objected to these questions

as “improper hypotheticals” that call for legal conclusions

and that these witnesses were neither qualified to provide

opinions in this regard nor did they have authority to

represent Mag Instrument in this regard. Mag Instrument

takes exception to Brinkmann’s conclusion in its trial brief

that Mag Instrument “would not commit itself to a position”

because the witnesses would not answer the questions.

Upon review of the testimony in question, we do not

agree with Mag Instrument that the objected-to questions

were improper or that any responses should be stricken.

13

Oppositions Nos. 91163534, 91164169 and 91164340

While we note that it was never established that these

witnesses were in a position to represent or bind Mag

Instrument (and, indeed, some of the witnesses stated that

they were not so authorized), the questions posed by

Brinkmann’s counsel were legitimate to the extent that they

were in response to the witnesses’ direct testimony

concerning proposed alternative flashlight designs. The

questions were an attempt to delve into whether the proposed

alternative flashlight designs were indeed available and

feasible options for others. Accordingly, we overrule the

objections and do not strike the testimony. Nevertheless,

this does not mean that we draw any adverse inference nor do

we necessarily have to reach the same conclusion that

Brinkmann did in its trial brief based on the witnesses’

responses to the questions (or their inability or refusal to

answer). Cf., Levi Strauss & Co. v. R. Josephs Sportswear

Inc., 28 USPQ2d 1464 (TTAB 1993)(counsel instructed

witnesses not to answer certain questions and, because

objections were not well taken, Board presumed answers would

have been adverse to party whose counsel raised the

objections). Rather, we have considered the responses in

the totality of all of the testimony and other evidence

concerning possible alternative flashlight designs.

14

Oppositions Nos. 91163534, 91164169 and 91164340

6. Section 2(f) Evidence

During the prosecution of its dual band mark, Mag

Instrument submitted sixteen declarations in support of its

assertion that the mark had acquired distinctiveness;

however, it did not otherwise introduce the declarations

into evidence during its testimony period. At oral hearing

and in papers filed subsequently, the parties disputed the

nature of these declarations and whether they should be

considered in evidence.

As already noted, Trademark Rule 2.122(b) provides that

the file of the application being opposed forms part of the

record. In pertinent part, the rule specifically states

“the file...of the application against which a notice of

opposition is filed...forms part of the record of the

proceeding without any action by the parties and reference

may be made to the file for any relevant and competent

purpose.” Our primary reviewing court recently interpreted

this rule and decided that, “to be clear and unambiguous,”

the entire file of the involved application, “including any

evidence submitted by the applicant during prosecution,” is

part of the record of the relevant inter partes proceeding,

without any action by the parties. Cold War Museum Inc. v.

Cold War Air Museum Inc., 586 F.2d 1352, 92 USPQ2d 1626,

1628 (Fed. Cir. 2009). Accordingly, it was unnecessary for

Mag Instrument to introduce the sixteen declarations into

15

Oppositions Nos. 91163534, 91164169 and 91164340

evidence during its testimony period because they

automatically form part of the record. We have therefore

considered them in reaching our decision in Opposition No.

91164169.

The Parties

Mag Instrument has been in business for over thirty

years as a manufacturer of machined-aluminum cased

flashlights, as well as related flashlight accessories,

upgrade kits and parts. Mag Instrument has used and

registered several trademarks for these items, including the

mark MAG-LITE. Mag Instrument’s annual sales of flashlights

and accessories in the United States (both in dollar volume

and in units sold) over the last ten years have been very

substantial.

Brinkmann has been operating since 1974 as a consumer

products company featuring outdoor smokers and grills,

cooking products, gardening accessories, and lighting

products. The latter goods include hand-held portable

lighting products such as flashlights, spotlights and

electric lanterns, as well as parts and accessories

therefor. Brinkmann has used and registered several

trademarks for its lighting products.

Both Brinkmann and Mag Instrument agree that their

respective flashlights and lighting products are sold in

some of the same retail stores; accordingly, in this

16

Oppositions Nos. 91163534, 91164169 and 91164340

respect, the two companies are competitors. In addition,

both companies do most of their advertising through co-op

agreements wherein they will reimburse retailers for running

advertisements that feature their goods.

Standing

Each plaintiff in the respective oppositions must prove

its standing as a threshold matter in order to be heard on

its substantive claims. See, for example, Lipton

Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213

USPQ 185 (CCPA 1982). The Federal Circuit has set forth a

liberal threshold for determining standing, namely, whether

a plaintiff’s belief in damage has a reasonable basis in

fact and reflects a real interest in the case. See Ritchie

v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).

See also Jewelers Vigilance Committee Inc. v. Ullenberg

Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).

In none of the proceedings has standing been contested.

The parties have established that they are competitors; and

each party has made of record registrations for marks that

it relies upon. Therefore, Brinkmann and Mag Instrument

each has standing to bring the opposition proceeding(s) for

which it is a plaintiff. See Ritchie v. Simpson, supra.

See also TBMP §309.03(b) (2d ed. rev. 2004) and the

authorities cited therein.

17

Oppositions Nos. 91163534, 91164169 and 91164340

We now turn to the merits of the consolidated

proceedings. We address them individually, beginning with

the two oppositions involving the ground of priority and

likelihood of confusion.

Opposition No. 91163534 (MAGNUM MAXFIRE)

Again, Mag Instrument opposes Brinkmann’s application

to register the mark MAGNUM MAXFIRE on the Principal

Register for “hand-held portable lights, namely flashlights

and spotlights,” based on, inter alia, an allegation that

Mag Instrument has prior use of the registered mark MAG-NUM

STAR for “flashlight bulbs,”11 and that Brinkmann’s applied-

for mark is confusingly similar to it.

However, we first address Brinkmann’s affirmative

defense based on ownership of a registration for a similar

mark and goods (the “Morehouse” defense).

Brinkmann’s “Morehouse” Defense

The Morehouse defense, an equitable affirmative

defense, is available in situations where an applicant

already owns a registration for the same (or substantially

similar) mark and goods or services, and which registration

11

Although Mag Instrument also alleged a likelihood of confusion

with other registered marks, and a family of “Mag” marks, we

focus our likelihood of confusion analysis in this decision on

the registered mark MAG-NUM STAR which is more similar to

applicant’s mark than any of Mag Instrument’s other pleaded

marks, including the asserted “Mag” family of marks. And, as

discussed further in this decision, there is no real dispute that

the goods covered by all of the marks are related.

18

Oppositions Nos. 91163534, 91164169 and 91164340

has not been challenged. It is based on the theory that an

opposer cannot be injured by the registration sought because

there already exists a similar registration and, therefore,

an additional registration for the same or substantially

similar mark and goods or services can no more injure the

plaintiff than the prior registration. See Morehouse Mfg.

Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715

(CCPA 1969)(no injury from registration of BLUE MAGIC for

pressing oil when applicant owned prior registration for

BLUE MAGIC for hair dressing and “while there are trifling

differences [between the marks] it takes careful inspection

to detect them and the record showed the products sold under

the two marks were ‘one and the same’”).

Brinkmann argues that the Morehouse defense is

applicable here because it is the owner of an incontestable

registration for the mark MAGNUM MAX for “hand-held

electrical spotlights”;12 that this registered mark

is substantially identical to its applied-for mark, MAGNUM

MAXFIRE; that the addition of FIRE in the applied-for mark

“is irrelevant because Mag Instrument’s allegation of damage

relates only to the ‘Magnum’/‘Mag’ portion of Brinkmann’s

12

Registration No. 1567003, issued on November 21, 1989, renewed.

We further note that Brinkmann is the owner of a second,

incontestable registration for the mark MAXFIRE (Registration No.

1919542) for “flashlights.” However, Brinkmann does not rely on

this registration, in tandem with its MAGNUM MAX registration, in

support of its Morehouse defense.

19

Oppositions Nos. 91163534, 91164169 and 91164340

mark”;13 and that while the subject application identifies

“flashlights” and this is not covered by the registration,

this is not relevant because flashlights are “identical to

spotlights as well, since they are both portable, battery-

operated lights, differing in only the shapes of their

housings.”14

We find that the Morehouse defense is not available to

Brinkmann in this opposition because the registered mark,

MAGNUM MAX, is not substantially the same as that being

applied for, MAGNUM MAXFIRE. For purposes of the Morehouse

defense, the two marks must be “substantially identical,”

meaning that they are either literally identical or legally

equivalent. See O-M Bread Inc. v. United States Olympic

Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995)

(OLYMPIC and OLYMPIC KIDS are neither the same nor legally

equivalent). Brinkmann recognizes this, but relies on the

Board’s decision in Place for Vision, Inc. v. Pearle Vision

Ctr., Inc., 218 USPQ 1022 (TTAB 1983). In the Place for

Vision case, it was held that, as a matter of law, there

could be no likelihood of confusion because, despite the

clear differences in the previously registered mark (VISION

CENTER) and the contested mark (PEARLE VISON CENTER and

design), said differences were irrelevant to the harm

13

Brinkmann Brief (filed April 27, 2009), p. 45.

14

Id.

20

Oppositions Nos. 91163534, 91164169 and 91164340

alleged by plaintiff. That is, opposer's claim of damage

related solely to the VISION CENTER portion of the mark, not

the term PEARLE or the design element.

Mag Instrument’s reliance on the Place for Vision

decision is unavailing. Initially, we note that the Federal

Circuit’s O-M Bread decision was decided twelve years after

Place for Vision, and to the extent there appears to be some

inconsistency between the two decisions, we must defer to

the views of our primary reviewing court. In any event, the

Place for Vision case is distinguishable from the facts and

arguments set forth in this case. Here, Mag Instrument does

not rely solely on the common element, MAGNUM, as the only

source of similarity between its MAG-NUM STAR mark and

Brinkmann’s MAGNUM MAXFIRE mark. Mag Instrument also argues

that the addition of the element FIRE in the applied-for

mark contributes to the overall similarity because “FIRE is

quite close to...STAR in meaning...[the] terms connote

burning brightness and illumination.”15 Thus, we cannot

conclude that the differences between Brinkmann’s registered

mark and its applied-for mark are totally irrelevant or that

the marks are effectively equivalents for purposes of the

Morehouse defense.

Even if we were to find the additional element,

MAXFIRE, to be irrelevant to any possible harm alleged by

15

Mag Instrument Brief (filed May 27, 2009), p. 11.

21

Oppositions Nos. 91163534, 91164169 and 91164340

Mag Instrument in this case, we cannot conclude, as

Brinkmann would have us do, that “hand-held electric

spotlights” are substantially the same as or encompass

“flashlights.” The Morehouse defense requires the goods to

be “identical, substantially the same, or so related so as

to represent in law a distinction without a difference.”

Aquion Partners Limited Partnership v. Envirogard Products

Limited, 43 USPQ2d 1371, 1373 (TTAB 1997). See also, Haggar

Co. v. Hugger Corp., 172 USPQ 253 (TTAB 1971) (involving

different items of apparel). To support its contention the

goods are the same, Brinkmann points to the testimony of Mr.

Zecchini, one of Mag Instrument’s principals, who states

that Mag Instrument would find it objectionable “if someone

were to come out with a [Mag Instrument branded]

spotlight.”16 This is certainly not conclusive, and has

little persuasive value, that flashlights and spotlights are

substantially the same goods. Our review of the evidence of

record indicates that while flashlights and hand-held

spotlights are clearly very similar in nature, the two terms

reference two separate categories of hand-held lighting

products.

In view of the above, Brinkmann may not rely on the

Morehouse defense.

16

Brinkmann Brief (filed April 27, 2009), p. 46, citing to

Zecchini Test., p. 157.

22

Oppositions Nos. 91163534, 91164169 and 91164340

We now turn our attention to Mag Instrument’s ground of

priority and likelihood of confusion.

Priority

The pleaded registration for the MAG-NUM STAR mark is

of record, unchallenged, and therefore priority of use is

not an issue in this opposition. King Candy Co. v. Eunice

King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA

1974).

Likelihood of Confusion

As to likelihood of confusion, our determination is

based on an analysis of all of the probative facts in

evidence that are relevant to the factors set forth in In re

E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

(CCPA 1973). See also In re Majestic Distilling Co., Inc.,

315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any

likelihood of confusion analysis, however, two key

considerations are the similarities between the marks and

the similarities between the goods and/or services. See

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1098, 192 USPQ 24 (CCPA 1976).

Turning first to a consideration of the marks, we must

compare the marks in their entireties as to appearance,

sound, connotation and commercial impression to determine

the similarity or dissimilarity between them. Palm Bay

Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

23

Oppositions Nos. 91163534, 91164169 and 91164340

1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The

test, under the first du Pont factor, is not whether the

marks can be distinguished when subjected to a side-by-side

comparison, but rather whether the marks are sufficiently

similar in terms of their overall commercial impression that

confusion as to the source of the goods and services offered

under the respective marks is likely to result. The focus

is on the recollection of the average purchaser, who

normally retains a general rather than a specific impression

of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190

USPQ 106 (TTAB 1975).

In comparing Mag Instrument’s MAG-NUM STAR mark to

Brinkmann’s MAGNUM MAXFIRE mark, the obvious similarity is

that both marks begin with the term MAGNUM or MAG-NUM.

Thus, the initial term in both marks is essentially

identical; the hyphen in the Mag Instrument’s mark does not

distinguish them. See Goodyear Tire & Rubber Co. v. Dayco

Corp., 201 USPQ 485, 488 n. 1 (TTAB 1978) (“Fast-Finder”

with hyphen is in legal contemplation substantially

identical to “Fastfinder” without hyphen); see also

Charrette Corp. v. Bowater Communication Papers Inc., 13

USPQ2d 2040, 2042 (TTAB 1989)(PRO-PRINT is similar to

PROPRINT). Because MAGNUM/MAG-NUM is the first portion of

the marks, this plays an important role in determining

whether that term is also the dominant element of the

24

Oppositions Nos. 91163534, 91164169 and 91164340

respective marks. See Palm Bay Imports Inc., 396 F.3d at

1372, 73 USPQ2d at 1692 (2005) (“Veuve” is the most

prominent part of the mark VEUVE CLICQUOT because “veuve” is

the first word in the mark and the first word to appear on

the label); Century 21 Real Estate Corp. v. Century Life of

America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

1992)(upon encountering the marks, consumers must first

notice the identical lead word); and Presto Products Inc. v.

Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)

(“it is often the first part of a mark which is most likely

to be impressed upon the mind of a purchaser and

remembered”).

There is no evidence that the term “magnum” has any

special meaning in the lighting products field or that it is

otherwise a weak term that should be accorded a narrow scope

of protection.

The secondary terms in each mark, STAR and MAXFIRE, are

clearly different in sound and appearance. However, we

agree with Mag Instrument that both terms may impart a

similar suggestive meaning in connection with lighting

products such as flashlights (and bulbs therefor) and

spotlights. That is, the terms “star” and “maxfire” can be

understood, when viewed in connection with lighting

products, as suggesting brilliance or illumination of the

highest magnitude.

25

Oppositions Nos. 91163534, 91164169 and 91164340

In considering the marks as a whole, as we must do, we

find that the dominant element in each mark is the term

MAGNUM (or MAG-NUM). Based primarily on this, we find that

the marks MAG-NUM STAR and MAGNUM MAXFIRE are highly similar

in appearance, sound and connotation, and that the

similarities in the overall commercial impressions

engendered by the marks as a whole greatly outweigh the

differences.

Accordingly, we find this du Pont factor favors Mag

Instrument and a finding of likelihood of confusion.

We turn now to the du Pont factor involving the

relatedness of the parties’ goods and keep in mind that it

is not necessary that the respective goods be identical or

competitive, or even that they move in the same channels of

trade to support a holding of likelihood of confusion. It

is sufficient that the respective goods are related in some

manner, and/or that the conditions and activities

surrounding the marketing of the goods are such that they

would or could be encountered by the same persons under

circumstances that could, because of the similarity of the

marks, give rise to the mistaken belief that they originated

from the same producer. In re Melville Corp., 18 USPQ2d

1386 (TTAB 1991).

Here, there appears to be no dispute that the goods

covered by Mag Instrument’s MAG-NUM STAR registration,

26

Oppositions Nos. 91163534, 91164169 and 91164340

namely, flashlight bulbs, are related to the identified

goods in Brinkmann’s MAGNUM MAXFIRE application, namely,

hand-held portable spotlights and flashlights. By

definition, they are complementary goods, at least with

respect to flashlight bulbs and flashlights.

We further find that the respective goods would be

found in the same channels of trade and encountered by the

same purchasers. There is no dispute and the record

establishes that Mag Instrument’s flashlight bulbs and

Brinkmann’s flashlights and spotlights are capable of being

sold to the same consumers and by the same retail stores.

Accordingly, the du Pont factors involving the

similarity of the goods, trade channels and classes of

purchasers are all factors that weigh in favor of Mag

Instrument and for finding a likelihood of confusion.

The parties have argued about the intent of Brinkmann

in seeking registration of the MAGNUM MAXFIRE mark for

portable hand-held spotlights and flashlights. Based on the

evidence, and on Brinkmann’s existing registrations for the

marks MAGNUM MAX for spotlights and MAXFIRE for flashlights,

we cannot infer any bad faith on the part of Brinkmann in

seeking to register the mark MAGNUM MAXFIRE. In any event,

demonstrating bad faith is certainly not necessary to a

finding of likelihood of confusion. See J & J Snack Foods

Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889,

27

Oppositions Nos. 91163534, 91164169 and 91164340

1891 (Fed. Cir. 1991) (“Whether there is evidence of intent

to trade on the goodwill of another is a factor to be

considered, but the absence of such evidence does not avoid

a ruling of likelihood of confusion.”) Likewise, evidence

on applicant’s behalf that it is seeking to register the

mark in good faith does very little to obviate a finding of

a likelihood of confusion because it is expected that

applicants are acting in good faith. Accordingly, the issue

involving Brinkmann’s intentions in filing the subject

application is not a significant factor in our likelihood of

confusion analysis.

Brinkmann also argues that “[d]espite the ample

opportunities for actual consumer confusion [with Mag

Instrument’s marks], there is no evidence of a single

instance of confusion in the 25 years of use of MAGNUM MAX

by Brinkmann” (emphasis in original) and that “this can only

mean that confusion is not likely for Brinkmann’s use of the

mark MAGNUM MAXFIRE either.”17 Brinkmann relies on evidence

showing that the channels of trade and classes of consumers

have been the same during those years. Mag Instrument does

not contest the lack of evidence of any instances of actual

confusion or the opportunity for such confusion during those

years, but notes that Brinkmann’s prior-registered mark is

different from the applied-for mark and was being used on

17

Brinkmann brief (filed April 27, 2009), p. 43.

28

Oppositions Nos. 91163534, 91164169 and 91164340

spotlights during all those years whereas the subject

application identifies flashlights.

We cannot extrapolate from the lack of evidence of

actual confusion between MAGNUM MAX for spotlights and MAG-

NUM STAR for flashlight bulbs that there is not likely to be

confusion between the latter mark and goods and Brinkmann’s

new mark and goods. In any event, as often stated, proof of

actual confusion is not necessary to establish likelihood of

confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,

710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). “[T]he

test under § 1052(d) is likelihood of confusion, not actual

confusion.” Herbko Int'l Inc. v. Kappa Books Inc., 308 F.3d

1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).

On balance, the relevant du Pont factors weigh in favor

of a finding of likelihood of confusion. We conclude that

consumers familiar with Mag Instrument’s flashlight bulbs

sold under the mark MAG-NUM STAR, upon encountering

applicant’s mark MAGNUM MAXFIRE on portable hand-held

spotlights and flashlights, would be likely to believe that

the goods originate from or are associated with or sponsored

by the same entity.

In view thereof, we sustain this opposition on the

ground of priority and likelihood of confusion.

* * *

Opposition No. 91164340 (MAG STAR)

29

Oppositions Nos. 91163534, 91164169 and 91164340

In this opposition, Brinkmann opposes Mag Instrument’s

application to register the mark MAG STAR on the Principal

Register for the already identified flashlights as well as

related parts and accessories in classes 9 and 11, on the

ground of likelihood of confusion. Brinkmann essentially

bases the opposition on an allegation that it has prior use

of the registered mark, MAXSTAR, for “electric lanterns,”

and Mag Instrument’s applied-for mark is confusingly similar

to it.

Brinkmann’s standing, as discussed previously, has been

established. We therefore turn to priority and the merits

of the likelihood of confusion claim.

Priority

Brinkmann’s pleaded registration for the MAXSTAR mark

is of record, unchallenged, and therefore priority is not in

issue. King Candy Co., supra.

Likelihood of Confusion

Keeping in mind the already-recited likelihood of

confusion principles, we again make our determination in

this opposition proceeding based on consideration of all

probative facts in evidence that are relevant to the du Pont

factors.

As to the marks at issue, Brinkmann’s MAXSTAR versus

Mag Instrument’s MAG STAR, there are obvious similarities in

appearance and sound. Both marks have two syllables that

30

Oppositions Nos. 91163534, 91164169 and 91164340

begin with the letters “MA” followed by another single

letter and end with “star.” Visually, the only real

difference is the third letter in each mark, “g” and “x”

respectively. See Hercules v. National Starch, 223 USPQ

1244, 1246 (TTAB 1984) (NATROSOL and NATROL found similar

because “the clearly dominant aspect of both marks is that

the first four letters and the final two are the same”).

The presence or absence of a space before STAR does very

little, if anything, to distinguish the two marks. Seaguard

Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB

1984); In re Best Western Family Steak House, Inc., 222 USPQ

827, 827 (TTAB 1984); and Gastown Inc. of Delaware v. Gas

City, Ltd., 187 USPQ 760 (TTAB 1975). In terms of sound,

the two marks are also very similar and, but for a speaker

enunciating the first syllable slowly, it is very likely

that a consumer will confuse the two marks upon hearing them

spoken.

We find that no specific connotation or commercial

impression can be attributed to either mark. In the context

of both parties’ goods, the common element, STAR, may

suggest brilliant light. We agree with applicant, and

Brinkmann recognizes as well, that the MAX portion of

Brinkmann’s mark may be understood as an abbreviation of

“maximum.” Thus, when paired with the term “star,” there is

no identifiable meaning other than that of a strong or large

31

Oppositions Nos. 91163534, 91164169 and 91164340

star; this, in turn, does not really change the suggestion

of brilliant light imparted by the term “star” but merely

enhances it.

Mag Instrument’s argument that “consumers would

understand [the MAG element of its mark] to connote a

product of Mag Instrument” based on Mag Instrument’s

asserted ownership of a family of marks containing the “MAG”

element is not persuasive.18 First, it has long been held

that the family of marks doctrine is unavailable to a

defendant as a defense in an inter partes proceeding. See,

e.g., Baroid Drilling Fluids Inc. v. Sun Drilling Products,

24 USPQ2d 1048 (TTAB 1992). And, to the extent that Mag

Instrument contends that “Mag” will be understood by

consumers as Mag Instrument’s house mark, we cannot conclude

based on the evidence of record that this would be the case.

Moreover, the case referenced by Mag Instrument in support

of its argument that the common STAR element of the

respective marks is weak and the overall marks can be

distinguished based on their other elements, is readily

distinguished on its facts. In that case, the Board held

applicant’s NORTON MCNAUGHTON ESSENTIALS for women's

clothing to not be confusingly similar to ESSENTIALS for

similar goods. Knight Textile Corp. v. Jones Investment

Co., 75 USPQ2d 1313 (TTAB 2005). The Board based its

18

Mag Instrument brief (filed May 27, 2009), p. 32.

32

Oppositions Nos. 91163534, 91164169 and 91164340

decision, in large part, on a finding that the term

“essentials” is a highly suggestive term in connection with

clothing.19 Here, we do not have evidence that STAR is so

highly suggestive or otherwise so weak for the involved

goods that the elements MAG and MAX in the respective marks

would be sufficient to distinguish the overall marks. Also,

in Knight Textile, the added (and dominant element) in

applicant’s mark, NORTON MCNAUGHTON, was completely

different from any element in the opposer’s mark. Here,

even if we were to accept Mag Instrument’s contention that

the “Mag” element would be perceived as a Mag Instrument

house mark, it remains that the two marks, MAG STAR and

MAXSTAR, are very similar in appearance and sound. Any

possible difference in connotation is outweighed by the very

close appearance and sound of the marks.

Overall, we find the marks MAXSTAR and MAG STAR are

very similar and this factor favors Brinkmann.

As to the relatedness of the identified goods, namely,

Mag Instrument’s flashlights and related parts and

accessories versus Brinkmann’s electric lanterns, there does

not appear to be any dispute that these goods are found in

the same trade channels and sold to the same classes of

consumers. The parties attend some of the very same trade

19

In Knight Textile, the Board relied primarily on a dictionary

definition for “essential-s” and “twenty-three extant ESSENTIAL

33

Oppositions Nos. 91163534, 91164169 and 91164340

shows to promote the identified goods; the goods are sold

through the same type of retail stores, if not the very

same, such as large retail home improvement centers or

hardware stores; and the goods are purchased by the same

classes of consumers.20 As to the nature of the identified

goods, the electric lanterns are akin to flashlights

inasmuch as they are both handheld lighting devices and can

be used in a household setting or for professional and

commercial use. Indeed, Brinkmann submitted evidence that

it markets flashlights and electric lanterns in “combo”

packages for retail sale.

While there may be a different utilitarian purpose to

an electric lantern vis-à-vis a flashlight, these goods are

clearly related. The evidence also shows that many of the

same types of accessories and replacement parts, e.g., power

adapters, lamps (bulbs), etc. are marketed in connection

with electric lanterns and flashlights. Ultimately, we find

the goods to be related.

In view of the above, the du Pont factors involving the

similarity of the goods, trade channels and classes of

purchasers are all factors that weigh in favor of Brinkmann

and for finding a likelihood of confusion.

registrations on the register in the clothing field registered to

twenty-one different owners.” Knight Textile, 75 USPQ2d at 1316.

20

Specific examples are not provided due to much of the testimony

and exhibits regarding trade channels and customers having been

designated “confidential.”

34

Oppositions Nos. 91163534, 91164169 and 91164340

Mag Instrument argues that there is no likelihood of

confusion because it has extensively used similar marks

(MAG-NUM STAR and WHITE STAR) on flashlights and related

parts/accessories without any known instances of actual

confusion between those marks and Brinkmann’s use of MAXSTAR

on electric lanterns. Mag Instrument also argues that it

acted in good faith in its adoption of the MAG STAR mark and

in seeking registration thereof. For similar reasons

mentioned in this decision in relation to Opposition No.

91163534, these arguments have very little, if any,

persuasive value in our likelihood of confusion analysis in

this opposition proceeding. Specifically, MAG STAR is

different from the marks that Mag Instrument relies upon in

asserting no previous instances of actual confusion. And,

as to Mag Instrument’s intentions, it is expected that

applicants are acting in good faith.

In sum, the relevant du Pont factors weigh in favor of

a finding of likelihood of confusion. We conclude that

consumers familiar with Brinkmann’s electric lanterns sold

under the registered mark MAXSTAR, upon encountering

applicant’s mark MAG STAR on the identified electric

flashlights, as well as parts and accessories therefor, are

likely to believe that the goods originate from or are

associated with or sponsored by the same entity.

35

Oppositions Nos. 91163534, 91164169 and 91164340

In view thereof, we sustain this opposition on the

ground of priority and likelihood of confusion.

* * *

Opposition No. 91164169 (the ‘dual band’ mark)

As already noted, this opposition involves Mag

Instrument’s proposed dual band design mark, registration of

which Brinkmann has opposed on the grounds that the mark is

functional and, in the event the mark is found not to be

functional, that it has not acquired distinctiveness.

The “Dual Band” Mark

The description of the mark at issue and its depiction

(as shown on the drawing page of the application) are:

The mark consists of two bands that encircle the barrel

of the flashlight. The outline of the flashlight is

not part of the mark but is merely intended to show the

position of the mark.

In their briefs, however, the parties argue to some

extent as to what constitutes the applied-for mark.

Essentially, Mag Instrument argues that its mark must be

construed as consisting of two bands that are visibly

contrasting from the rest of the flashlight; Brinkmann, on

the other hand, argues that the mark simply consists of any

two bands without any further limitations because whether

36

Oppositions Nos. 91163534, 91164169 and 91164340

(or how) the bands contrast with the rest of the flashlight

is not mentioned in the application. While we do not

believe this is necessarily an outcome determinative issue,

it does warrant some explanation.

Trademark Rule 2.35, 37 CFR 2.35, permits an applicant

to submit a description of a mark that must be acceptable to

the Examining Attorney. Rule 2.35 also permits the

Examining Attorney to require a description of the mark and,

to this extent, Sections 808.02 and 808.03 of the Trademark

Manual of Examining Procedure state the following:

If a description of a mark is placed in the record, its

form must be satisfactory to the examining attorney.

To be satisfactory, the description should state

accurately what the mark comprises, and should not

create a misleading impression by either positive

statement or omission of facts.

…

The examining attorney should require a description of

the mark where the mark is three-dimensional, where the

mark is a configuration of the goods or packaging,

where the drawing includes dotted lines to indicate a

portion of the product or packaging which is not part

of the mark, and in similar cases. … If applicable, the

description statement must clearly indicate the portion

of the product or container that the mark comprises and

what the dotted lines on the drawing represent.

As regards the subject application, the examining

attorney accepted applicant’s proffered description of the

mark as well as the drawing depicting the mark. We

therefore find ourselves in agreement with Brinkmann that

Mag Instrument’s applied-for mark is as it is depicted on

the drawing page and described in the subject application,

that is, “two bands that encircle the barrel of the

37

Oppositions Nos. 91163534, 91164169 and 91164340

flashlight.” The drawing only shows the placement or

location of the two bands. There is no indication in the

application that the two bands contrast with the barrel of

the flashlight.

Mag Instrument contends that “something must be

perceptible to be a trademark” and cites to Professor

McCarthy’s statement that “anything that can be detected by

one of the human senses should be eligible for protection as

a trademark if it is used to distinguish a source of goods

or services.” Brief, p. 2 (citation omitted). We find no

fault with the premise that a mark must be perceived by

consumers in order for it to act as a trademark.

Nevertheless, the application is devoid of any indication as

to how the two bands will contrast, e.g., lining for colors

in the drawing. Nor does the description even state that

they are contrasting, either with each other or the

flashlight body. While it stands to reason that the two

bands are more likely to be noticed by someone viewing the

goods if they appear in a color that sharply contrasts with

the body of the flashlight, the possibility remains that the

two bands may be the same and may color-match the body of

the rest of the flashlight, differing perhaps only in

texture, and may thus require more subtle perception.

Functionality

38

Oppositions Nos. 91163534, 91164169 and 91164340

Brinkmann argues that Mag Instrument’s proposed mark is

functional because the mark represents a design that is

“necessary to charge the flashlight and the reason that the

charging feature works.” Brief, p. 10. Furthermore, “[t]he

circumferential design of [the mark] is functionally

advantageous because the two charging bands provide a

continuous surface area encircling the barrel of the

flashlight.” Id. Brinkmann concludes that “the very

essence of the Mag Charger flashlight’s recharging

capability is through the Dual Band Design, that is, the

charging bands, and the circumferential nature of the

charging bands only adds to the functional advantage of the

Mag Charger flashlight.” Id. at 12-13.

Mag Instrument, on the other hand, contends that “the

application’s description must be read to require, by

necessary implication, that the two bands be in visible

contrast to the flashlight barrel they encircle” and that

“there is no functional reason why barrel-encircling bands

on a flashlight must appear as two visibly separate and

contrasting bands.” Brief, p. 3 (emphasis in original).

According to Mag Instrument, there is “no reason why the Mag

Charger flashlight’s two silvery bands must be silvery in

color, or why they must be of any color that contrasts with

the barrel, in order to serve their function, which is to

act as the electrical contacts.” Brief, p. 5. Mag

39

Oppositions Nos. 91163534, 91164169 and 91164340

Instrument further argues that Brinkmann’s functionality

opposition is limited to only a subset of Mag Instrument’s

flashlights, namely, those with internally-rechargeable

batteries.21

Mag Instrument’s only asserted use of the mark has been

on its rechargeable flashlights sold under the mark, MAG

CHARGER. The MAG CHARGER flashlight, which is in the record

as an exhibit, indeed possesses two clearly visible bands

that are silver-metallic in appearance, located in the same

position as that represented in the application’s drawing of

the mark. The two bands also clearly contrast with the

remainder of the flashlight, which is nearly all black.

Upon close inspection of the Mag Charger flashlight, and

based on the testimony of the witnesses who have

authenticated the exhibit, it is evident that the two

silver, metallic bands are the result of three separate

annular rings in conjunction with what has been referred to

as a “pseudo band” (an annular or ring-like area of the

barrel of the flashlight that lacks the black anodized

coating). Specifically, there is a silver-metallic colored

ring or band that acts as the positive electrode contact for

the recharging system. On either side of this positive

21

The identification of goods simply recites “flashlights” and

thus must be read to include rechargeable flashlights. And, in

general, if a proposed mark is functional for any goods

encompassed by the identification, the proposed mark is

considered functional and must be refused accordingly.

40

Oppositions Nos. 91163534, 91164169 and 91164340

electrode ring are two thinner black insulator rings. On

the other side of one of the insulator rings is the “pseudo

band,” which is merely a portion of the barrel of the

flashlight that corresponds in size to the positive

electrode ring. This pseudo band, upon casual glance,

appears identical to the positive electrode ring because it

lacks the black anodized coating applied to the remainder of

the flashlight barrel. The second “pseudo band” also acts

as the negative electrode that completes the charging

circuit when the flashlight is placed in a charging cradle.

Section 2(e)(5) of the Trademark Act precludes

registration of “any matter that, as a whole, is

functional.” The Supreme Court has clarified 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.” 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 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.”

41

Oppositions Nos. 91163534, 91164169 and 91164340

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 34

USPQ2d 1161, 1163 (1995); see also In re Morton-Norwich

Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 12 (CCPA 1982)

(“This requirement of ‘nonfunctionality’...has as its

genesis the judicial theory that there exists a fundamental

right to compete through imitation of a competitor's

product, which right can only be temporarily denied by the

patent or copyright laws.”).

In considering the issue of functionality, we consider

the following (known as the Morton-Norwich factors): (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, 671 F.2d at 1333,

213 USPQ at 15-16.

As to the first Morton-Norwich factor involving the

existence of any utility patent disclosing the utilitarian

advantages of the design, the Supreme Court has addressed

what evidentiary value this is to be accorded in the

analysis:

42

Oppositions Nos. 91163534, 91164169 and 91164340

A prior patent, we conclude, has vital significance in

resolving the trade dress claim. A utility patent is

strong evidence that the features claimed therein are

functional... 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.

TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d

at 1005.22

We are not limited to review of the claims in a patent

in determining functionality, but we may also consider the

disclosures in the patent. See In re Bose, 772 F.2d 866,

227 USPQ 1 (Fed. Cir. 1985); and In re Howard Leight

Industries LLC, 80 USPQ2d 1507, 1511 (TTAB 2006).

Of importance in this case is expired U.S. Patent No.

4,388,673 (“patent ‘673”) for a “Variable Light Beam

22

In their briefs, the parties argue the relevance (or lack

thereof) of the other Morton-Norwich factors in light of the

TrafFix decision. In this regard, the Federal Circuit has stated

“[w]e do not understand the Supreme Court’s decision in TrafFix

to have altered the Morton-Norwich analysis.” Valu Engineering,

61 USPQ2d at 1427. And, as to the role of alternative designs:

Nothing in TrafFix suggests that consideration of

alternative designs is not properly a 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 considerations, 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.

Valu Engineering, 61 USPQ2d at 1428.

43

Oppositions Nos. 91163534, 91164169 and 91164340

Flashlight and Recharging Unit.”23 This utility patent

issued to Mag Instrument’s principal, Anthony Maglica, and

subsequently was assigned to Mag Instrument. The flashlight

is described in the patent Abstract as “includ[ing]

structural means for recharging its battery; and a battery

charger/flashlight holder is designed to retain the

flashlight and charge the batteries when the flashlight is

stored therein.”

Two drawings (Figures 1 and 3) from patent ‘673 show

the flashlight and charger as follows:

23

Introduced as Exhibit B-46, U.S. Patent No. 4,388,673 issued on

June 14, 1983.

44

Oppositions Nos. 91163534, 91164169 and 91164340

Figure 1 is described as depicting “a side elevation

view of the exterior of a flashlight constructed in

accordance with the teachings of the present invention.”

Figure 3 is described as depicting “a perspective view of a

flashlight holder/battery charger constructed in accordance

with the teachings of the present invention, with the

forward portion of the flashlight of FIG. 1 shown in phantom

lines.”

It is readily apparent from the two drawings in the

patent that the two bands in applicant’s proposed mark are

positioned on a flashlight (pursuant to that shown in the

application’s drawing page) in the same location as parts

98, 100, 102 and 104 in patent ‘673. In the patent, this

section of the flashlight is described as comprising:

45

Oppositions Nos. 91163534, 91164169 and 91164340

A pair of mating, spaced annular insulating rings 98,

100 are disposed between the rear end of the switch

housing 40 and an annular flange 102 on the tubular

member 96. The annular insulating rings 98 and 100

retain an annular contact member 104. The annular

flange 102 and annular contact member 104 are adapted

to be placed in electrical contact with contact members

of a battery charger.

One of the stated objectives of the invention is “to

provide a battery charger/flashlight holder which will

accomplish the dual function of storing the flashlight

between uses, and maintaining the rechargeable batteries in

a fully charged condition.” In the summary of the

invention, further explanation is provided:

The flashlight of the present invention further

includes an electric circuit having a diode between a

first external contact and an internal conductor, the

internal conductor being electrically connected to

batteries in the flashlight casing when the batteries

are in place. The flashlight electric circuit further

includes a ground connection, including a second

external contact, and an internal ground connection.

The first and second external contacts on the

flashlight are adapted to be in electrical contact with

the contacts of a battery charger in the bracket of a

flashlight holder. The contacts of the charger are

selectively connected to a source of alternating

current. The holder may be mounted, for example, on

the dashboard of an automobile. The battery charger

may be powered, for example, by the alternator of the

automobile.

As to the claims in expired patent ‘673, we note the

following:

1. In combination:

a flashlight and a charger therefor;

said flashlight including a conductive strip member and

a battery compartment; conductive means extending

between said strip and said compartment for

establishing electrical connection between said strip

46

Oppositions Nos. 91163534, 91164169 and 91164340

and battery in said compartment for charging the

battery;

and a charger including a contact member for

electrically contacting the said strip; and means for

connecting said contact member to a source of

electrical energy.

2. The combination according to claim 1, wherein said

strip on said flashlight comprises a circumferential

ring; and wherein said charger includes means for

retaining said flashlight such that said

circumferential strip contacts said contact member.

...

6. A battery charger and holder mechanism including:

a head portion for receiving the head of a flashlight

and a neck portion for receiving a portion of the

flashlight below the head portion of the flashlight;

and electrical means in said holder for supplying

electrical energy to batteries in the flashlight when

the flashlight is in the charger/holder.

Upon review of the ‘673 patent, it is evident that the

features of Mag Instrument’s applied-for mark, i.e., the

positioning of two bands just below the head of the

flashlight, are fundamentally covered by the expired patent.

That is, the features of the applied-for mark, namely two

evenly-sized bands positioned below the head of a

flashlight, are represented in the patent as two

circumferential and annular rings or flanges (identified as

parts “102” and “104”) in the same location on the

flashlight as that shown. In comparing the patent to the

Mag Charger flashlight, we do note slight differences, e.g.,

the patent describes and shows a “flanged” annular ring

(part “102”) and the second ring (part “104”) is an

independent part (as opposed to resulting from the absence

47

Oppositions Nos. 91163534, 91164169 and 91164340

of the black anodized coating that is on the remainder of

the barrel of the flashlight). In spite of the differences,

the fact remains that the two bands represented in

applicant’s mark also represent two annular rings that are

essential to the battery recharging system of the

flashlight. Ultimately, we find that this patent defines

and discloses the utilitarian advantages of the underlying

mark, i.e., the two bands. And, as explained in the

patent’s second claim, the fact that the bands are

circumferential provides a means for the flashlight’s

charging cradle to “retain[] said flashlight such that said

circumferential strip [the band or flanged ring] contacts

said contact member.”

We turn now to the second Morton-Norwich factor

regarding any advertising materials in which the applicant

touts the design's utilitarian advantages. The record in

this case indeed shows that Mag Instrument, in

advertisements and other materials prepared by Mag

Instrument for the MAG CHARGER flashlight, points out

several advantages to the dual bands and their ability to

maintain contact for purposes of recharging based on their

circumferential design. For example, in an advertisement

headlined “Magnificent! The rechargeable flashlight that

beats all,” there is the following:

The heart of the charging system is the charger module

(the 2 silver rings, just below the switch). For the

48

Oppositions Nos. 91163534, 91164169 and 91164340

first time, you can get 360˚ positive contact...no

matter how you place the flashlight in the charger.

(Emphasis in original).24

Another advertisement for the Mag Charger flashlight

extols the advantages of the dual bands with the charging

cradle, “Charging Ring Module – Flashlight can be charged in

any position. No matter how you place the flashlight in the

Charging Cradle...it’s on.”25 And several other

advertisements or product information for the MAG CHARGER

emphasize the advantage of having “360 degree” charging

contact between the two bands and the charging cradle.

Mag Instrument argues that these advertisements are

“irrelevant” because they do not tout the contrasting nature

of the two bands and that Brinkmann “can point to nothing in

any of Mag Instrument’s literature that has ever touted any

utilitarian advantage in having the bands visibly contrast

with the barrel [of the flashlight].” Brief, p. 14. Again,

Mag Instrument is essentially attempting to portray the

applied-for mark as merely two contrasting bands, even

though the application is not so limited. However, as

discussed in the context of patent ‘673 and as demonstrated

by applicant’s own use on the MAG CHARGER flashlight, the

two bands are not mere ornamentation, regardless of whether

they contrast with the barrel of the flashlight. The

24

Exhibit M112.

25

Exhibit B25.

49

Oppositions Nos. 91163534, 91164169 and 91164340

utilitarian function of the two bands is that they act as

positive and negative points of contact for the battery’s

recharging system when the flashlight is placed in the

charging cradle. The “360 degree” contact, created by the

circumferential nature of the bands, permits users to place

the flashlight in the charging cradle without having to

check if the contact points have been met. Thus, contrary

to applicant’s assertions, the Mag Instrument advertisements

and product literature are extremely relevant because they

demonstrate applicant’s efforts in emphasizing or touting

this feature.

As for the Morton Norwich factor of the availability of

alternative designs, Mag Instrument submitted the testimony

of its expert, Martin J. Siegel, in support of its position

that there are other designs that are functionally

equivalent to the two bands. In addition, Messrs. Maglica

and Hawthorn testified to some extent as to possible

alternative rechargeable flashlight designs. Because much

of the testimony of the witnesses has been designated as

“confidential” or involving “trade secret/commercially

sensitive” exhibits, we do not discuss the evidence in

detail, but we do note that there are some general,

discernable deficiencies in the aforementioned testimony and

evidence. First, many of the witnesses’ proposed

alternative designs are not described as definitively

50

Oppositions Nos. 91163534, 91164169 and 91164340

feasible in application. Rather, they are described in a

hypothetical fashion. For example, Mag Instrument has

proposed an alternative design involving (electromagnetic)

inductive charging without any evidence that such technology

has been (or can be) used in a comparable manner on

flashlights. Second, Messrs. Siegel and Hawthorn were not

able to definitively state whether or not third parties were

truly free to use several of the proposed alternative

designs or whether Mag Instrument would consider said

designs as infringing upon its purported rights in the

applied-for mark. Certainly, for us to consider any design

as a possible alternative to the utilitarian function of the

applied-for mark, it must be available for third parties to

use. Third, the majority of the proposed alternative

designs do not appear to be functionally equivalent to that

of the applied-for design; that is, they lack the “360

degree” feature or otherwise do not permit users to easily

and conveniently place the flashlight in a recharging cradle

or mode.

Mag Instrument places great emphasis on a suggestion

that is not an alternative design but would involve the use

of color-matching charging rings on a flashlight in the same

location as the dual band mark. According to Mag

Instrument, this would result in a flashlight having rings

that “would not be in visual contrast with the barrel [of

51

Oppositions Nos. 91163534, 91164169 and 91164340

the flashlight], and would not infringe the [applied-for

mark].” Brief, p. 15. Mag Instrument also contends that

there is “no functional reason why the rings and the barrel

cannot be color-matched” and that doing this will not

degrade the function or “materially increase the cost.” Id.

In spite of Mag Instrument’s assurances that such use would

not “infringe” upon the applied-for mark, we do not agree

that this is necessarily an alternative to the utilitarian

design of applicant’s dual band mark. Rather, the suggested

use is merely a manner in which others can possibly mask or

hide the utilitarian advantage of the dual band mark.

Furthermore, as noted, Mag Instrument’s application is not

limited to bands that contrast and therefore includes bands

that would not. Mag Instrument’s proposed alternative

design may be something of a variation to the present

embodiment in the marketplace but it is not a legally

cognizable alternative to the dual band mark, as specified

in the application.

Finally, as to the last Morton-Norwich factor, we are

unable to conclude whether the dual band design results in

an easier or less expensive manner of production of the

flashlight. Brinkmann has pointed to the following language

in the ‘673 patent:

The broad object of the present invention is to provide

a flashlight wherein the intensity and cross-sectional

area of the light beam may be selectively varied in an

52

Oppositions Nos. 91163534, 91164169 and 91164340

improved manner, and wherein the flashlight structure

is simpler and less expensive to manufacture.

[Emphasis in bold added.]

However, as Mag Instrument pointed out, the “less expensive

to manufacture” language does not relate specifically to the

dual band design.

Mag Instrument, on the other hand, argues that the MAG

CHARGER flashlight contains recharging related components

that are made and assembled “far from the simplest and least

expensive way.” In support, it relies on the testimony of

Gus Hawthorn who states that the flashlights are hand-

assembled and that this is more expensive than an automated

assembly. However, Mr. Hawthorn did not specifically

attribute the reason for hand-assembly to the dual band or

recharging ring design. Moreover, he testified that the

switch assembly, in particular, was hand-assembled and, upon

review of the flashlight, it is evident that assembly of

this part would be the most labor intensive.

Upon review of all evidence and arguments in relation

to the Morton-Norwich factors, we are convinced that Mag

Instrument’s proposed mark is functional. Even if we were

to allow that it may be possible for others to devise

alternative designs that are as equally functional as Mag

Instrument’s dual band recharging system, we do not believe

that this obviates the overall functionality of applicant’s

mark. The facts that a utility patent describes the useful

53

Oppositions Nos. 91163534, 91164169 and 91164340

purpose of the dual bands and that Mag Instrument clearly

touts the advantages of these dual bands simply outweigh the

possibility that there may be similar alternative designs

available to competitors.

In sum, we find that applicant’s proposed mark is

functional and, thus, is not registrable.

Although we have found Mag Instrument’s dual band mark

functional, we note that Brinkmann alternatively argued that

the mark should be refused registration because it has not

acquired distinctiveness. For completeness of our decision,

we discuss the alternative claim below.

Acquired Distinctiveness

When a mark is proposed for registration under Section

2(f) and is approved by the USPTO for publication, as is

what happened with Mag Instrument’s dual band mark, there is

a presumption that the examining attorney found that the

applicant made a prima facie showing of acquired

distinctiveness. Yamaha International Corp. v. Hoshino

Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1004 (Fed. Cir.

1988). And, when the same mark is challenged in an inter

partes proceeding such as this opposition, it is the

plaintiff that 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. The plaintiff may meet this initial burden if it

54

Oppositions Nos. 91163534, 91164169 and 91164340

produces “sufficient evidence or argument whereby, on the

entire record then before the board, the board could

conclude that the applicant has not met its ultimate burden

of showing acquired distinctiveness.” Id. As further

explained in Yamaha, “[I]f the [plaintiff] does present its

prima facie case challenging the sufficiency of

[defendant's] proof of acquired distinctiveness, the

[defendant] may then find it necessary to present additional

evidence and argument to rebut or overcome the [plaintiff's]

showing.” Id. See Duramax Marine LLC v. R.W. Fernstrum &

Co, 80 USPQ2d 1780 (TTAB 2006).

Upon review of all of the evidence and arguments in

this case, we find that Brinkmann has met its initial burden

in challenging the acquired distinctiveness evidence

submitted by Mag Instrument during the prosecution of its

application. Moreover, Mag Instrument has not overcome this

by ultimately establishing that its mark has acquired

distinctiveness.

The evidence submitted by Mag Instrument during the

prosecution of its application was in response to an

ornamentation refusal based on the examining attorney’s

contention that “the public would perceive the proposed mark

merely as a decorative or ornamental feature of the goods

and not as an indicator [of source].” Office Action, July

10, 2003. In its response to this refusal, Mag Instrument

55

Oppositions Nos. 91163534, 91164169 and 91164340

submitted: a declaration from Mr. Zecchini, promotional

material for Mag Instrument’s flashlights and other goods,

and copies of sixteen declarations from Mag Instrument’s

sales representatives as well as employees or owners of

third-party flashlight resellers.

As discussed previously in this decision, Brinkmann has

demonstrated that the two bands constituting applicant’s

mark are not merely ornamental in nature, but they represent

two charging rings used for recharging the flashlight’s

internal battery. That is, in contrast to the examining

attorney’s refusal based on consumers perceiving the bands

as merely two ornamental stripes on the barrel of a

flashlight, Brinkmann has shown that the two bands actually

have a function and, in essence, represent the configuration

of the recharging rings of the flashlight. Based on the

entire record, including Mag Instrument’s own advertisements

of the MAG CHARGER flashlight illustrating the rings and

their function, we find that consumers will view the dual

bands on the flashlights as simply a non-distinctive

placement of the recharging rings which has not acquired

distinctiveness as a mark.

Mag Instrument has not demonstrated by at least a

preponderance of the evidence that the proposed mark has

acquired distinctiveness. Because the proposed mark is

essentially a configuration of the recharging rings element

56

Oppositions Nos. 91163534, 91164169 and 91164340

of the flashlights, Mag Instrument had to show that the

primary significance of the two bands or recharging rings in

the minds of consumers is not the utilitarian parts of the

flashlight but the source of that flashlight, in order to

establish acquired distinctiveness. See In re

Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.

Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279

(TTAB 2000).

Turning to the direct evidence of acquired

distinctiveness, the sixteen declarations submitted by Mag

Instrument during the prosecution of the application to show

that the dual band mark has acquired distinctiveness have

little persuasive value. They are nearly identical in

wording and thus do not appear to have been prepared in the

signer’s own words. There is no evidence to suggest that

this was a random selection of possible declarants. More

importantly, none of the declarants, except possibly one, is

described as an end consumer. They are almost exclusively

either Mag Instrument’s sales representatives or otherwise

associated with a company in the flashlight retail business.

Mag Instrument also relies heavily on circumstantial

evidence to show that the dual band mark has acquired

distinctiveness. Specifically, it points to twenty-seven

years of use of the dual bands on the MAG CHARGER

flashlight, as well as substantial sales and advertising for

57

Oppositions Nos. 91163534, 91164169 and 91164340

the MAG CHARGER flashlights. With respect to Mag

Instrument’s length of use, it is true that evidence of

substantially exclusive use for a number of years may be

considered as evidence of acquired distinctiveness.

However, the weight to be accorded this kind of evidence

depends on the facts and circumstances of the particular

case. See Yamaha, 840 F.2d at 1576, 6 USPQ2d at 1004.

Here, we find Mag Instrument’s years of use to be simply

insufficient, in itself or in conjunction with the other

evidence of record, to show that the dual bands have

acquired distinctiveness.

As to Mag Instrument’s evidence regarding sales and

advertising of the MAG CHARGER flashlight, the exact numbers

remain confidential, but we acknowledge that the sales

figures (including revenue and units sold) as well as

advertisement expenditures, have been substantial and are

impressive. Nevertheless, as often stated, a successful

advertising campaign is not in itself necessarily enough to

prove secondary meaning. In re Boston Beer Co. L.P., 198

F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on

annual sales under the mark of approximately eighty-five

million dollars, and annual advertising expenditures in

excess of ten million dollars, not sufficient to establish

acquired distinctiveness in view of highly descriptive

nature of mark); Braun Inc. v. Dynamics Corp., 975 F.2d 815,

58

Oppositions Nos. 91163534, 91164169 and 91164340

827, 24 USPQ2d 1121, 1133 (Fed. Cir. 1992) (“[L]arge

consumer demand for Braun's blender does not permit a

finding the public necessarily associated the blender design

with Braun.”); In re Bongrain Int'l (American) Corp., 894

F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)

(growth in sales may be indicative of popularity of product

itself rather than recognition as denoting origin). Here,

the sales and advertising figures fail to reflect public

reaction to the dual bands as a source indicator for

applicant’s flashlights.

Moreover, and perhaps most damaging to Mag Instrument’s

attempt to demonstrate acquired distinctiveness of the

proposed mark, is what is noticeably absent from the record.

There is no evidence that Mag Instrument ever placed any

“look for” advertisements or otherwise made promotional

efforts to create consumer association between the dual

bands, or recharging rings, with the source of the

flashlights.26 The Board and other courts have long taken

notice of the importance of such advertisements in regard to

configuration or product design marks. See Duraco Prods.

Inc. v. Joy Plastic Enter., Ltd., 40 F.3d 1431, 1451, 32

26

Mag Instrument’s claim that the dual band design “is a

trademark of Mag Instrument, Inc.” in an instruction manual for

the MAG CHARGER flashlight (Exh. B-48) hardly constitutes “look

for” advertising. Presumably, consumers would not even see this

small print claim unless they have already purchased the

flashlight.

59

Oppositions Nos. 91163534, 91164169 and 91164340

USPQ2d 1724, 1741 (3d Cir. 1994) (advertising expenditures

“measured primarily with regard to those advertisements

which highlight the supposedly distinctive, identifying

feature” of the product configuration); see also, Thomas &

Betts Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 USPQ2d

1065, 1071-72 (7th Cir. 1995) (advertising “look for the

oval head” for cable ties encourages consumers to identify

the claimed trade dress with the particular producer); First

Brands Corp. v. Fred Meyer Inc., 809 F.2d 1378, 1383, 1

USPQ2d 1779, 1782 (9th Cir. 1987) (“[A]dvertising campaign

has not stressed the color and shape of the antifreeze jug

so as to support an inference of secondary meaning.”);

Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342,

1345 n. 8, 196 USPQ 289, 291 n. 8 (CCPA 1977) (advertising

emphasizing design portion of the mark to potential

customers is persuasive evidence of acquired

distinctiveness). Clearly, the recharging rings were

highlighted in several of Mag Instrument’s advertisements;

however, as previously discussed, it was their utilitarian

purpose or advantage that they give the MAG CHARGER

flashlight that was being touted. We cannot conclude that

such advertisements amount to an attempt to have consumers

view the proposed mark as indicating the source of the

goods.

60

Oppositions Nos. 91163534, 91164169 and 91164340

Accordingly, based upon consideration of all the

evidence in the record, we find that Mag Instrument has

failed to establish that the dual band mark has acquired

distinctiveness.

In view of the above, this opposition is sustained.

Decisions: Oppositions Nos. 91163534 and 91164340

involving claims of likelihood of confusion each are

sustained.

Opposition No. 91164169 is sustained on the ground that

Mag Instrument’s proposed mark is functional, and is

therefore not entitled to registration under Section

2(e)(5). In the event that Mag Instrument’s proposed mark

should be determined to not be functional in any appeal of

this decision, we further find the mark has not acquired

distinctiveness and is not entitled to registration under

Section 2(f).

61