Kohler Co. v. Honda Giken Kogyo K.K.

This Opinion is a

Precedent of the TTAB

Hearing: January 24, 2017 Mailed: December 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Kohler Co.

v.

Honda Giken Kogyo K.K.

_____

Opposition No. 91200146

_____

Kenneth R. Nowakowski and Melinda Giftos, of Husch Blackwell LLP for Kohler Co.

Vinita Ferrera of Wilmer Cutler Pickering Hale and Dorr LLP for Honda Giken Kogyo

K.K.

_____

Notice of Correction

By the Board:

On December 13, 2017, the Board mailed a final decision in this proceeding. It has

come to the Board’s attention that the photograph of the Mantis Control on the left-

hand side of page 105 duplicated the photograph of the Poret Control on the right-

hand side of the page, and did not show the actual Mantis Control, which also appears

on the right-hand side of page 96. A corrected form of the December 13, 2017 opinion

showing the Mantis Control photograph on page 105 is attached hereto.

This Opinion is a

Precedent of the TTAB

Hearing: January 24, 2017 Mailed: December 13, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Kohler Co.

v.

Honda Giken Kogyo K.K.

_____

Opposition No. 91200146

_____

Kenneth R. Nowakowski and Melinda Giftos, of Husch Blackwell LLP for Kohler Co.

Vinita Ferrera of Wilmer Cutler Pickering Hale and Dorr LLP for Honda Giken Kogyo

K.K.

_____

Before Adlin, Heasley, and Larkin,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Table of Contents

Introduction

I. Prosecution History, Pleadings, and Evidentiary Record

A. Prosecution History

B. Pleadings

C. Evidentiary Record

1. Opposer’s Evidence

a. Trial Testimony

b. Notices of Reliance

c. Witness Declarations

Opposition No. 91200146

2. Applicant’s Evidence

a. Trial Testimony

b. Notices of Reliance

II. Evidentiary Objections

A. Applicant’s Objections to Admissibility of Japanese Utility Model Applications

B. Applicant’s Objections to Admissibility of Foreign Trademark Documents

C. Opposer’s Objections to Admissibility of Court Documents From Prior Civil

Infringement Litigation Between Applicant or American Honda, and Third

Parties

D. Daubert Motions

1. Mieritz Testimony Regarding Comparative Engine Performance, Cost, and

Quality

2. Mieritz Testimony Regarding Industry Recognition of GX Engine

3. Reisel Testimony

E. Applicant’s Renewed Motion to Exclude Whitmore Testimony

III. General Factual Background Regarding the GX Engine and Applicant’s Claimed

Mark

A. General Purpose Utility Engines

B. The Development of the GX Engine

C. Redesign of the GX Engine

IV. Standing

V. Defining the Claimed Mark

VI. Opposer’s Functionality Claim

A. The Law of Functionality

B. The Parties’ Arguments Regarding Functionality

C. The Components and Overall Design of the GX Engine

1. The Fan Cover

2. The Fuel Tank

3. The Carburetor Cover

4. The Air Cleaner Cover

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Opposition No. 91200146

5. The Claimed “Configuration of an Engine With an Overall Cubic Design”

6. The Applied-For Mark in Its Entirety

D. The Morton-Norwich Categories of Evidence

1. The Existence of a Utility Patent Disclosing the Utilitarian Advantages of the

Design

a. United States Utility Patents

b. Japanese Model Applications

c. United States Design Patents

2. Advertising Touting the Utilitarian Advantages of the Design

3. Competitive Alternatives

4. Simple and/or Inexpensive Methods of Manufacture

VII. Opposer’s Claim of Lack of Acquired Distinctiveness

A. Opposer’s Prima Facie Case

B. Applicant’s Evidence of Acquired Distinctiveness

1. Direct Evidence

a. Testimony

b. Surveys

2. Circumstantial Evidence

a. Length and Exclusivity of Use

b. Sales and Advertising

c. Proof of Intentional Copying

Decision

Appendix

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Opposition No. 91200146

Introduction

Honda Giken Kogyo K.K. (“Applicant” or “Honda”) seeks registration on the

Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the

product configuration mark shown below for “engines for use in construction,

maintenance and power equipment,” in International Class 7:1

The mark is described in the application as follows:

The mark consists of the configuration of an engine with

an overall cubic design, with a slanted fan cover, the fuel

tank located above the fan cover on the right, and the air

cleaner located to the left of the fuel tank. The air cleaner

cover features a cube shape with beveled top outside edges,

and a belt-like area on the lower portion of the cover

encompassing the entire circumference and the top of the

belt-like area is aligned with a rib of the fuel tank. The

carburetor cover features four ribs along its outside edge

and a receded area where control levers are located. The

1 Application Serial No. 78924545 was filed on July 7, 2006 under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use in October

1983 and first use in commerce in December 1984.

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Opposition No. 91200146

fuel tank is roughly rectangular. The engine features a

beveling that runs around its top circumference.

Color is not claimed as a feature of the mark. Applicant has disclaimed the exclusive

right to use “the design mark’s purely functional components, namely levers, bolts,

nuts and caps.”

Three companies, Cummins Inc. (“Cummins”), Briggs & Stratton Corporation

(“Briggs & Stratton”), and Kohler Company (“Kohler” or “Opposer”), filed separate

oppositions to registration of Applicant’s claimed mark.2 The Cummins opposition

was dismissed and the Briggs & Stratton and Kohler oppositions were consolidated

on February 9, 2012, with the Briggs & Stratton opposition designated as the “parent”

case. Following the parties’ submission of evidence and briefs, and shortly before the

scheduled oral hearing, Briggs & Stratton and Applicant settled and stipulated to

dismissal of Opposition No. 91200832 with prejudice. 226 TTABVUE 2.3 The Board

dismissed that opposition. 228 TTABVUE.

Kohler’s Opposition No. 91200146 remains for decision. The case is fully briefed

and the parties appeared at an oral hearing before the panel on January 24, 2017.

We sustain the opposition on two of the four pleaded claims and do not reach the

others.4

2 Cummins filed Opposition No. 91187217, Kohler filed Opposition No. 91200146, and Briggs

& Stratton filed Opposition No. 91200832.

3 Because the entire trial record is in the file of the now-dismissed Opposition No. 91200832,

citations in this opinion are to the TTABVUE docket in that case. References in this opinion

to “Opposer” may include Briggs & Stratton as well as Kohler, as the context requires.

4 “Like the federal courts, the Board has generally used its discretion to decide only those

claims necessary to enter judgment and dispose of the case. . . [T]he Board’s determination

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Opposition No. 91200146

I. Prosecution History, Pleadings, and Evidentiary Record

A. Prosecution History

The prosecution history of the opposed application is lengthy. We describe it below

in some detail because it bears on several issues in this opposition and because

Applicant’s evidence of acquired distinctiveness made of record during prosecution in

support of its claim to registration under Section 2(f) of the Trademark Act, 15 U.S.C.

§ 1052(f), is automatically of record in this proceeding, subject to any objections.

Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). See also AS Holdings, Inc. v. H & C

Milcor, Inc., 107 USPQ2d 1829, 1831 (TTAB 2013) (citing Cold War Museum, Inc. v.

Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628-29 (Fed. Cir.

2009)).

After Applicant filed its application, the Examining Attorney issued a first Office

Action refusing registration on the ground that Applicant’s claimed mark is a non-

distinctive configuration of the goods that does not function as a mark under Sections

1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1127.

Applicant responded by amending its application to seek registration under

Section 2(f) of the Trademark Act, and made of record: (1) a declaration of Scott

Conner, the Assistant Vice President of Applicant’s subsidiary American Honda

Motor Company, Inc. (“American Honda”), attesting to the sales of “GX engines”

of registrability does not require, in every instance, decision on every pleaded claim.”

Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).

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Opposition No. 91200146

bearing the design shown in the application in the United States since 1984,5 setting

forth revenue and advertising figures for GX Engines and for products incorporating

GX Engines, for periods between 2000-2006, and attaching brochures and

photographs showing the design; and (2) 16 “Distributor Statement[s]” from

distributors of the GX Engines.

The application was approved for publication, but the Examining Attorney then

withdrew the application from publication and issued a second Office Action

requiring Applicant to submit a description of the mark “to clarify what the applicant

seeks to register.” Applicant responded: “The mark consists of the configuration of an

engine. The ‘phantom’ lining shown in the drawing is not part of the mark and serves

only to indicate position.” Applicant submitted an amended drawing of its mark in

which a portion was shown in dotted lines. The application was again approved for

publication and subsequently published for opposition on March 25, 2008.

Four months later, the Commissioner for Trademarks notified the Examining

Attorney of a Letter of Protest claiming that the matter presented for registration

appeared to be functional, and that the Letter of Protest had been accepted by the

Commissioner, who had determined that a clear error had been made in allowing

publication. The Commissioner restored jurisdiction over the application to the

Examining Attorney to take appropriate action on the Letter of Protest.

5 The parties have referred to this engine as the “GX Engine” in their briefs and we will do

so as well except where otherwise indicated.

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Opposition No. 91200146

The Examining Attorney issued a third Office Action now refusing registration of

Applicant’s claimed mark under Section 2(e)(5) of the Trademark Act, 15 U.S.C.

§ 1052(e)(5), because it was a functional design for the goods. The Examining

Attorney also requested that Applicant provide certain information and

documentation regarding the claimed mark.

Applicant responded to the third Office Action by submitting declarations

disputing the functionality of the GX Engine.6 The Examining Attorney issued a

fourth Office Action withdrawing the functionality refusal and requesting that

Applicant provide a more detailed description of its mark. Applicant provided the

following description of its mark in its response: “The mark consists of the

configuration of an engine with a slanted fan cover, the fuel tank located above the

fan cover on the right, and the air cleaner located above the fan cover on the left. The

broken lining in the drawing is not part of the mark and serves only to indicate

position.” The application was again approved for publication.

The application was again withdrawn from publication, however, and remanded

to the Examining Attorney.7 The Examining Attorney issued a fifth Office Action

reinstating the functionality refusal, rejecting Applicant’s evidence, and referring to

three of Applicant’s patents that had previously been made of record. The Examining

Attorney noted that the mark might be registrable if Applicant limited its claimed

mark to the following elements: “The overall ‘cubic’ look of the engine; the shape of

6 Statements made in these declarations “are not testimony on behalf of [Applicant] . . .”

Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2).

7 February 5, 2010 Office Action at 1.

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Opposition No. 91200146

the air cleaner housing; the design of the carburetor cover; the shape and size of the

fuel tank; the combined and complementary shape of the fuel tank and air cleaner

housing; and the positioning and orientation of the major engine components.”8 The

Examining Attorney requested a new description of the claimed mark and an

amended drawing.

Applicant responded by submitting a new description of its claimed mark in the

form currently in the opposed application. Applicant declined to submit a new

drawing on the ground that while “there were functional portions of the design, the

shape and position of such portions constitutes part of the design.”9 The Examining

Attorney issued a sixth Office Action accepting Applicant’s amended description of its

mark, but making final the requirement for an amended drawing.

Applicant filed a Request for Reconsideration requesting that the Examining

Attorney enter a statement in the application that the “design mark does not include

the purely functional components, namely, levers, bolts, nuts, and caps.” The

statement was entered and the application again was published for opposition.

B. Pleadings

Opposer filed a Second Amended Notice of Opposition on February 2, 2013.10 It

alleges that Applicant’s claimed mark is primarily functional, under Section 2(e)(5)

of the Trademark Act, 15 U.S.C. § 1052(e)(5);11 has not acquired distinctiveness under

8 February 5, 2010 Office Action at 1.

9 August 4, 2010 Response to Office Action at 1.

10 46 TTABVUE.

11 ¶¶ 6, 8-10.

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Opposition No. 91200146

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f);12 is generic;13 and has been

abandoned.14 Applicant answered,15 denying Opposer’s material allegations.

C. Evidentiary Record

The evidentiary record is voluminous, comprising more than 5,000 pages of

testimony, exhibits, and other documentary evidence. It consists of the pleadings

discussed above, the file of the involved application, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and various types of evidence made of record by

the parties during their respective testimony and rebuttal periods, or otherwise by

agreement of the parties.

Most of the parties’ evidentiary submissions, as well as their briefs, have been

filed in both a redacted (public) version, and an unredacted (confidential) version

under seal, because they contain material that the parties designated as

“Confidential” or “Attorneys’ Eyes Only” under a stipulated Confidentiality and

Protective Order filed by the parties and approved by the Board.16 Under the terms

12 ¶¶ 4-5, 7. Opposer’s pleaded claim is that Applicant’s mark is not distinctive under Section

2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). To conform to the claim pursued by

Opposer and defended by Applicant at trial, and given Applicant’s admission during

prosecution that its applied-for mark is not inherently distinctive, but has acquired

distinctiveness, we construe this claim as pleading that Applicant’s mark has not acquired

distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).

13 ¶¶ 4-5, 7, 15.

14 ¶¶ 11-14.

15 89 TTABVUE.

16 8/9 TTABVUE. In our description of the record below, the public and confidential versions

of filings are identified by two citations to the TTABVUE file (e.g., 162/163 TTABVUE), with

the first number identifying the public version of a filing and the second and any additional

numbers indicating the confidential version(s). In some instances noted below, there is no

publicly accessible version of a filing, or there is an incomplete one (e.g., exhibits without

accompanying testimony). Except where otherwise indicated, citations in this opinion to

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Opposition No. 91200146

of the Protective Order, materials designated as Confidential are “to be shielded by

the Board from public access.” 8 TTABVUE 6.

This obligation presents a significant challenge in discussing the evidence in a

publicly accessible opinion. The difficulty is compounded by the extensive and, in

many instances, indiscriminate, designation of entire deposition transcripts and

other materials as Confidential without any apparent basis for the designation, as

perhaps revealed by the fact that some testimony and materials designated as

Confidential have been discussed, quoted, or cited by one or both of the parties in

their publicly accessible briefs.17

Confidentiality designations do not provide absolute immunity from the public

disclosure of materials so designated. See Noble House Home Furnishings, LLC v.

Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (the Board must be

able to discuss the record evidence in its opinions unless there is an overriding need

for confidentiality). Cf. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board

may treat as not confidential that material which cannot reasonably be considered

confidential, notwithstanding a designation as such by a party.”). Accordingly, while

specific pages in the record and in the parties’ briefs are to the public versions of the filings,

and citations to testimony are to the internal pages and lines of the pertinent transcript (e.g.,

Tr. 131:18-132:6), with identification of the witness if required, rather than to the

corresponding TTABVUE pages. We will use the term “Confidential” to describe the parties’

designations of testimony and documents as either “Confidential” or “Attorneys’ Eyes Only.”

17 Where, in any publicly accessible filing, a party has cited, quoted from, or described,

without redaction, testimony or documents designated by it as Confidential, we have treated

this as a waiver of its claim of confidentiality. Where, in any publicly accessible filing, a party

has cited, quoted from, or described, without redaction, testimony or documents designated

by its adversary as Confidential, and the adversary has not subsequently objected, we have

also treated this as a waiver of the adversary’s claim of confidentiality as to the content and

subject matter of the pertinent materials.

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Opposition No. 91200146

we will give appropriate consideration to the parties’ designations of evidence as

Confidential, we will not be bound by inappropriate designations and “in this opinion,

we will treat only testimony and evidence that is truly confidential or commercially

sensitive as such.” Noble House, 118 USPQ2d at 1416 n.21.18

1. Opposer’s Evidence

a. Trial Testimony:

● Testimony deposition of Dr. John Reisel, an expert witness on functionality,

and exhibits thereto (164/165 TTABVUE);

● Testimony deposition of Jeff Whitmore, a Briggs & Stratton engineer, and

exhibits thereto (166/171 TTABVUE);

● Testimony deposition of Cameron Litt, a Kohler employee, and exhibits thereto

(162/163 TTABVUE); and19

● Testimony and rebuttal testimony depositions of Hal Poret, a marketing expert

witness who conducted a survey, and exhibits thereto (199 TTABVUE);

18Where necessary to protect such evidence from disclosure, we have summarized it in

general terms.

19 Opposer did not file a redacted version of the transcript of Mr. Litt’s testimony deposition.

Opposer also did not file redacted versions of Applicant’s responses to certain requests for

admission, and the deposition excerpts referenced in Opposer’s Second, Third, Fourth, and

Fifth Notices of Reliance. Applicant did not file redacted versions of the deposition transcripts

of Motohiro Fujita and Scott Conner, the discovery depositions of Peter Hotz and Mr. Fujita,

the prior testimony of Kevin Hoag, and Briggs & Stratton’s responses to certain requests for

admission. “[B]ecause it is the general policy of the Board that all papers in a proceeding be

public, Opposer[] and Applicant are allowed until thirty days from the date of this decision

in which to submit redacted versions of these [materials], failing which they will be treated

as part of the public record.” Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1398

n.39 (TTAB 2016).

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Opposition No. 91200146

b. Notices of Reliance:

● First Notice of Reliance on Applicant’s admissions in response to Briggs &

Stratton’s First, Second, Fourth, Fifth, and Sixth Sets of Requests for Admission

(Requests for Admission Nos. 1-353 and exhibits thereto), Applicant’s Supplemental

Responses to Briggs & Stratton’s Fifth Set of Requests for Production of Documents,

and a copy of a December 16, 2005 Decision of the Second Board of Appeal of the

Office for Harmonization in the Internal Market (Trade Marks and Designs) on an

application filed by Applicant to register a three-dimensional trademark in the

European Union (114/116 TTABVUE);

● Second Notice of Reliance on Internet pages showing third-party engines and

Applicant’s marketing and sale of the GX Engine, and excerpts of a deposition of

expert witness Kevin L. Hoag taken in a prior litigation involving American Honda,

by stipulation of the parties (117/118 TTABVUE);20

● Third Notice of Reliance on excerpts from the discovery deposition of

Applicant’s Rule 30(b)(6) designee Yukio Sugimoto, and certain exhibits thereto, by

agreement of the parties (122/123 TTABVUE);

● Fourth Notice of Reliance on excerpts from the discovery deposition of John

Lally, an employee of Applicant, and certain exhibits thereto, by agreement of the

parties (121/124 TTABVUE);

20 The parties entered into a number of stipulations and agreement regarding the

presentation of evidence. 104 TTABVUE; 119 TTABVUE; 120 TTABVUE; 140 TTABVUE.

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Opposition No. 91200146

● Fifth Notice of Reliance on a page from the discovery deposition of Applicant’s

Rule 30(b)(6) designee Motohiro Fujita and an exhibit thereto (125/126 TTABVUE);

● Sixth Notice of Reliance on various of Applicant’s United States patents and

Japanese utility model applications (127/128 TTABVUE);

● Seventh Notice of Reliance on excerpts from the discovery deposition of Kohler

employee Manuel Rumao and an exhibit thereto, by agreement of the parties, and an

exhibit from the discovery deposition of Briggs & Stratton employee Peter Hotz

(167/168 TTABVUE);

● Eighth Notice of Reliance on additional excerpts from the deposition of Mr.

Hoag taken in the above-mentioned prior litigation involving American Honda

(169/170 TTABVUE);

● Ninth Notice of Reliance on excerpts from the discovery deposition of Mr. Hotz

(172/173 TTABVUE);

● Tenth Notice of Reliance on excerpts and exhibits from the discovery deposition

of Mr. Conner (174/175 TTABVUE);

● Eleventh Notice of Reliance on pp. 201-216 from an article by Shari Seidman

Diamond, a professor at Northwestern University School of Law, entitled “Control

Foundations: Rationales and Approaches” from Trademark and Deceptive

Advertising Surveys, Law, Science, and Design (2012) (176 TTABVUE);21

21 Opposer offers these pages from Professor Diamond’s article as part of a printed

publication. 176 TTABVUE 3. Applicant similarly offered portions of the Reference Guide on

Survey Research from the Reference Manual on Scientific Evidence, also written by Professor

Diamond, under notice of reliance as printed publications. 141 TTABVUE. In the absence of

any objections, we will consider these materials for substantive guidance on the survey issues

discussed below.

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Opposition No. 91200146

● Twelfth Notice of Reliance on excerpts from the prosecution history of United

States Patent No. 4,813,385 (177 TTABVUE);

● Thirteenth Notice of Reliance on certain Internet pages regarding the

marketing and sale by third parties of GX Engines with cyclone air cleaners (178

TTABVUE); and

● Fourteenth Notice of Reliance on advertisements for Briggs & Stratton

engines, Kohler engines, and third-party engines, as well as GX Engines, including

from Applicant’s websites and third-party websites (178 TTABVUE).

c. Witness Declarations:

● Declarations of Brad Murphy, Larry Cotton, Denis Bedard, and Allen Gillette,

employees of third-party engine manufactures, by agreement of the parties (130/131

TTABVUE).

2. Applicant’s Evidence

a. Trial Testimony:

● Testimony deposition of Mr. Fujita, and exhibits thereto (202 TTABVUE);

● Testimony deposition of Mr. Conner, and exhibits thereto (188/186/189

TTABVUE);

● Testimony deposition of George Mantis, a marketing expert witness who

conducted a survey, and exhibits thereto (185 TTABVUE); and

● Testimony deposition of James Mieritz, an expert witness on functionality, and

exhibits thereto (197/196 TTABVUE);

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Opposition No. 91200146

b. Notices of Reliance:

● First Notice of Reliance on excerpts from the discovery deposition of Mr. Hotz,

and certain exhibits thereto (154/155 TTAB);

● Second Notice of Reliance on the discovery deposition of Manuel Rumao, and

exhibits thereto, filed by stipulation of the parties (156/155 TTABVUE);

● Third Notice of Reliance on Briggs & Stratton’s Second Supplemental

Responses to certain interrogatories in Applicant’s First and Second Sets of

Interrogatories (152/151 TTABVUE);

● Fourth Notice of Reliance on Kohler’s Second Supplemental Responses to

certain interrogatories in Applicant’s First and Second Sets of Interrogatories

(150/159 TTABVUE);

● Fifth Notice of Reliance on Briggs & Stratton’s admissions in response to

certain requests in Applicant’s First Set of Requests for Admission (149/148

TTABVUE);

● Sixth Notice of Reliance on Kohler’s admissions in response to certain requests

in Applicant’s First Set of Requests for Admission (147 TTABVUE);

● Seventh Notice of Reliance on the certificate of registration of Community

Trademark No. 003365988 (146 TTABVUE);

● Eighth Notice of Reliance on various court documents from prior civil litigation

between Applicant or American Honda, and third parties (150 TTABVUE);

● Ninth Notice of Reliance on counter excerpts from the discovery deposition of

Mr. Fujita, and certain exhibits thereto (145/144 TTABVUE);

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Opposition No. 91200146

● Tenth Notice of Reliance on counter excerpts from the deposition of Mr. Hoag

in earlier civil litigation, and his expert report, by agreement of the parties

(143/142 TTABVUE); and

● Eleventh Notice of Reliance on certain pages from Professor Diamond’s

Reference Guide on Survey Research, Reference Manual on Scientific Evidence (2d

ed. Federal Judicial Center 2000) and (3d ed. Federal Judicial Center 2011) (141

TTABVUE).

II. Evidentiary Objections

The parties devote more than 30 pages of their briefing at final hearing to

numerous detailed evidentiary objections.22 As a general matter, “the Board is

capable of weighing the relevance and strength or weakness of the objected-to

testimony and evidence, including any inherent limitations,” and keeping in mind

“the various objections raised by the parties” in determining the probative value of

objected-to testimony and evidence. Luxco, Inc. v. Consejo Regulador del Tequila,

A.C., 121 USPQ2d 1477, 1479 (TTAB 2017). To the extent necessary, we decide below

the parties’ major evidentiary objections going to the admissibility, rather than the

weight, of certain evidence.

22 Applicant also renewed a pre-trial motion to strike portions of Mr. Whitmore’s testimony,

to which the parties had already devoted more than 40 pages of briefing. 208 TTABVUE 64

n.3.

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Opposition No. 91200146

A. Applicant’s Objections to Admissibility of Japanese Utility Model

Applications23

Applicant objects to the admission of copies of Japanese-language and translated

versions of 14 Japanese utility model applications filed by Applicant with the

Japanese Patent Office and made of record under Opposer’s Sixth Notice of Reliance.

The bases for the objection are that the rationales for the relevance of United States

utility patents and applications set forth in Valu Eng’g Inc. v. Rexnord Corp., 278

F.3d 1268, 61 USPQ2d 1422, 1429 (Fed Cir. 2002), do not apply to foreign patent

documents because foreign patents do not cover the United States and implicate non-

U.S. law, and because the Japanese utility model system has no counterpart in

United States law and it is not clear whether the Japanese applications were ever

examined or ever issued. 208 TTABVUE 71-72.

Opposer argues that these materials should be considered under TrafFix Devices,

Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), and Valu Eng’g,

given the evidentiary significance of the statements made by Applicant, and that

Applicant’s statements in the Japanese applications were admissions. 209 TTABVUE

42.

The admissibility of foreign utility model applications appears to be an issue of

first impression for the Board, as the parties have not cited, and we have not found,

any applicable Federal Circuit or Board cases. In Valu Eng’g, the Federal Circuit held

23 The Japanese utility model system protects the utilitarian shape or structure of a device

for a shorter term than under the Japanese patent system. 208 TTABVUE 71-72; 209

TTABVUE 42-43.

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Opposition No. 91200146

that “an abandoned patent application should be considered under the first Morton-

Norwich factor, because an applied-for utility patent that never issued has

evidentiary significance for the statements and claims made in the patent application

concerning the utilitarian advantages, just as an issued patent has significance.” 61

USPQ2d at 1429. Although non-U.S. patents do not appear to have been at issue in

that case, this rationale is not jurisdiction-specific, and we note that the analysis of

any statements or claims made by Applicant in its Japanese utility model

applications does not require us to understand or apply Japanese law.24 Instead, that

analysis requires us to do what we must do in considering Applicant’s issued United

States patents—determine whether the claims and disclosures in the patent show

the utilitarian advantages of the design sought to be registered as a trademark. See,

e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed.

Cir. 2012). Indeed, this is what we do in examining an applicant’s statements in

advertising in functionality cases as well. We overrule Applicant’s objection and have

considered the utility model applications for whatever probative value they may have

on the issue of functionality.

24 See Alphaville Design, Inc. v. Knoll, Inc., 627 F. Supp. 2d 1121, 1132-33 (N.D. Cal. 2009)

(court reviewed two expired foreign patents to determine whether defendant and

counterclaimant had committed fraud on the Patent and Trademark Office by failing to

disclose the foreign patents); Franek v. Walmart Stores, Inc., 2009 WL 674269, at *14 (N.D.

Ill. Mar. 13, 2009) (court analyzed the impact of a foreign patent on the functionality of the

plaintiff’s circular beach towel design), aff’d sub nom., Jay Franco & Sons, Inc. v. Franek, 96

USPQ2d 1404 (7th Cir. 2010).

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Opposition No. 91200146

B. Applicant’s Objections to Admissibility of Foreign Trademark

Documents

Applicant objects to the admission of two documents that it alleges are irrelevant

that were made of record under Opposer’s First Notice of Reliance: (1) a copy of the

December 16, 2014 Decision of the Second Board of Appeal of the Office of

Harmonization in the Internal Market (Trademarks and Designs) (“OHIM”)25

affirming a refusal to register a three-dimensional depiction of the GX Engine shown

in Applicant’s Community Trademark Application No. 3 365 996, and (2) a copy of a

May 30, 2005 filing by Applicant’s Turkish counsel with a Turkish court in support

of a request for a precautionary injunction against a Turkish company that Applicant

claimed was selling water pumps containing counterfeits of the GX Engine. 116

TTABVUE 408-414, 457-473 (Confidential Version).

Opposer argues that it does “not rely on the objected-to foreign trademark

documents for any legal conclusions or application of ‘foreign trademark standards,’”

but rather on the OHIM “tribunal’s observation that the vertical and horizontal

planes of the GX engine are ‘in line’ in order to create a more compact engine,” and

the statements made by Applicant’s counsel in the Turkish litigation “that the GX

engine is ‘renowned … for occupying little space’ and that the red, white, and black

color combination is the ‘most important feature’ of the GX engine trade dress,” which

Opposer claims are admissions by Applicant. 209 TTABVUE 40.

25On March 23, 2016, OHIM’s name was changed to the European Union Intellectual

Property Office.

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Opposition No. 91200146

The portion of the OHIM decision cited by Opposer contains the tribunal’s

summary of Applicant’s arguments about the features of its three-dimensional engine

shape and its finding regarding the lack of inherent distinctiveness under European

Community law, 114 TTABVUE 176, an issue that is not before us and on which

European Community law is at odds with United States law.26 We sustain Applicant’s

objection to its admissibility, and have given it no consideration in our decision.

The statements regarding the constituent elements of Applicant’s trade dress, and

its recognition around the world, made by Applicant’s Turkish counsel, are, however,

factual statements made by an authorized agent of Applicant that do not implicate

Turkish law. We overrule Applicant’s objection to the admissibility of these

statements, and have considered them for whatever probative value they may have

on the issues of functionality and acquired distinctiveness.

C. Opposer’s Objections to Admissibility of Court Documents From

Prior Civil Infringement Litigation Between Applicant or American

Honda, and Third Parties

Opposer objects to the admission of copies of documents from the files of two civil

trade dress infringement suits against third parties, Powertrain, Inc. et al. v. Am.

Honda Motor Co., Case No. 1:03-cv-00688-MPM in the United States District Court

for the Northern District of Mississippi, and Honda Motor Co. v. The Pep Boys, et al.,

Case No. 2:05-cv-00879-WDK-VBK in the United States District Court for the Central

District of California, made of record under Applicant’s Eighth Notice of Reliance.

26 Under United States trademark law, product designs can never be inherently distinctive.

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069-70 (2000).

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Opposition No. 91200146

157 TTABVUE. Specifically, these documents comprise jury instructions, a completed

jury verdict form, and a permanent injunction from the Powertrain case, and an order

on cross-motions for summary judgment in the Pep Boys case. Applicant claims that

these documents are “relevant to the non-functionality and secondary meaning of the

applied-for mark in this proceeding.” 157 TTABVUE 3. Opposer objects to their

admission principally on the ground that the trade dress at issue in the civil cases

was three-dimensional in nature and involved “many features which are not claimed

in the applied-for mark.” 204 TTABVUE 64. Applicant makes four arguments for the

admissibility of these documents: (1) the three-dimensional trade dress at issue in

the civil cases “included the two-dimensional, front view of the GX that is the subject

of this proceeding,” 208 TTABVUE 61; (2) Opposer relied on testimony, documents,

and settlement agreements from the two litigations, including on its motion for

summary judgment on the issue of functionality; (3) the proffered litigation

documents “provide context for the documents and testimony relied upon by

Opposer;” and (4) Opposer failed to object to “numerous exhibits relating to

intentional copying of the GX trade dress introduced during Mr. Conner’s trial

testimony.” 208 TTABVUE 62.

The three-dimensional trade dress claimed by Applicant and American Honda in

the Powertrain and Pep Boys cases, and referred to in the objected-to documents,

differed significantly in scope from Applicant’s applied-for mark.27 In contrast to

27 For example, in the summary judgment order in the Pep Boys case, the court listed 14

claimed non-functional elements of the GX Engine trade dress: “(1) the valve cover shape and

design; (2) the fan cover shape, including a unique combination of angular and rounded edges,

and the shape of the air guide portion of the fan cover; (3) the fuel tank size and shape; (4)

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Opposition No. 91200146

statements made by a party or its authorized representative about an issue or fact

relevant here, decisions by other courts based upon different factual records and

concerning a different claimed trade dress are not relevant in this proceeding. See

Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1665-66 (TTAB 2010),

aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (finding in opposition that

fame of opposer’s marks had not been established on the basis of a prior court decision

and had to be established on the record in the opposition, which the applicant had

the chance to challenge); Fed. R. Evid. 401. We sustain Opposer’s objections to the

admissibility of these documents from the Powertrain and Pep Boys cases with

respect to the issue of “the non-functionality and secondary meaning of the applied-

for mark in this proceeding,” 157 TTABVUE 3, and have given them no consideration

in our decision.

D. Daubert Motions

Both parties seek to exclude expert testimony under Daubert v. Merrell Dow

Pharm., Inc., 509 U.S. 579, 27 USPQ2d 1200 (1993). Opposer seeks to exclude two

portions of Mr. Mieritz’s testimony, 204 TTABVUE 57-64, while Applicant seeks to

exclude all of Dr. Reisel’s testimony. 208 TTABVUE 64-68.

the engine oil fill cap color; (5) the muffler heat shield design; (6) the oil alert system

placement; (7) the location, shape, and design of the oil fill cap and drain cap; (8) the number,

location, and size of the air cooling fins; (9) the trapezoidal shape and size of the base pad;

and (10) the relative position and orientation of each of the major engine components,” as

well as “(1) the air cleaner housing, including the wing-nut design; (2) the carburetor cover,

including the shape, plastic ribs, label placement, control placement, bolt locations, and bolt

orientation; and (3) the combined and complimentary shape of the fuel tank, air cleaner

housing, and muffler heat shield, each with a unique beveled edge angled to the outside of

the engine and straight edge facing inward; and (4) the design and orientation of the fuel

tank mount.”

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Opposition No. 91200146

Under Daubert, the Board, like a federal district court, “acts as a ‘gatekeeper’ and

determines the admissibility of expert testimony and the qualifications of expert

witnesses” and “has ‘broad discretion in determining whether to admit or exclude

expert testimony.’” Corporacion Habanos, S.A. v. Guantanamera Cigar Co., 102

USPQ2d 1085, 1094 (TTAB 2012) (quoting U.S. ex rel. Miller v. Bill Harbert Int’l

Constr., Inc., 608 F.3d 871, 895 (D.C. Cir. 2010)). Our gatekeeper function, however,

necessarily differs somewhat from that of a court given the nature of Board litigation.

A key goal of the gatekeeper in many court cases is to keep unreliable expert

testimony from a jury. See, e.g., Cook ex. Rel. Estate of Tessier v. Sheriff of Monroe

Cty., 402 F.3d 1092, 1111 (11th Cir. 2005) (“[E]xpert testimony may be assigned

talismanic significance in the eyes of lay jurors, and, therefore, the district courts

must take care to weigh the value of such evidence against its potential to mislead or

confuse.”). That concern is not applicable here because there is no jury waiting behind

the gate.

Daubert also applies to non-jury trials, but in that context we find instructive the

statement of the Seventh Circuit in In re Salem, 465 F.3d 767, 777 (7th Cir. 2006),

that where “the factfinder and the gatekeeper are the same, the [trial] court does not

err in admitting evidence subject to the ability later to exclude it or disregard it if it

turns out not to meet the standards of reliability established by Rule 702.” The

application of this approach seems especially sensible in Board proceedings, where

there are no pre-trial motions in limine, and Daubert motions are not considered until

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Opposition No. 91200146

a case is ready for decision and the entire evidentiary record is under review.

Trademark Rule 2.123(j), 37 C.F.R. § 2.123(j). See 181 TTABVUE.

We will thus exercise our discretion to admit or exclude expert testimony under

Daubert mindful of the fact that the “Board is capable of weighing the relevance and

strength or weakness of the objected-to testimony and evidence, including any

inherent limitations” while taking into account “the various objections raised by the

parties” and according “whatever probative value the subject testimony and evidence

merit.” Luxco, 121 USPQ2d at 1479.

1. Mieritz Testimony Regarding Comparative Engine

Performance, Cost, and Quality

Opposer first seeks to exclude Mr. Mieritz’s responses to a series of questions

“regarding the comparison of components of the Honda GX engine to components of

other engines in the market with respect to performance, quality and manufacturing

cost.” 204 TTABVUE 58.

Opposer does “not question Mieritz’s qualifications to render opinions in this

category of testimony” but argues that his “testimony lacks reliability as it is not

based on sufficient facts or data, nor is it the product of reliable principles and

methods reliably applied to the facts of the case.” 204 TTABVUE 58. In Opposer’s

view, Mr. Mieritz’s opinions “were nothing more than conclusory answers that lack

factual foundation and analytical support” because he did no comparison testing

between the engines or any other product testing, did not speak with Applicant’s

engineers before forming his opinions, and did not review or even ask for documents

or data relevant to the issues on which he opined. 204 TTABVUE 61-62.

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Opposition No. 91200146

Applicant responds that Mr. Mieritz was employed by Briggs & Stratton in a

variety of positions for over 40 years and developed and tested engines, including

engines made by Briggs & Stratton’s competitors, and that Rule 702 of the Federal

Rules of Evidence “‘specifically contemplates the admission of testimony by experts

whose knowledge is based on experience.’” 208 TTABVUE 56 (quoting Walker v. Soo

Line R.R. Co., 208 F.3d 581, 591 (7th Cir. 2000)). Applicant cites the Advisory Note

to Rule 702 and cases that have qualified experts, and admitted their testimony, on

the basis of their experience rather than data, 208 TTABVUE 57, and argues that

Mr. Mieritz “had ample support for his opinions comparing the general performance

and costs of each component comprising the GX to its competitors based on his

substantial direct experience designing engine components, analyzing manufacturing

costs and incorporating such consideration of manufacturing costs into the design and

development process, and testing competitor engines in the ordinary course of his

over 40 years of work with Briggs.” 208 TTABVUE 58-59.

Rule 702 of the Federal Rules of Evidence, made applicable to Board proceedings

by Rule 2.122(a) of the Trademark Rules of Practice, 37 C.F.R. § 2.122(a), provides as

follows:

A witness who is qualified as an expert by knowledge, skill,

experience, training, or education may testify in the form

of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other specialized

knowledge will help the trier of fact to understand the

evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

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Opposition No. 91200146

(c) the testimony is the product of reliable principles and

methods; and

(d) the expert has reliably applied the principles and

methods to the facts of the case.

Fed. R. Evid. 702.

We overrule Opposer’s objection. Mr. Mieritz’s experience with engines, including

the GX Engine, while working for Briggs & Stratton, gives him a sufficient basis to

compare generally the performance, quality, and manufacturing costs of the GX

Engine and competitive engines so long as his specific opinions are not based upon a

subjective belief or unsupported speculation. Corporacion Habanos, 102 USPQ2d at

1095. Opposer’s objections to: (1) testimony in which he acknowledged not having

seen data regarding the differences in the performance and manufacturing cost of the

fan covers of the various engines,28 (2) testimony regarding performance, cost, and

quality of engine components,29 (3) testimony regarding the comparative quality of

the fuel tanks of the various engines, in which he “assume[s] they all perform the

same as the Honda,”30 and (4) testimony that he “feel[s] that the [Briggs & Stratton

Vanguard] air cleaner cover performs -- equally as well as the Honda air cleaner

cover,”31 go to the weight to be accorded his testimony, not its admissibility. We agree

with the observation of the court in Metavante Corp. v. Emigrant Sav. Bank, 619 F.3d

748, 762 (7th Cir. 2010), that our “[d]etermination on admissibility should not

28 Tr. 45:10-25.

29 Tr. 32:4-20; 43:15-44:2; 44:23-45:5; 55:20-24; 56:25-57:11; 68:12-19; 68:20-69:1; 74:25-75:5;

75:6-10; 75:11-15; and 75:16-20.

30 Tr. 32:21-33:8.

31 Tr. 55:25-56:24.

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Opposition No. 91200146

supplant the adversarial process; shaky expert testimony may be admissible,

assailable by its opponents through cross-examination.” (Internal quotation marks

omitted). We therefore have considered these portions of the Mieritz testimony for

whatever probative value they may have.

2. Mieritz Testimony Regarding Industry Recognition of GX

Engine

Opposer also objects to Mr. Mieritz’s testimony “about his perception of the market

recognition of the GX engine appearance.” 204 TTABVUE 62. That testimony is set

forth below:

Q. During your time at Briggs & Stratton, did you have an

opportunity to speak with any OEMs, distributors or

dealers about competitors’ engines?

A. Yes, I did.

Q. For what purpose?

A. We would -- I would go to the OEMs, distributors and

dealers with our sales and marketing people periodically. I

was there usually with a new engine or we’re trying to get

a new customer. I was there as engineering support.

Q. Approximately how many times did you speak to OEMs,

distributors or dealers about competitor engines during

your time at Briggs?

A. OEMs, I visited approximately 20 times. Distributors,

maybe ten times. Dealers, I would often go off on my own

and talk to dealers. And it might be over 100 times.

Q. Did you ever discuss the Honda GX engine in any of

those conversations?

A. Yes, we did.

*****

Q. Based on those conversations, did you observe the extent

to which people in the industry recognized the look of the

GX engine?

Mr. Nowakowski: Objection. Foundation.

A. Yes. I discussed with them the overall look of engines.

Q. And what was your observation with that respect?

Mr. Nowakowski: Same objection.

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Opposition No. 91200146

A. In discussing with them and even colleagues, it became

apparent that the Honda engine, the overall look was

easily identified throughout the industry.

Q. Based on your --

Mr. Nowakowski: I’d also object on hearsay grounds.32

Opposer argues that Mr. Mieritz is not an expert in consumer or market research

and did not conduct a consumer survey, and that his testimony regarding consumer

recognition is outside the area of his expertise and not the product of reliable

principles and methods, as required by Rule 702(c) of the Federal Rules of Evidence.

Opposer also claims that his testimony is inadmissible as lay opinion testimony under

Rule 701 of the Federal Rules of Evidence.

This portion of Mr. Mieritz’s testimony goes to the recognition of the GX Engine

by OEMs, distributors, and dealers, and thus implicates their state of mind. Mr.

Mieritz is not qualified as an expert on consumer perception, and he did not employ

generally accepted research methodology or techniques in any event. His testimony

is thus inadmissible under Daubert as expert testimony. See Alcatraz Media, Inc. v.

Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1756-57 (TTAB 2013) (professional

travel writer and editor, who qualified as an expert in the field of travel writing and

journalism, was not qualified to render opinions regarding whether the average

traveler perceived “Annapolis Tours” as a generic term based upon telephone and

online conversations about visiting Annapolis, Maryland), aff’d mem., 565 F. App’x

900 (Fed. Cir. 2014); Corporacion Habanos, 102 USPQ2d at 1095-96 (excluding

testimony of tobacconist regarding perception of GUANTANAMERA brand in United

32 Tr. 96:12-97:8; 97:20-98:11.

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Opposition No. 91200146

States because even though he was qualified as an expert in the advertising and

selling of Cuban cigar brands in the United States to render an opinion on that topic,

his opinion was based upon “conversations with customers and other tobacconists

over an unspecified period of time,” an unreliable “technique” under Daubert).

It is also inadmissible as lay opinion testimony. Mr. Mieritz’s testimony purports

to reflect his subjective assessment of the collective state of mind of OEMs, dealers,

and distributors regarding their recognition of the three-dimensional appearance of

the GX Engine over a decade ago,33 based solely upon “discussi[ons] with them and

even colleagues.” Tr. 96:12-97:8; 97:20-98:11. The details of the discussions that led

him to conclude that “the overall look was easily identified throughout the industry”

are not documented or otherwise specified, and we cannot determine, from Mr.

Mieritz’s vague references to numerous conversations during his career, whether his

opinion “is rationally based on the witness’s perception.” Fed. R. Evid. 701(a). We

sustain Opposer’s objections to these portions of Mr. Mieritz’s testimony, and have

given them no consideration in our decision.

3. Reisel Testimony

Applicant seeks to exclude the entire testimony of Opposer’s expert John Reisel—

a Ph.D in mechanical engineering and a tenured professor of mechanical engineering

at the University of Wisconsin-Milwaukee—on the ground that he is not qualified to

opine on the functionality of the applied-for mark. 208 TTABVUE 64-68. Applicant

argues that Dr. Reisel lacks the requisite academic training in engine design and the

33 Mr. Mieritz has been retired and out of the engine industry since 2006. Tr. 138:20-22.

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Opposition No. 91200146

external appearance of engines; has never designed an engine or an engine

component; has never studied or taught the external design of engines or engine

manufacturing costs; and has had only limited exposure to the GX Engine and third-

party horizontal shaft engines; and that while he may be “an expert on engine

emissions or other aspects of mechanical engineering … such expertise has nothing

to do with knowing and understanding the factors regarding the external appearance

of a horizontal shaft engine.” 208 TTABVUE 66-68. Applicant cites several cases

involving the disqualification of experts, but relies in particular on Shreve v. Sears,

Roebuck & Co., 166 F. Supp. 2d 378 (D. Md. 2001), in which the court excluded the

expert testimony of a mechanical engineer on the ground that he was not qualified as

an expert on the particular issue before the court and had not applied reliable

scientific methodology in arriving at his opinions. 208 TTABVUE 65.

Opposer responds that Dr. Reisel is qualified to opine about the claimed

functionality of the applied-for mark by virtue of his education and professional

experience; his teaching, on 14 occasions, of a senior-level college course on internal

combustion engines; his interactions with engineers at Opposer and Briggs &

Stratton to familiarize himself with the particular engines at issue; and his

experience with the professional literature. 209 TTABVUE 37-38. Opposer argues

that his testimony regarding functionality is directed to the impact of the several

components of the GX Engine on the external appearance of the engine, which is the

essence of the applied-for mark. 209 TTABVUE 38.

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Opposition No. 91200146

Shreve collected a number of decisions on when mechanical engineers may testify

as experts in “the vast field of mechanical engineering.” 166 F. Supp. 2d at 392. The

most instructive is Lavespere v. Niagara Machine & Tool Works, Inc., 910 F.2d 167,

176 (5th Cir. 1990), in which the court did not require industry-specific expertise and

knowledge, or experience in the design of the particular product at issue, for a

professor of mechanical engineering to be qualified as an expert regarding safe design

of the product, even though his knowledge was gained “through reviewing literature

rather than through hands-on experience.”

Here, Dr. Reisel’s academic training in mechanical engineering, his preparation

and teaching of the course on internal combustion engines, and his interactions with

company engineers regarding the particular engines at issue in this case, provide a

sufficient, if imperfect, “fit between [his] specialized knowledge and experience and

the issues before the [Board]” to make his testimony helpful to us as the trier of fact

under Rule 702. Shreve, 166 F. Supp. 2d at 392-93; cf. Ancho v. Pentek Corp., 157 F.3d

512, 518-519 (7th Cir. 1998) (mechanical engineer not qualified to testify about

manufacturing plant redesign where he had never bothered to visit plant whose

reconfiguration he suggested); Oglesby v. Gen. Motors Corp., 190 F.3d 244, 247-250

(4th Cir. 1999) (professor of mechanical engineering not qualified to opine about

design of particular automotive part where he had no experience in designing part,

and did not know or learn how the part was manufactured or from what material it

was manufactured, or conduct any tests or calculations regarding its strength). Like

Opposer’s criticisms of certain of the challenged portions of Mr. Mieritz’s testimony,

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Opposition No. 91200146

Applicant’s criticisms of Dr. Reisel’s qualifications go to the weight to be accorded his

opinions, not their admissibility. Metavante, 619 F.3d at 762. We overrule Applicant’s

objections, and have considered Dr. Reisel’s testimony for whatever probative value

it may have.

E. Applicant’s Renewed Motion to Exclude Whitmore Testimony

In its trial brief, 208 TTABVUE 9, Applicant renewed its pre-trial motion to strike

what it described as the “undisclosed expert opinions of fact witness Jeff Whitmore.”

129 TTABVUE 2. Opposer argued that Mr. Whitmore’s alleged expert testimony was

based upon his personal knowledge as a long-time Briggs & Stratton engineer and

developer of various engines, and was thus either factual testimony or lay opinion

testimony admissible under Rule 701 of the Federal Rules of Evidence, both of which

are exempt from the expert disclosure requirements.

Rule 701 of the Federal Rules of Evidence provides that lay opinion testimony is

permitted only if it is “(a) rationally based on the witness’s perception; (b) helpful to

clearly understanding the witness’s testimony or to determining a fact in issue; and

(c) not based on scientific, technical, or other specialized knowledge within the scope

of Rule 702.” Fed. R. Evid. 701 (emphasis added). The parties have not cited, and we

have not found, any precedential Board decisions on the distinction between expert

opinion that is not disclosed prior to trial, and permissible lay opinion. Our primary

reviewing court views this issue as a procedural one in patent cases, and applies

regional circuit law to its resolution. See, e.g., Union Pac. Res. Co. v. Chesapeake

Energy Corp., 236 F.3d 684, 57 USPQ2d 1293, 1298 (Fed. Cir. 2001) (applying Fifth

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Opposition No. 91200146

Circuit law and allowing lay opinion testimony regarding patent enablement based

upon witnesses’ own personal experience in oil drilling industry).

The parties have directed our attention to a number of federal court cases. We find

two of them to be the most instructive because they resolved the issue in a context

similar to the one before us here. In Greenwich Indus., L.P. v. Specialized Seating,

Inc., 2003 WL 21148389 (N.D. Ill. May 16, 2003), a trade dress infringement case, the

court allowed testimony about functionality as permissible lay opinion where the

witnesses claimed personal knowledge of the subject design from their prior

employment. 2003 WL 21148389 at *3 (quoting Advisory Committee Notes to Fed. R.

Evid. 701(a)). In Open Text S.A. v. Box, Inc., 2015 WL 393858 (N.D. Cal. Jan. 29,

2015), a patent infringement case, the court allowed the lay opinion testimony of a

co-owner of the defendant about the technical feasibility of a non-infringing

alternative to the challenged product, holding that “‘just because the underlying facts

and data are technical in nature does not transform the information into ‘expert

testimony’ when those facts are within the knowledge of the company’s employee.’”

Open Text, 2015 WL 393858 at *7 (quoting In re Google AdWords Litig., 2012 WL

28068, at *5 (N.D. Cal. Jan. 5, 2012)).

We find that most of Mr. Whitmore’s testimony is admissible as lay opinion under

the rationales of Greenwich and Open Text because it is based upon his experience as

a Briggs & Stratton engineer, including designing the Briggs & Stratton 550 series

of engines, and his familiarity with competitive engines, the marketplace in which

they compete, and their manner of use. These admissible portions are his testimony

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Opposition No. 91200146

about (1) the component parts necessary for a commercially viable single cylinder

horizontal shaft engine and the typical configuration for such engines; (2) the

considerations going into the design of a single cylinder horizontal shaft engine; (3)

how the size requirements of such engines affect their design; (4) the requirements

set by original equipment manufacturers for such engines; (5) the mounting of such

engines in common applications; (6) the manufacturing advantages of having

beveling on the air cleaner cover of the Briggs & Stratton 550 engine; (7) the

functional advantages of such beveling;34 (8) the reasons behind the positioning of

various component parts and features of the Briggs & Stratton 550 engine; (9) the

functional advantages and benefits of the positioning of various engine components

and features; and (10) the functional disadvantages of moving or reconfiguring

component parts and features of the Briggs & Stratton 550 engine.35 We overrule

Applicant’s objections as to these portions of Mr. Whitmore’s testimony, and have

considered them for whatever probative value they may have.

34 We interpret this testimony, and similar testimony about the “functional advantages” or

“functional disadvantages” of various parts and features of the Briggs & Stratton 550 series

engines, either as they exist or as a result of possible design changes, to pertain to the

advantages or disadvantages that the actual or redesigned parts and features provide or

would provide with respect to the manufacturing, operation, and marketability of the engine.

These are matters within Mr. Whitmore’s personal knowledge as a Briggs & Stratton

engineer and a designer of the 550 series engine. We do not interpret this testimony as

expressing an opinion as to whether the actual or hypothetical design makes the engine as a

whole de jure functional. Tr. 183:20-186:10. See Becton, Dickinson, 102 USPQ2d at 1376 (“De

facto functionality simply means that a design has a function, like the closure cap in this

case. Such functionality is irrelevant to the question of whether a mark as a whole is

functional so as to be ineligible for trademark protection.”).

35 Tr. 17:6-14; 18:22-19:14; 19:16-20:7; 21:25-22:4; 31:9-32:2; 36:15-25; 37:6-19, 21-38:2; 38:11-

39:5; 39:6-19; 39:21-42:17; 44:11-23; 45:7-13; 45:15-46:13; 47:1-17; 47:22-48; 48:17-56:1; 60:7-

15; 60:16-61:10; 183:20-184:14; 184:19-186:10.

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Opposition No. 91200146

Other portions of Mr. Whitmore’s challenged testimony, however, leave the realm

of informed lay opinion. These are: the claimed “industry standard” shape and

configuration of engines;36 the claimed impact on competitors from registration of

applied-for mark;37 and the claimed bases for visual distinctiveness of GX Engine.38

We sustain Applicant’s objections as to these portions of Mr. Whitmore’s testimony,

and have given them no consideration in our decision.

III. General Factual Background Regarding the GX Engine and Applicant’s

Claimed Mark

A. General Purpose Utility Engines

The parties both produce general purpose internal combustion utility engines,

which are used in a wide variety of applications to power products such as pressure

washers, lawnmowers, portable generators, tillers, and water pumps. Whitmore Tr.

18:3-11. Two such products powered by Applicant’s GX Engine are shown below.

General purpose utility engines are typically sold to original equipment

manufacturers (“OEMs”) for use in their construction equipment, lawn and garden

36 Tr. 74:16-76:18.

37 Tr. 76:19-77:7.

38 Tr. 182:10-15.

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Opposition No. 91200146

equipment, and other equipment. Whitmore Tr. 17:16-23. In addition to selling

engines to OEMs, Applicant produces its own products as an OEM using GX Engines,

and also sells GX Engines to engine distributors, rental yards, and individuals who

incorporate them into products that they make or repower. Conner Tr. 19:11-20;

21:22-22:24.

B. The Development of the GX Engine

Applicant states that it began developing the GX Engine in the early 1980s.

Applicant states that its “primary performance goals were to create an engine that

was more fuel efficient, lighter, and more compact than its predecessor, the ‘ME’

engine, which used a side-valve configuration.”39 The ME engine is depicted below:

Applicant’s acknowledged performance objectives, including “installation

compatibility,” the ability to use the new engine in more OEM applications, and

various maintenance and manufacturing considerations, are reflected in a

contemporaneous project document entitled “Planning Material,” which Applicant

designated as Confidential.40

39 208 TTABVUE 11.

40 202 TTABVUE 252-279 (Fujita Ex. 191-A (English translation)).

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Opposition No. 91200146

Overhead valve engines in the early 1980s were more powerful than side valve

engines like the ME and had other benefits, but were larger and more costly and were

often unacceptable to OEMs because they exceeded their standard installation

dimensions or “envelopes.”41 Applicant developed an overhead valve (“OHV”) engine

with the engine cylinder at an incline, which Applicant stated “offered all the

advantages of an OHV engine (higher performance and better fuel economy, with the

added benefits of … a lower center of gravity, reduced vibration, and more compact

size.”).42 The new inclined-cylinder GX Engine also was lighter, less costly to ship,

and usable in a wider range of applications inside the OEM “envelopes” for those

products. 202 TTABVUE 58-59.

Applicant argues that in addition to the performance considerations discussed

above, Applicant’s styling group on the GX Engine project endeavored to develop a

unique external appearance for the engine that was unrelated to Applicant’s

performance objectives. 208 TTABVUE 11-12. The portion of Applicant’s website

discussing the development of the GX Engine, and the “Planning Material” document,

which is the only contemporaneous documentary evidence in the record regarding the

GX development project, make no mention of the styling group, or of styling or design

considerations per se. Applicant thus relies almost exclusively on the testimony of

Mr. Fujita, who was a member of the large performance design group on the GX

project, not the much smaller styling design group that was tasked with the design

41 208 TTABVUE 11; 202 TTABVUE 211.

42 208 TTABVUE 11.

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Opposition No. 91200146

of the GX’s external appearance.43 We find, on the basis of Mr. Fujita’s testimony,

that Applicant’s designers evidently had external appearance in mind to the extent

that they sought to design an engine with a “cubic” or square external appearance

formed by the use of multiple straight lines in each constituent part, but that

Applicant’s primary objectives in developing the GX Engine were to design an engine

that was lower in weight, compact, fuel efficient, lower in cost, easily mountable on

OEM applications, durable, and easy to maintain. Tr. 20:17-23:8; 57:12-58:20.

Importantly, Applicant’s website acknowledges that following the introduction of

the GX Engine in the United States in 1983, manufacturers of general purpose utility

engines have adopted the GX Engine’s overhead-valve, inclined-cylinder concept as

the de facto industry standard general utility engine. 202 TTABVUE 220.

C. Redesign of the GX Engine

In 2008, Applicant redesigned the GX Engine to comply with so-called “Phase III”

emission regulations promulgated by the Environmental Protection Agency. 208

TTABVUE 28. The redesign resulted in changes to the exterior appearance of the

engine as viewed from the perspective shown in the application drawing.44 Each party

43 Tr. 12:12-14:1. Mr. Fujita testified that his understanding of Applicant’s styling objectives,

and the impact of the claimed design choices on the engine’s performance, was based on his

interactions with unidentified designers, not his own performance design work. Tr. 37:5-

40:23; 47:7-17; 49:14-50:14; 51:22-24; 114:19-115:23. We have weighed his testimony

accordingly.

44 Applicant argues in a redacted portion of its publicly accessible brief that the changes to

the exterior appearance of the GX Engine were not dictated by the need to comply with the

new EPA regulations, but rather by other considerations. 208 TTABVUE 53. As discussed

below in Section VI.C.6., we need not address this argument because we do not reach

Opposer’s abandonment claim based upon the redesign and the pre-2008 design that gives

rise to the subject application.

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Opposition No. 91200146

provided a “before-and-after” depiction of Applicant’s pre- and post-2008 engines in

its brief. We reproduce below Opposer’s drawings of the engines (with changes

discussed below in Section VI.C.6. highlighted by arrows). 204 TTABVUE 54.

IV. Standing

Opposer has standing to oppose registration of Applicant’s claimed mark because

it competes directly with Applicant in the general utility engine business, and thus

has a reasonable basis for a belief that it would be damaged if Applicant’s claimed

mark were registered. See, e.g., Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753

F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Books on Tape, Inc. v. Booktape

Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Kistner Concrete Prods.

Inc. v. Contech Arch Tech. Inc., 97 USPQ2d 1912, 1918 (TTAB 2011).

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Opposition No. 91200146

V. Defining the Claimed Mark

Before addressing the merits of Opposer’s claims, “we first must define what

Applicant intends to claim as a trademark,” In re Heatcon, Inc., 116 USPQ2d 1366,

1371 (TTAB 2015), because the parties dispute what the mark comprises.45

Applicant argues that it “does not seek protection of the basic configuration of an

engine as suggested by Opposers; rather, as depicted and described in [Applicant’s]

Application, the GX Trade Dress comprises the specific styling elements of each

component (e.g., the complementary lines, beveling, and shapes), which together

express the overall distinctive cubic look of the GX Trade Dress.” 208 TTABVUE 20.

Applicant claims that “while the shape and position of the component parts is part of

the GX Trade Dress, they do not alone comprise the trade dress” and that “Applicant

has consistently claimed a trade dress on the overall cubic look achieved by the many

styling features of the main components, which have the shape and position shown

in the drawing.” 208 TTABVUE 9 n.1. Applicant discusses the features of the

individual components of the GX Engine in detail, 208 TTABVUE 9-10, and concludes

that “[v]iewed as a whole, the complementary appearance of these components

creates the overall distinctive cubic look of the GX.” 208 TTABVUE 9.46 In its brief,

Applicant graphically highlights the “claimed overall distinctive cubic look” formed

45 Their dispute pertains specifically to Opposer’s functionality claim, but the proper

definition of the claimed mark is also relevant to whether it has acquired distinctiveness.

46 Applicant repeatedly characterizes the shape of the GX Engine as “cubic” as a result of the

use of multiple straight lines in each constituent part. Our references to this characterization

do not imply agreement with this terminology.

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Opposition No. 91200146

by these elements, including “the specific styling elements of each component,” in the

following modified drawing:47

208 TTABVUE 9.

Opposer responds that Applicant has “narrowly characteri[zed] its applied-for

mark,” which is “improper, as the mark consists of the totality of the drawing and

description set forth in [Applicant’s] trademark application.” 209 TTABVUE 6.

Opposer argues that “the application depicts and describes the overall configuration

of the engine, including the particular locations of the main component parts (fuel

tank, air cleaner cover, carburetor cover and fan cover), along with additional

functional features, such as a slant in the fan cover, the ‘roughly rectangular’ shape

of the fuel tank, and the ‘cube shape’ air cleaner cover.” 209 TTABVUE 7.

Applicant’s application “drawing depicts the mark to be registered,” Heatcon, 116

USPQ2d at 1379 (citing Trademark Rule 2.52, 37 C.F.R. § 2.52), not its modified

drawing reproduced immediately above or the words used to describe the mark in the

47 We reproduce this drawing solely for purposes of illustrating Applicant’s claim regarding

the scope of its mark. It is not the actual application drawing.

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Opposition No. 91200146

application.48 See also In re Change Wind Corp., 123 USPQ2d 1453, 1459 n.6 (TTAB

2017) (“[T]he drawing of the mark, not the words an applicant uses to describe it,

controls what the mark is.”). This is the application drawing:

“Product configuration marks require special form drawings and must depict

matter not claimed as part of the mark in broken lines. Broken lines must also be

used to indicate placement of the mark.” Heatcon, 116 USPQ2d at 1379. The only

broken lines in Applicant’s drawing depict the engine’s recoil cover and rewind

handle, elements that are not claimed as part of the mark and are depicted merely to

show their position on the engine. None of the rest of the engine is depicted in broken

lines, indicating that Applicant is indeed seeking protection of what it described as

“the configuration of an engine with an overall cubic design, with a slanted fan cover,

the fuel tank located above the fan cover on the right, and the air cleaner located to

the left of the fuel tank.” This “configuration of an engine” includes the placement

48 In defining the mark that Applicant seeks to register, we consider “all elements, including

those described in the application as well as those shown in the drawing page,” In re Becton,

Dickinson and Co., 2010 WL 3164746, *2 (TTAB July 10, 2010), aff’d, 675 F.3d 1368, 102

USPQ2d 1372 (Fed. Cir. 2012), but we are not bound by what Applicant describes its mark

to be in its application or in its brief. Becton, Dickinson, 102 USPQ2d at 1374; Change Wind,

123 USPQ2d at 1459 n.6.

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Opposition No. 91200146

and overall shape of each of the engine’s component parts and features shown in the

drawing, including the fuel tank, air cleaner cover, fan cover, and carburetor cover,

not simply “the specific styling elements of each component (e.g., the complementary

lines, beveling, and shapes), which together express the overall distinctive cubic look

of the GX Trade Dress.” 208 TTABVUE 20. Becton, Dickinson, 102 USPQ2d at 1374;

see also In re Bose Corp., 476 F.3d 1331, 81 USPQ2d 1748, 1753 (Fed. Cir. 2007)

(“Bose is seeking protection of its entire pentagonal-shaped design, not only its curved

front edges. If Bose were only seeking protection of its curved front edge, it would

have made that clear in its application for registration.”). We therefore assess the

registrability of Applicant’s configuration-of-an-engine mark as shown in the

application drawing rather than in the alternative drawing that Applicant submitted

with its brief; we also consider the description of the mark insofar as it comports with

the drawing.

VI. Opposer’s Functionality Claim

A. The Law of Functionality

Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), prohibits registration

of “a mark which … comprises any matter that, as a whole, is functional.” In general

terms, “‘a product feature is functional,’ and cannot serve as a trademark, ‘if it is

“essential to the use or purpose of the article or if it affects the cost or quality of the

article.’” TrafFix, 58 USPQ2d at 1006 (quoting Qualitex Co. v. Jacobson Prods. Co.,

514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995)); see also Inwood Labs, Inc. v. Ives

Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982); Change Wind, 123 USPQ2d at

1456; Poly-America, LP v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1513 (TTAB

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Opposition No. 91200146

2017). The functionality doctrine is intended to encourage legitimate competition by

maintaining the proper balance between patent law and trademark law.

The functionality doctrine prevents trademark law, which

seeks to promote competition by protecting a firm’s

reputation, from instead inhibiting legitimate competition

by allowing a producer to control a useful product feature.

It is the province of patent law, not trademark law, to

encourage invention by granting inventors a monopoly over

new product designs or functions for a limited time, after

which competitors are free to use the innovation. If a

product’s functional features could be used as trademarks,

however, a monopoly over such features could be obtained

without regard to whether they qualify as patents and

could be extended forever (because trademarks may be

renewed in perpetuity). That is to say, the Lanham Act

does not exist to reward manufacturers for their innovation

in creating a particular device; that is the purpose of the

patent law and its period of exclusivity. The Lanham Act,

furthermore, does not protect trade dress in a functional

design simply because an investment has been made to

encourage the public to associate a particular functional

feature with a single manufacturer or seller.

Qualitex, 34 USPQ2d at 1163-64.

To determine whether a product design is functional under the test reconfirmed

in TrafFix, the Board may consider the categories of evidence set forth in In re

Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982),

discussed below. See Valu Eng’g, 61 USPQ2d at 1426; Change Wind, 123 USPQ2d at

1456 (in determining functionality under the Supreme Court’s standards, “we are

also guided by the analysis first applied in” Morton-Norwich). The Morton-Norwich

categories are “legitimate source[s] of evidence to determine whether a feature is

functional,” Valu Eng’g, 61 USPQ2d at 1427, “aid in the determination of whether a

design is de jure functional,” New England Butt Co. v. ITC, 756 F.2d 874, 225 USPQ

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Opposition No. 91200146

260, 262 (Fed. Cir. 1985), and remain useful following the Supreme Court’s decisions

in Inwood, Qualitex, and TrafFix. Valu Eng’g, 61 USPQ2d at 1427; In re Loggerhead

Tools, LLC, 119 USPQ2d 1429, 1431 (TTAB 2016).

The Morton-Norwich categories “are not exclusive, however, for functionality

‘depends upon the totality of the evidence.’” Heatcon, 116 USPQ2d at 1370 (quoting

Valu Eng’g, 61 USPQ2d at 1424); accord Kistner, 97 USPQ2d at 1918. “It is not

required that all four factors be proven in every case, nor do all four factors have to

weigh in favor of functionality to support a [finding of functionality].” Heatcon, 116

USPQ2d at 1370; accord Change Wind, 123 USPQ2d at 1456. The ultimate standard

for functionality is, of course, the one established by the Supreme Court in Inwood,

and reiterated in Qualitex and TrafFix: whether a feature is essential to the use or

purpose of an article or affects the cost or quality of the article. If functionality is

established under the Inwood standard based “upon the totality of the evidence,”

Heatcon, 116 USPQ2d at 1370, further inquiry into evidence that might be revealed

by a Morton-Norwich analysis is unnecessary and will not change the result. See

TrafFix, 58 USPQ2d at 1006 (“Where the design is functional under the Inwood

formulation there is no need to proceed further to consider if there is a competitive

necessity for the feature.”).

“In determining whether the product configuration is functional, we focus on

whether the configuration as a whole is functional.” Kistner, 97 USPQ2d at 1919; see

also 15 U.S.C. § 1052(e)(5) (prohibiting registration of a mark that “comprises any

matter that, as a whole, is functional.”) (emphasis added). “The terminology ‘as a

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Opposition No. 91200146

whole’ in the statute does not mean that one can avoid a finding of functionality

simply because the configuration includes a nonfunctional feature.” Kistner, 97

USPQ2d at 1920. “As a whole” refers to “‘the entirety of the mark itself.’” Id. at 1919

(quoting Valu Eng’g, 61 USPQ2d at 1428 n.6).

Opposer has the “initial burden of establishing a prima facie case of functionality.”

Id. at 1918. If Opposer establishes a prima facie case, the burden then shifts to

Applicant to prove non-functionality. Id. (citing Valu Eng’g, 61 USPQ2d at 1429).

B. The Parties’ Arguments Regarding Functionality

Opposer focuses on the overall positioning and shape of the various component

elements of the claimed mark, and the resulting shape of the engine as a whole. It

argues that the “compact and overall ‘cubic’ shape of the engine allows the engine to

fit within OEM requirements and to have a lower center of gravity. The particular

positions and shapes of the component parts are also functional and dictated by

utilitarian and engineering requirements.” 204 TTABVUE 29.

Applicant focuses on the fact that its “competitors have multiple options to

visually differentiate their engines, despite using the same general engine

configuration (with the air cleaner on the upper left side, the fuel tank to right of it,

a carburetor cover below the air cleaner cover, and a slanted fan cover below the fuel

tank).” 208 TTABVUE 17. It argues that Opposer’s entire functionality argument

rests on “a fundamental misstatement of the GX Trade Dress as comprising the

general configuration of an inclined cylinder [OHV] engine,” 208 TTABVUE 19,

rather than “the specific styling elements of each component (e.g., the complementary

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Opposition No. 91200146

lines, beveling, and shapes) which together express the overall distinctive cubic look

of the GX Trade Dress.” 208 TTABVUE 20.

For the reasons discussed below, we agree with Opposer that it established a

prima facie case on functionality and that Applicant did not rebut that showing.

C. The Components and Overall Design of the GX Engine

Our analysis of the possible functionality of the applied-for mark as a whole may

begin with consideration of the functionality of the separate features claimed by

Applicant to compose its mark, so long as those features are considered in the context

of the design as a whole. Becton, Dickinson, 102 USPQ2d at 1376; In re R.M. Smith,

Inc., 734 F.2d 1482, 222 USPQ 1, 2 (Fed. Cir. 1984) (Board properly gave initial

consideration to the “six features which applicant claims comprise its mark” in

finding that based on the functionality of those features, the design as a whole was

functional); Change Wind, 123 USPQ2d at 1456.

[O]ne object of the Morton-Norwich inquiry is to weigh the

elements of a mark against one another to develop an

understanding of whether the mark as a whole is

essentially functional and thus non-registrable. Whenever

a proposed mark includes both functional and non-

functional features, as in this case, the crucial question is

the degree of utility present in the overall design of the

mark … Our functionality precedent indeed mandates that

the Board conduct such an assessment as part of its

determination of whether a mark in its entirety is overall

de jure functional.

Becton, Dickinson, 102 USPQ2d at 1376.

We will thus begin by considering the possible functionality of the positioning and

shape of the components of Applicant’s mark, including those described by Applicant

as “a slanted fan cover, [a] fuel tank located above the fan cover on the right,” a

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Opposition No. 91200146

“carburetor cover featur[ing] four ribs along its outside edge and a receded area where

control levers are located,” and [an] air cleaner located to the left of the fuel tank.”

These major component parts shown in the application drawing depicted below are

identified as follows: A = Air cleaner cover, B = fuel tank, C = carburetor cover, and

D = fan cover.

We again reproduce Applicant’s description of its claimed mark below, with the

designated letters shown above interspersed in the description:

The mark consists of the configuration of an engine with

an overall cubic design, with a slanted fan cover [D], the

fuel tank [B] located above the fan cover [D] on the right,

and the air cleaner [A] located to the left of the fuel tank

[B]. The air cleaner cover [A] features a cube shape with

beveled top outside edges, and a belt-like area on the lower

portion of the cover encompassing the entire circumference

and the top of the belt-like area is aligned with a rib of the

fuel tank. The carburetor cover [C] features four ribs along

its outside edge and a receded area where control levers are

located. The fuel tank [B] is roughly rectangular. The

engine features a beveling that runs around its top

circumference.

The parties generally agree on how small utility engines like the GX Engine are

designed. Citing Mr. Mieritz’s testimony, Opposer summarizes the process in its main

brief as follows:

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Opposition No. 91200146

When designing this type of engine, marketing and sales

groups start by determining the horsepower needed.

Engineers then determine the bore and stroke and cubic

inch displacement required for that horsepower range. The

engine is then designed from the inside out. Engineers first

create the “short block,” or the power plant of the engine,

then add on external components such as the fuel tank, air

cleaner, fan, and carburetor. The short block includes the

cylinder head, crankshaft, piston, connecting rod and cap,

valve train, crank case cover, lubrication system and

engine governor.49

This indicates that the relative positioning of the key external components, and

possibly their shapes, are driven by the design of the power plant (i.e., “short block”).

The confidential testimony of Mr. Fujita, the only witness who testified at trial about

the development of the GX Engine from direct personal knowledge, does not suggest

otherwise.

1. The Fan Cover

The fan cover protects the fan or blower, which rotates and moves air, and is

mounted to the crankshaft, which on the GX Engine is located at the center. Dr. Reisel

and Mr. Mieritz agreed that the fan cover directs cooling air to the part of the engine

that becomes the hottest from internal combustion,50 which they identified as the

cylinder head located behind the carburetor.51

49 204 TTABVUE 16 (Mieritz Tr. 12:4-13:19; 139:3-140:20). The power plant is an enclosed

package that contains the elements that create the engine’s power through the process of

internal combustion, discussed in more detail below. Mieritz Tr. 139:20-24. The applied-for

mark depicts external components of the GX Engine, or covers for external components.

50 Mieritz Tr. 34:8-14; 211:12-23; Reisel Tr. 37:12-38:8.

51 Reisel Tr. 38:4-8; Mieritz Tr. 146:6-14; 211:19-23.

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Opposition No. 91200146

Dr. Reisel and Mr. Mieritz also agreed that the slanted shape of the fan cover

shown in the mark facilitates directing cooling air to the hottest parts of the engine.52

Dr. Reisel testified that air is brought into the engine, accelerated in a spiral by the

fan, and directed via the slanted fan cover to the cylinder head.53 He acknowledged

that the “exact specific angle [of the slant] does not need to necessarily be the same,

and it may be also a function of the shape and size, especially the size of the engine

as to what the exact angle will be. But it is going to - - it should be in that direction,

and the shape that is taken by the trademark application is functional or the angle

taken by that is functional. … It does not need to be the exact angle, but it does need

to be - - it should be close to it from a performance competitive standpoint.” Tr. 98:3-

9, 19-21.54

52 Mr. Hoag, Applicant’s expert in the Pep Boys litigation, concurred that the shape of the fan

cover is dictated in part by the fact that it needs to direct cooling air to the cylinder block,

and that most engines direct the air in an angle upward to the left. Tr. 168:10-169:4.

53 Tr. 37:12-38:8. He explained this process as follows: “The part that is directing the air

towards the cylinder head is going to be the lower left slanted line of the fan cover, the slant

that’s going from the bottom right to top left. The air is brought in and is swirling around

headed towards -- at the bottom of the picture it’s going to be headed from right to left along

the bottom, and then that slant is going to be directing it up along the cylinder to the cylinder

head.” Tr. 38:25-39:8.

54 With respect to the shape of the rest of the fan cover, Dr. Reisel acknowledged that it was

not necessary that the left vertical side and the top side be straight, as they are in the

application drawing, Tr. 99:12-23, and that the flattened bottom side was not in the ideal

shape, which he testified was rounded. Tr. 100:10-21. Against the backdrop of Applicant’s

claim that “the particular angle of the slant on the fan cover corresponds with the beveling

on the upper right corner of the fuel tank,” 208 TTABVUE 10, and is thus the key source-

identifying feature of the fan cover, and the fact that the third-party fan covers in the record

have a generally similar appearance to Applicant’s, particularly with respect to the slant on

the left side of the cover, we find that the other sides of Applicant’s fan cover are not as

important as the slanted left side on the issue of whether the shape of the fan cover is

primarily functional.

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Opposition No. 91200146

Dr. Reisel’s testimony regarding the slant of the left side of the fan cover was

confirmed by the record evidence that multiple third-party engines have fan covers

slanted at a similar angle (shown in green lines below).

209 TTABVUE 9.55

Mr. Mieritz agreed with Dr. Reisel that the slant of the fan cover in the

application drawing directs cooling air to the cylinder head, Tr. 36:3-7; 211:12-212:3,

8-15; 214:3-7, and that it was not necessary to use the exact same angle of the slant

shown in the application drawing: “The slant can be less, can be more. It can take on

different shapes and still provide cooling.” Tr. 36:8-13. He opined, however, that the

55 Applicant repeatedly argues that the existence of competitive engines with similarly-

positioned, but differently-shaped, components shows that its mark is not functional. The

existence of such engines, by itself, is not sufficient to make that showing. Apple Inc. v.

Samsung Elecs. Co., 786 F.3d 983, 114 USPQ2d 1953, 1959 (Fed. Cir. 2015). The issue is

whether these engines share the same utilitarian features as the GX Engine. Becton,

Dickinson, 102 USPQ2d at 1378. See also In re Honeywell Inc., 532 F.2d 180, 189 USPQ 343,

344 (CCPA 1976) (existence of multiple competing products similar in shape to applicant’s

product may itself support a finding of functionality). The fact that engines or components

“‘may be produced in other forms or shapes does not and cannot detract from the functional

character of the configuration here involved.’” Bose, 227 USPQ at 6 (quoting Honeywell, 189

USPQ at 344).

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Opposition No. 91200146

slanted shape of the fan cover in the application drawing was not functional, because

other differently-shaped fan cover shapes were equally efficacious in terms of

performance and manufacturing cost.56 He testified about several such engines, and

referred in that testimony to the following demonstrative exhibit that he had

prepared for comparison purposes.

Tr. 42:1-14; Ex. 45.

We do not find this testimony to be convincing, however, because: (1) in the case

of the Briggs Intek engine shown above, his testimony was based upon comparative

56 Tr. 34:15-18; 36:14-45:25; Exs. 17, 21, 23, 43-45. He also testified that “the shape in Honda’s

fan cover - - and this is from what I read in Mr. Fujita’s deposition - - is actually detrimental

to the air flow. The right-hand upper corner, according to Mr. Fujita, was designed with

styling, stylists, to have that look, that particular corner reduces the airflow, so Honda had

to go to a larger fan to compensate for that loss.” Tr. 34:22-35:5. He testified that the shape

of the right-hand upper corner of the fan cover “causes turbulence within the blower housing,

which can affect the air cooling.” Tr. 35:11-12. Mr. Mieritz acknowledged on cross-

examination that he was aware that Mr. Fujita was not involved in the styling of the GX

engine, that he had never spoken with Mr. Fujita, and that he had never reviewed any

documents from Applicant’s styling group. Tr. 107:10-111:13. We accordingly give little

weight to his opinion regarding the right-hand upper corner of the fan cover, which, as noted

above, has less significance in our analysis of whether the design of the fan cover is primarily

functional.

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Opposition No. 91200146

testing done by another group at Briggs & Stratton many years before, and, in any

event, merely reflected his “expectation” that the Intek fan cover would provide

cooling equivalent to that of Applicant’s fan cover, Tr. 43:13-45:5; and (2) with respect

to the equivalent performance and manufacturing costs of the other engines, his

testimony was based solely on the fact that he had not seen any contrary data

indicating that there were performance and cost differences between the fan covers,

even though he admitted that such data existed and that he had never asked to see

it or to have Applicant obtain and provide it. Tr. 45:10-25; 227:22-229:18.

In deciding whether Applicant’s mark as a whole is primarily functional, we must

decide whether the mark “is in its particular shape because it works better in that

shape.” Becton, Dickinson, 102 USPQ2d at 1376; see also Change Wind, 123 USPQ2d

at 1456 (considering “the functional role of the individual features of the design … to

determine whether the applied-for mark is functional and thus, unregistrable.”). We

find that the fan cover is in its particular slanted shape because (as both experts

agreed) that slanted shape works better to direct cooling air to the hottest part of the

engine than a non-slanted shape. The facts that the slant could be at a slightly

different angle from the one shown in the application drawing and still perform that

function (as both experts also agreed), and that third-party fan covers have slightly

different slants and overall appearances (as the illustration above shows), do not

detract from the fact that Applicant’s slanted fan cover is slanted in the manner

shown in the application drawing to serve a functional purpose. See In re Bose Corp.,

772 F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985) (“That another type of [design] would

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Opposition No. 91200146

work equally well does not negate that this [design] was designed functionally to

enhance or at least not detract from the rest of the system….”). We find that the

features of the fan cover as a whole are primarily functional.

2. The Fuel Tank

The purpose of a fuel tank on a general purpose utility engine is to hold the fuel

that is fed into the carburetor, where it mixes with air in the process of combustion.

We must consider whether considerations of utility apply to the relative positioning

and design of the fuel tank in the applied-for mark, which is “located above the fan

cover on the right” and “is roughly rectangular” in shape, and in which “the top of the

belt-like area [on the carburetor cover] is aligned with a rib of the fuel tank.”

Dr. Reisel and Mr. Mieritz agreed that the fuel tank’s location above the

carburetor in Applicant’s claimed mark is dictated by utility because that location

allows the use of gravity, rather than a costly and heavy fuel pump, to feed fuel into

the carburetor. Reisel Tr. 40:12-3; Mieritz Tr. 21:13-17. They disagreed, however, as

to whether the fuel tank had to be located on the right side of the engine, where it

appears in the applied-for mark. Dr. Reisel testified that this positioning was

required to keep the fuel tank away from the hottest part of the engine on the left

and to maintain the compact shape of the engine given the positioning of the other

accessories on the left side. Tr. 42:4-23. Mr. Mieritz testified that the fuel tank could

be located in other locations, and that the particular location chosen depends upon

what comes first in the overall design of the engine. Tr. 22:7-23:12. He acknowledged,

however, that the positioning of the carburetor and the air cleaner on the left side of

the engine in the applied-for mark required the fuel tank to be placed on the right

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Opposition No. 91200146

side. Tr. 154:20-155:4. None of the major competitive engines in the record have a

fuel tank on the left. We thus find that the relative positioning of the fuel tank in the

applied-for mark “above the fan cover on the right” is also dictated by utility, not

design.

The experts also disagreed regarding the functionality of the “roughly rectangular

shape,” the beveling, and the ribbing (seam) of the fuel tank. Dr. Reisel opined that

these features are dictated by function because a rectangular fuel tank provides

maximum capacity within the confines of the application “envelope,” and because fuel

tanks are manufactured in two parts that are “mated” by the seam, which results

from the process of manufacture, and a beveled tank is easier to press into its shape

and remove from the production die during manufacturing. Tr. 55:13-56:57:3. Mr.

Conner testified that the manufacturing process resulting in the presence of the seam

on Applicant’s engine was the subject of an expired patent owned by Applicant. Tr.

418:12-17, 25-420:10. Dr. Reisel had no opinion, however, on whether the particular

placement of the seam on Applicant’s fuel tank in a position slightly below the center

of the tank was dictated by function, and he acknowledged that competitive

rectangular fuel tanks could have different proportions and thus different shapes, but

opined that they would all have a seam caused by the manufacturing process and “a

roughly rectangular shape.” Tr. 108:24-114:19.

Mr. Mieritz agreed that the rectangular shape of the fuel tank was designed to

appear compact within the engine, Tr. 24:17-21, and he did not dispute that the seam

that appears in the application drawing mated the two parts of the fuel tank and

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Opposition No. 91200146

resulted from the process of manufacture. He opined, however, that the positioning

of the seam and the angles and features of the beveling of the tank’s edges were not

functional, Tr. 24:22-26:3, again pointing to third-party engines with fuel tanks

having different features that he claimed performed equally well and were of equal

quality. Tr. 26:4-33:8 (Exs. 17, 21, 24, and 43).57 They are depicted below.

We agree with Mr. Mieritz that the appearance of the fuel tanks of these engines

is different from that of the fuel tank in the applied-for mark, but the engines all have

“roughly rectangular” fuel tanks positioned above the fan covers and to the right of

or on top of the carburetors.58 The larger sample of third-party engines reproduced

57 We give little weight to Mr. Mieritz’s categorical but unspecific opinion that “[t]hey all

perform equally with respect to the fuel tanks,” Tr. 32:13-20, because it too is unsupported

by any data. Tr. 229:22-230:21.

58The photograph of the Vanguard engine on the lower left shows the engine from a

perspective that differs from the perspectives of the other photographs. The fuel tank is not

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Opposition No. 91200146

above suggests that, like the relative positioning of the fuel tank in the applied-for

mark, its “roughly rectangular” shape “is designed in a way to appear compact within

the engine,” and thus provides a utilitarian benefit in terms of compactness. Tr.

24:17-21.

We also agree with Mr. Mieritz that in the applied-for mark, the particular

positioning of the seam on the fuel tank slightly below center, to align it with “the top

of the belt-like area” on the carburetor cover, and the particular beveling and angles

of the fuel tank, are not dictated by utility, but are instead ornamental features. The

appearance of the fuel tank thus has both utilitarian and design elements, but we

find that the fuel tank’s positioning relative to the other components, and its overall

“roughly rectangular” shape—which Applicant describes as its key features in the

applied-for mark—to be more prominent, thus making the features of the fuel tank

as a whole primarily functional.

3. The Carburetor Cover

The carburetor takes air that comes through the air cleaner and mixes it with fuel

from the fuel tank to create a combustible mixture, and the spark-induced combustion

of this mixture pushes down the piston inside of the cylinder, producing a revolution

of the crankshaft and powering the engine. Mieritz Tr. 146:15-147:25. The carburetor

cover is attached to the carburetor by two bolts. Mieritz Tr. 57:24-58:3. The carburetor

is positioned in the applied-for mark near the intake valve on the cylinder head. This

visible from the front perspective of the other photographs. Tr. 30:20-24. Mr. Mieritz

acknowledged that the Vanguard engine fuel tank is rectangular in shape. Tr. 30:10-14.

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Opposition No. 91200146

location is optimal because it allows for better flow of fuel into the carburetor via

gravity. Mieritz Tr. 150:3-151:10. The relative positioning of the carburetor (and thus

its cover) within the applied-for mark is thus dictated by engineering considerations,

not decorative considerations.

Mr. Mieritz testified that the carburetor cover has three purposes: (1) it acts as a

base for the air cleaner (located beneath the air cleaner cover designated with the

letter A in the drawing above); (2) it includes an elbow used to connect clean air to

the carburetor; and (3) it has a component on the right side that incorporates a choke

lever and fuel shut-off lever that control functions of the carburetor itself. Tr. 58:8-

18. He opined, however, that the specific appearance of the carburetor cover in the

applied-for mark was not functional, and did not affect the performance, quality,

manufacturing cost, or competitiveness of the engine, again relying on the existence

of “a few” differently shaped carburetor covers, specifically three of the four third-

party engines reproduced above in connection with the discussion of the shape of the

fuel tank (the fourth does not use a carburetor cover). Tr. 58:19-63:14. We again agree

with Mr. Mieritz that the carburetor covers in the three third-party engines have

different appearances from the one in the applied-for mark, but again find

unpersuasive his categorical opinions comparing the performance of these engines’

carburetor covers with that of Applicant’s, because they are again unsupported by

data. Tr. 229:22-230:21.

In addition, Mr. Mieritz does not claim that the overall shape of the carburetor

cover in the applied for mark is a result of aesthetic, rather than utilitarian,

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Opposition No. 91200146

considerations, and Applicant does not appear to make such a claim. In its description

of the applied-for mark, Applicant described its carburetor cover as follows: “The

carburetor cover features four ribs along its outside edge and a receded area where

control levers are located.” Dr. Reisel acknowledged that the four ribs on the

carburetor cover are nonfunctional, Tr. 132:21-134:11, and we agree that the record

shows that they are purely decorative.

With respect to the carburetor cover’s “receded area where control levers are

located,” Dr. Reisel opined that this feature is functional for two reasons. First, he

testified that the carburetor needs to be located near the fuel intake valve and the

controls for the carburetor (the choke and fuel shut-off levers) need to be located near

the carburetor to minimize the possibility that fuel droplets will fall out of the fuel

air stream and to minimize the possibility of breakage. Second, he opined that placing

the controls in the recessed area should increase their durability and reduce the

likelihood of breakage, including from the action of the rewind control (disclaimed as

part of the applied-for mark). Tr. 50:22-55:6.

Mr. Mieritz disagreed that the carburetor controls needed to be placed near the

carburetor as long as they are easily accessible to the operator, Tr. 63:15-65:2, but he

conceded that recessed controls were possibly less likely to be damaged. Tr. 215:7-15.

He opined that “recessing the controls that you see in the Honda might be detrimental

to users” wearing heavy gloves or mittens. Tr. 65:3-7. He again pointed to Kohler and

Briggs & Stratton engines with carburetor controls located elsewhere, using a

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Opposition No. 91200146

demonstrative exhibit reproduced below, and testified about different placement of

the controls. Tr. 65:8-69:1; Ex. 46.59

Having the choke and fuel shut-off controls located elsewhere avoids the question

of why these controls appear in “the receded area where [they] are located” in the

applied-for mark. We find Dr. Reisel’s explanation of their location as serving a

function to be more persuasive than Mr. Mieritz’s rebuttal that they could be located

elsewhere and that they could be difficult to use by operators wearing gloves or

mittens, and we again reject Mr. Mieritz’s testimony regarding comparative

manufacturing costs and performance for the reasons discussed above with respect

to other components.

As with the fuel tank, the appearance of the carburetor cover in the applied-for

mark has both utilitarian and decorative elements. We find that the carburetor

59 The red circles on the demonstrative exhibit identify the speed controls on the engines. The

speed control in the applied-for mark is not located on the carburetor cover.

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Opposition No. 91200146

cover’s relative positioning in the applied-for mark beneath the air cleaner cover for

which it serves as a base, the presence within it of an elbow that is used to connect

clean air to the carburetor, the purpose of the controls that it holds in the “receded

area where [they] are located,” and the reason for their placement there, make the

features of the carburetor cover as a whole primarily functional, notwithstanding the

presence of purely decorative ribs.

4. The Air Cleaner Cover

The purpose of the air cleaner is to provide clean air to enter the intake valve on

the carburetor and mix with the fuel in the carburetor. It thus must be connected to

the carburetor, Mieritz Tr. 152:18-20, which in the applied-for mark is positioned on

the left side of the engine. The air cleaner cover protects the air cleaner.

Applicant described the features of the air cleaner cover in the applied-for mark

as follows: “The air cleaner cover features a cube shape with beveled top outside

edges, and a belt-like area on the lower portion of the cover encompassing the entire

circumference and the top of the belt-like area is aligned with a rib of the fuel tank.”

Mr. Mieritz opined that although the air cleaner cover in the applied-for mark is

square (“a cube shape”), it could have been in a different shape, such as a trapezoid

or a cylinder, so long as there was sufficient clearance between the cover and the

cleaner to avoid air restriction. Tr. 46:11-14; 50:11-51:2. He pointed to the same third-

party engines that he relied upon in his testimony about other features of the applied-

for mark, Tr. 51:23-52:11, and again claimed that they performed equally well and

were no more costly to manufacture than the air cleaner cover in the applied-for

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Opposition No. 91200146

mark. Tr. 51:14-57:18.60 He also opined that while the engineers who designed the

engine in the applied-for mark placed the air cleaner above the carburetor, Tr.151:24-

152:4, the air cleaner cover need not have been located on the upper left of the engine

because utility engines such as the GX Engines are low efficiency engines and the

carburetor can be calibrated for a change in location. Tr. 48:9-25. Finally, he opined

that the beveling on the air cleaner cover and the “belt-like area on the lower portion”

that is aligned with the seam on the fuel tank were non-functional features. Tr. 46:18-

47:8; 51:3-13.

Dr. Reisel opined that the air cleaner and its cover were located on the left in the

engine in the applied-for mark to achieve what he called “volumetric efficiency,”

maximizing the amount of air that enters the carburetor through the intake valve.

“And so in order to accomplish that, you want to put your air induction and your air

intake -- your air cleaner as close as possible to the carburetor and then subsequently

the intake valve as possible.” Tr. 46:13-17. He opined that because the cylinder head

in which the intake valve is located is on the left side of the engine (from a front

perspective) in the applied-for mark, it was optimal to put the air cleaner and its

cover “on that left side of the engine to reduce the passageways and, therefore, the

pressure drop that the air would experience.” Tr. 46:22-47:1. Mr. Hoag essentially

agreed with Dr. Reisel’s opinion that moving the air cleaner away from the carburetor

caused an undesirable drop in air pressure, 117 TTABVUE 325, and that the air

60 We do not find Mr. Mieritz’s testimony persuasive for the reasons discussed above with

respect to his similar testimony regarding other components.

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Opposition No. 91200146

cleaner needed to be located close to the carburetor. 117 TTABVUE 324. Dr. Reisel

also opined that placing the air cleaner and its cover at the top of the engine reduced

the likelihood of having debris or dust from the ground enter the engine. Tr. 47:21-

48:3. On cross-examination, he expressed no view regarding the functionality of the

beveling on the air cleaner cover and acknowledged that the “belt-like area on the

lower portion of the cover” was not functional. Tr. 119:23-120:13. He also

acknowledged differences in the appearance of the air cleaner covers referred to by

Mr. Mieritz, and agreed “that for high mount air cleaner covers there are a variety of

options on some of the superficial details of it, but the functionality is still dictating

that it be a rectangular shape.” Tr. 126:17-25.

We find that the positioning of the air cleaner cover relative to the other

components of the engine is dictated by utility because of the positioning of the

carburetor. At the same time, we agree with Applicant that the beveling of the air

cleaner cover and the “belt-like area on the lower portion” are purely decorative

features.

It is a closer question as to whether the air cleaner cover’s shape is primarily a

matter of utility or aesthetics. Mr. Mieritz’s testimony that the cover could be in a

different shape from that of the air cleaner within it suggests that the use of a cube

or rectangular shape could have been a design choice, and Dr. Reisel did not directly

address why a cube or rectangular shape was required by utility. Mr. Fujita, the only

witness with personal knowledge of the original development of the GX Engine,

testified that the air cleaner inside the cover was oval in shape and that the cover’s

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Opposition No. 91200146

shape thus does not conform to the air cleaner’s shape. Tr. 38:11-12. On the other

hand, the “Planning Material” document makes it clear that one of the technical

means for achieving Applicant’s goal of designing a compact and fuel efficient engine

was to use a boxlike configuration for each component, and Mr. Fujita agreed that

the air cleaner cover’s shape had such a conforming shape. Tr. 24:18-25; 78:1-2. We

find that the choice to use a cube or rectangular shape per se was a design choice, but

that the particular cube or rectangular (“boxlike”) shape actually used was dictated

by the utilitarian need to fit the chosen shape into the “envelope” that a compact

design required.

As with the other components, the air cleaner cover includes both functional and

non-functional elements. Here, however, and in contrast to our findings regarding the

fan cover, fuel tank, and carburetor cover, we find that the features of the air cleaner

cover as a whole are not primarily functional. This finding, of course, does not compel

a finding that the applied-for mark, as a whole, is primarily functional. “[A] mark

possessed of significant functional features should not qualify for trademark

protection where insignificant elements of the design are non-functional.” Becton,

Dickinson, 102 USPQ2d at 1376.

5. The Claimed “Configuration of an Engine With an Overall Cubic

Design”

As discussed above, Applicant’s proposed mark “consists of the configuration of an

engine with an overall cubic design . . .,” with specific features further described. This

description is consistent with the way in which the applied-for mark appears in the

application drawing, and with Applicant’s performance objectives in designing the

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Opposition No. 91200146

GX Engine in the early 1980s, discussed above. It is inconsistent, however, with

Applicant’s narrower characterization of its mark in its brief, where Applicant claims

that it “does not seek protection of the basic configuration of an engine as suggested

by Opposers; rather, as depicted and described in [the] application, the GX Trade

Dress comprises the specific styling elements of each component (e.g., the

complementary lines, beveling, and shapes), which together express the overall

distinctive cubic look of the GX Trade Dress.” 208 TTABVUE 20.

Unsurprisingly, the parties’ experts staked out opposite positions on whether the

“overall cubic design” was functional. Mr. Mieritz understood this portion of the

description of the mark to refer to the approximately equal height and width of the

engine in the application drawing, as well as the overall visual cubic impression

created by the relative position, shape, size, and orientation of each of the major

components, the fuel tank, air cleaner cover, fan cover, and carburetor cover. Tr.

74:13-20; 102:22-103:20; 137:12-23. He opined that the overall cubic design has no

effect on the performance, quality, manufacturing costs, or competitiveness of the

engine, Tr. 74:25-75:20, and is not needed to “mate” the engine with (i.e., connect the

engine to) the applications (machines) that it powers. Tr. 75:16-76:6. He also opined

that it is not necessary for an engine to have the specific overall cubic design shown

in the application to fit within the applications that it powers, Tr. 77:7-78:10, and

that the overall cubic design does not have any impact on packaging the engine for

shipping or its maintenance. Tr. 78:21-79:16. He pointed once again to third-party

engines with alternative designs, Tr. 81:19-83:3, and opined that their differing

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Opposition No. 91200146

overall appearances have no effect on quality, performance, or cost metrics. Tr. 83:4-

94:23 (Exs. 17, 21, 23-24, 43-44).

On cross-examination, Mr. Mieritz acknowledged that an engineering goal in

designing a general purpose utility engine is to design a small engine, “as small a

package as it can,” in part to fit within OEM applications. Tr. 105:8-19; 106:3-7.61 He

also acknowledged that one of the original objectives in designing the GX Engine was

to reduce packaging and shipping costs, Tr. 118:15-119:20, that the overall cubic

design of the engine in the applied-for mark allowed it to be compact, Tr. 136:23-

137:11, and that the shape, size, and relative positioning of the four referenced key

components of the GX Engine rendered it compact, adaptable to a wide variety of

applications, and, with respect to at least some components, easy to maintain. Tr.

138:1-13; 157:2-14; 156:15-157:1.

Dr. Reisel opined, on the basis of a review of Mr. Fujita’s and Mr. Conner’s

testimony,62 Applicant’s website regarding its performance objectives in the design of

the GX Engine, and discussions with Kohler and Briggs & Stratton engineers, that

61 Mr. Hoag agreed with Mr. Mieritz on this point. Tr. 217:26-218:10; 335:20-22.

62 Mr. Fujita testified in general terms that the development of a compact engine capable of

being mounted on OEM applications and having the other desired performance attributes

required the development and use of boxlike external components. Tr. 24:22-25:21. He also

testified in general terms that the overall square shape of the GX Engine, and the box-like

appearance of its components, enabled it to achieve Opposer’s performance objectives of

improved fuel economy, reduced vibration, a more compact size, a lower center of gravity,

and easier maintenance. Tr. 56:9-24; 57:12-58:20; 59:4-21; 60:13-61:13; 67:14-70:2. Mr.

Conner testified in general terms that the overall cubic design described in the application

referred to the ability to fit all of the engine components into an imaginary box around the

engine, that each individual component contributed to the overall design of the engine, and

that the cubic shape minimizes the size of the application envelopes into which the engine

can fit, a generally desirable performance attribute. Tr. 185:17-186:1; 188:3-16; 191:7-14;

192:25-193:1, 19-196:4; 197:17-200:9.

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Opposition No. 91200146

the overall cubic design of the applied-for mark is necessary from a performance and

cost-competiveness standpoint. Tr. 29:13-24. He opined that the OEM application

market requires an engine that is compact in design and size, and that the best way

to achieve a compact design and size is an overall cubic design resulting from flat

surfaces that are easily mated to other devices in applications. Tr. 29:24-30:9. He also

opined that an overall cubic design reduces manufacturing and shipping costs, Tr.

31:17-32:14, and makes maintenance easier. Tr. 32:15-33:5. With respect to the third-

party engines discussed by Mr. Mieritz, Dr. Reisel opined that “each contained

approximately the same general configuration and that the relative components of

the engines were the same and that they took on an overall cubic nature. They were

generally box-like in appearance.” Tr. 36:1-12.

Applicant’s sole attack on Dr. Reisel’s opinions regarding the functionality of the

overall cubic design in the applied-for mark is that he “admitted that many of its

complementary lines and angles are purely ornamental, including: (1) the similar

beveling on the air cleaner cover and fuel tank ([Tr.] 138:11-15); (2) the similar angles

on the top right of the fuel tank and lower left of the fan cover ([Tr.] 141:14-142:2);

and (3) the straight line created by the lower left side of the fan cover lining up with

the carburetor cover. [Tr.] 142:3-143:1.” 208 TTABVUE 22.

As Mr. Mieritz acknowledged, the “components that contribute to the overall cubic

design of the Honda engine are the fuel tank, the air cleaner cover, the fan housing,

and the carburetor cover.” Tr. 74:17-20. The “cubic” whole of the applied-for mark is

thus admittedly the sum of its “cubic” individual parts. We have found above that the

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Opposition No. 91200146

relative positioning and the particular shapes of all but one of these components are

dictated by utility. The testimony of both experts, as well as that of Mr. Fujita and

Mr. Conner, shows that the combination of the components into the claimed “overall

cubic design” of the applied-for mark has the utilitarian benefits that Applicant set

out to realize when it first designed the GX Engine with its boxlike external

components, including compactness and adaptability to a range of OEM applications.

The record shows that other engines in different “cubic” shapes could also achieve

those benefits, but that “does not negate that that this [overall cubic shape] was

designed functionally…” Bose, 227 USPQ at 5-6. We find that the “overall cubic

design” of the applied-for mark “is in its particular shape because it works better in

that shape” than in other shapes, and is primarily functional. Becton, Dickinson, 102

USPQ2d at 1376.

6. The Applied-For Mark in Its Entirety

“Whenever a proposed mark includes both functional and non-functional features,

as in this case, the critical question is the degree of utility present in the overall

design of the mark.” Id. In order to complete our analysis, we must address the

impact, if any, of the “specific styling elements” of each component (e.g., the

complementary lines, beveling, and shapes) and the other purely decorative features

that Applicant argues express its claimed trade dress. 208 TTABVUE 20.

Many of these specific features no longer appear the same way (or at all) in the

proposed mark following the GX Engine redesign.63 These changes are significant

63 The air cleaner cover continues to “feature[] a cube shape,” but the “beveled top outside

edges, and [the] belt-like area on the lower portion of the cover encompassing the entire

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Opposition No. 91200146

because Applicant argued in opposition to Opposer’s abandonment claim that the

modified mark is the legal equivalent of the mark in the application drawing and

“maintains the same commercial impression as its predecessor.” 208 TTABVUE 55.

This essentially means that the claimed source-identifying essence of the applied-for

mark inheres in the “overall cubic design, with a slanted fan cover, the fuel tank

located above the fan cover on the right, and the air cleaner located to the left of the

fuel tank,” not in the “specific styling elements” and the other purely decorative

features. If, as Applicant contends, the modified mark is the legal equivalent of the

applied-for mark despite these changes to (or the outright removal of) key decorative

elements of the applied-for mark, it follows that those decorative elements are

relatively insignificant to the applied-for mark as a whole or, more specifically, to its

overall commercial impression.

Another review of Applicant’s description of the applied-for mark is useful to

illustrate this point.

The mark consists of the configuration of an engine with

an overall cubic design, with a slanted fan cover, the fuel

tank located above the fan cover on the right, and the air

cleaner located to the left of the fuel tank. The air cleaner

cover features a cube shape with beveled top outside edges,

and a belt-like area on the lower portion of the cover

encompassing the entire circumference and the top of the

belt-like area is aligned with a rib of the fuel tank. The

carburetor cover features four ribs along its outside edge

circumference” were changed. The “belt-like area” is no longer a “belt” but was changed to

embody a “skirt.” Mieritz Tr. 95:24-25; 186:1-5. The beveling on the “beveled top area” on the

air cleaner cover was softened. Tr. 95:21-23; 186:6-8. The “four ribs along [the] outside edge”

of the carburetor cover were removed. Tr. 95:23-24. The engine still “features a beveling that

runs around its top circumference,” but the beveling on the fuel tank was rounded and

softened, and the claimed complementary angles in the application drawing no longer appear

to be complementary.

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Opposition No. 91200146

and a receded area where control levers are located. The

fuel tank is roughly rectangular. The engine features a

beveling that runs around its top circumference.

We have found the features described in the first sentence to be dictated primarily

by utility. The remainder of the description discusses specific component features.

We have found the receded area on the carburetor cover and the “roughly

rectangular” shape of the fuel tank to be dictated by utility. The described features of

the air cleaner cover and the “beveling that runs around” the engine’s top

circumference were changed, and the ribs on the carburetor cover were eliminated,

but Applicant contends that the resulting mark is still the applied-for mark. We

agree—because these features are incidental to the overall design, and not what

creates the commercial impression of the applied-for mark. Accordingly, we find that

these “specific styling elements” of each component and the other purely decorative

features such as the four ribs on the carburetor cover and the “belt-like area” on the

air cleaner cover, are relatively insignificant in the context of the applied-for mark as

a whole.

For the reasons discussed above, we further find that the applied-for mark as a

whole is primarily functional because the totality of the record shows that the

functional features of Applicant’s “configuration of an engine with an overall cubic

design, with a slanted fan cover, the fuel tank located above the fan cover on the right,

and the air cleaner located to the left of the fuel tank” outweigh the “complementary

lines and beveling” and the other decorative and non-functional aspects. Becton,

Dickinson, 102 USPQ2d at 1376-78; Bose, 81 USPQ2d at 1753. The overall

appearance of the applied-for mark is essential to the use or purpose of the engine

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Opposition No. 91200146

and affects its quality under the Inwood test. The applied-for mark as a whole “is in

its particular shape because it works better in that shape,” Becton, Dickinson, 102

USPQ2d at 1376, as it enables efficient engine operation and furthers Applicant’s

stated objectives of compactness and adaptability to a range of OEM applications.

“The record shows the arrangement of significant functional features is directed by

utilitarian concerns to make operation of the device easier, safer and more efficient.”

Heatcon, 116 USPQ2d at 1378.

Because we have found the applied-for mark to be functional under Inwood,

TrafFix, and their progeny without reliance upon the specific types of evidence

discussed in Morton-Norwich,64 and because “there is no requirement that all of the

categories of evidence identified in Morton-Norwich appear in every case in order to”

find functionality, Change Wind, 123 USPQ2d at 1456; see also Heatcon, 116 USPQ2d

at 1370; TrafFix, 58 USPQ2d at 1006, we will only briefly address the trial evidence

in these categories for the sake of completeness.

64 The parties discussed the Morton-Norwich categories of evidence, and their experts and

lay witnesses addressed them in their testimony, but we have not found them to be necessary

to establish the functionality of the applied-for mark.

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Opposition No. 91200146

D. The Morton-Norwich Categories of Evidence65

1. The Existence of a Utility Patent Disclosing the Utilitarian

Advantages of the Design66

a. United States Utility Patents

In TrafFix, the Supreme Court held that the existence of a utility patent for

features for which trademark protection is sought is often critical to a determination

that the features are functional. 58 USPQ2d at 1005. At the same time, the absence

of a United States utility patent that claims or discusses the functional benefits of an

applied-for mark does not establish that the applied-for mark is not primarily

functional. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3 (TTAB 2002) (the

absence of a pertinent utility patent “simply has no weight in our analysis.”); see also

Dippin’ Dots, Inc. v. Frosty Bites Distrib. LLC, 369 F.3d 1197, 70 USPQ2d 1707, 1713

(11th Cir. 2004) (“The Supreme Court held in TrafFix that a ‘utility patent is strong

evidence that the features therein claimed are functional.’ It did not, however,

conclude the inverse, i.e., that the absence of such features in the patent is strong

evidence that the features are not functional.”) (citation omitted); In re Deister

Concentrator Co., 289 F.2d 496, 129 USPQ 314, 319 (CCPA 1961) (with respect to

patents made of record by applicant “to provide grounds for an argument that the

structures shown in the patents did not have the outline shape it desires to register,”

65 We summarize our conclusions regarding these categories of evidence in the body of our

opinion. A more complete description of various materials pertaining to these categories of

evidence is set forth in the attached Appendix.

66 This Morton-Norwich category focuses on utility patents, but we will also consider the

Japanese model applications, which are in the nature of a United States patent application,

and the design patents in the record.

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court saw “no reason to consider appellant’s patents except to the extent they may

contain evidence of the functionality of the outline shape sought to be registered as a

trademark.”)

Opposer made of record seven United States utility patents, 127 TTABVUE 7-97,

but in its brief discusses only one of them, expired U.S. Patent No. 4,813,385 (the

“’385 Patent”). We have reviewed the other six utility patents and find that they are

not probative of functionality, so we will confine our analysis to the ’385 Patent.

Opposer focuses on Figure 1 of the ’385 Patent, arguing that this drawing is

“substantially similar to the applied-for mark.” 208 TTABVUE 34. Applicant argues

that “the ’385 patent neither describes nor ascribes any benefit to the specific styling

components depicted in Figure 1, and thus does not support a finding that the

applied-for mark is functional.” 208 TTABVUE 25.

The ’385 Patent shows various views of the GX Engine, and mentions the relative

location and shape of the engine’s fuel tank and air cleaner, including in the claims,

but it does not ascribe any functional benefits to those features. The patent claims

are directed to the external structure and internal workings of the air cleaner and

the precleaner themselves, which are internal components that are not part of the

applied-for mark. Opposer does not appear to argue that the external structure and

internal workings of the air cleaner and the precleaner in the ’385 Patent necessarily

dictates the appearance of any of the claimed elements of Applicant’s design. We thus

find that the ’385 Patent is not probative of functionality.

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b. Japanese Utility Model Applications

Opposer made of record 14 Japanese utility model applications, but discusses only

three of them in its brief. 204 TTABVUE 20-23. Although we have considered all

evidence properly of record, we confine our analysis to these three applications.

Utility model application No. S63-32344 (the “’344 Application”) is entitled

“General Purpose Internal Combustion Engine.” 104 TTABVUE 41-44. Unlike the

’385 Patent, which focused on specific components of the engine, the subject of the

’344 Application is the overall inclined-cylinder engine itself. It claims, inter alia, the

relative positioning of the fuel tank, carburetor, and the air cleaner as they appear in

the trademark application drawing, and attributes certain benefits to the overall

shape of the engine, including compactness, light weight, adaptability to “a wide

variety of applications,” and ease of maintenance, which were among Applicant’s

original performance objectives in designing the GX Engine. Mr. Mieritz

acknowledged that the ’344 Application “describes an engine that has similar

characteristics to the Honda GX engine,” Tr. 159:19-22, and that the engine claimed

in the ’344 Application looks similar to the applied-for mark. Tr. 161:9-16. He also

agreed that the engine claimed in the ’344 Application achieved the performance

objectives identified in the Detailed Description of the Innovation. Tr. 172:14-175:18.

We find that the ’344 Application is probative of functionality and corroborates our

finding, based upon the other evidence discussed above, that Applicant’s

“configuration of an engine with an overall cubic design, with a slanted fan cover, the

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fuel tank located above the fan cover on the right, and the air cleaner located to the

left of the fuel tank,” is primarily functional.

Utility model No. S62-33961 (the “’961 Application”) is entitled “General-Purpose

Engine.” 104 TTABVUE 24-26. The ’961 Application shows a version of the engine

depicted in the drawing of the applied-for mark, and discusses, in general terms, the

relative positioning of the components, but it does not attribute the performance

benefit of having the controls in the same plane to that positioning, or to the recessed

area of the carburetor cover. We find that the ’961 Application is not probative of

functionality.

Utility model No. 63-35160 (the “’160 Application”) is entitled “Cooling Device for

Internal Combustion Engine.” Although the specific focus of ’160 Application is a

cooling device, the ’160 Application suggests that the flat bottom of the fan cover,

while not optimally-shaped, as Dr. Reisel acknowledged, Tr. 100:10-21, is dictated by

the presence of an inclined cylinder. This is probative of functionality, and also

corroborates our finding, based upon the other evidence discussed above, that the

shape of the fan cover is primarily functional.

c. United States Design Patents

“[W]hile evidence of a design patent may be some evidence of non-functionality

under Morton-Norwich, ‘the fact that a device is or was the subject of a design patent

does not, without more, bestow upon said device the aura of distinctiveness or

recognition as a trademark.’” Becton, Dickinson, 102 USPQ2d at 1377 (quoting R.M.

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Smith, 222 USPQ at 3 (internal quotation omitted)). As the Federal Circuit has

explained,

Our law recognizes that the existence of a design patent for

the very design for which trademark protection is sought

‘presumptively . . . indicates that the design is not de jure

functional.’ Absent identity between the design patent and

proposed mark, the presumption loses force, and the

‘similar’ design patents lack sufficient evidentiary value to

overcome the strong conclusion in this case that

[applicant’s] utility patents underscore the functionality of

significant elements of the proposed mark.

Loggerhead Tools, 119 USPQ2d at 1432 (quoting Becton, Dickinson, 102 USPQ2d at

1377) (internal quotation omitted).

Applicant owned expired United States Patent No. D282,071 (the “’071 Patent”),

which claimed the “ornamental design for an internal combustion engine, as shown.”

164 TTABVUE 252-256. Applicant argues that its “expired design patent on the GX

is presumptive evidence of non-functionality.” 208 TTABVUE 26. We disagree.

Applicant argues that its design patent “depicts nearly all the features of the GX

Trade Dress,” 208 TTABVUE 26, but it also covers multiple features of the three-

dimensional GX Engine that do not appear in the drawing of the applied-for mark,

and by Applicant’s admission it is not identical to the applied-for mark. Given the

presence of many other elements in the design patent, it is not persuasive evidence

of non-functionality.67

67 Applicant also made of record engine design patents owned by Kohler and Briggs &

Stratton, 164 TTABVUE 233-251, arguing that all of the design patents in the record

“confirm that, notwithstanding the de facto functionality of a general purpose engine, such

as the GX, the specific styling of such an engine is ornamental and not dictated by function.”

208 TTABVUE 26. Whatever they may show, the other design patents do not show that the

design in the applied-for mark is not primarily functional.

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2. Advertising Touting the Utilitarian Advantages of the Design

“If a seller advertises the utilitarian advantages of a particular feature of its

product, this constitutes strong evidence of functionality.” Kistner, 97 USPQ2d at

1924. Opposer argues that “the record reflects that [Applicant] routinely touts the

functional features of its GX engine in its advertising, such as reliability, durability,

superior fuel efficiency, low emission levels, performance, value and, most notably,

compactness.” 204 TTABVUE 35-36. Applicant responds that “[w]hile it is certainly

true that Honda’s advertising discusses the functional benefits of the GX, nowhere

does that advertising ascribe any of those benefits to the specific ‘cubic’ look

comprising the GX Trade Dress.” 208 TTABVUE 30.

We reproduce in the Appendix a number of Applicant’s advertisements, including

two that the parties discuss under this Morton-Norwich category of evidence.

Applicant’s advertisements tout performance attributes of the GX Engine such as

power and fuel efficiency, but do not ascribe them to the design of the applied-for

mark. They are not probative of functionality.68 See Change Wind, 123 USPQ2d at

1462 (applicant’s advertising was “inconclusive on the issue of functionality” even

though it touted some of the same benefits discussed in applicant’s utility patent,

68 Applicant cites Global Manufacture Grp. v. Gadget Universe.com, 417 F. Supp.2d 1161

(S.D. Cal. 2006) for the proposition that “[b]ecause [Applicant’s] advertisements do not

attribute any functional benefit to the GX Trade Dress, they support a finding that the GX

Trade Dress is nonfunctional.” 208 TTABVUE 30. Global Manufacture held, in the context of

a motion for summary judgment on the issue of the functionality of a mobile scooter design,

that the absence of advertising touting the utilitarian features of the design assisted the

plaintiff in establishing a genuine dispute of material fact under Ninth Circuit law. Id. at

1169. For the reasons discussed above in connection with the utility patents, the absence of

advertising touting the functional benefits of the applied-for mark does not show that the

mark is non-functional.

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because it did not “explicitly tie the touted benefits to the various aspects of the [wind]

turbine depicted in the drawing in this application.”)

3. Competitive Alternatives

Applicant argues that there are “numerous other alternative designs available in

the market, which like the GX, are compact and offer the same performance benefits

yet are nonetheless visually distinct.” 208 TTABVUE 27. As discussed above,

Applicant did not show through persuasive testimony that the other engines in the

record “offer the same performance benefits” as the applied-for mark, but the record

shows other engines that are compact and have components whose features differ

somewhat in appearance from the counterpart features in the applied-for mark. Their

existence does not aid Applicant, however, because as the Supreme Court explained

in TrafFix, “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.” Valu Eng’g, 61 USPQ2d at 1427. “The availability of alternative designs

does not convert a functional design into a non-functional design.” Kistner, 97

USPQ2d at 1928 (citing TrafFix, 58 USPQ2d at 1007). Indeed, “[i]t is probative of

functionality that others in the industry use similar designs; they do not have to be

identical.” Change Wind, 123 USPQ2d at 1465 (citing Becton, Dickinson, 102 USPQ2d

at 1378).

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4. Simple and/or Inexpensive Methods of Manufacture

Dr. Reisel testified regarding whether the design of the applied-for mark affected

the cost of materials and engine manufacture.69 We find that his testimony did not

establish that the applied-for mark resulted from a simple or inexpensive method of

manufacture. Like Mr. Mieritz, he acknowledged that he was unaware of specific data

regarding the manufacturing costs of the GX Engine or comparative manufacturing

costs.70 Unlike Mr. Mieritz, however, he has never worked for an engine

manufacturer or personally designed an engine or engine component, and he has had

limited academic training and experience in manufacturing and cost analysis per se.71

While these gaps in his background do not detract materially from the weight we

accord his overall testimony regarding the functionality of the component parts of the

engine in the applied-for mark, or its overall configuration, they do render

unpersuasive his testimony on this specific Morton-Norwich category of evidence.

At the same time, however, we reject Mr. Mieritz’s testimony regarding the

manufacturing costs of the engine shown in the applied-for mark on the ground that

it is conclusory and unsupported by available data.72 Mr. Fujita’s testimony that the

design of the GX Engine actually increased its cost to manufacture is equally vague—

which is all the more puzzling given that he was a member of the large performance

69 Tr. 50:14-21; 52:3-21; 54:12-20; 60:12-61:15; 178:17-19.

70 Tr. 80:11-21; 83:6-21; 85:6-11; 86:20-24; 88:15-20; 94:20-24; 95:20-24.

71 Tr. 64:17-66:15; 69:21-25; 72:9-10, 20-73:12; 97:18-20; 105:7-9; 116:9-11; 127:22-24.

72 Tr. 32:3-8, 22-33:12 (fuel tank); 38:3-20; 39:23-25 (air cleaner cover); 41:8-13 (carburetor

cover); 46:22-47:17 (fan cover).

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design group on the GX Engine project and might reasonably be expected to have

specific information on this point. In any event, “‘while evidence that a product

feature makes the product cheaper to manufacture may be probative in showing

functionality, evidence that it does not affect its cost is not necessarily proof of non-

functionality.’” Kistner, 97 USPQ2d at 1930 (quoting In re N.V. Organon, 79 USPQ2d

1639, 1646 (TTAB 2006)). Even if the GX Engine were no less expensive to

manufacture than other engines, “while a lower manufacturing cost may be indicative

of the functionality of a product’s features, an equal or higher cost does not detract

from the functionality of those features.” Id. We find that this Morton-Norwich

evidence is not probative of functionality.

Finally, we point out that because we have found that the design has use-related

benefits, there is no need to determine whether the design also has cost-related

benefits. The Supreme Court has stated that “a product feature is functional, and

cannot serve as a trademark, [1] if it is essential to the use or purpose of the article

or [2] if it affects [a] the cost or [b] quality of the article.” TrafFix, 58 USPQ2d at 1006

(citation omitted; emphasis and numbering added). Thus, a product feature can be

found functional for being essential to the product’s use or purpose, or affecting its

quality, or affecting its cost. Here, we have already found that the design does indeed

have use-related utilitarian benefits. In other words, even if a hypothetical product

were substantially more expensive to manufacture, functionality doctrine would

permit others to try to compete in the submarket for such a more expensive but

better-working product. Ultimately, consumers would stand to benefit from not only

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the price-reducing economic effects competition, but also from any cost-reducing

innovations that resulted from such competition. For these reasons, we find that this

Morton-Norwich evidence is not probative of functionality.

* * *

We find, in sum, that the applied-for mark as a whole is functional. While that

finding alone is a sufficient basis upon which to sustain this opposition, we also

consider Opposer’s second primary ground for opposition: that the applied-for mark

has not acquired distinctiveness.

VII. Opposer’s Claim of Lack of Acquired Distinctiveness

“Product design almost invariably serves purposes other than source

identification, and consumers are aware that even the most unusual product design

is intended not to identify the source of the goods, but to render the product itself

more useful or appealing.” AS Holdings, 107 USPQ2d at 1837 (citing Wal-Mart, 54

USPQ2d at 1069). As a result, “product designs can never be inherently distinctive

and will always require evidence of acquired distinctiveness or secondary meaning”

to be registrable as marks. Id. (citing Wal-Mart, 54 USPQ2d at 1070). Acquired

distinctiveness means that consumers have come to associate the mark with a single

(even if anonymous) source. See, e.g., Inwood, 214 USPQ at 4 n.11; Coca-Cola Co. v.

Koke Co. of Am., 254 U.S. 143, 146 (1920); Tone Bros. v. Sysco Corp., 28 F.3d 1192, 31

USPQ2d 1321, 1329 & n.11 (Fed. Cir. 1994); Textron, Inc. v. U.S. Int’l Trade Comm’n,

753 F.2d 1019, 224 USPQ 625, 627 (Fed. Cir. 1985).

Applicant provided sufficient Section 2(f) evidence of acquired distinctiveness

during prosecution to persuade the Examining Attorney to approve the application

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for publication for opposition. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d

1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (“[T]here is a presumption that the

examining attorney found that the applicant had made a prima facie case of acquired

distinctiveness.”).73 “[W]hen the same mark is challenged in an inter partes

proceeding such as this opposition, it is the opposer that has the initial burden to

establish prima facie that the applicant did not satisfy the acquired distinctiveness

requirement of Section 2(f).” AS Holdings, 107 USPQ2d at 1837. “The opposer may

meet this initial burden if it 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. (quoting

Yamaha, 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 and to establish that the

mark has acquired distinctiveness. … In Section 2(f)

proceedings, as in any other oppositions, once the opposer

establishes its prima facie case, all evidence must be

considered. … [T]he standard of proof in an opposition

under section 2(f) has always been a preponderance of the

evidence, although logically that standard becomes more

difficult to meet as the mark’s descriptiveness increases.

Yamaha, 6 USPQ2d at 1005-06, 1008.

73 For purposes of this opposition, “the Board is not bound by the Examining Attorney’s

decision to allow publication of the mark.” Apollo Med. Extrusion Techs., Inc. v. Med.

Extrusion Techs., Inc., 123 USPQ2d 1844, 1852 (TTAB 2017) (citing In re La. Fish Fry Prods.,

Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015)).

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Opposition No. 91200146

As the Board put it in In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1986 (TTAB 2009),

“the lesser the degree of inherent distinctiveness, the heavier the burden to prove

that it has acquired distinctiveness.” Here, two circumstances loom large. First, we

are dealing with product configuration. “While there is no fixed rule for the amount

of proof necessary to demonstrate acquired distinctiveness, the burden is heavier in

this case because it involves product configuration[].” In re Ennco Display Sys., Inc.,

56 USPQ2d 1279, 1283-84 (TTAB 2008). Second, where, as here, many third parties

are using similarly-shaped engine configurations, “a registration may not issue

except upon a substantial showing of acquired distinctiveness.” Udor, 89 USPQ2d at

1986; see also House of Worsted-Tex, Inc. v. Superba Cravats, Inc., 284 F.2d 528, 128

USPQ 119, 121 (CCPA 1960) (where an alleged mark refers to several entities, “[i]t

would require much to develop a secondary meaning whereby the public would come

to associate [the mark] with a single manufacturer or vendor”); cf. Levi Strauss & Co.

v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the

record shows that purchasers are confronted with more than one (let alone numerous)

independent users of a term or device, an application for registration under Section

2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking

under such circumstances.”).

A. Opposer’s Prima Facie Case

Opposer’s prima facie case of lack of acquired distinctiveness consists of surveys,

what it calls “dozens of examples of third party engines with substantially similar

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shapes and configurations to the applied-for mark being sold in the U.S.,” 204

TTABVUE 40, and attacks on Applicant’s evidence.

As discussed above in connection with functionality, the record contains multiple

examples of similarly-shaped third-party engines with components having the same

general configuration of, and being located in the same places as, the primary

components of the GX Engine. We reproduce below depictions74 of some of the

engines:75

74 Photographs of various third-party engines were improperly designated as Confidential.

164 TTABVUE 36, 221; 188 TTABVUE 77-94. Engines are obviously exposed to the public.

75Some additional relevant third-party engines are shown at 118 TTABVUE and 130

TTABVUE.

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Opposition No. 91200146

Applicant argues that Opposer admits, and that various witnesses testified, that

there are differences in appearance between these engines and the GX, and that there

have been no reported instances of confusion as to their source. 208 TTABVUE 34.

We agree that there are differences, but “[i]n order to be relevant to the question of

whether applicant’s mark has acquired distinctiveness, the third-party uses do not

have to be identical to applicant’s mark.” Saint-Gobain Corp. v. 3M Co., 90 USPQ2d

1425, 1440 (TTAB 2007) (color mark); see also Goodyear Tire & Rubber Co. v. Interco

Tire Corp., 49 USPQ2d 1705, 1720 (TTAB 1998) (differences between applicant’s tire

tread designs and third-party designs not shown by applicant to be of source-

identifying significance). The third-party engines mirror Applicant’s description of its

claimed mark: “an overall cubic design, with a slanted fan cover, the fuel tank located

above the fan cover on the right, and the air cleaner located to the left of the fuel

tank,” with a roughly rectangular fuel tank.

When considered in conjunction with Opposer’s other evidence of non-

distinctiveness, and its arguments regarding the deficiencies in Applicant’s Section

2(f) showing, we find the third-party uses sufficiently similar to Applicant’s claimed

mark, as shown and described in the application, to establish a prima facie case that

Applicant’s claimed mark does not serve as a unique identifier of the source of the

goods. Accordingly, Applicant must show, on the basis of the record as a whole, that

its claimed mark has acquired distinctiveness.

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B. Applicant’s Evidence of Acquired Distinctiveness

“Acquired distinctiveness may be shown by direct and/or circumstantial evidence.

Direct evidence includes actual testimony, declarations or surveys of consumers as to

their state of mind. Circumstantial evidence is evidence from which consumer

association may be inferred, such as years of use, extensive amount of sales and

advertising, and any similar evidence showing wide exposure of the mark to

consumers.” Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94

USPQ2d 1549, 1554 (TTAB 2009); see also In re Owens-Corning Fiberglas Corp., 774

F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (“An evidentiary showing of secondary

meaning, adequate to show that a mark has acquired distinctiveness indicating the

origin of the goods, includes evidence of the trademark owner’s method of using the

mark, supplemented by evidence of the effectiveness of such use to cause the

purchasing public to identify the mark with the source of the product.”). No single

factor is determinative. Id. In cases of product configuration, the evidence provided

to establish acquired distinctiveness must relate to the promotion and recognition of

the specific configuration embodied in the applied-for mark and not to the goods in

general. See Inwood, 214 USPQ at 4 n.11 (“To establish secondary meaning, a

manufacturer must show that, in the minds of the public, the primary significance of

a product feature or term is to identify the source of the product rather than the

product itself.”); see also Ennco Display, 56 USPQ2d at 1285 (“advertising that touts

a product feature for its desirable qualities and not primarily as a way to distinguish

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Opposition No. 91200146

the producer’s brand is not only not evidence that the feature has acquired secondary

meaning, it directly undermines such a finding”) (citation omitted).

1. Direct Evidence

a. Testimony

In a section of its brief entitled “Established Place in the Market,” Applicant

discusses the testimony of Messrs. Mieritz, Conner, Rumao, and Hotz, and the

distributors who submitted form declarations during prosecution, to show acquired

distinctiveness. 208 TTABVUE 38. As discussed much earlier, in our review of

evidentiary objections, we have excluded the testimony of Mr. Mieritz on the

perceptions of OEMs, dealers, and distributors “that the look of the GX was known

throughout the industry.” 208 TTABVUE 38. Opposer did not object at trial to the

portions of Mr. Mieritz’s testimony that the GX Engine was viewed as the number-

one engine in the industry with respect to performance and durability, Tr. 97:9-19,

This text is long and has been trimmed here. Open the source document for the complete record.