# Kohler Co. v. Honda Giken Kogyo K.K. > Trademark Trial and Appeal Board · December 20, 2017 URL: https://www.frixlaw.com/law-library/cases/11284155 ## Case - **Court:** Trademark Trial and Appeal Board - **Decided:** December 20, 2017 - **Precedential status:** Published - **Opinion:** Opinion by Larkin - **Judges:** Adlin, Heasley, Larkin - **Cited by:** 0 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/11284155 ## Opinion text 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 -2- 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 -3- 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. -4- 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 -5- 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). -6- 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. -7- 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. -8- 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. -9- 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 - 10 - 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. - 11 - 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). - 12 - 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. - 13 - 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. - 14 - 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); - 15 - 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); - 16 - 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. - 17 - 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. - 18 - 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). - 19 - 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. - 20 - 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). - 21 - 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) - 22 - 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.” - 23 - 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 - 24 - 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. - 25 - 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; - 26 - 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. - 27 - 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. - 28 - 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. - 29 - 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. - 30 - 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. - 31 - 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, - 32 - 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 - 33 - 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 - 34 - 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. - 35 - 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. - 36 - 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)). - 37 - 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. - 38 - 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. - 39 - 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). - 40 - 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. - 41 - 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. - 42 - 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. - 43 - 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 - 44 - 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 - 45 - 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 - 46 - 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 - 47 - 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 - 48 - 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: - 49 - 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. - 50 - 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. - 51 - 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). - 52 - 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. - 53 - 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 - 54 - 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 - 55 - 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 - 56 - 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 - 57 - 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. - 58 - 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, - 59 - 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 - 60 - 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. - 61 - 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 - 62 - 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. - 63 - 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 - 64 - 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 - 65 - 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 - 66 - 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. - 67 - 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 - 68 - 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 - 69 - 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 r [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11284155. Public record. Not legal advice.