Alexander Manu-facturing Co.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75449466 (T.T.A.B. Aug. 6, 2002)

Hearing: Mailed: August 6, 2002
July 17, 2002 Paper No. 12
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Alexander Manufacturing Company
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Serial No. 75/449,466
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Lionel L. Lucchesi of Polster, Lieder, Woodruff & Lucchesi,
L.C. for Alexander Manufacturing Company.
Catherine Pace Cain, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Alexander Manufacturing Company (applicant), a
Missouri corporation, has appealed from the final refusal
of the Trademark Examining Attorney to register the mark
shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/449,466
2
for hand tools, namely, screwdrivers.1 Applicant has
amended the description of its mark to the following: “The
mark consists of the configuration of a screwdriver
comprising a round barrel and a separate blade with
reversible tip inserted into one end of the barrel. The
thick lines are a feature of the mark, and the other lining
is for shading purposes only and is not intended to
indicate color.” The Examining Attorney has refused
registration on the basis that applicant’s asserted mark
has not been shown to have acquired distinctiveness.2
Applicant and the Examining Attorney have submitted briefs
and an oral hearing was held.
The specimens of record consist of a photograph of
applicant’s pocket screwdrivers (reproduced below).

1 Application Serial No. 75/449,466, filed March 12, 1998, based upon
applicant’s allegations of use of the mark since 1989.
2 An earlier refusal that applicant’s mark was de jure functional has
been withdrawn.
Serial No. 75/449,466
3
Examining Attorney’s Arguments
Arguing that the ultimate burden of persuasion is on
applicant to prove acquired distinctiveness under Section
2(f) of the Act, 15 USC §1052(f), it is the Examining
Attorney’s position that the evidence submitted by
applicant to demonstrate acquired distinctiveness is
insufficient. Applicant’s evidence consists of advertising
expenses covering all of applicant’s screwdrivers (not just
the screwdriver which is the subject of this application),3
pages from applicant’s catalogs displaying some of
applicant’s screwdrivers, and a declaration of applicant’s
president attesting to the substantially exclusive and
continuous use of applicant’s asserted mark for at least
five years. This declaration also states that applicant’s
mark is recognized in the trade and by consumers.4

3 Applicant’s counsel indicates that applicant’s advertising expenditures
for specific hand tools are considered confidential (appeal brief, 7).
For the year 1999, applicant spent a total of $154,000 advertising and
promoting all of its screwdrivers, including screwdrivers with
different shapes.
4 In addition to the foregoing evidence, applicant’s counsel points to
copies of four of applicant’s existing registrations which it submitted
for the first time with its appeal brief. The Examining Attorney has
objected to this evidence under Trademark Rule 2.142(d), arguing that
this evidence is untimely. We agree. Evidence submitted for the first
time with an appeal brief is untimely. In re JT Tobacconists, 59
USPQ2d 1080, 1084 n.2 (TTAB 2001). In any event, those registrations
are for different marks. Two of those registrations are for
triangular-shaped barrels, one is for a ten-sided barrel and the
remaining registration is for the configuration of a button inserted
into one end of a round screwdriver barrel. We note that in the latter
registration, the configuration of the round barrel with square-cut
ends is shown in dotted lines, indicating that no claim is being made
to that matter.
Serial No. 75/449,466
4
The Examining Attorney contends that, because
applicant’s advertising expenses relate to all of
applicant’s screwdrivers, it is not possible to determine
the specific advertising figures for applicant’s subject
mark. In any event, the Examining Attorney argues that
there is no frame of reference placing applicant’s total
expenditures in context with respect to the expenditures of
other screwdriver manufacturers. The Examining Attorney
maintains that there is no evidence of record of the impact
of applicant’s efforts on the purchasing public; that is,
there is no evidence with respect to the perception of, or
recognition by, purchasers of applicant’s configuration as
a trademark. Finally, in further support of her position
that applicant has not demonstrated that its screwdriver
configuration functions as a mark, the Examining Attorney
points to promotional literature, submitted by applicant,
of other manufacturers’ pocket screwdrivers, which the
Examining Attorney contends are similar to applicant’s
screwdrivers.
Applicant’s Arguments
Applicant, on the other hand, contends that the
combination of a cylindrical barrel with square-cut ends
and a reversible blade (regular and Phillip’s head) is a
distinctive mark. Applicant argues that the catalog
Serial No. 75/449,466
5
photographs of its pocket screwdrivers, which it refers to
as “image advertising,” promote its goods as a trademark.
With respect to the examples of competitive products,
applicant argues that they display screwdrivers which are
not the same as, or similar to, applicant’s.
Opinion and Decision
In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme
Court stated that if trade dress falls within the category
of product design, which is the type of mark applicant here
seeks to register, the trade dress can never be inherently
distinctive. Id. 54 USPQ2d at 1068 (“It seems to us that
design, like color, is not inherently distinctive…”).
Accordingly, a product design or product configuration is
registrable (or protectable) only upon a showing of
acquired distinctiveness. Id. 54 USPQ2d at 1068, 1069.
In this connection, the Supreme Court noted that product
design almost invariably serves purposes other than source
identification, and that consumers are aware that even the
most unusual product design (such as a cocktail shaker
shaped like a penguin) is intended not to identify the
source, but to render the product itself more useful or
appealing.
Serial No. 75/449,466
6
First, we note that applicant’s description of its
mark in the application mentions only the round barrel and
the reversible blade inserted into one end of the barrel.
It is clear from applicant’s appeal brief, 3 (as well as
arguments made at the oral hearing), however, that
applicant is claiming more than what is revealed in that
description. Specifically, applicant’s counsel indicates
that the elements of applicant’s mark include a round or
cylindrical barrel with square-cut ends as well as a
reversible blade. Further, at the oral hearing applicant’s
attorney also indicated that the fluted aspect of the metal
screwdriver blade was another element of its mark.
However, this aspect of applicant’s asserted mark was not
mentioned in applicant’s brief or in other papers filed in
connection with this application. Moreover, this feature
of the screwdriver blade is not clearly shown in the
specimens of record.5
Applicant has admitted, appeal brief, 4, that the
reversible blade is not new. “In fact, a visit to any
hardware store will reveal the existence of alternative
reversible blade screwdrivers…”. It appears, therefore,

5 Should applicant prevail in any appeal, the description of its mark
should be clarified to include reference to square-cut ends as well as
other elements which applicant claims function as its mark. See TMEP
§§1202.02(d).
Serial No. 75/449,466
7
that this aspect of applicant’s configuration should have
been shown in dotted lines and not claimed as a feature of
its mark. That is, if a mark comprises the design of only
a portion of a product, broken lines should be used in the
drawing to indicate that portion of the product that is not
claimed as part of the mark. See Trademark Rule
2.52(a)(2)(ii); In re Water Gremlin Co., 635 F.2d 841, 208
USPQ 89 (C.C.P.A. 1980); and In re Famous Foods, Inc., 217
USPQ 177 (TTAB 1983).
With respect to other elements of applicant’s pocket
screwdrivers, a review of the competitive products reveals
screwdrivers of very similar appearances. See, for
example, the pocket screwdrivers of Enduro and HPC
Promotions (shown below).
Serial No. 75/449,466
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These competitive screwdrivers have round barrels and, in
the case of the HPC product, have at least one square-cut
end (as opposed to two in applicant’s configuration). The
fact that applicant’s screwdrivers may differ from those of
another manufacturer in this minor detail would not seem to
be the kind of difference in design likely to be recognized
by the average purchaser of such goods as an indication of
origin. Furthermore, applicant has acknowledged that it
does not tout the design elements of its screwdrivers.
Appeal brief, 6; and Response filed June 1, 1999, 2.
Applicant states that its advertising merely refers to the
fact that applicant’s screwdrivers accommodate reversible
Serial No. 75/449,466
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blades. Nor does applicant promote the round handle with
square-cut ends in combination with the reversible blade as
a trademark in any material made of record. That is to
say, there is no record of any “look for” advertising which
would draw potential purchasers’ attention to those
features of applicant’s screwdrivers which applicant claims
function as its mark. Indeed, we have held that
advertising that touts a product feature for its desirable
qualities and not primarily as a way to distinguish the
goods is not only not evidence of acquired distinctiveness
but in fact undermines such a finding. In re Ennco Display
Systems Inc., 56 USPQ2d 1279 (TTAB 2000).
In sum, while applicant displays its goods in its
catalogs (and now on the Internet), there is simply no
evidence that applicant has tried to associate either the
round handle or the square-cut ends (or any other feature
of its goods) as an indication of origin. In any event,
applicant’s screwdriver configuration consisting of a round
barrel with square-cut ends is not significantly different
from the product design of competitors. Nor is there any
evidence that consumers or potential purchasers associate
any claimed features exclusively with applicant.
Accordingly, we agree with the Examining Attorney that
Serial No. 75/449,466
10
applicant has failed to carry its burden of demonstrating
that the subject mark has acquired distinctiveness.
Decision: The refusal of registration is affirmed.