Armonds Mfg. Co., Inc.

Trademark Trial and Appeal Board

Nov 30, 1999

No. 74689088 (T.T.A.B. Nov. 30, 1999)

Paper No. 16
JER
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Armonds Manufacturing Company, Inc.
________
Serial No. 74/689,088
_______
Dorian B. Kennedy of Kennedy & Kennedy for applicant.
Raul F. Cordova, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Rice, Seeherman, and Hairston, Administrative
Trademark Judges.
Opinion by Rice, Administrative Trademark Judge:
An application has been filed by Armonds Manufacturing
Company, Inc. to register, on the Principal Register
pursuant to the provisions of Section 2(f) of the Trademark
Act of 1946 (“Act”), 15 U.S.C. §1052(f), the configuration
shown below (in reduced size)
Ser. No. 74/689,088
2
for toothpicks.1 It is stated in the application that the
mark consists of the configuration of a toothpick, and that
the lining is not a feature of the mark and does not
indicate color, but rather is to indicate depth of the
mark.
Registration has been finally refused, under Sections
1, 2, and 45 of the Act, 15 U.S.C. §§1051, 1052, and 1127,
on the alternative grounds that applicant’s configuration
is de jure functional and hence unregistrable; or, if the
configuration is not de jure functional, that it is de
facto functional, is not inherently distinctive, and has
not acquired distinctiveness as an indication of origin for
applicant’s goods. Applicant has appealed. Both applicant
and the Examining Attorney have briefed the issues before
us. An oral hearing was not requested.
We turn first to the refusal to register on the ground
that applicant’s toothpick configuration is de jure
functional. A configuration which is so utilitarian as to
constitute a superior design for its purpose, so that
competitors need to copy it in order to compete
effectively, is de jure functional (functional in law), and
unregistrable. The mere fact that a product configuration

1 Application Serial No. 74/689,088, filed June 15, 1995,
claiming first use and first use in commerce on April 5, 1990.
Ser. No. 74/689,088
3
has utility does not necessarily mean that the
configuration is unregistrable; registrability depends upon
the degree of its design utility. See In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15 (CCPA 1982).
If a product is in its particular shape because it works
better in that shape, the configuration of the product is
de jure functional. See In re R.M. Smith, Inc., 734 F.2d
1482, 222 USPQ 1, 3. (Fed. Cir. 1984). Factors which are
relevant to the determination of whether a particular
product design is superior include (1) the existence of a
utility patent that discloses the utilitarian advantages of
the design, (2) advertising materials in which the
originator of the design touts the design’s utilitarian
advantages, (3) the availability to competitors of
alternative designs, and (4) facts indicating that the
design results from a comparatively simple or cheap method
of manufacturing the product. See In re Morton-Norwich
Products, Inc., supra.
With respect to the first factor, the Examining
Attorney has made of record both a utility patent and a
design patent, each of which issued to a different third
party.2 The utility patent (No. 4,314,574, issued February

2 The utility patent was made of record as evidence that
applicant’s configuration is de jure functional. The design
Ser. No. 74/689,088
4
9, 1982) is for an invention entitled “TOOTH-PICK HAVING
ONE FOLDED END AND ASSOCIATED POCKET CONTAINER BOX.” There
are two full-length drawing figures of the toothpick, as
shown below:3
The portion of the abstract pertaining to the toothpick
reads: “Tooth-picks formed by a straight central portion
of constant thickness, an end with a sharp point or tip,
another end with a section angled at about 45° with
thickness tapering to the tip, which is transversally
rounded.”4 The first listed advantage of the toothpick

patent was offered as evidence that the configuration lacks
distinctiveness.
3 According to the patent, FIG. 1 is “a side, plan and sectional
view showing the tooth-pick” and FIG. 2 is “a plan view thereof.”
4 The claim relating to the toothpick reads:
A laminar toothpick comprising a straight
central portion of a constant thickness, terminating
at one end in a sharp point, while the other end is
angular, lying in the same plane but disposed at
about 45° to the axis of said central portion, said
point and said angular end being integral with said
central portion, said angular end having adjacent
the first portion the same thickness as the central
portion, but then immediately tapering, toward the
tip, and terminating in a rounded edge.
Ser. No. 74/689,088
5
reads: “The inclined or angled section allows an easy
access to all of the tooth interstices, thus obtaining an
improved cleaning of the oral cavity.”5 The next listed
advantage reads: “The least tapered end is intended for
the intertooth spaces, while the pointed or sharpened end
of the opposite end, which is of constant thickness, is
more useful adjacent the tooth neck or on the occlusal
surfaces.”
This utility patent indicates that the angled section
of applicant’s toothpick configuration constitutes a
significant utilitarian advantage in that it allows easy

5 The background of the invention reads as follows:
This invention relates to a tooth-pick having
one angled end and an associated pocket container.
Tooth-picks are commonly known, as mostly made
of wood or plastics material, having round, square
or plain or flat section, but provided with the two
ends that are mirror-like the same relative to a
plane perpendicular to the single longitudinal axis
of symmetry.
Some of such tooth-picks are characterized by
being provided with a sharp point or tip, and
others by having a rounded point or tip.
A tooth-pick according to the present
invention combines the advantages of both of the
above mentioned types but with the added novelty of
having one end thereof angled, so as to be of
asymmetrical shape, with one end of prevailingly
pointed configuration and the other end of
prevailingly rounded configuration, but with a
blade thickness.
The cross-section may be rectangular with
sharp edges or chamfered edges; it is of constant
thickness towards the sharpened point or tip, while
gradually decreasing to the opposite end with a
resulting tapering, promoting entry into the
intertooth space.
Ser. No. 74/689,088
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access to all of the spaces between the teeth. The
background portion of the patent, as quoted in footnote 5
above, also indicates that a square shaft and sharp points
or tips are common features of toothpicks. Obviously, the
pointed ends are a standard utilitarian toothpick feature;
they facilitate the removal of food from between and around
the teeth.6 The square shaft is one of the few basic shapes
for toothpick shafts. Thus, it appears from the
information in the patent that except for the angled end,
which constitutes a significant utilitarian advantage,
applicant’s toothpick design does not differ substantially
from conventional toothpick designs.
The existence of this utility patent is strong
evidence of the de jure functionality of the configuration.
See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir.
1985), and In re Morton-Norwich Products, Inc., supra.
Applicant argues, however, that the design patent made of
record by the Examining Attorney is evidence that
applicant’s toothpick design is not de jure functional,

6 Attached to the Examining Attorney’s appeal brief is a copy of
a page from the Random House Compact Unabridged Dictionary
(Special Second Edition, 1996) showing that the noun “toothpick”
is defined therein as “a small pointed piece of wood, plastic,
etc., for removing substances, esp. food particles, from between
the teeth.” Although this dictionary definition was not made of
record by the Examining Attorney prior to appeal (see Trademark
Rule 2.142(d), 37 CFR §2.142(d), we can and hereby do take
Ser. No. 74/689,088
7
because “a design patent cannot be granted or can be
invalidated by the establishment of functionality.”7
The design patent (No. 345,825) is for the ornamental
design of a toothpick, as shown below (in reduced size):
It is true that the existence of a design patent is
some evidence of nonfunctionality. However, it is not
conclusive evidence thereof. See In re R.M. Smith, Inc.,
supra; In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997);
In re American National Can Co., 41 USPQ2d 1842 (TTAB
1997); and In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).
Here, we are of the opinion that the evidence of the design
patent is outweighed by the evidence of the utility patent.8
Cf. In re Caterpillar Inc., supra.
We turn next to the second factor, i.e., the
existence of advertising materials in which the originator

judicial notice of the definition. See In re John Harvey & Sons
Ltd., 32 USPQ2d 1451 (TTAB 1994).
7 Applicant’s appeal brief, page 4.
8 While applicant’s toothpick design and the toothpick design in
the design patent are similar to the extent that both have one
angled end, there are also differences between them, as, for
example, in the shape of the shaft and the other end.
Ser. No. 74/689,088
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of the design touts the design’s utilitarian advantages.
In response to the Examining Attorney’s request for
submission of “any available advertising, promotional or
explanatory material concerning the goods, particularly any
material specifically related to the feature embodied in
the proposed mark,” applicant stated that it does not
advertise the goods but instead sells them to large retail
chain stores, and to the military for resale in PX’s and
commissaries. Applicant did submit some examples of its
packaging. An example thereof is shown below:
Ser. No. 74/689,088
9
Although this packaging certainly calls attention to the
angled end of applicant’s toothpick configuration, and
refers to the “Professional Design,” it does not really
tout the utilitarian advantages of the shape of the
toothpick.
As to the third and fourth factors, i.e., the
availability to competitors of alternative designs, and
whether the applicant’s design results from a comparatively
simple or cheap method of manufacturing the product,
applicant has submitted the declaration of its president,
Mr. Armond O. Parks, Jr. Mr. Parks states, inter alia,
that toothpicks have been or are presently made in many
different shapes and configurations which are different
from the configuration sought to be registered, and that
these alternative toothpicks are equally or less costly to
produce than the subject toothpick. In support of its
argument that today there are a multitude of alternative
toothpick designs, none of which has a bend, applicant has
submitted evidence relating to three other toothpick
designs on the market.9 The evidence consists of

9 It appears from the photographs submitted by applicant that two
of the alternative designs (the DR. DU-MORE’S PLAQ-U-PICK plaque
remover and the STIM-U-DENT plaque remover) are very similar to
one another, that is, that they are simply slight variations of
the same basic design.
Ser. No. 74/689,088
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photographs showing each of the toothpicks and the
packaging therefor, as shown below:
Ser. No. 74/689,088
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We have no reason to doubt Mr. Park’s declaration that
the alternative toothpick designs are equally or less
costly to produce than applicant’s toothpick. However,
applicant’s design has a utilitarian advantage over the
alternative designs, all of which are straight, in that the
angled end of applicant’s toothpick allows easier access to
all of the tooth interstices. Applicant’s evidence does
not persuade us that there are competitive designs that are
functionally equivalent to applicant’s design.
Given the evidence provided by the utility patent and
the lack of alternative designs allowing equally easy
access to all of the tooth interstices, we conclude that
applicant’s overall design is a superior design for its
functional purpose; that it is in its particular shape
because it works better in that shape; and that it is,
therefore, de jure functional.
For the sake of completeness, in case our finding of
de jure functionality should be reversed on appeal, we turn
to the issues of whether, if applicant’s design is only de
facto functional, it is either inherently distinctive or,
if not, has acquired distinctiveness.10

10 In response to the refusal to register, applicant filed an
amendment seeking registration under the provisions of Section
2(f) of the Act, claiming that its design has become distinctive
of its goods in commerce. However, applicant has consistently
taken the position that its design is inherently distinctive, and
Ser. No. 74/689,088
12
In determining whether a design is inherently
distinctive, the Court of Customs and Patent Appeals, the
predecessor of our reviewing court, the Court of Appeals
for the Federal Circuit, has considered such factors as
whether is it “a ‘common’ basic shape or design,” whether
it is “unique or unusual in a particular field,” or whether
it has an “original, distinctive, and peculiar appearance.”
See Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977), and In re McIlhenny
Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960), quoting
with approval from Ex parte Haig & Haig, Ltd., 118 USPQ
229, 230 (Asst. Comm. 1958). In the present case, the
patent and dictionary evidence made of record by the
Examining Attorney convinces us that applicant’s
configuration is not so original or unusual in appearance
that it would inherently be perceived as a trademark. Cf.
In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992), and In
re Usher, S.A., 219 USPQ 920 (TTAB 1983).
This brings us, finally, to the question of whether
the evidence submitted by applicant is sufficient to make
out a prima facie showing that its design has become
distinctive of its toothpicks in commerce. In support of

that the Section 2(f) claim is to be considered only in the event
that its design is found to be not inherently distinctive. Thus,
Ser. No. 74/689,088
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its claim of acquired distinctiveness, applicant again
relies upon the declaration of Mr. Parks. The declaration
states, in relevant part, that applicant’s subject
toothpick has been sold since 1990; that during the period
from 1990 until October 22, 1997 (the date the declaration
was signed), the number of toothpicks sold by applicant
throughout the United States totalled approximately
12,260,077,760 (or approximately 122,600,777 boxes holding
100 toothpicks per box); that as a form of promoting the
subject toothpick, applicant has provided retailers
approximately 10% of its production free of charge for use
in floor displays, restaurant promotions and slotting
sales; and that the United States government has recently
placed applicant’s toothpick on the list of items which
must be carried in all military base PX’s and commissaries.
In addition, the declaration states that applicant’s
packaging focuses on the angled feature of its toothpicks,
in that the mark thereon includes the term ANGLED together
with a depiction of an angled toothpick.11 An example of

we treat the Section 2(f) claim as being an alternative position.
See TBMP §1215.
11 The declaration also states that applicant’s “toothpick has
been the subject of newspaper articles recognizing the unique
shape of the toothpick,” and specifically identifies three
newspaper issues in which such articles have allegedly appeared,
namely, “Florida Grocer, July 1990, Athens Daily News, November
25, 1991 and Athens Banner Herald, November 25, 1991.” However,
applicant failed to submit copies of the articles. Without
Ser. No. 74/689,088
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applicant’s packaging is shown above, in connection with
the second de jure functionality factor. For ease of
reference, that example is shown again here, along with the
two others submitted by applicant:

copies of the articles, we cannot tell whether they demonstrate
recognition of the toothpick shape as a mark, or instead serve as
evidence of the de jure functionality of the shape, or are
ambiguous.
Counsel for applicant states, in applicant’s appeal brief, that
the toothpick design has recently been identically copied by
applicant’s former distributor, Mack F. Blevins; that applicant
has filed a civil action against Mr. Blevins in the Northern
District of Georgia, Atlanta Division (Armonds Manufacturing
Company v. Mack F. Blevins 1:97-CV-3194-CC); and that proof of
intentional copying is considered to be a factor in determining
secondary meaning. No copy of the pleadings in the civil action
was submitted. In a paper entitled “SUBMISSION OF SUPPLEMENTAL
BRIEF” filed November 16, 1999, counsel for applicant asserts
that on the second day of trial, Mack Blevins agreed to a license
and a consent judgment in applicant’s favor. No copy of the
consent judgment was submitted. There is no provision for the
filing by an applicant of a “supplemental brief” such as this,
though an applicant may file a request to suspend and remand for
consideration of new evidence. See Trademark Rule 2.142(d), 37
CFR §2.142(d). In any event, the filing of the civil action, and
the resulting consent judgment, do not establish the validity of
applicant’s configuration as a trademark. Indeed, while counsel
for applicant argues, in effect, that the copying by Blevins was
an attempt by him to benefit from the good will and reputation
built up by applicant with respect to the configuration, the
copying of a configuration may be an indication that competitors
need to use the shape because it is functionally superior, and a
consent judgment may show the desire of a competitor to avoid the
expenses of litigating a case to a decision on the merits. Cf.
In re Wella Corp., 635 F.2d 845, 196 USPQ 7 (CCPA 1977). The
civil action does, however, demonstrate applicant’s policing
Ser. No. 74/689,088
15
Applicant’s letterhead similarly features the shape of its
toothpick, as shown below:

efforts with respect to the configuration sought to be
registered.
Ser. No. 74/689,088
16
As the Examining Attorney notes, large sales figures
alone do not necessarily indicate that a particular
configuration has come to be viewed by purchasers as a
trademark. Often, such sales figures simply indicate the
success or popularity of the product. However, applicant’s
sales figures have to be viewed in conjunction with
applicant’s packaging, which prominently features
applicant’s toothpick configuration, both as part of a
composite trademark and also by itself (at the bottom of
the blister pack). Moreover, the term ANGLED in
applicant’s composite mark also calls attention to the
shape of the toothpick. Considering the many millions of
packages of toothpicks sold by applicant, together with the
nature of the use made on applicant’s packaging, and the
length of use of the configuration, we are persuaded that
applicant has made out a prima facie case of acquired
distinctiveness.
Ser. No. 74/689,088
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Decision: The refusal to register on the ground that
applicant’s configuration is de jure functional is
affirmed; the alternative refusal to register on the ground
that the configuration is de facto functional and is not
inherently distinctive is also affirmed; but the
alternative refusal to register on the ground that the
configuration has not acquired distinctiveness is reversed.
J. E. Rice
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
And Appeal Board
Ser. No. 74/689,088
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