Becton, Dickinson and Co.

Trademark Trial and Appeal Board

Jul 27, 2010

No. 77254637 (T.T.A.B. Jul. 27, 2010)

Hearing: Mailed:
April 1, 2010 July 27, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Becton, Dickinson and Company
________

Serial No. 77254637
_______

Mark D. Engelmann of Fross Zelnick Lehrman & Zissu, P.C.
for Becton, Dickinson and Company.1

Jennifer M. Hetu, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Mermelstein, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On August 14, 2007, Becton, Dickinson and Company,
applicant, applied to register the configuration mark shown
below on the Principal Register for goods identified as
“closures for medical collection tubes” in International
Class 10.2

1 Charles T.J. Weigell (of the same law firm) appeared on behalf
of applicant at oral hearing.
2 Application Serial No. 77254637, based on an allegation of
first use anywhere and in commerce on September 30, 1989.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77254637
2

The required description of the mark (as amended)
reads as follows:
The mark consists of the configuration of a
closure cap that has an overall streamlined
exterior wherein the top of cap is slimmer than
at the bottom and the cap features vertically
elongated ribs set out in combination sets of
numerous slim ribs bordered by fatter ribs around
most of the cap circumference, where a smooth
area separates sets of ribs. The slim ribs taper
at their top to form triangular shapes which
intersect and blend together at a point where a
smooth surface area rings the top of the cap
above the ribs, thus extending the cap’s vertical
profile. At the bottom, a flanged lip rings the
cap and protrudes from the sides in two
circumferential segments with the bottom-most
segment having a slightly curved contour. The
matter in dotted lines is not claimed as a
feature of the mark, but shows the tube on which
the closure is positioned.

Serial No. 77254637
3
(The proposed mark is hereinafter frequently referred
to as the “closure cap configuration mark.”)
The application includes a claim that the closure cap
configuration mark has acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The trademark examining attorney refused registration
under Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§1052(e)(5), on the ground that applicant’s proposed mark
is functional. The examining attorney also refused
registration on the alternative ground that, if the mark is
not functional, the mark nonetheless consists of a non-
distinctive configuration of the goods that does not
function as a mark under Trademark Act Sections 1, 2, and
45, 15 U.S.C. §§1051-1052 and 1127, and has not acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§1052(f).
Applicant concurrently appealed and filed a request
for reconsideration that included a proposed amended
description of the mark in the application. The examining
attorney accepted the amendment (so that it reads as
recited above), but rejected the request for
reconsideration to the extent that she maintained the
refusals to registration. Both Applicant and the Examining
Attorney filed briefs, including applicant’s supplemental
Serial No. 77254637
4
reply brief filed after the request for reconsideration was
denied. Applicant and the examining attorney took part in
an oral hearing on April 10, 2010.
The Mark and the Goods
Before discussing the merits of the grounds for
refusal, we believe it is important to discuss what exactly
applicant is seeking to register as well as the nature of
the goods. As to the proposed mark itself, there is no
dispute that it represents a configuration of the goods,
i.e., a closure cap for collection tubes. Applicant places
emphasis on certain features of the mark. In its
supplemental reply brief, applicant provided the following
illustration of what it believed are the key features of
the closure cap configuration mark, “as guided by [the]
amended description”:3

3 Supplemental Reply Brief, pp. 3-4, filed October 28, 2009.
Applicant describes the features as: (1) “an overall streamlined
exterior”; (2) “vertically elongated ribs set out in
combination...”; (3) “a smooth area separates sets of ribs”; (4)
“slim ribs taper at their top...”; (5) “...a smooth surface area
rings the top of the cap”; (6) “extending the cap’s vertical
profile”; (7) “...a flanged lip rings the cap”; and (8)
“...having a slightly curved contour.” Id.

Serial No. 77254637
5
Although the above-numbered features are described in
a precise and helpful manner in the application, this does
not mean that they are the only elements of the mark nor
does it mean that they necessarily embody the overall
significance of the mark. Rather, the proposed mark is as
described in the application’s description of the mark, as
well as that which is shown in the drawing page, except for
the dotted line portion which only represents where the
closure is positioned on the collection tubes. Upon
inspection of the drawing, we see other features of the
closure cap configuration mark such as the circular opening
on the top of the cap as well as the ridges themselves.
Had applicant not sought to register these components, in
addition to those identified in the description, it should
have depicted those features in dotted lines to indicate
that they were not being claimed as part of the mark.
Trademark Rule 2.52(b)(4); see TMEP § 1202.02(c)(i)
(“Drawings of three-dimensional, configuration, and trade
dress marks may not contain elements that are not a part of
the mark. If the mark comprises the design of only a
portion of a product or container, broken or dotted lines
must be used in the drawing to indicate that portion of the
product that is not part of the mark.”) Accordingly, when
considering the merits of the refusal to register, we must
Serial No. 77254637
6
consider all elements, including those described in the
application as well as those shown in the drawing page.
As to the nature of the proposed mark, the record
establishes that it is a configuration of applicant’s
collection tube closure caps that are sold under the brand
HEMOGARD. The proposed mark essentially represents the
outer shell portion of the HEMOGARD closure caps. Within
the outer shell is a stopper that plugs (and seals) the
collection tube when the closure cap is positioned on the
tube. The stopper is not shown in applicant’s proposed
mark and thus is not considered to be a feature of it.
Functionality
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. Qualitex Co. v. Jacobson Prods. Co., Inc., 514
U.S. 159, 34 USPQ2d 1161, 1163-1164 (1995) (quoting Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1,
4 n.10 (1982)). Functional matter cannot receive trademark
protection. At its core, the functionality doctrine serves
as a balance between trademark and patent law. As the
Supreme Court explained in Qualitex:
The functionality doctrine prevents trademark law,
which seeks to promote competition by protecting a
firm’s reputation, from instead inhibiting legitimate
Serial No. 77254637
7
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, 35 U.S.C. §§154, 173,
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).

34 USPQ2d at 1163.

The examining attorney argues that the closure cap
configuration mark represents a design with features that
are utilitarian. In particular, she argues “the shield
design of the cap makes opening a medical collection tube
safer, ridges on the cap allow for an improved grip, and
the hooded feature of the cap prevents the user’s glove
from getting caught when closing the collection tube.”
Brief, (unnumbered) p. 3. The examining attorney relies
greatly on applicant’s brochures touting features of the
HEMOGARD brand closure caps. And, in response to
declarations submitted by applicant purportedly showing
that the proposed mark’s design features were not dictated
by utilitarian purpose, the examining attorney counters
that “[d]espite the motivating factor behind including such
design features, [they] are utilitarian in nature.” Brief,
(unnumbered) p. 6.
Serial No. 77254637
8
Applicant, on the other hand, argues that the
examining attorney “relies on an improper application of
law of functionality and an incomplete consideration of the
record.” Reply Brief, p. 1. Specifically, applicant cites
several cases and argues that its proposed mark cannot be
deemed functional merely because the goods that embody the
mark serve a utilitarian purpose. Applicant also disputes
the examining attorney’s reliance on applicant’s
advertising because, applicant asserts, those
advertisements do not highlight the features of the
proposed mark but instead reference “closure caps in
general.” Id. at p. 2. Ultimately, applicant concludes,
“when considered as a whole, [the proposed mark] has an
appearance that is not defined by its utilitarian purpose.”
Supp. Reply Brief, p. 3.
In making our determination as whether a proposed mark
is functional, the following four factors are considered:
(1) the existence of a utility patent that discloses
the utilitarian advantages of the design sought to be
registered;

(2) advertising by the applicant that touts the
utilitarian advantages of the design;

(3) facts pertaining to the availability of
alternative designs; and

(4) facts pertaining to whether the design results
from a comparatively simple or inexpensive method of
manufacture.
Serial No. 77254637
9

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (CCPA 1982). See also, Valu Engineering Inc.
v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed.
Cir. 2002). Upon consideration of these factors, our
determination of functionality is ultimately a question of
fact, and depends on the totality of the evidence presented
in each particular case. Valu Engineering, 278 F.3d at
1273, 61 USPQ2d 1424; In re Caterpillar Inc., 43 USPQ2d
1335, 1339 (TTAB 1997); see also, TMEP §1202.02(a)(iv).
Furthermore, and particularly relevant to this
proceeding, to be held functional, it is not necessary that
all features of a product or packaging configuration mark
be functional; that is, should the proposed mark contain
arbitrary or otherwise nonfunctional features, this will
not affect the determination where the evidence shows the
overall design to be functional. See Textron, Inc. v. U.S.
Int’l Trade Comm’n, 753 F.2d 1019, 1024-27, 224 USPQ 625,
628-30 (Fed. Cir. 1985); In re Vico Prods. Mfg. Co., 229
USPQ 364, 368 (TTAB 1985).
With the above principles in mind and based on the
record before us, we conclude that the closure cap
configuration mark, considered in its entirety, is
functional.
Serial No. 77254637
10
As to the factor involving the existence of any
utility patent that discloses utilitarian advantages of the
closure cap configuration mark, the record reveals that
applicant is the owner of three utility patents involving
closure caps for collection tubes.4 Applicant argues that
none of these patents, however, “claim any of the surface
features depicted in the drawing of the Mark.” Response to
Office Action (dated April 18, 2008). The examining
attorney does not argue the relevance of these utility
patents in her appeal brief. Nevertheless, a review of the
patents indicates that several features of the closure cap
configuration mark are indeed guided by utilitarian
concerns. In particular, patent No. 4741446 (“Computer
Generated Stopper,” hereinafter, “patent ‘446”),5 contains
the following drawing:

4 Patents Nos. 4741446 (issued May 3, 1988), 6602206 (issued
August 5, 2003), and 4991104 (issued February 5, 1991). Copies
thereof attached to applicant’s Response to Office Action (dated
April 18, 2008).
Serial No. 77254637
11
Referencing this illustration, the patent provides the
following description of utilitarian advantages:
Extending over the top of stopper 20 is a plastic cap
assembly 74 which may be comprised of a flexible
thermoplastic resin, and which includes a radially
extending top 75 for extending over the top surface 21
of stopper 20. This radially extending top surface 75
defines an opening 76 through which a needle may pass
to be inserted into and through stopper 20. This
"overhang" 75 of the plastic cap of the assembly of
the invention serves to define a compartment or area
78 for receiving and containing any blood droplets or
blood aerosol which may develop during the insertion
and removal of needles through stopper 20. Also, the
top finger well 28 of stopper 20 serves to enhance
this containing function of the assembly shown.

As can be seen in FIG. 3, the bottom surface 30 of
stopper 20 may have an annular tapered end edge
portion 84 for ease of insertion of the lower portion
24 of stopper 20 into the top of tube 70. Formed on
the outer surface of the cap 74 are a plurality of
circumferentially spaced ribs 80 which serve to
provide a gripping surface for the assembly for
removing the assembly from tube 70.6

Claim 4 of the ‘446 patent, describes a “closure
assembly for evacuated tubes for receiving samples of body
fluids characterized by...”:
(f) a flexible cap body for mounting on said stopper
body;
(g) said cap body having an open end and a
substantially closed end;
(h) said open end for receiving said stopper body;
(i) said closed end having a needle receiving bore in
the top surface thereof;...

5 Issued May 3, 1988 to applicant (as assignee).
6 We note that the patent does not show or illustrate the same
pattern as that depicted in the proposed mark.
Serial No. 77254637
12
We find the above-detailed description with
illustration, along with the claims, in patent ‘446 to be
relevant in our analysis because it explains the
utilitarian nature of at least two prominent features of
applicant’s closure cap configuration mark. First, the
drawing depicts two concentric circles prominently and
clearly located at the top of the closure cap configuration
mark. As explained in patent ‘446, this is the “radially
extending top of the closure cap” (identified as “75” in
patent ‘446) and contains an opening (identified as “76” in
patent ‘446), through which a needle may pass to be
inserted into and through the stopper (located inside the
closure cap’s shell). Thus, the circular opening
represents an opening in the closure cap to allow for
needle to puncture the cap and access the specimen
contained in the collection tube. Second, patent ‘446
describes the function of the ribs, namely, that “a
plurality of circumferentially spaced ribs...serve to
provide a gripping surface” for inserting (or removing) the
caps to (or from) the collection tubes. We find the first
Morton-Norwich factor to weigh in favor of finding the mark
to be functional.
We turn now to the second Morton-Norwich factor
regarding any advertising materials in which applicant
Serial No. 77254637
13
touts the design's utilitarian advantages. The examining
attorney has effectively pointed out passages in
applicant’s advertising that extol the utilitarian
advantages of several design features of the proposed mark.
For example, one advertisement states, in part:7
With the new HEMOGARD Closure, the rubber
stopper that seals the tube is covered by a
plastic shield – an important design innovation
that keeps blood safely contained within the
closure and allows Hematology Lab professionals
to handle specimens with a new feeling of
confidence.

...

Enhanced handling features – inherent in the
design
Ridges on the outer surface of the HEMOGARD[®]
Closure permit a more secure grip. The special
closure design encourages safer opening of the
tube by discouraging use of the “thumb roll”
technique, which can result in blood
splattering. And, the “hooded” feature of the
closure reduces the possibility of pinching
gloves between stopper and tube when reclosing.

(Bold and underlining in original.)

The features being touted by applicant in its
advertisements are clearly depicted in the mark, as shown
on the drawing page. That is, the “ribs” or “ridges” on
the side of the cap are clearly designed to allow for a
more secure grip. Another design feature of applicant’s

7 Attached as “Exhibit A” to Office Action dated May 16, 2008
(and originally submitted with applicant’s April 18, 2008,
response to Office Action).
Serial No. 77254637
14
proposed mark, as extolled in the advertisement, is that it
discourages use of a “thumb roll” – that is, the flanged
lip at the bottom of the closure cap configuration mark
inhibits the ability of the handler of the collection tubes
from popping off (“thumb roll”) the cap with the thumb.
This reduces the risk of potentially dangerous splattering
of specimen fluids. Finally, there is what applicant calls
the “hooded” feature of the proposed mark that helps reduce
“the possibility of pinching gloves between the stopper and
tube when reclosing.” We find the second Morton-Norwich
factor to also weigh in favor of finding the mark to be
functional.
There is little argument or evidence to establish as
to whether the closure cap configuration mark is a design
resulting from a comparatively simple or inexpensive method
of manufacture. In its brief, applicant does state that
there is “no comparative economy of manufacture reflected
in Applicant’s closure design, and the design does not
result from a simpler or cheaper method of manufacture.”
Brief, p. 12. Applicant relies on the declarations of
Messrs. Jaeger and Newby who each make the following
identical averment, “[n]one of these design
features...lower its cost of manufacture.” The examining
attorney does not argue to the contrary and there is no
Serial No. 77254637
15
evidence suggesting that the proposed mark derives from a
less expensive method of manufacture of the closure caps.
Thus, we cannot and do not weigh this third Morton-Norwich
factor in favor of finding that applicant’s proposed mark
is functional.
As to the final Morton-Norwich factor, applicant has
submitted evidence of what it argues are “alternative
designs for specimen cap closures for blood collection
tubes that vary considerably from Applicant’s mark in their
shapes, sizes, and features.” Brief, p. 11 (referencing
Exhibits B and D, respectively, of its Request for
Reconsideration and Response to Office Action, filed April
18, 2009). The evidence is comprised of printouts from
websites and reveals three third-party collection tube
products. One website identifies the product as a “Micro
Vacuum Blood Collection Tube” and contains a side-view
photograph of a cap on a collection tube. The cap contains
evenly and circumferentially placed ribs on the side of the
cap, but for one larger and more rounded rib. There is
also what appears to be a lip or rounded portion at the
bottom of the cap, similar in appearance to that depicted
in applicant’s proposed mark.
A second website shows a product called SAF-T-FILL,
used for capillary blood collection. It is a “single-use
Serial No. 77254637
16
only” product, pre-assembled with a straw for collecting
blood. Essentially, the SAF-T-FILL product is “used to
collect blood samples from finger and heel sticks
[punctures into the skin].” Thus it is clear that this
product is different than applicant’s collection tube cap
and involves different design needs than applicant’s
collection tube cap. Accordingly, it lacks relevance for
purposes of showing an alternative design that performs the
same function as the goods represented by applicant’s
collection tube closure cap.
Finally, the third website shows a collection tube cap
made by Greiner Bio-One GmbH and is advertised under the
mark VACUETTE.8 In its brief, applicant argues that “the
differences are clear” between the VACUETTE closure cap
design and its own closure cap (represented by applicant’s
VACUTAINER closure cap). Brief, p. 11. Applicant attempts
to describe some of the differences; however, a review of
applicant’s closure cap configuration mark vis-à-vis the
VACUETTE closure cap reveals many more similarities than
discernable contrasting features. For example, both
closure caps contain series of circumferential ribs on the

8 Actual examples of applicant’s VACUTAINER closure cap and the
VACUETTE closure cap were submitted at oral hearing; the
examining attorney did not object to the introduction of these
caps as evidence.

Serial No. 77254637
17
sides that are bookended by a larger more pronounced rib.
A smooth area on the side of both closure caps separates
the series of ribs. Applicant argues that the ribs are
shaped differently and placed in a different pattern, but
such slight differences are barely discernable to the eye.
Furthermore, both closure caps contain the same design of
an opening on the top of the cap (represented in
applicant’s drawing as two concentric circles); said
opening allows for the insertion of a needle through the
stopper to access the specimen in the collection tube.
Both the VACUETTE closure cap and applicant’s drawing
contain an accentuated bottom lip portion of the cap.
Applicant again argues that the lip on its closure cap is
“more pronounced,” but a visual inspection of the two
reveals very little discernable difference. Applicant
argues that its closure cap “has a longer more streamlined
profile” than the VACUETTE closure cap and, indeed, when
placed side-by-side, applicant’s closure cap is taller and
appears to be slightly narrower at the top. Nevertheless,
when comparing the two closure caps, there are far more
similarities than distinguishable characteristics and one
would be hard pressed to characterize the VACUETTE closure
cap as an alternative design.
Serial No. 77254637
18
Ultimately, the record does not establish that there
are alternative designs for collection tube closure caps.
Rather, the evidence tends to show that collection tube
closure caps are likely to have ribs or ridges on the side
(to allow for a better grip) as well as an opening on the
top of the cap (for insertion of a needle to access the
specimen through the stopper). These features, as
previously explained, are clearly utilitarian. Any
variation thereof, e.g. the spacing or shape of the ridges,
size of the lip, at least with respect to applicant’s
closure cap configuration mark, appears to only be
incidental to the overall adoption of those features. We
find the fourth and final Morton-Norwich factor to weigh in
favor of finding the mark to be functional.
Applicant places great emphasis on the facts and
actual decision in Morton-Norwich. In that case, the
Federal Circuit contemplated the mark’s overall importance
and ultimately concluded that the configuration of the
spray bottle, based largely on the bottle’s neck design,
was not functional.
What is sought to be registered, however, is no single
design feature or component but the overall composite
design comprising both bottle and spray top. While
that design must be accommodated to the functions
performed, we see no evidence that it was dictated by
them and resulted in a functionally or economically
superior design of such a container.
Serial No. 77254637
19

Morton-Norwich, 671 F.2d at 1342.

Unlike in Morton-Norwich, the overall design of
applicant’s proposed mark is dictated by utilitarian
concerns. While there may be some incidental design
features of the mark that are not entirely functional (such
as the length of the cap or the exact spacing of the ribs),
they are hardly noticeable and the “overall composite
design” engendered by applicant’s proposed mark is
functional.
In sum, based on all of the record evidence and
arguments in relation to the Morton-Norwich factors, we
find that the examining attorney has met her burden in
establishing a prima facie case that the closure cap
configuration mark is functional and, thus, is not
registrable.
Because we have affirmed the functionality refusal, it
is unnecessary to reach a decision as to whether the
closure cap configuration mark has acquired
distinctiveness; in other words, even if there were
evidence sufficient to demonstrate acquired
distinctiveness, it would not permit the registration of a
functional design. See, e.g., TrafFix, 58 USPQ2d at 1007
(“Functionality having been established, whether [the mark]
Serial No. 77254637
20
has acquired secondary meaning need not be considered”).
Nevertheless, for the sake of completeness and should
applicant ultimately prevail on the issue of functionality,
we will address the examining attorney’s refusal to accept
applicant’s Section 2(f) acquired distinctiveness showing.
Acquired Distinctiveness
A product design, “like color, is not inherently
distinctive.” Wal-Mart Stores, Inc. v. Samara Brothers,
Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). Applicant
admits as much by seeking registration under Section 2(f).
In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1747 (TTAB
2007) (application under § 2(f) is a concession that the
mark is not distinctive). Thus, the issue is not whether
the proposed mark is inherently distinctive, but whether
the design has acquired distinctiveness, i.e., whether the
relevant consumers view the configuration of applicant’s
goods as a trademark. And, on this issue, it is
applicant's burden to prove that the proposed mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
It is noted that the lesser the degree of inherent
distinctiveness of a mark, the heavier the burden for
Serial No. 77254637
21
applicant to prove that its proposed mark has acquired
distinctiveness.
[T]he statute is silent as to the weight of evidence
required for a showing under Section 2(f) except for
the suggestion that substantially exclusive use for a
period of five years immediately preceding filing of
an application may be considered prima facie evidence.
As observed by our predecessor court, the exact kind
and amount of evidence necessarily depends on the
circumstances of the particular case, and Congress has
chosen to leave the exact degree of proof necessary to
qualify a mark for registration to the judgment of the
Patent Office and the courts. In general, the greater
the degree of descriptiveness the term has, the
heavier the burden to prove it has attained secondary
meaning.

Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (citations
omitted). Applicant has a heavy burden in this case
inasmuch as there is no evidence to suggest that the
configuration of collection tube closure caps (or any other
types of caps) are frequently – or ever – used as source
identifiers in the relevant industry. Moreover, the design
features of applicant’s closure cap that it claims to have
acquired distinctiveness consist primarily of attributes
that can be frequently found on closure caps. To wit, the
closure cap of applicant’s competitor (the “Greiner” cap)
has several uncannily similar features. And, even if the
features of applicant’s proposed mark are ultimately not
found to be “functional” under Trademark Act § 2(e)(5),
Serial No. 77254637
22
they do perform a function and thus consumers may be more
inclined to only perceive that feature as utilitarian in
nature and not as a source identifier.
In support of its argument that the closure cap
configuration mark has acquired distinctiveness, applicant
relies on the declaration of its Vice President and Chief
Intellectual Property Counsel, David W. Highet, with
attached exhibits;9 In his declaration, Mr. Highet avers,
inter alia, that applicant has made “substantially
exclusive and continuous” use of the closure cap
configuration mark since 1989; that sales of products
featuring the closure cap configuration mark for the past
five years “exceed eighty million dollars ($80,000,000) and
sales have grown more than 40% during this time”; that
applicant’s annual advertising and promotion expenditures
for the same products have been substantial (exceeding
$1,500,000 per year for the past five years); that
applicant “seeks to feature and exhibit [its proposed mark]
prominently in its [advertising]”; and that “the closure
cap was awarded the Industrial Designers Society of America
bronze medal in 1990.” The exhibits to the Highet
declaration include samples of applicant’s advertisements,

9 Submitted with applicant’s Response to Office Action (dated
April 18, 2008).
Serial No. 77254637
23
as well as what Mr. Highet describes as a “page exhibiting
Applicant’s Design from the Society’s Designing for
Humanity book detailing past award recipients.” Applicant
also submitted eleven signed declarations from customers
and users of applicant’s HEMOGARD closure caps.10
Upon careful consideration of all of the submissions
by applicant, in addition to the arguments set forth on
appeal, we agree with the examining attorney that the
evidence “does not establish that the public views the
product configuration as identifying the source of the
product rather than the product itself.” Brief,
(unnumbered) p. 15. In particular, we agree that
applicant’s mere use of a design, even for a long period,
by itself, does not demonstrate that the mark has acquired
distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d
1948, 1952 (TTAB 2001) (66 years of use and also of a
product configuration). Moreover, although applicant’s
evidence regarding sales and number of units sold is
impressive, certainly in numbers, the persuasive value of
this evidence is diminished by the lack of evidence showing
applicant’s market share or information to place the sales
numbers in context. Id. (“As for the sales of 10,000
[guitars] in a two-year period, again there is no evidence

10 Attached to its Request for Reconsideration.
Serial No. 77254637
24
to show whether this is a large number of sales of guitars
vis-à-vis the sales of other companies”). And, even
acknowledging that applicant’s success in selling many
closure caps, this would not establish that the applicant's
design was the basis for the success. M-5 Steel Mfg., Inc.
v. O'Hagin’s, Inc., 61 USPQ2d 1086, 1098 (TTAB 2001)
(“[W]hile applicant's sales may demonstrate popularity or
commercial success for its roof vents, such evidence alone
does not demonstrate that the vents' designs which
applicant seeks to register have become distinctive of its
goods and thus function as source indicators”). In other
words, and as often stated, a successful product and
advertising campaign do not necessarily translate into a
product design acquiring secondary meaning. See In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark); Braun Inc. v.
Dynamics Corp., 975 F.2d 815, 827, 24 USPQ2d 1121, 1133
(Fed. Cir. 1992) (“[L]arge consumer demand for Braun's
blender does not permit a finding the public necessarily
associated the blender design with Braun.”); In re Bongrain
Serial No. 77254637
25
Int'l (American) Corp., 894 F.2d 1316, 1318, 13 USPQ2d
1727, 1729 (Fed. Cir. 1990) (growth in sales may be
indicative of popularity of product itself rather than
recognition as denoting origin).
It is even more difficult to extrapolate from evidence
of substantial sales and advertising numbers that a product
configuration mark has acquired distinctiveness when the
record is devoid of “look for” advertisements. The Board
and other courts have long taken notice of the importance
of such advertisements in regard to configuration or
product design marks. See Duraco Prods. Inc. v. Joy
Plastic Enter., Ltd., 40 F.3d 1431, 1451, 32 USPQ2d 1724,
1741 (3d Cir. 1994) (advertising expenditures “measured
primarily with regard to those advertisements which
highlight the supposedly distinctive, identifying feature”
of the product configuration); see also, Thomas & Betts
Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 USPQ2d 1065,
1071-72 (7th Cir. 1995) (advertising “look for the oval
head” for cable ties encourages consumers to identify the
claimed trade dress with the particular producer); First
Brands Corp. v. Fred Meyer Inc., 809 F.2d 1378, 1383, 1
USPQ2d 1779, 1782 (9th Cir. 1987) (“[A]dvertising campaign
has not stressed the color and shape of the antifreeze jug
so as to support an inference of secondary meaning.”);
Serial No. 77254637
26
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
1342, 1345 n. 8, 196 USPQ 289, 291 n. 8 (CCPA 1977)
(advertising emphasizing design portion of the mark to
potential customers is persuasive evidence of acquired
distinctiveness).
Applicant asserts that its advertisements “feature” or
“prominently” display the proposed mark, but the examining
attorney is correct in her rebuttal that none of these
advertisements display the closure caps in such a manner
whereby consumers would regard the closure cap
configuration as a source indicator. However, as already
mentioned, product configurations are generally not viewed
as trademarks (i.e., they are not inherently distinctive),
and thus the product itself (or a picture of it) – without
more – will rarely, if ever, be sufficient evidence of
acquired distinctiveness. In applicant’s advertisements,
any mention of applicant’s closure cap design or specific
features that applicant argues constitute the applied-for
mark is made in the context of touting the closure cap’s
utilitarian advantage. That advantage is presented in
terms of permitting the safe handling of blood specimens.
For example, one advertisement titled “INTRODUCING
VACUTAINER BRAND TUBES WITH HEMOGARD CLOSURE” offers the
following description (with a photograph of the closure and
Serial No. 77254637
27
tube alongside):
Exposure of laboratory professional to contaminated
blood specimens has become a well-documented safety
concern. VACUTAINER Brand Tubes with HEMOGARD Closure
were specifically created to address this concern.
The quality and reliability of the VACUTAINER Brand
System are maintained, but with an important
innovation: A plastic shield that protects personnel
from exposure when handling blood specimens.

And, as the examining attorney points out, several other
advertisements contain close-up depictions of the closure
caps, but in a “cut away” or tilted view that results in
the outside of the closure cap not even being shown, i.e.,
the applied-for mark cannot be seen. Accordingly, we
cannot conclude that applicant’s advertisements amount to
an attempt to have consumers recognize the closure cap
configuration as indicating the source of the closure caps.
As to the “Industrial Designers Society of America
bronze medal” award from 1990, we have little, if any,
evidence what this award was based upon or what level of
recognition and exposure this award necessarily means.
More importantly, there is no indication that the specific
design features that applicant claims as the proposed mark
were considered with respect to this award. Without such
information, it is difficult to accord any significant
probative value to this award in connection with the
proposed mark acquiring distinctiveness.
Serial No. 77254637
28
Finally, as to the eleven declarations submitted by
applicant to show that the closure cap configuration mark
has acquired distinctiveness, these are insufficient by
themselves or in conjunction with the totality of the
record, to demonstrate that the proposed mark has acquired
distinctiveness. The declarants each state that they
recognize the closure cap configuration, as engendered by
the HEMOGARD closure cap, and associate the design with
applicant. However, nearly all of the declarations are
identical in their relevant substantive paragraphs and thus
do not appear to have been prepared in the signer’s own
words. Moreover, the declarations represent a relatively
small sample of the relevant consumers and there is no
evidence to suggest that this was a random selection of
possible declarants. The eleven declarations have been
considered; however, their evidentiary value is simply
insufficient given the relatively high burden applicant has
in establishing that the proposed mark has acquired
distinctiveness.
Upon review of all of the evidence and arguments in
this case, we affirm the examining attorney’s alternative
refusal that, should the mark ultimately be shown to not be
functional, applicant has not met its burden in
establishing that its mark has acquired distinctiveness.
Serial No. 77254637
29
Decision: We affirm the refusal to register the
asserted mark under Trademark Act Section 2(e)(5) on the
ground of functionality. In the event that applicant’s
proposed mark should be determined to not be functional in
any appeal of this decision, we further find the mark has
not acquired distinctiveness and is not entitled to
registration under Section 2(f).