Caterpillar, Inc.

Trademark Trial and Appeal Board

May 27, 1997

EX (T.T.A.B. May. 27, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB May 27, 1997
Hearing: Paper No. 19
July 25, 1996 TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Caterpillar Inc.
________
Serial No. 74/404,325
_______
Andrew Hartman of Sachnoff & Weaver, Ltd. for applicant.
David H. Stine, Trademark Examining Attorney, Law Office 103
(Kathryn Erskine, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Caterpillar Inc. to
register the matter shown below
Ser No. 74/404,325
2
for "tractors for earth moving, earth conditioning and
material handling; and undercarriage for such tractors."1
Applicant claims that the applied-for mark has acquired
distinctiveness as provided by Section 2(f) of the Act.2
The application includes the following description of the
mark: "The mark consists of the configuration of a
continuous crawler track with an elevated drive sprocket and
idler wheels therefor." The application also indicates that
"[t]he outline of a tractor, depicted in dotted lines, is
not a part of the mark."
The Trademark Examining Attorney has issued a final
refusal under Sections 1, 2 and 45 of the Act on the ground
that the proposed mark is de jure functional. Further, the
Examining Attorney maintains that if the configuration
design sought to be registered is not de jure functional,
the evidence submitted in support of its Section 2(f) claim
is insufficient to prove that the configuration design has

1Application Serial No. 74/404,325, filed June 22, 1993,
alleging a date of first use anywhere of August 1972, and a date
of first use in commerce of July 1978.
2Despite the claim of acquired distinctiveness that was made
much earlier in the prosecution of this application, applicant,
in its reply brief, contends that the matter sought to be
registered is inherently distinctive, now couching acquired
distinctiveness in terms of an alternative claim. See:
Trademark Manual of Examining Procedure, § 1212.02(c). Suffice
it to say that applicant early on abandoned its claim that the
applied-for mark is inherently distinctive. Rather, applicant
has contended that its design has acquired distinctiveness.
Moreover, when this Section 2(f) claim was made initially, and
then throughout the prosecution, the claim was not advanced as
an alternative claim. In any event, given our view on the
functionality of applicant's design, we need not consider the
issue of inherent distinctiveness.
Ser No. 74/404,325
3
acquired distinctiveness as a trademark for applicant's
goods.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs and
both were present at an oral hearing held before the Board.
Before considering the merits, we first turn to address
some evidentiary points. Trademark Rule 2.142(d) provides
that the record in the application should be complete prior
to the filing of an appeal, and that the Board will
ordinarily not consider additional evidence filed after the
appeal is filed. Applicant's briefs on the case are
accompanied by several exhibits. Some of the exhibits were
submitted during the prosecution of the application and,
thus, properly form part of the appeal record; others,
however, were not timely submitted. Accordingly, Exhibit E
attached to the appeal brief has not been considered.
Further, the excerpts from the Official Gazette which are
attached to the reply brief have not been considered.
Applicant also submitted with its reply brief a copy of
an unpublished final decision of the Board. Further, in a
"supplemental filing" on May 13, 1996, applicant submitted
another one of the Board's unpublished final decisions.
Decisions which are not designated for publication are not
citable as precedent, even if a complete copy of the
unpublished decision is submitted. General Mills Inc. v.
Health Valley Foods, 24 USPQ 1270, 1275 n. 9 (TTAB 1992).
See also: Trademark Trial and Appeal Board Manual of
Ser No. 74/404,325
4
Procedure, § 101.03. Accordingly, the decisions submitted
by applicant are not citable as precedent of the Board.
Applicant proffered, at the oral hearing, a booklet
captioned "Summary of Relevant Documents" numbered 1-9.
After reviewing the record, we agree with the Examining
Attorney's statement at the oral hearing that only documents
1-4 were properly made of record. We, of course, have
considered them in reaching our decision in this case.
However, documents 5-9 were not properly introduced and,
accordingly, these materials have not been considered.
Lastly, three months after the oral hearing, applicant
submitted, on October 21, 1996, yet another "supplemental
filing." This Exhibit A consists of excerpts from the
Official Gazette. Again, for the reason indicated above,
this submission is untimely under Trademark Rule 2.142(d)
and, thus, the evidence has not been considered.
In ruling on these evidentiary matters, we hasten to
add that even if the excluded materials were considered, we
would reach the same result on the merits of this case.
With respect to applicant's arguments based on past Office
practice as evidenced by the Official Gazette, suffice it to
say that each case must turn on its own particular set of
facts. This is especially true in these types of cases.
See: 1 J. T. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 7:73 (4th ed. 1996) ["Each case of alleged
functionality will present a unique set of facts not easily
Ser No. 74/404,325
5
disposed of either by sweeping generalities or precise legal
rules."].
We now turn to the merits. Applicant concedes that its
"design is functional to a certain extent" (reply brief, p.
7), but that the design is only de facto functional, and not
de jure functional. Applicant contends, therefore, that its
configuration design is registrable, and that the
configuration has acquired distinctiveness under Section
2(f) of the Act. Applicant has submitted the affidavit of
Laurie Huxtable, applicant's assistant secretary. Applicant
also has introduced numerous other documents, including a
utility patent and a design patent, both owned by applicant
(both relating to the goods listed in the present
application, and both now expired), other patents, product
brochures, pictures of competitors' goods and an excerpt
from a newspaper.
The Examining Attorney contends that the design sought
to be registered is de jure functional and, therefore,
unregistrable. The Examining Attorney further contends that
even if the design is only de facto functional, the evidence
of acquired distinctiveness is insufficient for
registrability. The Examining Attorney has relied upon
applicant's expired utility patent, as well as applicant's
product literature, maintaining that these materials show
the purely utilitarian nature of applicant's product.
Ser No. 74/404,325
6
FUNCTIONALITY
Inasmuch as applicant claims that its configuration
design is de facto functional, we think that brief mention
is in order of the basic difference between de facto
functionality and de jure functionality.
De facto functionality essentially means that the
design of a product has a function. De jure functionality,
on the other hand, means that the product is in its
particular shape because it works better in this shape. In
re R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed Cir.
1984).
As has been stated in previous cases, if the design of
a product is so utilitarian as to constitute a superior
design which others in the field need to be able to copy in
order to compete effectively, it is de jure functional and,
as such, is precluded from registration for reasons of
public policy. That is, "...'functionality' is determined
in light of 'utility', which is determined in light of
'superiority of design', and rests upon the foundation
'essential to effective competition'...." In re Morton-
Norwich Products, Inc., 617 F.2d 1332, 213 USPQ 9, 15 (CCPA
1982). Four evidentiary factors were discussed in In re
Morton-Norwich, Inc., supra, as being useful in
demonstrating such de jure functionality: (1) a utility
patent that discloses the utilitarian advantages of the
design, (2) advertising material in which the originator of
the design touts its utilitarian advantages, (3) facts
Ser No. 74/404,325
7
tending to establish the unavailability 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 also: In re Weber-Stephen
Products Co., 3 USPQ2d 1659 (TTAB 1987); In re Honeywell
Inc., 8 USPQ2d 1600, 1603 (TTAB 1988); and In re American
National Can Co., 41 USPQ2d 1841 (TTAB 1997).
With respect to the first factor, applicant readily
admits that it owned a utility patent (No. 3,828,873)
covering a "high drive-track-type vehicle" (that is, the
same types of tractors with undercarriages as those involved
herein), and a design patent (No. 230,300) covering "track
assembly", both now expired.3
The utility patent is helpful in shedding light on the
utilitarian aspects of applicant's configuration design.
The "background of the invention" is set forth as follows:
Conventional track-type tractors
comprise a generally elliptically-shaped
endless track assembly mounted on a
front idler and a rear drive sprocket.
The drive sprocket performs the combined
functions of driving the track assembly,
supporting a substantial portion of the
tractor's weight and absorbing loads
imposed on the vehicle during operation
of attached work implements. In
addition, the drive sprocket is
positioned closely adjacent to ground
level to thus subject it to wear and
damage. The wrap angle about the

3The fact that the patents are expired is of no significance for
purposes of our analysis. See, e.g., Best Lock Corp. v. Schlage
Lock Co., 413 F.2d 1195, 162 USPQ 552 (CCPA 1969), and In re
Shenango Ceramics, Inc., 362 F.2d 287, 150 USPQ 115 (CCPA 1966)
[the court considered utility patents that were expired].
Ser No. 74/404,325
8
sprocket approximates 180°, which tends
to excessively load a substantial number
of track bushings and pins during
vehicle operation.
Attempts have been made to provide
triangularly-shaped track assemblies
with a drive sprocket which is
positioned vertically above front and
rear idlers...To date such prior art
track-type vehicles have failed to
replace conventional track-type
tractors, of the type mentioned above,
in the commercial market place.
The "summary of the invention" is also illuminating:
An object of this invention is to
provide a track-type vehicle which has
its final drive system sufficiently
elevated to protect it against damage,
has a power train to the drive system
which is non-complex and which is
disposed in the vehicle for optimum
performance, and which exhibits high
degrees of working efficiency,
structural integrity, stability and
operator visibility. The vehicle
comprises a main frame having a pair of
longitudinally spaced idlers rotatably
mounted on each side thereof. A drive
sprocket is rotatably mounted directly
on each side of the frame, between a
respective pair of the idlers, and is
positioned vertically above and
substantially closer to a first idler of
such pair of idlers than to a second
idler thereof. An endless track
assembly, having the general shape of a
scalene triangle, is positioned on each
side of the frame and is entrained about
a respective one of the drive sprockets
and pair of idlers. A suspension means,
including a bogey system, is mounted on
the frame to engage the track assembly,
between the first and second idlers.
The claims in the utility patent include the following:
...a pair of longitudinally spaced
idlers rotatably mounted on each end of
Ser No. 74/404,325
9
each subframe, a drive sprocket
rotatably mounted directly on each side
of said main frame and positioned
longitudinally between and vertically
above a respective pair of idlers and
further positioned substantially closer
to a first idler of such pair of idlers
than to a second idler thereof, an
endless track assembly, having the
general shape of a scalene triangle,
positioned on each side of said main
frame and entrained about a respective
one of said drive sprockets and pair of
idlers,...
We also note that the utility patent (specifically, columns
3-6) specifies that the overall geometry of the
configuration design (and, thus, its appearance), must
remain substantially within the parameters established by
the depicted embodiment in order to maintain its functional
utility and to avoid interference with the other aspects of
the vehicle's operation.
The fact that the utility patent discloses the
utilitarian advantages of applicant's elevated sprocket
configuration design is strong evidence of the de jure
functionality of the configuration in which applicant
alleges trademark significance. In re Bose Corp., 772 F.2d
866, 227 USPQ 1 (Fed. Cir. 1985). It is important to
remember here that the utility patent was applied for and
registered by the same entity which now asserts trademark
significance in the same configuration design. The utility
patent discloses that the elevated sprocket configuration
design is an improvement on, and is superior to,
conventional elliptical-shaped designs. This design, as
Ser No. 74/404,325
10
described in the utility patent, and as touted by applicant
in its literature, is superior to that of conventional
tractors where the drive sprocket is positioned closely
adjacent to the ground, thereby subjecting it to wear and
damage. Applicant's elevated sprocket configuration design,
on the other hand, offers significant utilitarian advantages
such as reduced wear and stress.
The existence of a design patent, while some evidence
of non-functionality, is not alone sufficient evidence.
See: R.M. Smith, supra; In re American National Can Co.,
supra; and In re Vico Products Manufacturing Co., 229 USPQ
364 (TTAB 1985). The drawing in the design patent (that is,
figures 1 and 5) is substantially identical to the drawing
in the present application. In the design patent, applicant
claims "[t]he ornamental design for a track assembly." The
fact that a configuration design is the subject of a design
patent, as in this case, does not, without more, establish
that the design is non-utilitarian and serves as a
trademark. Here, this evidence is clearly outweighed by the
other evidence of record showing the great degree of utility
reflected in applicant's configuration design.
In connection with its now-expired patents, applicant
makes the argument that, in the time since the patents have
expired, no one else in the industry has adopted the
elevated sprocket track-type design for its tractors. We
can only speculate as to why this is so. Applicant would
have us conclude that this shows that if competitors
Ser No. 74/404,325
11
considered applicant's design to be superior, then others in
the industry would have adopted the design for their own
competing tractors. The Examining Attorney posits, on the
other hand, that the utility patent only recently expired
(1991), and that the manufacturing of new heavy machinery
requires lengthy periods of research and development. The
Examining Attorney also points to the fact that since
applicant, by way of the present application, continues to
assert rights in the configuration design, then perhaps
competitors are unwilling to get into a dispute with the
industry leader. Or, it may well be that, as applicant
asserts, the elevated sprocket design is more costly to
manufacture, thereby making it less attractive for
competitors to make. Still another reason for the lack of
adoption of the design by competitors may be their view that
the level of sales of elevated sprocket tractors does not
justify, despite the functional superiority of opposer's
design, a redesign of their own conventional tractors.
Whatever the reason, although no one in the industry
apparently has copied the elevated sprocket configuration
design, this fact is outweighed by the clear evidence of
functionality of the configuration.
The second evidentiary factor concerns any advertising
materials that tout the utilitarian advantages of the
configuration. Applicant recognizes that its literature
mentions the utilitarian advantages of the configuration
Ser No. 74/404,325
12
design, but contends that such claims are mere "puffery" and
are "self-serving."
The following statements appear in the various
informational and promotional materials submitted by
applicant:
Why was the sprocket elevated?
One reason was to extend power train
component life. Final drives, steering
clutches and brakes are relieved of all
vertical shock loads from ground
contact, roller frame alignment loads,
and drawbar and dozer implement loads.
In fact, results from an extensive high
hour survey (average service meter units
was 14,191 SMU) showed that the
similarly-designed D10's average final
drive life had doubled and steering
clutch/brake life had nearly tripled
compared to the conventionally designed
D9H. Final drives are also less exposed
to the abrasive materials found at
ground level. And elevated sprockets
allow for the suspended undercarriage
which improves ride and traction. Yet
another advantage is that final drives
can be inspected and some gears and
bearings replaced without breaking the
track.
*****
Elevated Sprocket Design--Positioned
above the high impact and high wear
environment, elevated final drives carry
only the torque loading stresses and are
effectively isolated from the shock
loads of implement, ground impact, and
roller frame alignment...the high wear
conditions normally encountered with
conventionally designed crawlers.
*****
Ser No. 74/404,325
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Elevated sprocket design means extended
power train component life. Final
drives, steering clutches and brakes are
relieved of all (1) vertical shock loads
from ground contact, (2) roller frame
alignment loads and (3) drawbar and
dozer implement loads. Raised sprocket
also means that final drives are less
exposed to the abrasive materials that
traditionally lodge between sprocket
teeth and bushings...and to the water
and mud that can freeze and cause final
drive failure.
*****
Elevated sprocket design removes final
drives from the work platform and from
roller frame alignment shock loads for
extended power train life.
*****
Elevated sprocket design removes final
drives from wear environment and reduces
shock loading for extended power train
life.
*****
...the D8L SA's advanced design gives it
several important advantages over low
sprocket tractors. Advantages that add
up to more production with greater fuel
efficiency.
*****
Elevated final drive and sprocket
removes shock loads and implement loads
that cause gear and bearing
misalignment. And they're out of reach
of water and mud--less abrasive wear,
less damage to seals, and longer
productive life in all components. Plus
the final drive modules can be removed
individually in the field...by only
breaking the track.
Ser No. 74/404,325
14
As shown by the above excerpts, applicant's own
promotional materials tout the utilitarian advantages of its
elevated sprocket, and it is the elevated sprocket which
dictates the configuration design that applicant seeks to
register. Rather than showing that the configuration design
serves to distinguish source, this advertising touts the
design for its desirable, superior utilitarian qualities.
Thus, contrary to applicant's position, we find that this
evidence supports functionality. In re Bose Corp., supra;
In re Bio-Medicus, Inc., 31 USPQ2d 1255 (TTAB 1993); In re
Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); and In re
Witco Corp., 14 USPQ2d 1557 (TTAB 1989).
With respect to the third evidentiary factor, that is,
the availability to competitors of alternative designs,
applicant contends that the evidence of competitors' uses of
different track-type tread designs for their tractors shows
that "the alternative designs are equal to, or even
superior" to applicant's design. The Examining Attorney
acknowledges that there are alternative designs, but that
"all of the alternatives are of conventional elliptical
track design, which the current record clearly establishes
as functionally inferior" to applicant's configuration. The
Examining Attorney maintains that applicant has not
furnished any evidence that there are alternative designs
"which meet or exceed the enhanced performance levels of the
instant configuration."
Ser No. 74/404,325
15
We agree with the Examining Attorney's assessment. We
initially note that the alternative designs made of record
by applicant are all merely variations of a single basic
design, that is, the conventional elliptical track design.
See: Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748,
1754 (TTAB 1995). We also find applicant's argument that
"the alternative designs are equal to, or even superior" to
applicant's design rings hollow in view of its own touting
to the contrary in promotional materials. Given the
utilitarian advantages of applicant's configuration (one
need only believe applicant's own statements in its
promotional materials), this configuration, the triangular
shape of which is dictated by the elevated sprocket, is the
best, or at least one of a very few superior designs for its
functional purpose. Thus, it follows that competition is
hindered. That is to say, the conventional elliptical
configurations used by others in the industry, if applicant
is to be believed, do not work equally well; therefore, a
registration granted to applicant would seriously interfere
with the right to compete. In other words, the availability
of this particular elevated sprocket configuration is
"essential to effective competition." In re Morton-Norwich,
supra. A finding of de jure functionality does not require
a total elimination of competition. It is sufficient that
the design applicant seeks to register is one of a few
superior designs, or that the number of alternative designs
is limited. In re Bose Corp., supra at 5-6.
Ser No. 74/404,325
16
The final factor in our analysis focuses on whether
applicant's configuration design is the result of a
comparatively simpler or cheaper method of manufacturing.
Applicant asserts that its tractors with the elevated
sprocket configuration design are more costly to manufacture
than tractors with traditional elliptical track
configurations, and that applicant incurred substantial
research and development costs in the design of the
configuration.
We initially note that applicant's claim that its
tractors with the elevated sprocket configuration design are
more costly to manufacture is unsupported by any evidence of
record. In this regard, Ms. Huxtable's affidavit is
completely silent on this point. Further, even if it is
true that tractors with the elevated sprocket configuration
design are more costly to manufacture than tractors with
conventional elliptical track designs, this does not mean
that the design is not de jure functional. As noted above,
the conventional track designs lack the utilitarian
advantages of applicant's design--thus, such a comparison in
terms of cost is not probative. That is to say, there is
nothing in the record regarding the manufacturing costs of
any alternative designs that can perform the same
utilitarian function equally well.
Consideration of the above factors convinces us that
this case falls squarely within the parameters of the public
policy rationale behind the functionality doctrine--
Ser No. 74/404,325
17
trademark law should not provide a means to achieve
perpetual utility patent protection. Here, applicant owned,
until 1991, a utility patent covering the elevated sprocket
configuration design. Two years after the utility patent
expired, applicant filed the instant application to register
the same configuration as a trademark. To allow
registration here essentially would hinder competition:
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, 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).
Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300, 34
USPQ2d 1161, 1163 (1995).
In summary, we find that the continuous crawler tracks
of applicant's tractors are in the configuration sought to
be registered here because such configuration was found to
be the design which works best. Analysis of the Morton-
Norwich factors shows that the configuration is de jure
functional. Although there are points in applicant's favor
Ser No. 74/404,325
18
(the design patent and alleged higher cost of manufacture),
they are not persuasive of a contrary finding. Given the
expiration of applicant's utility patent for its goods, the
touted superiority of applicant's elevated sprocket design,
and the lack of alternative designs that work equally well,
we conclude that in order for others to compete effectively,
they must be permitted to copy applicant's "configuration of
a continuous crawler track with an elevated drive sprocket
and idler wheels therefor."
In view of the above, we find that the configuration
design sought to be registered by applicant is de jure
functional.
DISTINCTIVENESS
A de jure functional design may not be registered
regardless of any evidence of acquired distinctiveness.
Although we have found that the matter sought to be
registered by applicant is de jure functional, we
nonetheless now consider the Section 2(f) evidence in the
event that applicant's design is ultimately found to be only
de facto functional and, thus, registrable. Applicant, as
the one seeking federal trademark registration under Section
2(f), has the burden of proving acquired distinctiveness.
Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Ser No. 74/404,325
19
Applicant has relied upon the affidavit of Laurie
Huxtable, applicant's assistant secretary, who states, in
pertinent part, the following:
Since the introduction to the
elevated sprocket design undercarriage
for crawler tractors in 1978,
Caterpillar's advertising expenditures
from the years 1978 through 1989
exceeded $100 billion. This advertising
expenditure included specific product
advertising and full line advertising,
national and international magazine
advertising, regional advertising,
catalogs, and literature, and all other
means of advertising. Applicant's
elevated sprocket design undercarriage
crawler tractors would be featured in
many of such advertising materials.
Further, applicant's products, including
its track-type tractors are shown at
various industry trade shows each year.
During the years 1982-1993, sales
of the new elevated sprocket track-type
tractors were 99,993 units. In the
United States, 43,492 of such tractors
were sold.
Applicant has been the only
manufacturer to market an elevated
sprocket undercarriage tractor since the
introduction in 1978. In the 16 years
of marketing of such tractors, the
unique triangular shape track and
undercarriage configuration has acquired
distinctiveness in the minds of the
consuming public such that whenever a
tractor with this configuration of
undercarriage is seen, the source of
such tractor is known to be the
applicant.
Ms. Huxtable also states that since the expiration of
applicant's design patent for an elevated sprocket track
assembly expired in 1988, "I am not aware of any competitor
Ser No. 74/404,325
20
who has manufactured a track assembly similar to that shown
in the expired design patent."
The evidence set forth by Ms. Huxtable does not
persuade us that purchasers of tractors have come to view
"the configuration of a continuous crawler track with an
elevated drive sprocket and idler wheels therefor" as a
trademark for applicant's goods. Although the sales figures
would indicate that applicant has enjoyed success with its
tractors, the figures do not demonstrate that the
configuration has acquired distinctiveness.4 Similarly,
applicant's advertising expenditures, while very impressive,
are merely indicative of its efforts to sell its goods, but
are not determinative of whether the efforts have resulted
in recognition of the configuration as a trademark.
With respect to the advertising, it is particularly
noteworthy that the advertising figure in Ms. Huxtable's
affidavit would appear to cover advertising expenditures for
the full line of applicant's products, and not advertising
specifically featuring the elevated sprocket track-type
tractors. Thus, it is not clear how much of the
expenditures relate to just the elevated sprocket track-type
tractors. Further, absent from all of applicant's
advertising of record is any promotion of the configuration
design as an indication of the source of its tractors.

4We also note, parenthetically, that less than half of
applicant's elevated sprocket track-type tractors were sold in
the United States.
Ser No. 74/404,325
21
Rather, as indicated above, the advertising, to the extent
that it refers to the elevated sprocket design
configuration, promotes the functional advantages of that
design. See: Thomas & Betts Corp. v. Panduit Corp., 65
F.3d 654, 36 USPQ2d 1065, 1071-72 (7th Cir. 1995). The fact
that applicant may be the only one in the trade to utilize
an elevated sprocket track-type tractor design, while a fact
to be considered, is not dispositive.
Applicant also has relied upon the obituary of William
Nauman, a former chief executive officer and chairman of the
board of directors of applicant. The obituary appeared in
the May 10, 1995 edition of The New York Times. The
obituary reads, in pertinent part, that during Mr. Nauman's
tenure, "Caterpillar introduced a distinctive track design
for its bulldozers especially adapted to rough terrain."
(emphasis added) Applicant contends that this was seen by
tens of thousands of readers of the newspaper.
We clearly do not place the significance on this
evidence that applicant does. Firstly, it is very
questionable how many relevant purchasers ever even saw this
statement, appearing as it does in the obituaries section of
a newspaper. And, in any event, the mere mention of a
"distinctive" design in a single obituary hardly is
probative that the specific design sought to be registered
has become distinctive in the minds of relevant purchasers.5

5It also should be noted that, by relying on the obituary,
applicant essentially is asking the Board to make various
Ser No. 74/404,325
22
We also agree with the Examining Attorney that some of the
information, including the "distinctive" statement, would
appear to have been supplied by applicant itself. In that
connection, in the very next line to that quoted above, the
obituary goes on to read as follows: "That design, still in
use, continues to contribute to Caterpillar's growing market
share, the company said." (emphasis added) Thus, given that
applicant itself may well have supplied the term
"distinctive" relative to its track design, this evidence
has little probative value. We hasten to add that even if
authored by a writer at the newspaper, the evidence remains
of scant probative value.
In sum, there is little in this record upon which to
base the conclusion urged by applicant that relevant
purchasers have come to perceive and understand the
configuration design sought to be registered as a
distinctive source indicator. To be clear on this point, we
emphasize that the record is devoid of probative evidence
that anyone other than one of applicant's officers views the
configuration design as a trademark for applicant's
tractors.
Decision: The refusal to register on the ground that
applicant's configuration design is de jure functional is
affirmed. We also affirm the refusal that even if the
configuration design were capable of functioning as a mark,

assumptions, including that the "distinctive" design mentioned
in the obituary refers to the specific design sought to be
registered here, and not to another one of applicant's designs.
Ser No. 74/404,325
23
applicant's evidence of acquired distinctiveness is
insufficient to establish that the configuration design has
become distinctive through use in commerce.
E. J. Seeherman
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/404,325
24