Chevron Intellectual Property Group LLC

Trademark Trial and Appeal Board

Nov 23, 2010

No. 78490836 (T.T.A.B. Nov. 23, 2010)

Mailed:
November 23, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chevron Intellectual Property Group LLC
________

Serial No. 78490836
_______

Fred W. Hathaway and Bryce J. Maynard of Buchanan Ingersoll
& Rooney PC for Chevron Intellectual Property Group LLC.

Odessa Bibbins, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Chevron Intellectual Property Group LLC (“applicant”)
filed a use-based application to register the design of “a
stylized pole spanner sign,” shown below, for “vehicle
service station services and automobile maintenance and
repair services,” in Class 37.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 78490836
2
Applicant amended the description of its proposed mark to
more specifically identify it as “a beveled pole spanner
sign in the shape of tri-dimensional beam on the top and in
the shape of … a tri-dimensional hexagon on the bottom.”
The photograph shown below, from the record, is a clear
representation of the subject matter sought to be
registered.

Applicant claimed ownership of Registration No. 1586096 for
the mark comprising “the word ‘Chevron’ and a chevron
design affixed to a stylized pole spanner sign” lined for
the color blue, shown below, for the same services. Though
imperceptible in this illustration, the word CHEVRON
Serial No. 78490836
3
appears in small type on the left above the design of a
chevron, as in the photo above.

The Examining Attorney refused registration on the
grounds that the subject matter sought to be registered is
nondistinctive trade dress that does not function as a
service mark pursuant to Sections 1, 2, 3 and 45 of the
Trademark Act of 1946, 15 U.S.C. §§ 1051-1053 and 1127, and
that the design sought to be registered has not acquired
distinctiveness, under Section 2(f), 15 U.S.C. § 1052(f).
Applicant, on the other hand, contends that the subject
matter sought to be registered is inherently distinctive
and, in the alternative, has acquired distinctiveness.
A. Whether the subject matter sought to be registered is
inherently distinctive?

“[A] mark is inherently distinctive if ‘[its]
intrinsic nature serves to identify a particular source.’”
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
54 USPQ2d 1065, 1068 (2000), quoting Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083
(1992). It “should be displayed with such prominence as
will enable easy recognition” and “the average consumer
Serial No. 78490836
4
will regard it as an unmistakable, certain, and primary
means of identification pointing distinctly to the
commercial origins of such product.” In re Swift & Co.,
223 F.2d 950, 106 USPQ 286, 289 (CCPA 1955). “[U]ltimately
‘the focus of the [inherent distinctiveness] inquiry is
whether or not the trade dress is of such a design that a
buyer will immediately rely on it to differentiate the
product from those of competing manufacturers; if so, it is
inherently distinctive.’” In re Chippendales USA, Inc.,
No. 2009-1370, slip op. at 9 (Fed. Cir., October 1, 2010),
quoting Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192,
31 USPQ2d 1321, 1331 (Fed. Cir. 1994).
In determining whether a design is
arbitrary or distinctive [the CCPA] has
looked to [1] whether it was a “common”
basic shape or design, [2] whether it
was unique or unusual in a particular
field, [3] whether it was a mere
refinement of a commonly-adopted and
well-known form of ornamentation for a
particular class of goods viewed by the
public as a dress or ornamentation for
the goods, or [4] whether it was
capable of creating a commercial
impression distinct from the
accompanying words.

Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342,
196 USPQ 289, 291 (CCPA 1977). “A finding that any one of
these factors is satisfied may render the mark not
Serial No. 78490836
5
inherently distinctive.” Chippendales, slip op. at 8 and
15.
The photographs below display how consumers encounter
the pole spanner sign sought to be registered.

The examining attorney contends that the pole spanner
sign is a mere refinement of a commonly adopted and well-
known form of ornamentation.
Serial No. 78490836
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In this case, the mark, a basically
horizontal shape, appears with a
combination of geometrical shapes
configured as a design, similar to
signs in (sic) at other service
stations, which appear in round or
square or other geometric combinations,
posted at service stations over the gas
pumps, used by vendors to display the
name of their goods and/or other
information about their services.1

To support her position, the examining attorney
submitted photographs of pole spanner signs used by other
service stations. Representative samples of the
photographs are shown below.

1 Examining Attorney’s Brief, unnumbered pages 5-6.
Serial No. 78490836
7

Applicant argues to the contrary that its pole spanner
design is (1) “a unique, three-dimensional, six-sided
beveled shape that is unique to the industry,” (2) that
“none of [the other] companies utilize a design that is
even remotely similar to Applicant’s three-dimensional,
six-sided shape,” (3) that its pole spanner design is not a
mere refinement of a commonly adopted shape because its
design “is completely different in the base shape, the six
sides, and the beveled edges from the basic rectangular
designs used for most gas pump spanners,” and (4) “the
unique shape of Applicant’s spanner design creates a
separate commercial impression apart from the CHEVRON
marks” because it “echoes the outline appearance of its
famous Chevron logo … and would do so even without the
CHEVRON word mark or logo displayed on the spanner.”2

2 Applicant’s Brief, pp. 5-7.
Serial No. 78490836
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On appeal, we must consider whether the Examining
Attorney has made a prima facie case that the subject
matter sought to be registered is not inherently
distinctive and, if so, whether applicant has submitted
sufficient evidence to rebut that prima facie case. In re
Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1631 (Fed.
Cir. 2003). The burden on the Examining Attorney is to
establish a “reasonable predicate” for her position that
the subject matter is not inherently distinctive. Id. The
evidence of record illustrating the use of pole spanners by
multiple automobile service stations establishes that pole
spanners utilize common geometric shapes in the
configuration of these signs above gasoline pumps at
automobile service stations. Applicant does not dispute
that pole spanner designs are commonly used at service
stations or that they utilize common geometric shapes;
however, alluding to Seabrook factor 2, applicant argues
that its pole spanner design is unique and visually
distinguishable from the spanner designs used by others.3
Further, alluding to Seabrook factor 4, applicant contends
that the “six-sided beveled shape” creates a commercial
impression separate and apart from any other matter on the
pole spanner and that it is so distinctive that consumers

3 Applicant’s Brief, pp. 5-6.
Serial No. 78490836
9
will recognize it as a service mark. However, applicant
has not submitted any evidence in support of this latter
argument, i.e., that the design sought to be registered
creates a distinct commercial impression apart from the
words and logo featured on the pole spanner design.
We have considered the record in accordance with each
of the factors set forth in Seabrook for inherent
distinctiveness, and nothing in the record leads us to
conclude that consumers would perceive and rely on
applicant’s pole spanner design as an indication of source
absent a showing of acquired distinctiveness. As shown by
the photographs of service stations in the record,
prospective consumers would be drawn to service stations by
other indicia, such as the use of prominent word marks and
logos. This is equally true of applicant’s service
stations, which prominently feature its CHEVRON work mark
and purportedly famous logo. As shown by this record, it
is common for service stations to use pole spanners in
various shapes as part of the gasoline pump configuration,
and the spanners typically display word marks or logos.
When consumers enter a service station, they will likely
perceive the pole spanner designs as part of the gasoline
pump, and as a means for displaying word marks and logos;
and because the spanners are in common geometric shapes,
Serial No. 78490836
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they are less likely to stand out as distinctive elements
of the overall pump ornamentation. Thus, under the third
factor of the Seabrook test, we conclude that applicant’s
“three-dimensional, six-sided beveled shape” is a mere
refinement of a commonly used form of a gasoline pump
ornamentation rather than an inherently distinctive service
mark for automobile service station services. Further,
under Seabrook factor four, the pole spanner shape is not
such that it will create a commercial impression distinct
from the CHEVRON word mark and logo.
Finally, we note that applicant is the owner of a
previously registered mark incorporating a pole spanner
design lined for the color blue that includes the word
“Chevron” and a chevron logo. This registration does not
help applicant in this case in terms of showing that the
applied-for mark is inherently distinctive because the
subject matter sought to be registered, devoid of color,
words and the logo, is clearly different from the
registered mark. Because of these differences in the
marks, we cannot conclude, based on the presumption
accorded to the prior registration that the mark therein is
inherently distinctive that the subject matter in this
application is inherently distinctive as well. See In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
Serial No. 78490836
11
(Fed. Cir. 2001) (each case must be decided on its own
merits and “[e]ven if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO allowance of such prior registrations does not bind the
Board or this court”).4
In view of the foregoing, we find that applicant’s
customers and prospective customers would be unlikely to
immediately regard applicant’s pole spanner design as
identifying and distinguishing applicant’s services and
indicating their source. Applicant’s record evidence does
not counter the Examining Attorney’s prima facie case that
the subject matter sought to be registered is not
inherently distinctive.
B. Whether the subject matter sought to be registered has
acquired distinctiveness?

The Examining Attorney’s position is quite simple:
applicant has failed to demonstrate that the subject matter
sought to be registered is recognized as a trademark. She
contends that, in the evidence of record, “no mention is
made of the design or configuration elements, namely,
beveled, tri-dimensional hexagon, as the specific features

4 Applicant referenced its prior registration only with respect
to its argument that the proposed mark is inherently distinctive
and not with respect to the issue of acquired distinctiveness.
However, for the reasons articulated above, the prior
registration would not help applicant prove that the proposed
mark has acquired distinctiveness.
Serial No. 78490836
12
recognized by consumers as the source of applicant’s
services.”5
On the other hand, applicant contends that the design
sought to be registered has acquired distinctiveness by
virtue of the following facts:
1. Applicant has used its pole spanner design since
at least as early as 1988;
2. Applicant’s pole spanner design is used in
approximately 8,000 service stations throughout the
country; and
3. Consumers visited applicant’s service stations
approximately 467 to 667 million times in 2007-2008.
The kind and amount of evidence necessary to establish
that a mark has acquired distinctiveness in relation to
goods or services depends on the nature of the mark and the
circumstances surrounding the use of the mark in each case.
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (where the
product design sought to be registered was common or
ornamental, applicant has an “unusually heavy burden” to
show acquired distinctiveness); In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed.
Cir. 1985)(“By their nature color marks carry a difficult

5 Examining Attorney’s Brief, unnumbered page 15.
Serial No. 78490836
13
burden in demonstrating distinctiveness and trademark
character. Each case must be considered on its merits”);
In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980)(“One who chooses a commonplace design for his
package … must expect to have to identify himself as the
source of goods by his labelling or some other device”).
Because the subject matter sought to be registered is a
mere refinement of the commonly used pole spanner design in
the automobile service station industry, applicant has a
relatively heavy burden for establishing acquired
distinctiveness.
Applicant’s evidence of acquired distinctiveness is
not convincing. First, applicant’s 22 years of use of the
design in question is substantial but not necessarily
conclusive or persuasive, considering the nature of the
subject matter sought to be registered. Cf. In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984)
(8 years use was not sufficient evidence of acquired
distinctiveness for the configuration of pistol grip water
nozzle for water nozzles); In re Ennco Display Systems
Inc., 56 USPQ2d 1279, 1286 (TTAB 2000)(applicant’s use of
the product designs ranging from seven to 17 years is
insufficient to bestow acquired distinctiveness); TMEP
§1212.05(a)(7th ed. 2010) (“For matter that is not
Serial No. 78490836
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inherently distinctive because of its nature (e.g.,
nondistinctive product container shapes, overall color of a
product, mere ornamentation, and sounds for goods that make
the sound in their normal course of operation), evidence of
five years’ use is not sufficient to show acquired
distinctiveness.. In such a case, actual evidence that the
mark is perceived as a mark for the relevant goods or
services would be required to establish distinctiveness”);
see also In re The Black & Decker Corp., 81 USPQ2d 1841,
1843-1844 (TTAB 2006) (applicant successfully established
acquired distinctiveness for the design of a key head for
key blanks and various metal door hardware, where evidence
submitted in support thereof included over eleven years of
use in commerce and significant evidence regarding industry
practice, such that the evidence showed that “it is common
for manufacturers of door hardware to use key head designs
as source indicators…”).6
Even assuming that applicant’s service station
services are highly successful, such success does not, in
and of itself, demonstrate recognition by the purchasing
public of applicant’s pole spanner design as a service

6 Even though these cases pertain to product design trade dress,
we find that they are equally applicable to cases involving trade
dress for services.
Serial No. 78490836
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mark. In re Bongrain International (American) Corp.,
894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)
(growth in sales may be indicative of popularity of product
itself rather than recognition of a term or design as
denoting origin); Goodyear Tire and Rubber Co. v. Interco
Tire Corp., 49 USPQ2d 1705, 1720 (TTAB 1998) (“At best,
applicant’s sales figures may be said to demonstrate a
growing degree of popularity or commercial success for its
tires, but such evidence does not demonstrate recognition
by the purchasing public of its [tire tread design] as a
trademark”).
Another reason applicant’s evidence of acquired
distinctiveness is deficient is the absence of
advertisements and promotions featuring or promoting
recognition of the pole spanner design as a service mark.
While the pole spanner design is a feature of applicant’s
gasoline pump configuration in 8,000 service stations seen
by over 500 million people in a two-year period, there is
nothing to indicate that applicant’s customers view the
pole spanner design as anything other than a feature of the
gasoline pump, or that applicant has done anything to
foster the impression that the pole spanner design is an
indication of source. In this regard, applicant also
submitted various articles and other materials regarding
Serial No. 78490836
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its station image refresh program that it contends indicate
consumers recognize and appreciate applicant’s pole spanner
designs, citing Exhibits B, C, and D attached to the
December 30, 2008 response.7
Exhibit B is a set of materials distributed to
applicant’s franchisees or licensees to encourage
applicant’s renovation program. The pole spanner is just
one element of the upgraded facilities, but it is not
promoted as a distinctive indicator of the source of
applicant’s services.
Exhibit C comprises the search results from the GOOGLE
search engine for “Chevron image refresh.” Setting aside
the question why a service station customer would be
interested in applicant’s renovation program, the search
results do not call attention to the pole spanner designs.
Exhibit D is two news articles. The first article was
published in the on-line magazine The Auto Channel
regarding applicant’s renovation program and informing the
reader that applicant “has modernized its trash valets and
signature spanners to create a practical and engaging
experience for customers each and every time they visit
Chevron stations.” While the author of this article has
noted that applicant’s pole spanner design is a “signature”

7 Applicant’s Brief, p. 10.
Serial No. 78490836
17
feature of applicant’s renovated service stations, there is
no evidence corroborating that consumers recognize the
spanners as “signature” features identifying applicant’s
services or that applicant has in any way sought to
capitalize on that feature.
The second article is in Convenience Store magazine
regarding applicant’s renovation project and informing the
reader that the “illuminated pump spanners and unlit
valences … provide a more open feeling.” However, feelings
of openness are not probative of whether applicant’s
customers perceive its proposed mark as a source indicator.
Applicant submitted excerpts from consumer research
purportedly showing the strength of Applicant’s brand
identity and establishing that Applicant’s spanner design
is a recognized part of Applicant’s brand identity, with a
favorable image among consumers (Exhibits F, G, and H to
the December 30, 2008 response). According to applicant,
“[t]hese documents demonstrate that Applicant has an
extremely high brand identity and image among consumers
nationwide.”8 While applicant may have a high brand
identity and image, there is no evidence that the pole
spanner design has any consumer recognition as a service

8 Applicant’s Brief, p. 11.
Serial No. 78490836
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mark apart from applicant’s other indicia of source,
including its previously registered CHEVRON and design
marks.
Exhibit F is a consumer research report on service
station image. The report identified four service station
elements affecting a positive purchaser experience: the
gas pump, the canopy, the spanner and the trash can.
“[T]he gas pump is the most important element of consumers’
buying experience followed by the canopy. … Least important
elements are the spanner and the trash can, in that order.
… the gas pump element has a decisive lead in importance
across all regions.” The report also concludes that
“[a]bout 4 of 10 motorists rank the SPANNER high in
importance in relation to a positive buying experience.”
Applicant asserts that this report “shows that the spanner
is a recognizable source of applicant’s services and has
influenced customer identification and selection of
services.”9 We are not persuaded. The fact that consumers
may consider the spanner an important factor in their
purchasing experience does not mean that they recognize it
as a trademark. Also, the excerpt of the report produced
by applicant does not provide any information regarding the

9 December 30, 2008 Response to Office Action, p. 6.
Serial No. 78490836
19
procedures for obtaining the information so it is difficult
to assess its reliability. In this regard, we do not know
whether consumers independently identified the gas pump,
the canopy, the spanner and the trash can as elements of
their purchasing experience or whether consumers were asked
to evaluate these particular elements. If the latter, we
do not know whether consumers would have recognized the
spanner as an independent element. They could have
considered it to be part of the gasoline pump.
Exhibit G is a document entitled “U.S. Market Track
2008 Brand Seeking Behavior.” According to applicant, this
report “indicates the strength of the Chevron brand and the
distinctive elements it has adopted to promote its brand,
especially amongst customers who ‘brand seek.’”10 While the
report indicates that applicant has strong brand
recognition in its CHEVRON mark, it does not reference the
pole spanner design.
Exhibit H is a document entitled “Customer
Satisfaction and Intent to Re-visit.” Applicant contends
that this document “shows that applicant’s stations,
featuring the spanners, have a strong brand loyalty in
comparison to its competitors.”11 There is no reference to

10 December 30, 2008 Response to Office Action, p. 6.
11 Id.
Serial No. 78490836
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the pole spanner design and simply no basis to conclude
that the pole spanner design has any effect on brand
loyalty.
In considering the totality of the probative evidence
- - applicant’s use of the design sought to be registered
since 1988 and applicant’s business success, including
brand loyalty - - and also considering the common usage of
pole spanners by many other service stations, we find that
the evidence is insufficient to show that the design of
applicant’s pole spanner design has acquired
distinctiveness.
Decision: The refusal to register on the ground that
the subject matter sought to be registered is not
inherently distinctive is affirmed. The alternative
refusal on the ground that the subject matter sought to be
registered has not acquired distinctiveness under Section
2(f) is also affirmed.