General Technologies, Inc.

Trademark Trial and Appeal Board

Jul 23, 2009

No. 77052472 (T.T.A.B. Jul. 23, 2009)

Mailed: July 23, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re General Technologies, Inc.
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Serial Nos. 77052472 and 770524851
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John S. Egbert of Egbert Law Offices, PLLC for General
Technologies, Inc.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Kuhlke, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, General Technologies, Inc., has filed
applications to register as trademarks on the Principal
Register based on acquired distinctiveness under Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f), the
following:

1 Inasmuch as the issues raised by these appeals are similar, the
Board is addressing them in a single opinion. Citations to the
briefs refer to the briefs filed in application Serial No.
77052472, unless otherwise noted; however, we have, of course,
considered all arguments and evidence filed in each case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77052472 and 77052485
2

for “maroon plastic encapsulated steel anchors
for multi-strand post-tension systems” in
International Class 6, claiming the color maroon
as a feature of the mark and describing the mark
as follows: “The mark consists of the color
maroon applied to the plastic encapsulation,
which entirely surrounds the sounds and
configuration of the goods. The configuration of
the goods including the rectangular and oval
shapes of the goods are not features of the mark.
The dotted lines show placement of the mark on
the goods”;2 and

for “maroon plastic encapsulated steel anchors
for monostrand post-tension systems” in
International Class 6, claiming the color maroon
as a feature of the mark and describing the mark
as follows: “The mark consists of the color
maroon applied to the plastic encapsulation,
which entirely surrounds the sounds and the
configuration of the goods. The configuration of
the goods including the circular, triangular and
rectangular shapes of the goods are not features

2 Application Serial No. 77052472, filed November 28, 2006,
alleging 1998 as the date of first use and first use in commerce.

Serial Nos. 77052472 and 77052485
3
of the mark. The dotted lines show placement of
the mark on the goods.”3

The examining attorney refused registration under
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052, 1127, on the ground that applicant’s alleged
marks are ornamental and not inherently distinctive and,
thus, fail to function as trademarks. In maintaining the
refusals under Sections 1, 2 and 45, the examining attorney
also found that applicant did not make a sufficient
evidentiary showing of acquired distinctiveness under
Section 2(f), 15 U.S.C. § 1052(f).
When the refusals were made final, applicant appealed
and requested reconsideration. On October 31, 2008 and
February 26, 2009 the examining attorney denied the
requests for reconsideration. The appeals were
subsequently resumed and have been briefed. We affirm the
refusals to register.
The examining attorney argues that the color marks are
not inherently distinctive and the evidence submitted by
applicant is insufficient to establish that the proposed
marks have acquired distinctiveness under Section 2(f) of
the Trademark Act.

3 Application Serial No. 77052485, filed on November 28, 2006,
alleging June 1998 as the date of first use and first use in
commerce.
Serial Nos. 77052472 and 77052485
4
In response to the refusal based on lack of inherent
distinctiveness, applicant argues that its marks have been
in use since 1998 and serve to distinguish its goods from
others and to indicate their source. In support of its
assertion of acquired distinctiveness, applicant relies on:
(1) printouts from three third-party websites showing post-
tensioning devices in colors other than maroon; (2) a
printout from applicant’s website showing its products
displayed in a maroon color and the color maroon used in
some lettering and outlines; (3) applicant’s Supplemental
Registration Nos. 2574631 and 2603027 for the color marks
in the subject applications; and (4) applicant’s specimen
of use.
Color marks, as a matter of law, are not inherently
distinctive and can only be registered upon a showing of
acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000)
citing Qualitex Co. v. Jacobson Products Co., Inc., 514
U.S. 159, 34 USPQ2d 1161, 1162-1163 (1995). See also In re
Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed.
Cir. 2001). Refusals based on failure to function may be
overcome by a showing of acquired distinctiveness under
Section 2(f) of the Trademark Act. The burden of proving a
prima facie case of acquired distinctiveness in an ex parte
Serial Nos. 77052472 and 77052485
5
proceeding rests with applicant. See Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004
(Fed. Cir. 1988). Acquired distinctiveness may be shown by
direct and/or circumstantial evidence. Direct evidence
includes actual testimony, declarations or surveys of
consumers as to their state of mind. Circumstantial
evidence is evidence from which consumer association might
be inferred, such as years of use, extensive amount of
sales and advertising, and any similar evidence showing
wide exposure of the mark to consumers. See In re Ennco,
56 USPQ2d 1279, 1283 TTAB (2000). See also 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
Sections 15:30, 15:61, 15:66 and 15:70 (4th ed. updated
2009).
There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness; however,
the burden of proving that a color mark has acquired
distinctiveness is substantial. In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir.
1985). See also Yamaha, supra, 6 USPQ2d at 1008 (evidence
required to show acquired distinctiveness is directly
proportional to the degree of non-distinctiveness of the
mark at issue).
Serial Nos. 77052472 and 77052485
6
After careful review of the evidence of record, we
agree with the examining attorney that applicant's evidence
of acquired distinctiveness is insufficient to permit
registration of the claimed color under Section 2(f).
Although applicant may have sold its goods with the
maroon color for ten years, in this case, given the nature
of the proposed mark, a color on an industrial product,
applicant’s length of use is insufficient, in itself, to
bestow acquired distinctiveness. Rather, further evidence
is required to show the method of using the mark and the
effectiveness of such use “to cause the purchasing public
to identify the mark with the source of the product.”
Owens-Corning, supra, 227 USPQ at 422. Cf. TMEP
§1212.05(a) (“For matter that does not inherently function
as a mark because of its nature (e.g., ...overall color of
a product, mere ornamentation), 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.”)
Applicant has not provided information as to the
amount of sales or advertising associated with the proposed
color marks. We note, in any event, mere figures of
product sales and advertising, standing alone, are not
Serial Nos. 77052472 and 77052485
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sufficiently probative of purchaser recognition of a color
combination as an indication of source. Cf. 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
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 of the asserted mark as denoting origin). It
is well established that compelling sales and advertising
figures do not always amount to a finding of acquired
distinctiveness. See In re Boston Beer Co. L.P., 198 F.3d
1370, 53 USPQ2d 1056 (Fed. Cir. 1999) ($85,000,000 in
annual sales revenues and $2,000,000 in advertising
expenditures found insufficient to establish acquired
distinctiveness); Goodyear Tire & Rubber Co. v. Interco
Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000 sales
revenues and 740,000 tires sold insufficient to show
acquired distinctiveness of tire tread design).
As noted above, the more important question is how is
the alleged mark being used, i.e., have consumers been
exposed to the alleged mark in such a manner that we can
impute consumer association between the claimed color and
Serial Nos. 77052472 and 77052485
8
the product producer. To determine whether the claimed
color has acquired distinctiveness, advertisements must
show promotion of that color as it appears on those goods
as a trademark.
As noted by the examining attorney, there is
nothing of record that shows that the alleged mark is
being promoted as a source indicator. The examples in
the record show a picture of the product in maroon.
There is no mention or description of the product’s
color in any of the advertising displayed on its
website, let alone any promotional effort that focuses
upon the trademark significance of the color as
applied to the product. Applicant’s use of the color
maroon as background and decorative color on its
website and order forms, is not sufficient to support
a showing of acquired distinctiveness of the color
maroon as used on applicant’s goods.
With regard to its Supplemental Registrations
applicant argues:
[T]he existence of the mark on the supplemental
register proves that the mark is registrable as a
trademark on the principal register. Consumers
will certainly view the color maroon as a source
indicator for Applicant since it has been in
continuous use since 1998. Since that time,
competitors have also had to refrain from using
the color maroon to identify their products due
to Applicant’s registration on the Supplemental
Serial Nos. 77052472 and 77052485
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Register. Applicant argues that the evidence
shows that competitors clearly have refrained
from using the color maroon as a source
identifier, that consumers have become accustomed
to the color maroon as goods that are
manufactured by applicant, and that the mark has,
therefore, acquired distinctiveness under Section
2(f) of the Trademark Act.

Br. p. 3.

First, applicant may not base its claim of acquired
distinctiveness on ownership of a Supplemental
Registration. In re Canron, Inc., 219 USPQ 820, 822 n. 2
(TTAB 1983); TMEP §1212.04(d) (5th ed. 2007). Second, the
existence of Supplemental Registrations does not prove that
competitors do not use this color and the three third-party
websites are not sufficient to prove such a broad
assertion. Moreover, although such circumstantial evidence
could show how a particular product stands out in an
industry it is not proof of consumer perception.
With respect to consumer perception, we note that
there are no news articles or any type of publicity
identifying or recognizing applicant’s maroon anchors.
Finally, applicant argues:
The color maroon is certainly not merely an
ornamental or decorative feature since the whole
purpose of Applicant’s products is to make
concrete stronger, ensuring that the color maroon
will be encapsulated in concrete when it is used.
There is simply no impetus to add color to the
products for ornamental purposes...In support of
this argument, Applicant points to the extensive
Serial Nos. 77052472 and 77052485
10
evidence produced by Applicant of the color of
similar third party products. Each of the third
party products depicted in these exhibits is
colored in shades of silver, gray or black. Of
course, all of these colors are various shades of
concrete colors. Finally, it is clear that
Applicant’s maroon color mark would distinguish
Applicant’s goods from those of others, and
indicate the source of the goods, in the
hypothetical scenario where a building, bridge,
or other structure collapses. In such a
scenario, the identification of manufacturer
would be helpful for engineers studying the cause
of such accidents and would make it easy to
determine the manufacturer of the products.
Indeed, engineers investigating such events would
undoubtedly be familiar with the maroon color
mark of Applicant.

Br. pp. 4-5.

This unsupported argument is more directed to
applicant’s intent regarding its use of the maroon color
rather than to consumer perception.
The record presented here is substantially
different from the record in Owens-Corning where the
evidence included advertising expenditures of
$42,421,000 in television, radio, newspapers and
consumer magazines that featured the Pink Panther and
included the advertising slogan “[a]dd another layer
of pink.” In addition, a further $11,400,000 was
expended on “brochures, displays and other promotional
items that highlighted the ‘pink’ color as applied to
Serial Nos. 77052472 and 77052485
11
applicant’s insulation.” Owens-Corning, supra, 227
USPQ2d at 423 (emphasis added).
Accordingly, based upon consideration of all the
evidence in the record, we find that applicant has failed
to establish that the claimed color has acquired
distinctiveness within the meaning of Section 2(f).
Decision: The refusals to register the color claimed
as a mark in both applications on the grounds that each
mark is not inherently distinctive and has not been shown
to have acquired distinctiveness are affirmed.