LeGrand Bennett and Anne Bennett

Trademark Trial and Appeal Board

Aug 27, 1999

No. 74700586 (T.T.A.B. Aug. 27, 1999)

Paper No. 18
RLS/AKP
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re LeGrand Bennett and Anne Bennett dba Wisor Co.
________
Serial No. 74/700,586
_______
Henri J.A. Charmasson for LeGrand Bennett and Anne Bennett
Anil V. George, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney)
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
LeGrand Bennett and Anne Bennett (applicants) have
appealed from the final refusal of the Trademark Examining
Attorney to register on the Principal Register the asserted
mark shown below
Ser. No. 74/700,586
2
for sun visors and caps.1 In the application applicants
describe their mark as follows:
The mark consists of a brim
configuration for a sun visor or cap,
said brim being spherically-curved,
extending beyond the temple areas, and
covering the ears of the visor or cap
wearer.
By amendment, applicants further state that the stippling on
the drawing is to reflect the shape of the brim and not to
indicate color. Applicants’ actual visor is shown below
(from the specimens of record).
Applicants and the Examining Attorney have submitted
briefs but no oral hearing was requested. We affirm in
part and reverse in part.

1 Application Ser. No. 74/700,586, filed July 13, 1995, based
upon applicants’ allegations of use and use in commerce since
June 1994.
Ser. No. 74/700,586
3
Examining Attorney’s Position
The Examining Attorney has refused registration on the
basis that applicants’ asserted mark is de jure functional
and that, if the asserted mark is determined not to be de
jure functional, the mark is nevertheless not inherently
distinctive. With respect to the de jure functionality
refusal, the Examining Attorney argues that applicants’
spherically curved brim is a superior design that other
manufacturers need in order to effectively compete. The
Examining Attorney points to several features of the brim
that he asserts are primarily functional. The Examining
Attorney maintains that the area of the brim that extends
beyond the temple to cover the ears is functional because
that part of the brim shades the ears. The Examining
Attorney also notes that the curved inside of the brim is
superior because it allows for the brim to be placed
against the forehead.2 The Examining Attorney also argues,
brief, 4, that the spherical nature of applicants’ brim
allows for “a more even deflection of the sun’s rays and
precipitation and better allows precipitation to bead and
roll off the brim.”

2 We note that the inside portion of the brim is shown in broken
lines on the drawing, indicating that applicants do not claim
exclusive rights to this part of the configuration.
Ser. No. 74/700,586
4
In support of the functionality refusal, the Examining
Attorney has submitted a number of utility patents covering
headwear which, according to the Examining Attorney,
include similarly designed brims that are crescent-shaped,
curved and downward-shaped. The Examining Attorney,
however, has not pointed to specific parts of these utility
patents that demonstrate the de jure functionality of
applicants’ asserted mark. The Examining Attorney
nevertheless notes that applicants’ advertising literature
touts the fact that the visor brim has “Unique Styling
[which] Shades the Face AND EARS.” (Emphasis in original.)3
With respect to the lack of inherent distinctiveness,
the Examining Attorney argues that the catalog evidence
made of record (some of which is shown below, from the Golf
& Tennis Headwear Company catalog) demonstrates that
applicants’ design is a relatively common basic shape for
brims, or is a mere refinement thereof. The Examining
Attorney points to the fact that other brims closely
resemble applicants’, that they are curved in a similar
manner and that they extend beyond the temple area to cover
the ears. The Examining Attorney argues that, while

3 The literature also indicates that the molded brim “holds its
shape permanently.” It is not clear, however, whether conically
shaped brims can also be said to hold their shape permanently.
In any event, the Examining Attorney has not drawn our attention
to this claim in the advertising literature.
Ser. No. 74/700,586
5
applicants’ design might not be identical to others, it
nevertheless is not an inherently distinctive configuration
that serves to distinguish applicants’ goods from those of
others.
Ser. No. 74/700,586
6
Applicants’ Arguments
While applicants admit that the area of the brim
beyond the temples which covers the ear is “not
particularly unique,” it is nevertheless applicants’
Ser. No. 74/700,586
7
position that the dominant feature of their asserted mark
is the overall sphericity of the visor, which feature,
according to applicants, has no practical utility or
functional advantage. Applicants’ attorney contends that
the spherical character of the asserted mark need not be
copied by competitors because the same effect can be
accomplished by a conventional brim. Applicants’ attorney
explains that a spherical visor must be molded rather than
cut from flat material, as competitive visors are.
Competitive visors are bent into a conical (rather than
spherical) shape. See applicants’ illustrations below.
According to applicants’ attorney, there is a disadvantage
to applicants’ spherical visor because it does not flex and
conform to the forehead as easily, it must be provided in
different sizes, it is more complex in design and it
requires a more sophisticated manufacturing process.
Ser. No. 74/700,586
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Moreover, applicants’ attorney notes, applicants’ visors
require more material and are more expensive to make.
Conical visors, by contrast, are flexible and conform more
readily to a wearer’s forehead, according to applicants’
attorney. Also, conical brims provide the same amount of
protection from the sun and, according to applicants’
attorney, applicants’ brims do not perform better in the
sense that they allow rain to roll off more easily.
Applicants’ attorney contends that, due to the lower
incline of the upper region of the brim, water does not run
down their brim as readily it would on a conical brim.
In support of applicants’ nonfunctionality argument,
applicants submitted a declaration of Mr. Bennett, who
stated his belief that “no other visor or cap manufacturer
has gone to the trouble and expense of designing such an
unusual and complex visor shape.”
With respect to the issue of inherent distinctiveness,
applicants argue that their design is unique and “highly
distinctive” and that it so differs from conical visors
that it is “unexpected” in the marketplace. Applicants
contend that their visor is not a mere ornamental
refinement but is a “strikingly original form of visor.”
Brief, 5.
Ser. No. 74/700,586
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Discussion and Opinion
The configuration or design of a product is de jure
functional if it is so utilitarian as to constitute a
superior design which others in the field need in order to
compete effectively. In re Morton-Norwich Products, Inc.,
671 F.2d 1332, 213 USPQ 9 (CCPA). Four factors enunciated
by the Court in that opinion to be considered in
determining the question of de jure functionality are:
(1) the existence of a utility patent
that discloses the utilitarian
advantages of the design;
(2) the touting by the originator of
the design in advertising material of
the utilitarian advantages of the
design;
(3) facts showing the unavailability
to competitors of alternative designs;
and
(4) facts indicating that the design
results from a relatively simple or
cheap method of manufacturing the
product.
See also In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB
1998); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997)
and In re American National Can Co., 41 USPQ2d 1841 (TTAB
1997).
In this case there appears to be no utility patent
that discloses the specific utilitarian advantages of
applicants’ design. The third-party utility patents of
record cover headwear in general and, as noted above, the
Ser. No. 74/700,586
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Examining Attorney has not pointed to any particular
aspects of those patents which pertain to this
configuration.
Except for the fact that applicants claim (and
concede) that their brims shade the ears and the face,
applicants do not tout the utilitarian advantages of the
design. Also, the evidence of record shows that there are
a number of alternative designs available to competitors.
Finally, while we generally have nothing but argument from
the attorneys on this point, applicants’ attorney has made
representations that its brim is more difficult and
expensive to manufacture and requires more material. That
is, applicants’ visors appear not to be made by a
relatively simple or cheap method of manufacturing.4 For
all of these reasons, we conclude that the Examining
Attorney has failed to prove that applicants’ asserted
design, incorporating a spherically curved brim, is
essential for competitors and is therefore de jure
functional.
With respect to the question of inherent
distinctiveness, the Court in Seabrook Foods, Inc. v. Bar-
Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA

4 Since this is not a matter that is obvious and because the
burden of proof is on the Office, we do not believe that the
Ser. No. 74/700,586
11
1977), looked to whether the trade dress at issue was a
common basic shape or design, whether it was unique or
unusual in a particular field or 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. See
also In re File, 48 USPQ2d 1363 (TTAB 1998), and In re
Hudson News Co., 39 USPQ2d 1915 (TTAB 1996), aff’d.
unpublished, 1997 U.S. App. LEXIS 15556 (Fed. Cir. June 12,
1997). In support of his argument that applicants’ design
is but a mere refinement of other competitive brim designs,
the Examining Attorney made of record copies of other
caps and visors, reproduced above.
Suffice it to say that we agree with the Examining
Attorney that applicants’ asserted mark differs in only
minor respects in appearance from other visor and brim
designs. We cannot say that applicants’ asserted mark is
immediately recognizable as a distinctive way of
identifying their goods. Although applicants’ brims are
spherical rather that conical, such difference, we believe,
would not be readily apparent to ordinary purchasers, and
even if they recognized this difference, we do not believe

Examining Attorney has carried his burden by argument alone on
this point.
Ser. No. 74/700,586
12
that purchasers would immediately see this feature as an
indication of origin. We should point out that a
particular configuration is not inherently distinctive
merely because no other manufacturer uses the identical
design. In re E S Robbins Corp., 30 USPQ2d 1540, 1542
(TTAB 1992). As stated in that case, at 1542:
Thus, while applicant’s applied for
design may be unique in the sense that
it is a “one and only,” the record
demonstrates that said design in not
unique in the sense it has an
“original, distinctive, and peculiar
appearance.”
Decision: The refusal on the basis of de jure
functionality is reversed, but the refusal on the ground
that applicants’ asserted mark is not inherently
distinctive is affirmed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
And Appeal