Mag Instrument, Inc.v.The Brinkman Corp. and The Brinkman Corp. v. Mag Instrument, Inc.

Trademark Trial and Appeal Board

Jul 28, 2010

No. 91164340 (T.T.A.B. Jul. 28, 2010)

Hearing: Mailed:
February 25, 2010 July 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

Mag Instrument, Inc.

v.

The Brinkmann Corporation

_____

The Brinkmann Corporation

v.

Mag Instrument, Inc.

Opposition No. 91163534
(Serial No. 76548626)

_____

Opposition No. 91164169
(Serial No. 76484030)

Opposition No. 91164340
(Serial No. 78357215)

______

Anna E. Raimer, Esq. of Jones Day for Mag Instrument, Inc.

Gary A. Clark, Esq. of Sheppard, Mullin, Richter & Hampton
LLP for The Brinkmann Corporation
______

Before Cataldo, Taylor, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

This case comprises three consolidated opposition
proceedings.
THIS OPINION IS A
PRECEDENT OF
THE TTAB
Oppositions Nos. 91163534, 91164169 and 91164340
2
First, in Opposition No. 91163534, Mag Instrument, Inc.
(hereinafter “Mag Instrument”) has opposed an application
filed by The Brinkmann Corporation (hereinafter “Brinkmann”)
to register the mark MAGNUM MAXFIRE on the Principal
Register for “hand-held portable lights, namely flashlights
and spotlights” in International Class 11.1 Mag
Instrument’s opposition is based on allegations that Mag
Instrument has prior use of confusingly similar marks,
including a famous family of “MAG” marks, on flashlights
and/or related accessories, under Section 2(d) of the Act.
Mag Instrument pleaded ownership of numerous registrations
for marks consisting, in whole or in part, of the term MAG,
including the registered mark MAG-NUM STAR for “flashlight
bulbs.”2 In its answer, Brinkmann denied the salient
allegations of the complaint and asserted a “Morehouse”
defense based on its ownership of a prior registration of
what Brinkmann contends is a mark substantially similar to
its applied-for mark, for identical or substantially similar
goods.
In the second proceeding, Opposition No. 91164169,
Brinkmann has opposed Mag Instrument’s application to
register the following configuration mark (hereinafter,

1 Serial No. 76548626, filed on October 3, 2003, under Section
1(b) (intent-to-use).
2 Registration No. 1245187, issued July 12, 1983; Sections 8, 9
and 15 affidavits accepted and granted; renewed.
Oppositions Nos. 91163534, 91164169 and 91164340
3
“dual band mark”) on the principal register under Section
2(f) (acquired distinctiveness):

for “flashlights.”3
The application contains the following description of
the mark:
The mark consists of two bands that encircle the barrel
of the flashlight. The outline of the flashlight is
not part of the mark but is merely intended to show the
position of the mark.

Brinkmann opposes registration of this dual band mark
on the grounds that it is “functional” because it
“represents the charging rings” of applicant’s flashlights
and this design “is essential to the use or purpose of the
[flashlight] or it affects the cost or quality of the
[flashlight]” (Not. of Opp., para. 7); and that the mark
“has not become distinctive of [applicant’s flashlights].”
(Id., para. 9).
Mag Instrument, in its answer, denies the allegations
that its proposed dual band mark is either functional or
that it lacks distinctiveness.
Oppositions Nos. 91163534, 91164169 and 91164340
4
In the third proceeding, Opposition No. 91164340,
Brinkmann has opposed Mag Instrument’s application to
register the mark MAG STAR on the principal register for

Electric flashlight accessories sold together or
separately, namely rechargeable batteries, battery
chargers, electrical converters, power cords, charger
cradles, flashlight recharger adapters for use with
vehicle cigarette lighters, battery packs for
flashlights, voltage converters, foreign plug adapters
in International Class 9; and

Flashlights and related parts, component parts and
accessories therefor, namely replacement flashlight
lamps, combination lens holder/anti-roll units adapted
to fit on the barrels of flashlights and leather and
nylon carrying holsters and belt holders in
International Class 11.

Brinkmann pleads ownership of the registered mark
MAXSTAR for “electric lanterns”4 and alleges that Mag
Instrument’s use of the MAG STAR mark on the aforementioned
goods is “likely to cause confusion, to cause mistake, and
to deceive customers, potential customers and others,
thereby injuring [Brinkmann] and the consuming public.”
(Not. of Opp., para. 9).
Mag Instrument, in its answer, denies the salient
allegations of the opposition.

3 Serial No. 76484030, filed January 21, 2003, under Section
1(a), based on an allegation of first use anywhere and in
commerce on December 31, 1982.
4 Reg. No. 1565777, issued on November 14, 1989, renewed.
Oppositions Nos. 91163534, 91164169 and 91164340
5
Consolidation
The three opposition proceedings were consolidated at
the discovery stage.5 Thus, the proceedings were tried
together and arguments were presented in combined briefs.
The Record
The record automatically includes the pleadings and the
files of all involved applications. Trademark Rule
2.122(b).
The parties also submitted the trial testimony, with
accompanying exhibits, of the following individuals: James
L. Zecchini, a Vice President for Mag Instrument; J. Baxter
Brinkmann, CEO and owner of Brinkmann; Gus Hawthorn,
Director of Engineering for Mag Instrument; Anthony Maglica,
President of Mag Instrument; and Professor Martin J. Siegel,
an expert witness testifying on behalf of Mag Instrument.6
In addition, Mag Instrument filed two notices of
reliance that include: copies of registrations owned by Mag

5 Pursuant to Board order (dated March 17, 2006). Opposition No.
91163534 was designated the “parent” proceeding and, as such, is
the file containing all orders and submissions subsequent to the
consolidation order.
6 Both parties designated portions of the record, including
documents and testimony, as “confidential.” We have, of course,
considered all evidence of record, but are mindful of the
portions designated as “confidential” and thus refer to such
materials in only general terms where practical. Therefore, any
omission of specific reference to these materials, or any other
evidence, should not be construed as indicating that such has not
been considered.
Oppositions Nos. 91163534, 91164169 and 91164340
6
Instrument,7 copies of registrations owned by Q-Beam
Corporation and Brinkmann, copies of documents produced by
Brinkmann in response to Mag Instrument’s discovery
requests,8 and copies of Brinkmann’s responses to certain
interrogatories propounded by Mag Instrument.
Brinkmann filed a notice of reliance upon the status
and title copies of three registrations that it owns.
Both parties filed briefs in their respective positions
as both plaintiff and defendant in these consolidated
proceedings. In addition, counsel for both parties
presented arguments at an oral hearing held before the Board
on February 25, 2010.
Evidentiary Objections
Both Mag Instrument and Brinkmann have raised
objections to evidence introduced (and relied upon) by the
other.
1. Zecchini Testimony and Exhibits M128 and M132
Relying on the “best evidence rule,” Brinkmann has
objected to certain deposition testimony of Mr. Zecchini
involving sales summaries and related exhibits, marked as

7 Status and title copies were submitted for the registrations
owned by Mag Instrument via the second notice of reliance and in
accordance with the Board’s December 24, 2008 order.
8 Documents produced (in discovery) are generally not proper
matter for submission under a notice of reliance alone, unless
they are otherwise suitable for such introduction, e.g., they are
printed publications or government records. However, in a paper
filed September 26, 2008, Brinkmann specifically conceded that we
may treat the “documents as being of record.”
Oppositions Nos. 91163534, 91164169 and 91164340
7
M128 (MAG CHARGER mark flashlight advertising/sales summary)
and M132 (WHITE STAR mark lamp sales summary) and moves to
strike said testimony and exhibits.9 Brinkmann asserts that
Mag Instrument “failed to produce or make available any of
the original invoices or other sales database information
that was used to prepare the sales summary information set
forth in the [objected exhibits]” (Statement of Evid.
Objections, p. 5) in violation of the “best evidence rule.”
Brinkmann also raises a hearsay objection because Mr.
Zecchini either “admitted” or it “would seem apparent” that
he did not prepare the exhibits and Mag Instrument cannot
therefore “rely on the exhibits for the truth of the matters
asserted therein.” Id. at p. 6.
The aforementioned objections are not well-taken and
are overruled.
The “best evidence rule” is a common law proposition
that has been codified in Rule 1002 of the Federal Rules of
Evidence, which states: "To prove the content of a writing,
recording, or photograph, the original writing, recording,
or photograph is required, except as otherwise provided in
these rules or by Act of Congress." However, the rule has

9 While the motion to strike discusses Exhibits M128 and M132, in
its prayer for relief Brinkmann requests that Exhibits M128 and
M130, not M132, be stricken. We disagree with Mag Instrument’s
contention that the inconsistency renders the objections
“defective,” but we construe Brinkmann’s objections based on the
“best evidence rule” as being asserted and directed only to
Exhibits M128 and M132, not Exhibit M130.
Oppositions Nos. 91163534, 91164169 and 91164340
8
been described as “one of preferences, not absolute
exclusion.” 6 Weinstein’s Federal Evidence Section 1004.01
(2nd Ed. 1997). Thus, there are a string of exceptions to
the rule and these are set forth in the subsequent rules,
including “[t]he original is not required, and other
evidence of the contents of a writing...is admissible
if...the writing...is not closely related to a controlling
issue.” Fed. R. Evid. Rule 1004(4). In this case, we find
that Exhibits M128 and M132 are not “closely related to a
controlling issue” and, as such, are not susceptible to Rule
1002. That is, Mag Instrument introduced the summaries for
purposes of demonstrating a level of use for products
bearing the MAG CHARGER and WHITE STAR marks from which one
may possibly gauge the degree of success or exposure of
products bearing those marks. Said purposes are not closely
related to the controlling issues involved in the likelihood
of confusion analysis.
As to Brinkmann’s hearsay objections to Exhibits M128
and M132, including the deposition testimony relating to the
exhibits, we find them to be without merit in view of the
fact that the exhibits are summaries of business information
that were prepared by individuals under Mr. Zecchini’s
supervision. In addition, Mr. Zecchini testified that he
had the requisite knowledge and was personally aware of the
information contained in the exhibits based on his position
Oppositions Nos. 91163534, 91164169 and 91164340
9
within Mag Instrument. Cf., Crash Dummy Movie, LLC v.
Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir.
2010).
Accordingly, Brinkmann’s objections to Exhibits M128
and M132, including the deposition testimony relating to the
exhibits, are overruled.
2. Zecchini Testimony and Exhibits Relating to Third-Party
Use

Brinkmann objects to certain deposition testimony of
Mr. Zecchini and related exhibits (M135-M140) on the grounds
that the exhibits comprise internet website printouts that
have not been authenticated and that they constitute
hearsay.
As to Brinkmann’s objection based on the exhibits not
having been properly authenticated, we find that this
objection was not timely raised and has been waived. See
TBMP § 707.03(c) (2d ed. rev. 2004); see also, Pass &
Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984)
(objection on grounds of improper identification or
authentication of exhibits waived since defects could have
been cured if made during the deposition).10

10 Subsequent to the filing of the subject exhibits, the Board
modified its handling of internet materials; specifically, “if a
document obtained from the Internet identifies its date of
publication or date it was accessed and printed, and its source
(e.g., the URL), it may be admitted into evidence” because it is
considered to be self-authenticating in the same manner as a
printed publication in general circulation in accordance with
Trademark Rule 2.122(e). See Safer, Inc. v. OMS Investments,
Oppositions Nos. 91163534, 91164169 and 91164340
10
As to Brinkmann’s objection that Exhibits M135-M140
contain hearsay, we sustain this objection to the extent
that applicant is offering these articles for the truth of
the matters asserted therein, i.e., as proof that there are
actually third-party products in use that function in the
manner advertised. Mag Instrument may also not rely on Mr.
Zecchini’s testimony concerning the existence or veracity of
the subject matter of the materials and, in that regard, the
testimony is stricken. Despite sustaining the hearsay
objection and striking the testimony of Mr. Zecchini related
to these exhibits, we decline to strike the materials in
their entirety and find them admissible solely for what they
show on their face. This probative value is strictly
confined to showing that the public may have been exposed to
those internet websites and therefore may be aware of the
information or advertisements contained therein. See Life
Zone Inc. v. Middleman Group Inc., supra, 87 USPQ2d at 1956
n.5; Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50
(TTAB 1999); Logicon, Inc. v. Logisticon, Inc., 205 USPQ
767, 768 n.6 (TTAB 1980); TBMP § 704.08.
In sum, the testimony relating to Exhibits M135-140 is
stricken. The exhibits themselves are not stricken, but as

Inc., 94 USPQ2d 1031 (TTAB 2010). Here, upon review of the
internet printouts contained in the subject exhibits, we note
that each indicates the URL and date accessed.
Oppositions Nos. 91163534, 91164169 and 91164340
11
explained above they have very limited probative value in
these consolidated proceedings.
3. Declarations of Susan Hwang and Ping Chu
Mag Instrument argues that the declarations of Susan
Hwang and Ping Chu which were submitted in support of
Brinkmann’s objections (discussed above) are “inadmissible.”
Although it does not appear that Brinkmann sought to
introduce the declarations into the evidentiary record, for
the sake of clarity, we note that these declarations do not
form part of the record and were only considered for
purposes of deciding the evidentiary objections raised by
Brinkmann.
4. Brinkmann Testimony
(a) Regarding Alleged Utility Design Features
Mag Instrument objects to the testimony of Mr.
Brinkmann concerning any possible utilitarian advantages of
Mag Instrument’s flashlights (including its battery
recharging feature) over competitors’ products.
Essentially, Mag Instrument argues that to opine in that
subject area requires “specialized knowledge within the
scope of Rule 702 [governing use of an expert witness]”, and
that no foundation was laid to establish that Mr. Brinkmann
is qualified as an expert witness. Brinkmann, on the other
hand, contends that Mr. Brinkmann was merely “identifying
and describing the flashlights [of Mag Instrument and
Oppositions Nos. 91163534, 91164169 and 91164340
12
competitors] and their uses with particular focus on their
rechargeable features.” Brinkmann’s Response (filed June
11, 2009), p. 4. And, “to the extent that Mr. Brinkmann
made a comparison of the advantages or benefits of the MAG
CHARGER flashlight over the four ‘alternative’ flashlights,
he did so as a person whose duties and responsibilities, as
president of Brinkmann, regularly include such activity.”
Id.
We do not construe Mr. Brinkmann’s testimony as expert
witness testimony. Rather, we agree with Brinkmann that Mr.
Brinkmann testified in his capacity as president of a
competitor of Mag Instrument and, based on his years of
experience in the industry, that he is generally familiar
with flashlight products. We find that his testimony
is not based on “scientific, technical, or other specialized
knowledge,” as contemplated by Fed. R. Evid. 702. Mr.
Brinkmann’s opinions concerning the features or advantages
of the flashlights clearly fall within the scope of
expertise of that expected from an individual who is not an
expert witness but has experience and knowledge in the
industry. Accordingly, Mag Instrument’s objection to this
testimony is overruled.
(b) Regarding Settlement Negotiations
Mag Instrument has objected to the testimony of Mr.
Brinkmann concerning “negotiations and specific terms of a
Oppositions Nos. 91163534, 91164169 and 91164340
13
confidential settlement agreement reached between [the
parties] as part of an earlier litigation.” The testimony
was submitted under seal and Brinkmann did not cite to this
testimony in its main brief or reply brief. Accordingly,
this objection is not an issue; for sake of clarity, Mr.
Brinkmann’s testimony on this subject has not been
considered.
5. Deposition Questions Involving Alternative Designs
Mag Instrument has objected to questions posed by
counsel for Brinkmann during the depositions of Messrs.
Zecchini, Hawthorn and Siegel, all Mag Instrument witnesses.
Specifically, counsel for Brinkmann asked the deponents
whether they would consider certain alternative flashlight
designs as infringing on Mag Instrument’s applied-for dual
band trademark. Mag Instrument objected to these questions
as “improper hypotheticals” that call for legal conclusions
and that these witnesses were neither qualified to provide
opinions in this regard nor did they have authority to
represent Mag Instrument in this regard. Mag Instrument
takes exception to Brinkmann’s conclusion in its trial brief
that Mag Instrument “would not commit itself to a position”
because the witnesses would not answer the questions.
Upon review of the testimony in question, we do not
agree with Mag Instrument that the objected-to questions
were improper or that any responses should be stricken.
Oppositions Nos. 91163534, 91164169 and 91164340
14
While we note that it was never established that these
witnesses were in a position to represent or bind Mag
Instrument (and, indeed, some of the witnesses stated that
they were not so authorized), the questions posed by
Brinkmann’s counsel were legitimate to the extent that they
were in response to the witnesses’ direct testimony
concerning proposed alternative flashlight designs. The
questions were an attempt to delve into whether the proposed
alternative flashlight designs were indeed available and
feasible options for others. Accordingly, we overrule the
objections and do not strike the testimony. Nevertheless,
this does not mean that we draw any adverse inference nor do
we necessarily have to reach the same conclusion that
Brinkmann did in its trial brief based on the witnesses’
responses to the questions (or their inability or refusal to
answer). Cf., Levi Strauss & Co. v. R. Josephs Sportswear
Inc., 28 USPQ2d 1464 (TTAB 1993)(counsel instructed
witnesses not to answer certain questions and, because
objections were not well taken, Board presumed answers would
have been adverse to party whose counsel raised the
objections). Rather, we have considered the responses in
the totality of all of the testimony and other evidence
concerning possible alternative flashlight designs.

Oppositions Nos. 91163534, 91164169 and 91164340
15
6. Section 2(f) Evidence
During the prosecution of its dual band mark, Mag
Instrument submitted sixteen declarations in support of its
assertion that the mark had acquired distinctiveness;
however, it did not otherwise introduce the declarations
into evidence during its testimony period. At oral hearing
and in papers filed subsequently, the parties disputed the
nature of these declarations and whether they should be
considered in evidence.
As already noted, Trademark Rule 2.122(b) provides that
the file of the application being opposed forms part of the
record. In pertinent part, the rule specifically states
“the file...of the application against which a notice of
opposition is filed...forms part of the record of the
proceeding without any action by the parties and reference
may be made to the file for any relevant and competent
purpose.” Our primary reviewing court recently interpreted
this rule and decided that, “to be clear and unambiguous,”
the entire file of the involved application, “including any
evidence submitted by the applicant during prosecution,” is
part of the record of the relevant inter partes proceeding,
without any action by the parties. Cold War Museum Inc. v.
Cold War Air Museum Inc., 586 F.2d 1352, 92 USPQ2d 1626,
1628 (Fed. Cir. 2009). Accordingly, it was unnecessary for
Mag Instrument to introduce the sixteen declarations into
Oppositions Nos. 91163534, 91164169 and 91164340
16
evidence during its testimony period because they
automatically form part of the record. We have therefore
considered them in reaching our decision in Opposition No.
91164169.
The Parties
Mag Instrument has been in business for over thirty
years as a manufacturer of machined-aluminum cased
flashlights, as well as related flashlight accessories,
upgrade kits and parts. Mag Instrument has used and
registered several trademarks for these items, including the
mark MAG-LITE. Mag Instrument’s annual sales of flashlights
and accessories in the United States (both in dollar volume
and in units sold) over the last ten years have been very
substantial.
Brinkmann has been operating since 1974 as a consumer
products company featuring outdoor smokers and grills,
cooking products, gardening accessories, and lighting
products. The latter goods include hand-held portable
lighting products such as flashlights, spotlights and
electric lanterns, as well as parts and accessories
therefor. Brinkmann has used and registered several
trademarks for its lighting products.
Both Brinkmann and Mag Instrument agree that their
respective flashlights and lighting products are sold in
some of the same retail stores; accordingly, in this
Oppositions Nos. 91163534, 91164169 and 91164340
17
respect, the two companies are competitors. In addition,
both companies do most of their advertising through co-op
agreements wherein they will reimburse retailers for running
advertisements that feature their goods.
Standing
Each plaintiff in the respective oppositions must prove
its standing as a threshold matter in order to be heard on
its substantive claims. See, for example, Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The Federal Circuit has set forth a
liberal threshold for determining standing, namely, whether
a plaintiff’s belief in damage has a reasonable basis in
fact and reflects a real interest in the case. See Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
See also Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).
In none of the proceedings has standing been contested.
The parties have established that they are competitors; and
each party has made of record registrations for marks that
it relies upon. Therefore, Brinkmann and Mag Instrument
each has standing to bring the opposition proceeding(s) for
which it is a plaintiff. See Ritchie v. Simpson, supra.
See also TBMP §309.03(b) (2d ed. rev. 2004) and the
authorities cited therein.
Oppositions Nos. 91163534, 91164169 and 91164340
18
We now turn to the merits of the consolidated
proceedings. We address them individually, beginning with
the two oppositions involving the ground of priority and
likelihood of confusion.
Opposition No. 91163534 (MAGNUM MAXFIRE)
Again, Mag Instrument opposes Brinkmann’s application
to register the mark MAGNUM MAXFIRE on the Principal
Register for “hand-held portable lights, namely flashlights
and spotlights,” based on, inter alia, an allegation that
Mag Instrument has prior use of the registered mark MAG-NUM
STAR for “flashlight bulbs,”11 and that Brinkmann’s applied-
for mark is confusingly similar to it.
However, we first address Brinkmann’s affirmative
defense based on ownership of a registration for a similar
mark and goods (the “Morehouse” defense).
Brinkmann’s “Morehouse” Defense
The Morehouse defense, an equitable affirmative
defense, is available in situations where an applicant
already owns a registration for the same (or substantially
similar) mark and goods or services, and which registration

11 Although Mag Instrument also alleged a likelihood of confusion
with other registered marks, and a family of “Mag” marks, we
focus our likelihood of confusion analysis in this decision on
the registered mark MAG-NUM STAR which is more similar to
applicant’s mark than any of Mag Instrument’s other pleaded
marks, including the asserted “Mag” family of marks. And, as
discussed further in this decision, there is no real dispute that
the goods covered by all of the marks are related.

Oppositions Nos. 91163534, 91164169 and 91164340
19
has not been challenged. It is based on the theory that an
opposer cannot be injured by the registration sought because
there already exists a similar registration and, therefore,
an additional registration for the same or substantially
similar mark and goods or services can no more injure the
plaintiff than the prior registration. See Morehouse Mfg.
Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715
(CCPA 1969)(no injury from registration of BLUE MAGIC for
pressing oil when applicant owned prior registration for
BLUE MAGIC for hair dressing and “while there are trifling
differences [between the marks] it takes careful inspection
to detect them and the record showed the products sold under
the two marks were ‘one and the same’”).
Brinkmann argues that the Morehouse defense is
applicable here because it is the owner of an incontestable
registration for the mark MAGNUM MAX for “hand-held
electrical spotlights”;12 that this registered mark
is substantially identical to its applied-for mark, MAGNUM
MAXFIRE; that the addition of FIRE in the applied-for mark
“is irrelevant because Mag Instrument’s allegation of damage
relates only to the ‘Magnum’/‘Mag’ portion of Brinkmann’s

12 Registration No. 1567003, issued on November 21, 1989, renewed.
We further note that Brinkmann is the owner of a second,
incontestable registration for the mark MAXFIRE (Registration No.
1919542) for “flashlights.” However, Brinkmann does not rely on
this registration, in tandem with its MAGNUM MAX registration, in
support of its Morehouse defense.
Oppositions Nos. 91163534, 91164169 and 91164340
20
mark”;13 and that while the subject application identifies
“flashlights” and this is not covered by the registration,
this is not relevant because flashlights are “identical to
spotlights as well, since they are both portable, battery-
operated lights, differing in only the shapes of their
housings.”14
We find that the Morehouse defense is not available to
Brinkmann in this opposition because the registered mark,
MAGNUM MAX, is not substantially the same as that being
applied for, MAGNUM MAXFIRE. For purposes of the Morehouse
defense, the two marks must be “substantially identical,”
meaning that they are either literally identical or legally
equivalent. See O-M Bread Inc. v. United States Olympic
Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995)
(OLYMPIC and OLYMPIC KIDS are neither the same nor legally
equivalent). Brinkmann recognizes this, but relies on the
Board’s decision in Place for Vision, Inc. v. Pearle Vision
Ctr., Inc., 218 USPQ 1022 (TTAB 1983). In the Place for
Vision case, it was held that, as a matter of law, there
could be no likelihood of confusion because, despite the
clear differences in the previously registered mark (VISION
CENTER) and the contested mark (PEARLE VISON CENTER and
design), said differences were irrelevant to the harm

13 Brinkmann Brief (filed April 27, 2009), p. 45.

14 Id.
Oppositions Nos. 91163534, 91164169 and 91164340
21
alleged by plaintiff. That is, opposer's claim of damage
related solely to the VISION CENTER portion of the mark, not
the term PEARLE or the design element.
Mag Instrument’s reliance on the Place for Vision
decision is unavailing. Initially, we note that the Federal
Circuit’s O-M Bread decision was decided twelve years after
Place for Vision, and to the extent there appears to be some
inconsistency between the two decisions, we must defer to
the views of our primary reviewing court. In any event, the
Place for Vision case is distinguishable from the facts and
arguments set forth in this case. Here, Mag Instrument does
not rely solely on the common element, MAGNUM, as the only
source of similarity between its MAG-NUM STAR mark and
Brinkmann’s MAGNUM MAXFIRE mark. Mag Instrument also argues
that the addition of the element FIRE in the applied-for
mark contributes to the overall similarity because “FIRE is
quite close to...STAR in meaning...[the] terms connote
burning brightness and illumination.”15 Thus, we cannot
conclude that the differences between Brinkmann’s registered
mark and its applied-for mark are totally irrelevant or that
the marks are effectively equivalents for purposes of the
Morehouse defense.
Even if we were to find the additional element,
MAXFIRE, to be irrelevant to any possible harm alleged by

15 Mag Instrument Brief (filed May 27, 2009), p. 11.
Oppositions Nos. 91163534, 91164169 and 91164340
22
Mag Instrument in this case, we cannot conclude, as
Brinkmann would have us do, that “hand-held electric
spotlights” are substantially the same as or encompass
“flashlights.” The Morehouse defense requires the goods to
be “identical, substantially the same, or so related so as
to represent in law a distinction without a difference.”
Aquion Partners Limited Partnership v. Envirogard Products
Limited, 43 USPQ2d 1371, 1373 (TTAB 1997). See also, Haggar
Co. v. Hugger Corp., 172 USPQ 253 (TTAB 1971) (involving
different items of apparel). To support its contention the
goods are the same, Brinkmann points to the testimony of Mr.
Zecchini, one of Mag Instrument’s principals, who states
that Mag Instrument would find it objectionable “if someone
were to come out with a [Mag Instrument branded]
spotlight.”16 This is certainly not conclusive, and has
little persuasive value, that flashlights and spotlights are
substantially the same goods. Our review of the evidence of
record indicates that while flashlights and hand-held
spotlights are clearly very similar in nature, the two terms
reference two separate categories of hand-held lighting
products.
In view of the above, Brinkmann may not rely on the
Morehouse defense.

16 Brinkmann Brief (filed April 27, 2009), p. 46, citing to
Zecchini Test., p. 157.
Oppositions Nos. 91163534, 91164169 and 91164340
23
We now turn our attention to Mag Instrument’s ground of
priority and likelihood of confusion.
Priority
The pleaded registration for the MAG-NUM STAR mark is
of record, unchallenged, and therefore priority of use is
not an issue in this opposition. King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of Confusion
As to likelihood of confusion, our determination is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Oppositions Nos. 91163534, 91164169 and 91164340
24
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods and services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In comparing Mag Instrument’s MAG-NUM STAR mark to
Brinkmann’s MAGNUM MAXFIRE mark, the obvious similarity is
that both marks begin with the term MAGNUM or MAG-NUM.
Thus, the initial term in both marks is essentially
identical; the hyphen in the Mag Instrument’s mark does not
distinguish them. See Goodyear Tire & Rubber Co. v. Dayco
Corp., 201 USPQ 485, 488 n. 1 (TTAB 1978) (“Fast-Finder”
with hyphen is in legal contemplation substantially
identical to “Fastfinder” without hyphen); see also
Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2042 (TTAB 1989)(PRO-PRINT is similar to
PROPRINT). Because MAGNUM/MAG-NUM is the first portion of
the marks, this plays an important role in determining
whether that term is also the dominant element of the
Oppositions Nos. 91163534, 91164169 and 91164340
25
respective marks. See Palm Bay Imports Inc., 396 F.3d at
1372, 73 USPQ2d at 1692 (2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is
the first word in the mark and the first word to appear on
the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992)(upon encountering the marks, consumers must first
notice the identical lead word); and Presto Products Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and
remembered”).
There is no evidence that the term “magnum” has any
special meaning in the lighting products field or that it is
otherwise a weak term that should be accorded a narrow scope
of protection.
The secondary terms in each mark, STAR and MAXFIRE, are
clearly different in sound and appearance. However, we
agree with Mag Instrument that both terms may impart a
similar suggestive meaning in connection with lighting
products such as flashlights (and bulbs therefor) and
spotlights. That is, the terms “star” and “maxfire” can be
understood, when viewed in connection with lighting
products, as suggesting brilliance or illumination of the
highest magnitude.
Oppositions Nos. 91163534, 91164169 and 91164340
26
In considering the marks as a whole, as we must do, we
find that the dominant element in each mark is the term
MAGNUM (or MAG-NUM). Based primarily on this, we find that
the marks MAG-NUM STAR and MAGNUM MAXFIRE are highly similar
in appearance, sound and connotation, and that the
similarities in the overall commercial impressions
engendered by the marks as a whole greatly outweigh the
differences.
Accordingly, we find this du Pont factor favors Mag
Instrument and a finding of likelihood of confusion.
We turn now to the du Pont factor involving the
relatedness of the parties’ goods and keep in mind that it
is not necessary that the respective goods be identical or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originated
from the same producer. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
Here, there appears to be no dispute that the goods
covered by Mag Instrument’s MAG-NUM STAR registration,
Oppositions Nos. 91163534, 91164169 and 91164340
27
namely, flashlight bulbs, are related to the identified
goods in Brinkmann’s MAGNUM MAXFIRE application, namely,
hand-held portable spotlights and flashlights. By
definition, they are complementary goods, at least with
respect to flashlight bulbs and flashlights.
We further find that the respective goods would be
found in the same channels of trade and encountered by the
same purchasers. There is no dispute and the record
establishes that Mag Instrument’s flashlight bulbs and
Brinkmann’s flashlights and spotlights are capable of being
sold to the same consumers and by the same retail stores.
Accordingly, the du Pont factors involving the
similarity of the goods, trade channels and classes of
purchasers are all factors that weigh in favor of Mag
Instrument and for finding a likelihood of confusion.
The parties have argued about the intent of Brinkmann
in seeking registration of the MAGNUM MAXFIRE mark for
portable hand-held spotlights and flashlights. Based on the
evidence, and on Brinkmann’s existing registrations for the
marks MAGNUM MAX for spotlights and MAXFIRE for flashlights,
we cannot infer any bad faith on the part of Brinkmann in
seeking to register the mark MAGNUM MAXFIRE. In any event,
demonstrating bad faith is certainly not necessary to a
finding of likelihood of confusion. See J & J Snack Foods
Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889,
Oppositions Nos. 91163534, 91164169 and 91164340
28
1891 (Fed. Cir. 1991) (“Whether there is evidence of intent
to trade on the goodwill of another is a factor to be
considered, but the absence of such evidence does not avoid
a ruling of likelihood of confusion.”) Likewise, evidence
on applicant’s behalf that it is seeking to register the
mark in good faith does very little to obviate a finding of
a likelihood of confusion because it is expected that
applicants are acting in good faith. Accordingly, the issue
involving Brinkmann’s intentions in filing the subject
application is not a significant factor in our likelihood of
confusion analysis.
Brinkmann also argues that “[d]espite the ample
opportunities for actual consumer confusion [with Mag
Instrument’s marks], there is no evidence of a single
instance of confusion in the 25 years of use of MAGNUM MAX
by Brinkmann” (emphasis in original) and that “this can only
mean that confusion is not likely for Brinkmann’s use of the
mark MAGNUM MAXFIRE either.”17 Brinkmann relies on evidence
showing that the channels of trade and classes of consumers
have been the same during those years. Mag Instrument does
not contest the lack of evidence of any instances of actual
confusion or the opportunity for such confusion during those
years, but notes that Brinkmann’s prior-registered mark is
different from the applied-for mark and was being used on

17 Brinkmann brief (filed April 27, 2009), p. 43.
Oppositions Nos. 91163534, 91164169 and 91164340
29
spotlights during all those years whereas the subject
application identifies flashlights.
We cannot extrapolate from the lack of evidence of
actual confusion between MAGNUM MAX for spotlights and MAG-
NUM STAR for flashlight bulbs that there is not likely to be
confusion between the latter mark and goods and Brinkmann’s
new mark and goods. In any event, as often stated, proof of
actual confusion is not necessary to establish likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). “[T]he
test under § 1052(d) is likelihood of confusion, not actual
confusion.” Herbko Int'l Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
On balance, the relevant du Pont factors weigh in favor
of a finding of likelihood of confusion. We conclude that
consumers familiar with Mag Instrument’s flashlight bulbs
sold under the mark MAG-NUM STAR, upon encountering
applicant’s mark MAGNUM MAXFIRE on portable hand-held
spotlights and flashlights, would be likely to believe that
the goods originate from or are associated with or sponsored
by the same entity.
In view thereof, we sustain this opposition on the
ground of priority and likelihood of confusion.
* * *
Opposition No. 91164340 (MAG STAR)
Oppositions Nos. 91163534, 91164169 and 91164340
30
In this opposition, Brinkmann opposes Mag Instrument’s
application to register the mark MAG STAR on the Principal
Register for the already identified flashlights as well as
related parts and accessories in classes 9 and 11, on the
ground of likelihood of confusion. Brinkmann essentially
bases the opposition on an allegation that it has prior use
of the registered mark, MAXSTAR, for “electric lanterns,”
and Mag Instrument’s applied-for mark is confusingly similar
to it.
Brinkmann’s standing, as discussed previously, has been
established. We therefore turn to priority and the merits
of the likelihood of confusion claim.
Priority
Brinkmann’s pleaded registration for the MAXSTAR mark
is of record, unchallenged, and therefore priority is not in
issue. King Candy Co., supra.
Likelihood of Confusion
Keeping in mind the already-recited likelihood of
confusion principles, we again make our determination in
this opposition proceeding based on consideration of all
probative facts in evidence that are relevant to the du Pont
factors.
As to the marks at issue, Brinkmann’s MAXSTAR versus
Mag Instrument’s MAG STAR, there are obvious similarities in
appearance and sound. Both marks have two syllables that
Oppositions Nos. 91163534, 91164169 and 91164340
31
begin with the letters “MA” followed by another single
letter and end with “star.” Visually, the only real
difference is the third letter in each mark, “g” and “x”
respectively. See Hercules v. National Starch, 223 USPQ
1244, 1246 (TTAB 1984) (NATROSOL and NATROL found similar
because “the clearly dominant aspect of both marks is that
the first four letters and the final two are the same”).
The presence or absence of a space before STAR does very
little, if anything, to distinguish the two marks. Seaguard
Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB
1984); In re Best Western Family Steak House, Inc., 222 USPQ
827, 827 (TTAB 1984); and Gastown Inc. of Delaware v. Gas
City, Ltd., 187 USPQ 760 (TTAB 1975). In terms of sound,
the two marks are also very similar and, but for a speaker
enunciating the first syllable slowly, it is very likely
that a consumer will confuse the two marks upon hearing them
spoken.
We find that no specific connotation or commercial
impression can be attributed to either mark. In the context
of both parties’ goods, the common element, STAR, may
suggest brilliant light. We agree with applicant, and
Brinkmann recognizes as well, that the MAX portion of
Brinkmann’s mark may be understood as an abbreviation of
“maximum.” Thus, when paired with the term “star,” there is
no identifiable meaning other than that of a strong or large
Oppositions Nos. 91163534, 91164169 and 91164340
32
star; this, in turn, does not really change the suggestion
of brilliant light imparted by the term “star” but merely
enhances it.
Mag Instrument’s argument that “consumers would
understand [the MAG element of its mark] to connote a
product of Mag Instrument” based on Mag Instrument’s
asserted ownership of a family of marks containing the “MAG”
element is not persuasive.18 First, it has long been held
that the family of marks doctrine is unavailable to a
defendant as a defense in an inter partes proceeding. See,
e.g., Baroid Drilling Fluids Inc. v. Sun Drilling Products,
24 USPQ2d 1048 (TTAB 1992). And, to the extent that Mag
Instrument contends that “Mag” will be understood by
consumers as Mag Instrument’s house mark, we cannot conclude
based on the evidence of record that this would be the case.
Moreover, the case referenced by Mag Instrument in support
of its argument that the common STAR element of the
respective marks is weak and the overall marks can be
distinguished based on their other elements, is readily
distinguished on its facts. In that case, the Board held
applicant’s NORTON MCNAUGHTON ESSENTIALS for women's
clothing to not be confusingly similar to ESSENTIALS for
similar goods. Knight Textile Corp. v. Jones Investment
Co., 75 USPQ2d 1313 (TTAB 2005). The Board based its

18 Mag Instrument brief (filed May 27, 2009), p. 32.
Oppositions Nos. 91163534, 91164169 and 91164340
33
decision, in large part, on a finding that the term
“essentials” is a highly suggestive term in connection with
clothing.19 Here, we do not have evidence that STAR is so
highly suggestive or otherwise so weak for the involved
goods that the elements MAG and MAX in the respective marks
would be sufficient to distinguish the overall marks. Also,
in Knight Textile, the added (and dominant element) in
applicant’s mark, NORTON MCNAUGHTON, was completely
different from any element in the opposer’s mark. Here,
even if we were to accept Mag Instrument’s contention that
the “Mag” element would be perceived as a Mag Instrument
house mark, it remains that the two marks, MAG STAR and
MAXSTAR, are very similar in appearance and sound. Any
possible difference in connotation is outweighed by the very
close appearance and sound of the marks.
Overall, we find the marks MAXSTAR and MAG STAR are
very similar and this factor favors Brinkmann.
As to the relatedness of the identified goods, namely,
Mag Instrument’s flashlights and related parts and
accessories versus Brinkmann’s electric lanterns, there does
not appear to be any dispute that these goods are found in
the same trade channels and sold to the same classes of
consumers. The parties attend some of the very same trade

19 In Knight Textile, the Board relied primarily on a dictionary
definition for “essential-s” and “twenty-three extant ESSENTIAL
Oppositions Nos. 91163534, 91164169 and 91164340
34
shows to promote the identified goods; the goods are sold
through the same type of retail stores, if not the very
same, such as large retail home improvement centers or
hardware stores; and the goods are purchased by the same
classes of consumers.20 As to the nature of the identified
goods, the electric lanterns are akin to flashlights
inasmuch as they are both handheld lighting devices and can
be used in a household setting or for professional and
commercial use. Indeed, Brinkmann submitted evidence that
it markets flashlights and electric lanterns in “combo”
packages for retail sale.
While there may be a different utilitarian purpose to
an electric lantern vis-à-vis a flashlight, these goods are
clearly related. The evidence also shows that many of the
same types of accessories and replacement parts, e.g., power
adapters, lamps (bulbs), etc. are marketed in connection
with electric lanterns and flashlights. Ultimately, we find
the goods to be related.
In view of the above, the du Pont factors involving the
similarity of the goods, trade channels and classes of
purchasers are all factors that weigh in favor of Brinkmann
and for finding a likelihood of confusion.

registrations on the register in the clothing field registered to
twenty-one different owners.” Knight Textile, 75 USPQ2d at 1316.
20 Specific examples are not provided due to much of the testimony
and exhibits regarding trade channels and customers having been
designated “confidential.”
Oppositions Nos. 91163534, 91164169 and 91164340
35
Mag Instrument argues that there is no likelihood of
confusion because it has extensively used similar marks
(MAG-NUM STAR and WHITE STAR) on flashlights and related
parts/accessories without any known instances of actual
confusion between those marks and Brinkmann’s use of MAXSTAR
on electric lanterns. Mag Instrument also argues that it
acted in good faith in its adoption of the MAG STAR mark and
in seeking registration thereof. For similar reasons
mentioned in this decision in relation to Opposition No.
91163534, these arguments have very little, if any,
persuasive value in our likelihood of confusion analysis in
this opposition proceeding. Specifically, MAG STAR is
different from the marks that Mag Instrument relies upon in
asserting no previous instances of actual confusion. And,
as to Mag Instrument’s intentions, it is expected that
applicants are acting in good faith.
In sum, the relevant du Pont factors weigh in favor of
a finding of likelihood of confusion. We conclude that
consumers familiar with Brinkmann’s electric lanterns sold
under the registered mark MAXSTAR, upon encountering
applicant’s mark MAG STAR on the identified electric
flashlights, as well as parts and accessories therefor, are
likely to believe that the goods originate from or are
associated with or sponsored by the same entity.
Oppositions Nos. 91163534, 91164169 and 91164340
36
In view thereof, we sustain this opposition on the
ground of priority and likelihood of confusion.
* * *
Opposition No. 91164169 (the ‘dual band’ mark)
As already noted, this opposition involves Mag
Instrument’s proposed dual band design mark, registration of
which Brinkmann has opposed on the grounds that the mark is
functional and, in the event the mark is found not to be
functional, that it has not acquired distinctiveness.
The “Dual Band” Mark
The description of the mark at issue and its depiction
(as shown on the drawing page of the application) are:

The mark consists of two bands that encircle the barrel
of the flashlight. The outline of the flashlight is
not part of the mark but is merely intended to show the
position of the mark.

In their briefs, however, the parties argue to some
extent as to what constitutes the applied-for mark.
Essentially, Mag Instrument argues that its mark must be
construed as consisting of two bands that are visibly
contrasting from the rest of the flashlight; Brinkmann, on
the other hand, argues that the mark simply consists of any
two bands without any further limitations because whether
Oppositions Nos. 91163534, 91164169 and 91164340
37
(or how) the bands contrast with the rest of the flashlight
is not mentioned in the application. While we do not
believe this is necessarily an outcome determinative issue,
it does warrant some explanation.
Trademark Rule 2.35, 37 CFR 2.35, permits an applicant
to submit a description of a mark that must be acceptable to
the Examining Attorney. Rule 2.35 also permits the
Examining Attorney to require a description of the mark and,
to this extent, Sections 808.02 and 808.03 of the Trademark
Manual of Examining Procedure state the following:
If a description of a mark is placed in the record, its
form must be satisfactory to the examining attorney.
To be satisfactory, the description should state
accurately what the mark comprises, and should not
create a misleading impression by either positive
statement or omission of facts.
…
The examining attorney should require a description of
the mark where the mark is three-dimensional, where the
mark is a configuration of the goods or packaging,
where the drawing includes dotted lines to indicate a
portion of the product or packaging which is not part
of the mark, and in similar cases. … If applicable, the
description statement must clearly indicate the portion
of the product or container that the mark comprises and
what the dotted lines on the drawing represent.

As regards the subject application, the examining
attorney accepted applicant’s proffered description of the
mark as well as the drawing depicting the mark. We
therefore find ourselves in agreement with Brinkmann that
Mag Instrument’s applied-for mark is as it is depicted on
the drawing page and described in the subject application,
that is, “two bands that encircle the barrel of the
Oppositions Nos. 91163534, 91164169 and 91164340
38
flashlight.” The drawing only shows the placement or
location of the two bands. There is no indication in the
application that the two bands contrast with the barrel of
the flashlight.
Mag Instrument contends that “something must be
perceptible to be a trademark” and cites to Professor
McCarthy’s statement that “anything that can be detected by
one of the human senses should be eligible for protection as
a trademark if it is used to distinguish a source of goods
or services.” Brief, p. 2 (citation omitted). We find no
fault with the premise that a mark must be perceived by
consumers in order for it to act as a trademark.
Nevertheless, the application is devoid of any indication as
to how the two bands will contrast, e.g., lining for colors
in the drawing. Nor does the description even state that
they are contrasting, either with each other or the
flashlight body. While it stands to reason that the two
bands are more likely to be noticed by someone viewing the
goods if they appear in a color that sharply contrasts with
the body of the flashlight, the possibility remains that the
two bands may be the same and may color-match the body of
the rest of the flashlight, differing perhaps only in
texture, and may thus require more subtle perception.
Functionality
Oppositions Nos. 91163534, 91164169 and 91164340
39
Brinkmann argues that Mag Instrument’s proposed mark is
functional because the mark represents a design that is
“necessary to charge the flashlight and the reason that the
charging feature works.” Brief, p. 10. Furthermore, “[t]he
circumferential design of [the mark] is functionally
advantageous because the two charging bands provide a
continuous surface area encircling the barrel of the
flashlight.” Id. Brinkmann concludes that “the very
essence of the Mag Charger flashlight’s recharging
capability is through the Dual Band Design, that is, the
charging bands, and the circumferential nature of the
charging bands only adds to the functional advantage of the
Mag Charger flashlight.” Id. at 12-13.
Mag Instrument, on the other hand, contends that “the
application’s description must be read to require, by
necessary implication, that the two bands be in visible
contrast to the flashlight barrel they encircle” and that
“there is no functional reason why barrel-encircling bands
on a flashlight must appear as two visibly separate and
contrasting bands.” Brief, p. 3 (emphasis in original).
According to Mag Instrument, there is “no reason why the Mag
Charger flashlight’s two silvery bands must be silvery in
color, or why they must be of any color that contrasts with
the barrel, in order to serve their function, which is to
act as the electrical contacts.” Brief, p. 5. Mag
Oppositions Nos. 91163534, 91164169 and 91164340
40
Instrument further argues that Brinkmann’s functionality
opposition is limited to only a subset of Mag Instrument’s
flashlights, namely, those with internally-rechargeable
batteries.21
Mag Instrument’s only asserted use of the mark has been
on its rechargeable flashlights sold under the mark, MAG
CHARGER. The MAG CHARGER flashlight, which is in the record
as an exhibit, indeed possesses two clearly visible bands
that are silver-metallic in appearance, located in the same
position as that represented in the application’s drawing of
the mark. The two bands also clearly contrast with the
remainder of the flashlight, which is nearly all black.
Upon close inspection of the Mag Charger flashlight, and
based on the testimony of the witnesses who have
authenticated the exhibit, it is evident that the two
silver, metallic bands are the result of three separate
annular rings in conjunction with what has been referred to
as a “pseudo band” (an annular or ring-like area of the
barrel of the flashlight that lacks the black anodized
coating). Specifically, there is a silver-metallic colored
ring or band that acts as the positive electrode contact for
the recharging system. On either side of this positive

21 The identification of goods simply recites “flashlights” and
thus must be read to include rechargeable flashlights. And, in
general, if a proposed mark is functional for any goods
encompassed by the identification, the proposed mark is
considered functional and must be refused accordingly.
Oppositions Nos. 91163534, 91164169 and 91164340
41
electrode ring are two thinner black insulator rings. On
the other side of one of the insulator rings is the “pseudo
band,” which is merely a portion of the barrel of the
flashlight that corresponds in size to the positive
electrode ring. This pseudo band, upon casual glance,
appears identical to the positive electrode ring because it
lacks the black anodized coating applied to the remainder of
the flashlight barrel. The second “pseudo band” also acts
as the negative electrode that completes the charging
circuit when the flashlight is placed in a charging cradle.
Section 2(e)(5) of the Trademark Act precludes
registration of “any matter that, as a whole, is
functional.” The Supreme Court has clarified that a product
feature is functional “if it is essential to the use or
purpose of the article or if it affects the cost or quality
of the article.” Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).
The Supreme Court has called this “Inwood formulation” the
“traditional rule” of functionality. TrafFix Devices Inc.
v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001,
1006 (2001).
“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.”
Oppositions Nos. 91163534, 91164169 and 91164340
42
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 34
USPQ2d 1161, 1163 (1995); see also In re Morton-Norwich
Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 12 (CCPA 1982)
(“This requirement of ‘nonfunctionality’...has as its
genesis the judicial theory that there exists a fundamental
right to compete through imitation of a competitor's
product, which right can only be temporarily denied by the
patent or copyright laws.”).
In considering the issue of functionality, we consider
the following (known as the Morton-Norwich factors): (1)
the existence of a utility patent disclosing the utilitarian
advantages of the design; (2) advertising materials in which
the originator of the design touts the design's utilitarian
advantages; (3) the availability to competitors of
functionally equivalent designs; and (4) facts indicating
that the design results in a comparatively simple or cheap
method of manufacturing the product. Valu Engineering Inc.
v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed.
Cir. 2002), citing In re Morton-Norwich, 671 F.2d at 1333,
213 USPQ at 15-16.
As to the first Morton-Norwich factor involving the
existence of any utility patent disclosing the utilitarian
advantages of the design, the Supreme Court has addressed
what evidentiary value this is to be accorded in the
analysis:
Oppositions Nos. 91163534, 91164169 and 91164340
43
A prior patent, we conclude, has vital significance in
resolving the trade dress claim. A utility patent is
strong evidence that the features claimed therein are
functional... Where the expired patent claimed the
features in question, one who seeks to establish trade
dress protection must carry the heavy burden of showing
that the feature is not functional, for instance by
showing that it is merely an ornamental, incidental, or
arbitrary aspect of the device.

TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d
at 1005.22
We are not limited to review of the claims in a patent
in determining functionality, but we may also consider the
disclosures in the patent. See In re Bose, 772 F.2d 866,
227 USPQ 1 (Fed. Cir. 1985); and In re Howard Leight
Industries LLC, 80 USPQ2d 1507, 1511 (TTAB 2006).
Of importance in this case is expired U.S. Patent No.
4,388,673 (“patent ‘673”) for a “Variable Light Beam

22 In their briefs, the parties argue the relevance (or lack
thereof) of the other Morton-Norwich factors in light of the
TrafFix decision. In this regard, the Federal Circuit has stated
“[w]e do not understand the Supreme Court’s decision in TrafFix
to have altered the Morton-Norwich analysis.” Valu Engineering,
61 USPQ2d at 1427. And, as to the role of alternative designs:
Nothing in TrafFix suggests that consideration of
alternative designs is not properly a part of the overall
mix, and we do not read the Court's observations in TrafFix
as rendering the availability of alternative designs
irrelevant. Rather, we conclude that the Court merely noted
that once a product feature is found functional based on
other considerations, there is no need to consider the
availability of alternative designs because the feature
cannot be given trade dress protection merely because there
are alternative designs available. But that does not mean
that the availability of alternative designs cannot be a
legitimate source of evidence to determine whether a feature
is functional in the first place.
Valu Engineering, 61 USPQ2d at 1428.
Oppositions Nos. 91163534, 91164169 and 91164340
44
Flashlight and Recharging Unit.”23 This utility patent
issued to Mag Instrument’s principal, Anthony Maglica, and
subsequently was assigned to Mag Instrument. The flashlight
is described in the patent Abstract as “includ[ing]
structural means for recharging its battery; and a battery
charger/flashlight holder is designed to retain the
flashlight and charge the batteries when the flashlight is
stored therein.”
Two drawings (Figures 1 and 3) from patent ‘673 show
the flashlight and charger as follows:

23 Introduced as Exhibit B-46, U.S. Patent No. 4,388,673 issued on
June 14, 1983.
Oppositions Nos. 91163534, 91164169 and 91164340
45

Figure 1 is described as depicting “a side elevation
view of the exterior of a flashlight constructed in
accordance with the teachings of the present invention.”
Figure 3 is described as depicting “a perspective view of a
flashlight holder/battery charger constructed in accordance
with the teachings of the present invention, with the
forward portion of the flashlight of FIG. 1 shown in phantom
lines.”
It is readily apparent from the two drawings in the
patent that the two bands in applicant’s proposed mark are
positioned on a flashlight (pursuant to that shown in the
application’s drawing page) in the same location as parts
98, 100, 102 and 104 in patent ‘673. In the patent, this
section of the flashlight is described as comprising:
Oppositions Nos. 91163534, 91164169 and 91164340
46
A pair of mating, spaced annular insulating rings 98,
100 are disposed between the rear end of the switch
housing 40 and an annular flange 102 on the tubular
member 96. The annular insulating rings 98 and 100
retain an annular contact member 104. The annular
flange 102 and annular contact member 104 are adapted
to be placed in electrical contact with contact members
of a battery charger.

One of the stated objectives of the invention is “to
provide a battery charger/flashlight holder which will
accomplish the dual function of storing the flashlight
between uses, and maintaining the rechargeable batteries in
a fully charged condition.” In the summary of the
invention, further explanation is provided:
The flashlight of the present invention further
includes an electric circuit having a diode between a
first external contact and an internal conductor, the
internal conductor being electrically connected to
batteries in the flashlight casing when the batteries
are in place. The flashlight electric circuit further
includes a ground connection, including a second
external contact, and an internal ground connection.
The first and second external contacts on the
flashlight are adapted to be in electrical contact with
the contacts of a battery charger in the bracket of a
flashlight holder. The contacts of the charger are
selectively connected to a source of alternating
current. The holder may be mounted, for example, on
the dashboard of an automobile. The battery charger
may be powered, for example, by the alternator of the
automobile.

As to the claims in expired patent ‘673, we note the
following:
1. In combination:
a flashlight and a charger therefor;
said flashlight including a conductive strip member and
a battery compartment; conductive means extending
between said strip and said compartment for
establishing electrical connection between said strip
Oppositions Nos. 91163534, 91164169 and 91164340
47
and battery in said compartment for charging the
battery;
and a charger including a contact member for
electrically contacting the said strip; and means for
connecting said contact member to a source of
electrical energy.

2. The combination according to claim 1, wherein said
strip on said flashlight comprises a circumferential
ring; and wherein said charger includes means for
retaining said flashlight such that said
circumferential strip contacts said contact member.

...

6. A battery charger and holder mechanism including:
a head portion for receiving the head of a flashlight
and a neck portion for receiving a portion of the
flashlight below the head portion of the flashlight;
and electrical means in said holder for supplying
electrical energy to batteries in the flashlight when
the flashlight is in the charger/holder.

Upon review of the ‘673 patent, it is evident that the
features of Mag Instrument’s applied-for mark, i.e., the
positioning of two bands just below the head of the
flashlight, are fundamentally covered by the expired patent.
That is, the features of the applied-for mark, namely two
evenly-sized bands positioned below the head of a
flashlight, are represented in the patent as two
circumferential and annular rings or flanges (identified as
parts “102” and “104”) in the same location on the
flashlight as that shown. In comparing the patent to the
Mag Charger flashlight, we do note slight differences, e.g.,
the patent describes and shows a “flanged” annular ring
(part “102”) and the second ring (part “104”) is an
independent part (as opposed to resulting from the absence
Oppositions Nos. 91163534, 91164169 and 91164340
48
of the black anodized coating that is on the remainder of
the barrel of the flashlight). In spite of the differences,
the fact remains that the two bands represented in
applicant’s mark also represent two annular rings that are
essential to the battery recharging system of the
flashlight. Ultimately, we find that this patent defines
and discloses the utilitarian advantages of the underlying
mark, i.e., the two bands. And, as explained in the
patent’s second claim, the fact that the bands are
circumferential provides a means for the flashlight’s
charging cradle to “retain[] said flashlight such that said
circumferential strip [the band or flanged ring] contacts
said contact member.”
We turn now to the second Morton-Norwich factor
regarding any advertising materials in which the applicant
touts the design's utilitarian advantages. The record in
this case indeed shows that Mag Instrument, in
advertisements and other materials prepared by Mag
Instrument for the MAG CHARGER flashlight, points out
several advantages to the dual bands and their ability to
maintain contact for purposes of recharging based on their
circumferential design. For example, in an advertisement
headlined “Magnificent! The rechargeable flashlight that
beats all,” there is the following:
The heart of the charging system is the charger module
(the 2 silver rings, just below the switch). For the
Oppositions Nos. 91163534, 91164169 and 91164340
49
first time, you can get 360˚ positive contact...no
matter how you place the flashlight in the charger.

(Emphasis in original).24

Another advertisement for the Mag Charger flashlight
extols the advantages of the dual bands with the charging
cradle, “Charging Ring Module – Flashlight can be charged in
any position. No matter how you place the flashlight in the
Charging Cradle...it’s on.”25 And several other
advertisements or product information for the MAG CHARGER
emphasize the advantage of having “360 degree” charging
contact between the two bands and the charging cradle.
Mag Instrument argues that these advertisements are
“irrelevant” because they do not tout the contrasting nature
of the two bands and that Brinkmann “can point to nothing in
any of Mag Instrument’s literature that has ever touted any
utilitarian advantage in having the bands visibly contrast
with the barrel [of the flashlight].” Brief, p. 14. Again,
Mag Instrument is essentially attempting to portray the
applied-for mark as merely two contrasting bands, even
though the application is not so limited. However, as
discussed in the context of patent ‘673 and as demonstrated
by applicant’s own use on the MAG CHARGER flashlight, the
two bands are not mere ornamentation, regardless of whether
they contrast with the barrel of the flashlight. The

24 Exhibit M112.
25 Exhibit B25.
Oppositions Nos. 91163534, 91164169 and 91164340
50
utilitarian function of the two bands is that they act as
positive and negative points of contact for the battery’s
recharging system when the flashlight is placed in the
charging cradle. The “360 degree” contact, created by the
circumferential nature of the bands, permits users to place
the flashlight in the charging cradle without having to
check if the contact points have been met. Thus, contrary
to applicant’s assertions, the Mag Instrument advertisements
and product literature are extremely relevant because they
demonstrate applicant’s efforts in emphasizing or touting
this feature.
As for the Morton Norwich factor of the availability of
alternative designs, Mag Instrument submitted the testimony
of its expert, Martin J. Siegel, in support of its position
that there are other designs that are functionally
equivalent to the two bands. In addition, Messrs. Maglica
and Hawthorn testified to some extent as to possible
alternative rechargeable flashlight designs. Because much
of the testimony of the witnesses has been designated as
“confidential” or involving “trade secret/commercially
sensitive” exhibits, we do not discuss the evidence in
detail, but we do note that there are some general,
discernable deficiencies in the aforementioned testimony and
evidence. First, many of the witnesses’ proposed
alternative designs are not described as definitively
Oppositions Nos. 91163534, 91164169 and 91164340
51
feasible in application. Rather, they are described in a
hypothetical fashion. For example, Mag Instrument has
proposed an alternative design involving (electromagnetic)
inductive charging without any evidence that such technology
has been (or can be) used in a comparable manner on
flashlights. Second, Messrs. Siegel and Hawthorn were not
able to definitively state whether or not third parties were
truly free to use several of the proposed alternative
designs or whether Mag Instrument would consider said
designs as infringing upon its purported rights in the
applied-for mark. Certainly, for us to consider any design
as a possible alternative to the utilitarian function of the
applied-for mark, it must be available for third parties to
use. Third, the majority of the proposed alternative
designs do not appear to be functionally equivalent to that
of the applied-for design; that is, they lack the “360
degree” feature or otherwise do not permit users to easily
and conveniently place the flashlight in a recharging cradle
or mode.
Mag Instrument places great emphasis on a suggestion
that is not an alternative design but would involve the use
of color-matching charging rings on a flashlight in the same
location as the dual band mark. According to Mag
Instrument, this would result in a flashlight having rings
that “would not be in visual contrast with the barrel [of
Oppositions Nos. 91163534, 91164169 and 91164340
52
the flashlight], and would not infringe the [applied-for
mark].” Brief, p. 15. Mag Instrument also contends that
there is “no functional reason why the rings and the barrel
cannot be color-matched” and that doing this will not
degrade the function or “materially increase the cost.” Id.
In spite of Mag Instrument’s assurances that such use would
not “infringe” upon the applied-for mark, we do not agree
that this is necessarily an alternative to the utilitarian
design of applicant’s dual band mark. Rather, the suggested
use is merely a manner in which others can possibly mask or
hide the utilitarian advantage of the dual band mark.
Furthermore, as noted, Mag Instrument’s application is not
limited to bands that contrast and therefore includes bands
that would not. Mag Instrument’s proposed alternative
design may be something of a variation to the present
embodiment in the marketplace but it is not a legally
cognizable alternative to the dual band mark, as specified
in the application.
Finally, as to the last Morton-Norwich factor, we are
unable to conclude whether the dual band design results in
an easier or less expensive manner of production of the
flashlight. Brinkmann has pointed to the following language
in the ‘673 patent:
The broad object of the present invention is to provide
a flashlight wherein the intensity and cross-sectional
area of the light beam may be selectively varied in an
Oppositions Nos. 91163534, 91164169 and 91164340
53
improved manner, and wherein the flashlight structure
is simpler and less expensive to manufacture.

[Emphasis in bold added.]
However, as Mag Instrument pointed out, the “less expensive
to manufacture” language does not relate specifically to the
dual band design.
Mag Instrument, on the other hand, argues that the MAG
CHARGER flashlight contains recharging related components
that are made and assembled “far from the simplest and least
expensive way.” In support, it relies on the testimony of
Gus Hawthorn who states that the flashlights are hand-
assembled and that this is more expensive than an automated
assembly. However, Mr. Hawthorn did not specifically
attribute the reason for hand-assembly to the dual band or
recharging ring design. Moreover, he testified that the
switch assembly, in particular, was hand-assembled and, upon
review of the flashlight, it is evident that assembly of
this part would be the most labor intensive.
Upon review of all evidence and arguments in relation
to the Morton-Norwich factors, we are convinced that Mag
Instrument’s proposed mark is functional. Even if we were
to allow that it may be possible for others to devise
alternative designs that are as equally functional as Mag
Instrument’s dual band recharging system, we do not believe
that this obviates the overall functionality of applicant’s
mark. The facts that a utility patent describes the useful
Oppositions Nos. 91163534, 91164169 and 91164340
54
purpose of the dual bands and that Mag Instrument clearly
touts the advantages of these dual bands simply outweigh the
possibility that there may be similar alternative designs
available to competitors.
In sum, we find that applicant’s proposed mark is
functional and, thus, is not registrable.
Although we have found Mag Instrument’s dual band mark
functional, we note that Brinkmann alternatively argued that
the mark should be refused registration because it has not
acquired distinctiveness. For completeness of our decision,
we discuss the alternative claim below.
Acquired Distinctiveness
When a mark is proposed for registration under Section
2(f) and is approved by the USPTO for publication, as is
what happened with Mag Instrument’s dual band mark, there is
a presumption that the examining attorney found that the
applicant made a prima facie showing of acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1004 (Fed. Cir.
1988). And, when the same mark is challenged in an inter
partes proceeding such as this opposition, it is the
plaintiff that has the initial burden to establish prima
facie that the applicant did not satisfy the acquired
distinctiveness requirement of Section 2(f). Id., 6 USPQ2d
at 1005. The plaintiff may meet this initial burden if it
Oppositions Nos. 91163534, 91164169 and 91164340
55
produces “sufficient evidence or argument whereby, on the
entire record then before the board, the board could
conclude that the applicant has not met its ultimate burden
of showing acquired distinctiveness.” Id. As further
explained in Yamaha, “[I]f the [plaintiff] does present its
prima facie case challenging the sufficiency of
[defendant's] proof of acquired distinctiveness, the
[defendant] may then find it necessary to present additional
evidence and argument to rebut or overcome the [plaintiff's]
showing.” Id. See Duramax Marine LLC v. R.W. Fernstrum &
Co, 80 USPQ2d 1780 (TTAB 2006).
Upon review of all of the evidence and arguments in
this case, we find that Brinkmann has met its initial burden
in challenging the acquired distinctiveness evidence
submitted by Mag Instrument during the prosecution of its
application. Moreover, Mag Instrument has not overcome this
by ultimately establishing that its mark has acquired
distinctiveness.
The evidence submitted by Mag Instrument during the
prosecution of its application was in response to an
ornamentation refusal based on the examining attorney’s
contention that “the public would perceive the proposed mark
merely as a decorative or ornamental feature of the goods
and not as an indicator [of source].” Office Action, July
10, 2003. In its response to this refusal, Mag Instrument
Oppositions Nos. 91163534, 91164169 and 91164340
56
submitted: a declaration from Mr. Zecchini, promotional
material for Mag Instrument’s flashlights and other goods,
and copies of sixteen declarations from Mag Instrument’s
sales representatives as well as employees or owners of
third-party flashlight resellers.
As discussed previously in this decision, Brinkmann has
demonstrated that the two bands constituting applicant’s
mark are not merely ornamental in nature, but they represent
two charging rings used for recharging the flashlight’s
internal battery. That is, in contrast to the examining
attorney’s refusal based on consumers perceiving the bands
as merely two ornamental stripes on the barrel of a
flashlight, Brinkmann has shown that the two bands actually
have a function and, in essence, represent the configuration
of the recharging rings of the flashlight. Based on the
entire record, including Mag Instrument’s own advertisements
of the MAG CHARGER flashlight illustrating the rings and
their function, we find that consumers will view the dual
bands on the flashlights as simply a non-distinctive
placement of the recharging rings which has not acquired
distinctiveness as a mark.
Mag Instrument has not demonstrated by at least a
preponderance of the evidence that the proposed mark has
acquired distinctiveness. Because the proposed mark is
essentially a configuration of the recharging rings element
Oppositions Nos. 91163534, 91164169 and 91164340
57
of the flashlights, Mag Instrument had to show that the
primary significance of the two bands or recharging rings in
the minds of consumers is not the utilitarian parts of the
flashlight but the source of that flashlight, in order to
establish acquired distinctiveness. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279
(TTAB 2000).
Turning to the direct evidence of acquired
distinctiveness, the sixteen declarations submitted by Mag
Instrument during the prosecution of the application to show
that the dual band mark has acquired distinctiveness have
little persuasive value. They are nearly identical in
wording and thus do not appear to have been prepared in the
signer’s own words. There is no evidence to suggest that
this was a random selection of possible declarants. More
importantly, none of the declarants, except possibly one, is
described as an end consumer. They are almost exclusively
either Mag Instrument’s sales representatives or otherwise
associated with a company in the flashlight retail business.
Mag Instrument also relies heavily on circumstantial
evidence to show that the dual band mark has acquired
distinctiveness. Specifically, it points to twenty-seven
years of use of the dual bands on the MAG CHARGER
flashlight, as well as substantial sales and advertising for
Oppositions Nos. 91163534, 91164169 and 91164340
58
the MAG CHARGER flashlights. With respect to Mag
Instrument’s length of use, it is true that evidence of
substantially exclusive use for a number of years may be
considered as evidence of acquired distinctiveness.
However, the weight to be accorded this kind of evidence
depends on the facts and circumstances of the particular
case. See Yamaha, 840 F.2d at 1576, 6 USPQ2d at 1004.
Here, we find Mag Instrument’s years of use to be simply
insufficient, in itself or in conjunction with the other
evidence of record, to show that the dual bands have
acquired distinctiveness.
As to Mag Instrument’s evidence regarding sales and
advertising of the MAG CHARGER flashlight, the exact numbers
remain confidential, but we acknowledge that the sales
figures (including revenue and units sold) as well as
advertisement expenditures, have been substantial and are
impressive. Nevertheless, as often stated, a successful
advertising campaign is not in itself necessarily enough to
prove secondary meaning. 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,
Oppositions Nos. 91163534, 91164169 and 91164340
59
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 as denoting origin). Here,
the sales and advertising figures fail to reflect public
reaction to the dual bands as a source indicator for
applicant’s flashlights.
Moreover, and perhaps most damaging to Mag Instrument’s
attempt to demonstrate acquired distinctiveness of the
proposed mark, is what is noticeably absent from the record.
There is no evidence that Mag Instrument ever placed any
“look for” advertisements or otherwise made promotional
efforts to create consumer association between the dual
bands, or recharging rings, with the source of the
flashlights.26 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

26 Mag Instrument’s claim that the dual band design “is a
trademark of Mag Instrument, Inc.” in an instruction manual for
the MAG CHARGER flashlight (Exh. B-48) hardly constitutes “look
for” advertising. Presumably, consumers would not even see this
small print claim unless they have already purchased the
flashlight.

Oppositions Nos. 91163534, 91164169 and 91164340
60
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.”);
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). Clearly, the recharging rings were
highlighted in several of Mag Instrument’s advertisements;
however, as previously discussed, it was their utilitarian
purpose or advantage that they give the MAG CHARGER
flashlight that was being touted. We cannot conclude that
such advertisements amount to an attempt to have consumers
view the proposed mark as indicating the source of the
goods.
Oppositions Nos. 91163534, 91164169 and 91164340
61
Accordingly, based upon consideration of all the
evidence in the record, we find that Mag Instrument has
failed to establish that the dual band mark has acquired
distinctiveness.
In view of the above, this opposition is sustained.
Decisions: Oppositions Nos. 91163534 and 91164340
involving claims of likelihood of confusion each are
sustained.
Opposition No. 91164169 is sustained on the ground that
Mag Instrument’s proposed mark is functional, and is
therefore not entitled to registration under Section
2(e)(5). In the event that Mag Instrument’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).