MCP Industries, Inc.

Trademark Trial and Appeal Board

Aug 22, 2001

No. 74731440 (T.T.A.B. Aug. 22, 2001)

8/22/01 Paper No.
13

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MCP Industries, Inc.
________

Serial No. 74/731,440
_______

John J. Connors of Connors & Associates for MCP Industries,
Inc.

Teresa Rupp, Trademark Senior Attorney, Law Office 106 (Mary
Sparrow, Managing Attorney).
_______

Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

MCP Industries, Inc. has filed an application to
register the matter shown below, which is described as a "mark
[which] consists of a rectangular shaped reddish orange
label," as a trademark for "non-metallic pipe fittings,
namely, couplings, bushings, and adapters".1

1 Ser. No. 74/731,440, filed on September 20, 1995, which alleges
dates of first use anywhere and in commerce of January 1968; states
that the drawing of the mark is lined for the color orange; and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 74/731,440
2

Registration has been finally refused under Sections
1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and
1127, on the ground that, as shown by the manner of use
thereof on the labels which were submitted as specimens of
use, the matter which applicant seeks to register does not
function as a trademark. Such matter appears on the specimens
of use, which consist of three identical labels, as
illustrated below.

Specifically, while applicant seeks registration pursuant to
the provisions of Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), the Senior Attorney contends, as stated in her final
refusal, that "[b]ecause the record lacks both evidence that
the applicant promotes the color reddish orange used on a
rectangular label as a mark and evidence of recognition of the
color by those in the industry, the applicant has failed to

disclaims the exclusive right to use the rectangular shape of the
label apart from the mark as shown.

Ser. No. 74/731,440
3
meet its burden of establishing acquired distinctiveness under
Section 2(f)."
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Applicant, in support of its position that the
matter sought to be registered has acquired distinctiveness
and hence functions as a mark, has made of record the
declaration of David M. Vansell, who avers that he is "the
vice-president of sales of the Mission Rubber Company, a
division of the Applicant, MCP Industries, Inc." With respect
to applicant's "Orange-Red Color Miscellaneous Design," as its
asserted mark is identified in the caption of the declaration
signed on September 20, 1996, Mr. Vansell declares that he is
"familiar with the usage of the above-identified mark as a
label"; that "the above-identified reddish orange color mark
has been in use in commerce since before 1968 in connection
with specialty transition series pipe couplings that connect
two different pipe materials together"; that such mark "has
become distinctive due to its long term use and the
promotional efforts by the Applicant"; and that "Applicant's
customers, mainly plumbers, recognize the mark as indicating
the pipe couplings originate with the Applicant and comply
with building codes."
Ser. No. 74/731,440
4
Mr. Vansell further declares that, "since adopting
the mark, over $250,000 has been spent by the Applicant in
promoting the mark, including informational seminars to
indoctrinate plumbers and plumbing inspectors that this
reddish orange label indicates that the pipe coupling is a
product made by the Applicant"; that "due to this promotional
effort, major national building code agencies recognize that
the reddish orange label stands for the Applicant's pipe
couplings and that Applicant's products as indicated by this
label are acceptable and meet building codes"; that "Applicant
only uses the reddish orange label in connection with the
goods identified in the ... application"; that "there are no
competitors who use this reddish orange label nor is this
color recognized in the industry in any particular fashion
except as a trademark of the Applicant"; and that "Applicant
distributes the pipe coupling bearing the mark (1) to plumbers
through wholesale plumbing distributors, and (2) to the
consumers through mass merchandisers, who do not remove
Applicant's distinctive label mark so that building inspectors
will recognize that the products meet building codes."
Applicant maintains that, "[i]n view of the above
facts, Applicant is entitled to registration on the Principal
Register of the orange red colored rectangular label." We
agree with the Senior Attorney, however, that applicant's
Ser. No. 74/731,440
5
evidence is insufficient to establish acquired distinctiveness
and that its "rectangular shaped reddish orange colored label
is used merely as a background design on the labels and as
such does not function as a trademark for the goods."
As the Senior Attorney persuasively observes in her
brief, the issue of registrability in this appeal is analogous
to that presented in two other cases decided by this Board.
Specifically, as she correctly points out:
The ... Board in In re Benetton Group
S.p.A[.], 48 USPQ2d 1214 (TTAB 1998) was
faced with determining the registrability
of a mark similar to the mark herein. In
Benetton, the Board found that a green
label, used as background for ... various
words, did not function as a trademark.
The Board stated, "where, as here, an
applicant seeks to register a background
design that is used in connection with a
word and/or design mark, that background
design may be registered as a trademark
only if it creates a commercial impression
separate and apart from the word and/or
design mark in conjunction with which it is
used". 48 USPQ2d at 1215.

Likewise, in In re Anton/Bauer Inc., 7
USPQ2d 1380 (TTAB 1988), the Board refused
to register a [parallelogram used as a]
background design [for presentation of the
word mark "ANTON/BAUER"] because the
applicant did not show that the design
alone was a designation of source rather
than a mere background for the applicant's
mark. The Board found that there was no
evidence of promotion of the background
design in a way that would set it apart
from the word mark for which it served as a
background. 7 USPQ2d at 1383.

Ser. No. 74/731,440
6
Here, as the Senior Attorney accurately notes, the
declaration from Mr. Vansell contains "no evidence that shows
how the applicant uses, promotes or advertises the rectangular
reddish orange label apart from the wording on the label" and
"there are no declarations from the applicant's customers that
would support the ... statements that the matter presented for
registration identifies goods coming solely from the
applicant." The sole basis of applicant's claim of acquired
distinctiveness, therefore, is the conclusory statements in
Mr. Vansell's declaration,2 but absent supporting examples of
how applicant advertises and promotes its design as a
trademark for its goods, it is simply not possible to assess
the accuracy of such statements. In view thereof, and since
there is nothing to show that a layman like Mr. Vansell is
even acquainted with trademark law in general and is

2 Although we note, as does applicant, that it has also made of
record a statement by it and a third-party, Homer TLC, Inc., which
was submitted in order to avoid a possible refusal under Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), in the event that the
latter's earlier filed application "for registration of the 'Color
Orange'" for a variety of goods and services matured into a
registration, such statement does not constitute evidence of acquired
distinctiveness. Instead, such statement merely provides that, after
having inspected a copy of the "'Red-Orange Color Rectangular Label'
sought to be registered" by applicant, "Homer TLC, Inc. does not
believe that there exists any actual or likelihood of confusion
between its 'Color Orange' and the 'Red-Orange Color Rectangular
Label' because, among other things, of the differences in color and
the differences in the type of goods and services, and because MCP
Industries' mark is directed to a rectangular label" and that the
parties, "in consideration for this Statement, mutually agree that
they will not file an opposition" to their respective applications
nor "file a petition to cancel any registration issuing" therefrom.
Ser. No. 74/731,440
7
knowledgeable as to the legal concept of what constitutes
acquired distinctiveness in particular, we concur with the
Senior Attorney that his declaration "is not persuasive
because it does not prove that the purchasers perceive the
reddish orange label as a mark."
Specifically, while applicant, as further pointed
out by the Senior Attorney, "has also attested to promotional
expenditures in excess of $250,000, which were used to
indoctrinate plumbers and plumbing inspectors that the reddish
orange label indicates that the pipe coupling is a product
made by applicant," the record does not contain "any samples
of ... promotional materials which would show how the
purchasers are 'indoctrinated'." We also observe that, on
average, such expenditures have amounted to less than $9,000
annually over a 36-year period, which suggests that, even if
applicant does in fact promote its reddish orange rectangular
label as a mark for its goods, as asserted by Mr. Vansell, its
efforts have been exceedingly modest and not likely to have
had the claimed effect of establishing distinctiveness for the
matter which it seeks to register. A rectangular label is, of
course, a commonly used geometric design for the display of
whatever matter, including a mark or wording, happens to
appear thereon and a bright, reddish orange color would

Ser. No. 74/731,440
8
obviously serve to call attention to such matter, but it does
not follow therefrom that a rectangular reddish orange label
functions as a mark for the goods to which it is applied,
especially where, as shown by applicant's specimens, the sole
manner of use thereof is as a background for the display of
the marks and informational wording thereon.
Accordingly, while we additionally note that no
competitor of applicant uses a reddish orange rectangular
label in connection with non-metallic pipe couplings or other
fittings, we agree with the Senior Attorney that, "[b]ecause
of the nature of the proposed mark, applicant's exclusive use,
even exclusive use since 1968, is insufficient to support a
claim of acquired distinctiveness." Applicant, as the Senior
Attorney tellingly observes, "has failed to supply any actual
evidence that the matter presented [for registration] is
perceived as a mark" by the relevant purchasing public.
Nothing in this record demonstrates that customers for
applicant's goods have come to regard its rectangular reddish
orange label as an indicator of source.
Decision: The refusal to register is affirmed.