Michael Khadivar

Trademark Trial and Appeal Board

May 3, 1999

No. 74552579 (T.T.A.B. May. 3, 1999)

Paper No. 23
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 3, 1999
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Michael Khadivar
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Serial No. 74/552,579
_______
Robert S. Beiser of Michael, Best & Friedrich, LLP for
Michael Khadivar
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney)
_______
Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Michael Khadivar has appealed from the final refusal
of the Trademark Examining Attorney to register the
asserted mark shown below:
Ser. No. 74/552579
2
for “compact disc players.”1 The application includes the
following description of the mark: “The mark consists of a
three-dimensional configuration of a compact disc player.”
By Examiner’s Amendment (dated October 20, 1995) the
following statement was added to the application: “The
matter shown in dotted lines on the drawing represents the
position of control mechanisms and is not part of the
mark.” The application was originally based on a bona fide
intention to use the mark in commerce. The asserted mark
was published for opposition on August 8, 1995. A notice
of allowance issued on January 16, 1996, and applicant
filed a statement of use with claimed dates of first use
and first use in commerce of October 1995.2
The Examining Attorney finally refused registration on
the basis that the applied-for mark is de jure functional,
and that it is not inherently distinctive under Sections 1,
2, and 45 of the Trademark Act, 15 USC §§1051, 1052 and
1127. In an Office action dated November 26, 1997, the
Examining Attorney withdrew the refusal to register on the

1 Application Serial No. 74/552,579, filed July 13, 1994.
2 The Board notes that there are some differences between the
applied-for mark and the configuration as shown in the specimens
of record. Inasmuch as the Examining Attorney accepted
applicant’s statement of use, we presume that the Examining
Attorney believes the drawing is a “substantially exact
representation of the mark” as actually used as evidenced by the
specimens in accordance with Trademark Rule 2.51(a)(2).
Ser. No. 74/552579
3
basis of de jure functionality, but otherwise denied
applicant’s request for reconsideration.
Briefs have been filed3, but an oral hearing was not
requested by applicant.
The only issue before the Board is whether the
applied-for mark is inherently distinctive; that is, does
it function as a trademark.4
Applicant describes his applied-for mark as follows:
Applicant’s design consists of a
vertically oriented, two panel arrangement, a
number of control knobs located on either side
of the upper windows (sic-window?), and a door
positioned directly below the upper windows
(sic-window?). (brief, p. 11)
The Examining Attorney’s position is essentially that

3 On February 11, 1998 applicant filed his reply brief, with
exhibits i - xi attached thereto. In a Board order dated June
11, 1998, applicant was advised that any additional evidence
attached to the reply brief would not be considered. See
Trademark Rule 2.142(d). Accordingly, those exhibits not
previously of record were not considered in our decision.
4 The Examining Attorney’s final refusal was dated April 4, 1997.
On October 6, 1997, applicant filed an appeal and a request for
reconsideration; and on October 30, 1997 the Board suspended the
appeal and remanded the application to the Examining Attorney for
action on the request for reconsideration. The Examining
Attorney denied the request for reconsideration on November 26,
1997. On December 5, 1997 applicant filed his brief on appeal.
On December 29, 1997 applicant filed a response to the Examining
Attorney’s November 26, 1997 action, even though the Office
action did not invite nor require a response. The December 29,
1997 paper included this statement: “Applicant’s mark has
acquired secondary meaning” and applicant offered information
about secondary meaning. (pp. 5-6). This assertion of acquired
distinctiveness is untimely, and will not be considered by the
Board. See Trademark Rule 2.142(d), and TBMP §1215.
Ser. No. 74/552579
4
the asserted mark for a compact disc player is not unique
and has nothing distinctive about it; that all such
products have windows, display panels, doors and buttons
located in various places on the players; and that
purchasers will not perceive the configuration as a
trademark or source indicator.
The Examining Attorney has made of record photocopies
of several advertisements showing various compact disc
players. While none shows exactly the same configuration
as applicant’s applied-for mark, they nonetheless show
designs all of which include buttons, knobs, doors, windows
and panels; further, a few of the designs show a more
vertical than horizontal configuration.
Applicant, on the other hand, argues that it is the
first and only entity in the industry offering this
particular design; that the vertical orientation of the
design, and particularly the narrow depth of the housing
compared to the size of the vertical panel (which makes it
suitable for wall mounting), is arbitrary, as is the
overall design configuration, and the specific components
which create the overall design; and that the configuration
Ser. No. 74/552579
5
is a nonfunctional shape which distinguishes applicant’s
product from those of other manufacturers.5
This Board previously had occasion to consider the
question of inherent distinctiveness in relationship to a
configuration in the case of In re E S Robbins Corp., 30
USPQ2d 1540 (TTAB 1992), involving the configuration of a
floor mat for “plastic mats for use under chairs.” The
applicant argued that its applied-for mark was “unique”
because there was no evidence that others used the
identical design configuration for chair mats. However,
there was evidence showing uses of fairly similar chair
mats. As stated by the Board in Robbins, supra, at 1542-
1543:
Thus, while applicant’s applied for
design may be unique in the sense that it
is a “one and only,” the record
demonstrates that said design is not
unique in the sense it has an “original,
distinctive, and peculiar appearance.” In
re McIlhenny Co., 278 F.2d 953, 126 USPQ
138, 140 (CCPA 1960) quoting with approval
from Ex Parte Haig & Haig, Ltd., 118 USPQ
229, 230 (Asst. Comm. 1958). In other
words, the record demonstrates that
applicant’s applied for design is not
inherently distinctive or unique in the
sense that the term “distinct” is defined
as “clearly perceived or marked off” or
“unmistakable,” or in the sense that the
term “unique” is defined as “highly

5 Applicant submitted a photocopy of his application for a design
patent; however, although applicant stated that he received said
design patent, a copy of the patent as issued was never
submitted.
Ser. No. 74/552579
6
unusual, extraordinary.” Webster’s New
World Dictionary of the American Language
(2d ed. 1970).
If the concept of inherent
distinctiveness was defined as meaning
simply “one and only,” then one could
obtain a registration for a design which,
while “unique” in this sense, differed
only slightly from the designs of other
competing products and /or containers.
There would be no need that the applied
for design have an “original, distinctive
and peculiar appearance” as required by
the Haig & Haig (“Pinch bottle”) and
McIlhenny (“Tabasco bottle”) cases.
Thus, the essential criterion of an inherently
distinctive mark is that it is immediately recognizable by
consumers as a source indicator.
In the present case, although applicant may be the
only party in his industry offering this particular
configuration, the design is not unique or unusual in the
sense described in the Robbins case. Instead, the
configuration applied for by applicant consists of very
ordinary components that go into any compact disc player
from any manufacturer. How these components are arranged
by applicant remains ordinary, and is not unusual.
Applicant’s design is nothing more than an arrangement of
all the components involved in a compact disc player put
together in a rather ordinary manner. The record before us
Ser. No. 74/552579
7
does not demonstrate that applicant’s applied-for mark is
inherently distinctive.6
Applicant’s claim that the narrow depth of the housing
is an unusual and discernible design feature is not
persuasive. As applicant himself has pointed out, and as
is shown and described in applicant’s specimens of record,
the purpose of the narrow depth of the unit vis-a-vis the
length is so that the unit can be mounted on a wall, rather
than free-standing.7 The purchasing public would readily
perceive this configuration as making the product suitable
for wall mounting.8
Accordingly, we find that applicant’s configuration is
not immediately recognizable as a distinctive way of
identifying the source of applicant’s goods. Rather,

6 We point out that in cases involving the issue of inherent
distinctiveness of trade dress, background designs, and color,
the Board and many courts have utilized the test set forth in the
case of Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
1342, 196 USPQ 289 (CCPA 1977). See also, Tone Brothers Inc. v.
Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321 (Fed. Cir. 1994); In re
Sunburst, Inc., __ USPQ2d __, Serial No. 74/300843, (TTAB March
31, 1999); In re File, 48 USPQ2d 1363 (TTAB 1998); In re J.
Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998); and In re
Hudson News, 39 USPQ2d 1915 (TTAB 1996), aff’d in decision
without published opinion, 1997 U.S. App. LEXIS 15556 (Fed. Cir.
June 12, 1997).
7 We note that applicant stated in his reply brief (p. 4) that
“No other design is vertically oriented and suitable for
attractive wall mounting.”
8 Obviously, applicant cannot argue that the depth/length ratio
of the configuration is superior for wall mounting the compact
disc player since that would be an admission that that portion of
the claimed configuration was de jure functional.
Ser. No. 74/552579
8
purchasers will look upon applicant’s design as the
configuration of applicant’s product, and not as an
indicator of the source of the goods.
Decision: The refusal to register is affirmed.
E. J. Seeherman
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board