Michael Khadivar

Trademark Trial and Appeal Board

May 3, 1999

No. 74551771 (T.T.A.B. May. 3, 1999)

Paper No. 16
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
________
In re Michael Khadivar
________
Serial No. 74/551,771
_______
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. 74/551771
2
for an “AM/FM audio cassette player.”1 The application
includes the following description of the mark: “The mark
consists of a three-dimensional configuration of an AM/FM
cassette player.” 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 22,
1995. A notice of allowance issued on March 12, 1996, and
applicant filed a statement of use with claimed dates of
first use and first use in commerce of July 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 her brief on appeal, however, the Examining
Attorney withdrew the refusal to register based on de jure
functionality.
Briefs have been filed, but an oral hearing was not
requested by applicant.

1 Application Serial No. 74/551,771, filed July 21, 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. 74/551771
3
The only issue before the Board is whether the
applied-for mark is inherently distinctive; that is, does
it function as a trademark.3
The Examining Attorney describes the applied-for mark
as follows:
The applicant seeks registration for a
three-dimensional configuration of an AM/FM
cassette player. Applicant is not claiming the
position of the buttons and knobs on the
player. Applicant is claiming the vertical
configuration of the player, the placement of
the doors and panels and the shallow housing.
(brief, p. 2)
The Examining Attorney’s position is essentially that
the asserted mark for an AM/FM audio cassette 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 AM/FM audio
cassette players. While none shows exactly the same

3 We note that both applicant and the Examining Attorney in their
arguments made statements which essentially relate to the
question of acquired distinctiveness. Those arguments would
apply only to a claim of distinctiveness under Section 2(f) of
the Trademark Act. Here applicant is only claiming the applied-
for mark is inherently distinctive.
Ser. No. 74/551771
4
configuration as applicant’s applied-for mark, they
nonetheless show designs all of which include buttons,
knobs, doors 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 which makes it suitable for wall mounting is
arbitrary, as are its “unusual dimensions, orientation and
the configuration of its controls” (brief, p. 10); and that
it is a nonfunctional shape which distinguishes applicant’s
product from those of other manufacturers.4
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

4 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. 74/551771
5
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
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.
Ser. No. 74/551771
6
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 AM/FM audio cassette
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 an AM/FM audio cassette
player put together in a manner which makes sense for the
involved product, e.g., the buttons which control the
cassette player are located directly below the window in
which the cassette is inserted. The record before us does
not demonstrate that applicant’s applied-for mark is
inherently distinctive.5

5 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).
Ser. No. 74/551771
7
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.6 The purchasing public would readily
perceive this configuration as making the product suitable
for wall mounting.7
Accordingly, we find that applicant’s configuration is
not immediately recognizable as a distinctive way of
identifying the source of applicant’s goods. Rather,
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.

6 We note that applicant stated in his reply brief (p. 3) that
“Specifically, the Applicant’s design is intended to be mounted
flush with the user’s wall in order to minimize any aesthetic
disruption. The distinctive appearance of the Applicant’s design
is best appreciated when the design is viewed after installation.
The Applicant’s design will be viewed primarily in this manner.”
7 Obviously, applicant cannot argue that the depth/length ratio
of the configuration is superior for wall mounting the AM/FM
audio cassette player since that would be an admission that that
portion of the claimed configuration was de jure functional.
Ser. No. 74/551771
8
Decision: The refusal to register is affirmed.
E. J. Seeherman
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board