Nellcor Puritan Bennett Inc.

Trademark Trial and Appeal Board

Mar 5, 1999

No. 74418140 (T.T.A.B. Mar. 5, 1999)

Oral Hearing: Paper No. 17
February 12, 1998 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nellcor Puritan Bennett Incorporated
________
Serial No. 74/418,140
_______
Raymond A. Kurz of Rothwell, Figg, Ernst & Kurz, P.C. for Nellcor
Puritan Bennett Incorporated.
Ira J. Goodsaid, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Nellcor Puritan Bennett Incorporated, by assignment
from Nellcor Incorporated, is the owner of an application to
register the design, reproduced below,
Ser. No. 74/418,140
2
as a trademark for "medical instruments, namely[,] pulse
oximeters".1 Such design, which is referred to by applicant as
the "knob configuration" and the "Nellcor knob," is described by
applicant as follows:
The mark consists of a configuration of a
light colored circular control knob mounted
substantially flush to a control panel, with
a circular indentation on the outer
perimeter, the diameter of the indentation
being one fourth to one third the diameter of
the knob.
Although applicant asserts that the design is registrable on the
Principal Register as inherently distinctive, in the alternative
it seeks registration thereof on the basis of a claim of acquired
distinctiveness pursuant to the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f).
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 the knob design sought to be registered is de
jure functional and thus is unregistrable, irrespective of any
assertion of inherent distinctiveness or claim of acquired
distinctiveness.2 Alternatively, on the basis of the same
statutory provisions, registration has been finally refused on
the ground that, even if applicant's knob design is only de
facto, rather than de jure, functional, it is not inherently

1 Ser. No. 74/418,140, filed on July 29, 1993, which alleges dates of
first use of August 15, 1983 and states that "the stippling in the
drawing is for shading purposes only."
2 It is well settled, of course, that "[e]vidence of distinctiveness is
of no avail to counter a de jure functionality rejection". In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
Ser. No. 74/418,140
3
distinctive and has not acquired distinctiveness so as to serve
as an indication of origin for the goods.3
Applicant has appealed. Briefs have been filed4 and an
oral hearing was held. We reverse the de jure functionality
refusal, but affirm the refusal that applicant’s de facto
functional knob design is not inherently distinctive and has not
been shown to have acquired distinctiveness.
Turning first to the issue of de jure functionality,
the Supreme Court, in its most recent pronouncement on such

3 Although, under the same sections of the Trademark Act, registration
has also been finally refused on the basis that, because it is used as
a control knob for applicant’s pulse oximeters, the design "fails to
function as a mark," such a refusal in this case is, in essence,
simply another way of stating that the design is neither inherently
distinctive nor has it acquired distinctiveness so as to function as a
mark for the goods. We have accordingly considered the arguments
pertaining to whether applicant’s design functions as a mark as
bearing on the issues of whether the design is either inherently
distinctive or has acquired distinctiveness.
4 The Examining Attorney, in his brief, has objected to consideration
of the seven exhibits attached to applicant’s initial brief, arguing
that six of the exhibits "appear to be reproductions of material
previously submitted, but with less clarity than the originals," while
the seventh exhibit, which is a declaration from applicant’s "Director
of Marketing--Monitoring Systems," Scott Christensen, should not be
considered since it is "untimely filed, undated, and may not even be
sworn to by a corporate officer ...." The exhibits other than the
declaration, however, are merely copies (in the case of exhibits 1, 2,
3, 4 and 6) of materials which were previously made of record or an
updated copy (in the case of exhibit 5) thereof. As such, those
exhibits are simply duplicative and need not be stricken. However, as
to the declaration, which applicant submitted in support of its
alternative claim of acquired distinctiveness, the Examining Attorney
is correct that such exhibit is untimely under Trademark Rule
2.142(d), which provides that evidence submitted after an appeal has
been filed will ordinarily not be considered by the Board. Applicant,
in its reply brief, has offered no reason why it failed to furnish the
declaration prior to filing the appeal. Accordingly, while the
declaration will not be considered further, we note in any event that
even if such evidence had been timely submitted, it would make no
difference in the outcome of this appeal inasmuch as it is basically
duplicative of most of the other evidence which applicant properly
made of record prior to commencement of this appeal.
Ser. No. 74/418,140
4
doctrine, pointed out in Qualitex Co. v. Jacobsen Products Co.
Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995), that:
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. .... If a product’s functional
features could be used as trademarks,
however, a monopoly over such features could
be obtained .... and could be extended
forever (because trademarks may be renewed in
perpetuity). See Kellogg Co. v. National
Biscuit Co., 305 U.S. 111, 119-120[, 39 USPQ
296, 300] (1938) ...; Inwood Laboratories,
Inc. [v. Ives Laboratories, Inc.], [456 U.S.
844 (1982)] ... at 863[, 214 USPQ 1 at 9]
.... This Court consequently has explained
that, "[i]n general terms, a product feature
is functional," and cannot serve as a
trademark, "if it is essential to the use or
purpose of the article or if it affects the
cost or quality of the article," that is, if
exclusive use of the feature would put
competitors at a significant non-reputation-
related disadvantage. Inwood Laboratories,
Inc., 456 U.S., at 850, n. 10[, 214 USQP, at
4, n. 10]. ....
In line therewith, it has long been settled law that,
as stated, for example, in In re Bose Corp., 215 USPQ 1124, 1126
(TTAB 1982), aff’d, 772 F.2d 186, 227 USPQ 1 (Fed. Cir. 1985):
A shape or configuration of an article
which is in its concept essentially or
primarily utilitarian or functional cannot
function as a trademark under the Federal
trademark statute, and cannot be registered
either on the Principal or Supplemental
Register. In re Deister Concentrator Co.,
[Inc., 289 F.2d 496,] 129 USPQ 314 (CCPA
1961); Best Lock Corp. v. Schlage Lock Co.,
[413 F.2d 1195,] 162 USPQ 552 (CCPA 1969); In
re Honeywell, Inc., 187 USPQ 576 (TTAB 1975),
aff’d, [532 F.2d 180,] 189 USPQ 343 (CCPA
1976); In re Water Gremlin Co., [635 F.2d
841,] 208 USPQ 89 (CCPA 1980); In re Lighting
Systems, Inc., 212 USPQ 313 (TTAB 1981);
[and] In re Teledyne Industries, Inc., 212
USPQ 299 (TTAB 1981). This rule applies
Ser. No. 74/418,140
5
irrespective of whether [an] applicant may
have established a de facto secondary meaning
in the configuration of its goods due to ...
extensive advertising and promotion of the
configuration over a period of time. In re
Water Gremlin Co., supra, at [9]0-91.
Accordingly, the threshold issue ... is
whether the configuration ... sought to be
registered here is or is not dictated
primarily by functional or utilitarian
considerations.
In determining whether a design is de jure functional,
the court in the leading case of In re Morton-Norwich Products,
Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), outlined four
general factors to be considered when evidence thereof is of
record. Such factors are: (1) the existence of a utility patent
which discloses the utilitarian advantages of the design sought
to be registered; (2) advertising by the originator of the design
which touts the utilitarian advantages thereof; (3) facts showing
that alternative designs are available to competitors; and (4)
facts indicating that the design results from a comparatively
simple or cheap method of manufacturing the article.
Applicant, in its main brief, properly observes that
the first of such factors is not applicable inasmuch as applicant
"has no utility or design patents on its knob configuration which
would disclose the utilitarian advantages of the design to be
registered."5 Applicant also correctly insists in such brief

5 We note, in this regard, that it is well settled that the existence
of one or more utility patents which disclose the superior utilitarian
advantages of a design generally is adequate, and frequently is
conclusive or incontrovertible, evidence of the de jure functionality
of a configuration. See, e.g., Best Lock Corp. v. Schlage Lock Co.,
supra at 556; and In re Shenango Ceramics, Inc., 362 F.2d 287, 150
USPQ 115, 119 (CCPA 1966). By contrast, the existence of a design
patent for the design in issue, "at least presumptively, indicates
Ser. No. 74/418,140
6
that the second Morton-Norwich factor does not pertain to this
case since it "has never touted any utilitarian advantage of its
knob through its advertising."6 While, as to the fourth Morton-
Norwich factor, applicant urges in its main brief that its knob
design "does not result in a comparatively simpler or cheaper
method of manufacture" since "the Nellcor knob’s molded
indentation makes the knob more costly to produce," there is
simply no evidence properly of record which bears upon such
factor.
Determinative, therefore, of the issue of de jure
functionality in this case is the evidence pertaining to the
third Morton-Norwich factor, namely, whether viable alternative
designs exist. Applicant, in its main brief, argues that the
record reveals that its competitors "utilize many [different]
configurations of knobs for their pulse oximetry sensors," as
shown by the competitive products depicted in its March 1995
brochure captioned "IF THE BEST PULSE OXIMETRY SENSORS WORK HERE
...," and that "[s]uch illustrations provide clear evidence that
alternative knob designs are available to competitors."7 In view

that the design is not de jure functional." In re Morton-Norwich
Products, Inc., supra at 17 n. 3.
6 While the record shows that applicant’s knob design is utilized for
making various adjustments to its pulse oximeters, such as setting the
audible beep volume for each pulse detected and changing alarm limits
and volume, nothing indicates that applicant’s particular design is
promoted as providing an easier or otherwise more advantageous way of
making necessary adjustments to its goods.
7 Applicant, in fact, contends in its main brief that "the Nellcor knob
is functionally inferior," asserting that:
It is counter-intuitive for a user to stick a finger
into an indentation in order to turn a knob. Precise
Ser. No. 74/418,140
7
thereof, applicant maintains that its design "neither prevents
competitors from manufacturing alternative designs, nor hinders
competition as shown by competitors’ designs." Applicant
consequently contends that because the same functions can be
performed by a variety of other shapes or designs for control
knobs, "the Nellcor knob is not de jure functional."
The Examining Attorney, on the other hand, is of the
view that applicant’s design is a superior one. In particular,
and while we note that a contrasting color scheme is not part of
the description of applicant’s design and is not featured on at
least one model of applicant’s goods, the Examining Attorney
points out that:
Having the light-colored knob mounted
substantially flush to a dark-colored control

adjustments using a single finger are difficult
particularly when the user’s finger tires.
Differing finger sizes may also affect the Nellcor
knob’s functionality. A user with a much larger or smaller
than normal finger will either not be able to fit his
finger into the indentation, or will find it more difficult
to turn the knob as there is too much space within the
indentation. Finally, users with long nails may have
trouble sticking their fingers into the indentation.
Moreover, their long fingernails may make it generally
difficult for them to turn the knob.
A traditional "non-flush" design, which allows the
user to turn the knob by holding the outside surface of the
cylinder, is easier to use, allows for precise adjustments
of the knob at all times, and is not affected by the user’s
finger size or fingernail length. As demonstrated by the
brochure showing the competitive products ..., a non-flush
design is the logical choice. It is functionally superior,
and therefore preferred.
Applicant’s assertions of functional inferiority for its design,
however, are just not credible. Absolutely nothing in the record
supports applicant’s contentions and it defies belief that applicant
would deliberately make a control for setting critical adjustments on
its pulse oximeters more difficult or counter-intuitive to use than
those featured on competitive medical devices.
Ser. No. 74/418,140
8
panel provides several functional advantages:
(1) the contrast of light knob against dark
panel makes the knob easy to see; (2) the
knob is less likely to be accidentally bumped
because it is substantially flush with the
control panel; (3) flush mounting the knob
makes the unit more space efficient; and (4)
flush mounting keeps the knob more free of
dirt and dust. Because of the knob’s
substantially flush mounting, the finger hole
is also highly functional: (1) it allows the
knob to be adjusted without having to
simultaneously push and twist it (a difficult
maneuver requiring significant dexterity);
and (2) the finger hole provides a visual cue
of the knob’s setting.
We are constrained to agree with applicant that, on
this limited record, its knob design--while undoubtedly de facto
functional in that it is used to make adjustments to various
settings for its pulse oximeters--cannot be said to be de jure
functional. Although, curiously, applicant offered nothing in
its reply brief to counter or otherwise put to rest the Examining
Attorney’s observations, it appears from applicant’s advertising
and other literature of record that the control knob designs of
competitors’ pulse oximeters are just as easy to see, are not
significantly more prone to accidental bumping,8 are just as
space efficient and are not noticeably more prone to
accumulations of dirt and dust. In short, there is nothing in
the record which demonstrates that competitors will be unable to
compete effectively in the marketplace for pulse oximeters if

8 Accidental touching of applicant’s control knob design, we note,
would affect only the beep volume of each detected pulse; it would not
affect the settings of alarm volume and alarm limits since another
button or buttons must be pushed while turning the knob in order to
change such settings.
Ser. No. 74/418,140
9
they are unable to utilize applicant’s design as a control knob
for their goods.
Turning, then, to the issues of distinctiveness,
applicant argues that its knob design is inherently distinctive
or, in the alternative, that it has acquired distinctiveness. As
to the former, applicant maintains in each of its briefs that its
design is unique in that it sells its goods in a niche market in
which "[n]o other third party marks exist that are similar ...."
In particular, referring to an illustration, reproduced below,
Ser. No. 74/418,140
10
of certain of its competitors’ products (together with two models
of its own goods) in its previously noted "IF THE BEST PULSE
OXIMETRY SENSORS WORK HERE ..." brochure, applicant contends in
its main brief that:
First, the Diascope knob [which is shown
third from the top on the right hand side] is
set over the edge of the oximeter on which it
is placed. The knob is not flush with the
face of the monitor and is apparently
operated by running one’s finger along the
edge of the knob that extends past the face
of the monitor. Also, ... the Diascope knob
is not light in color and does not contain
any circular indentation much less an
indentation which is one-fourth to one-third
of the diameter of the knob.
Second, the monitor above the Diascope
model features a protruding knob which the
oximeter operator grasps and rotates (as
opposed to an indentation into which the
operator would insert a finger to achieve
rotation). This oximeter utilizes a design
that is directly antithetical to the
Applicant’s knob-design which is
substantially flush to the control panel.
Third, the model directly below the
Diascope oximeter employs a small knob that,
unlike Applicant’s design[,] is not prominent
on the face of the monitor either with
respect to its color, or to its size[,] in
relation to the overall size of the oximeter
on which it sits, thus failing to be
recognizable as a distinguishing mark on the
oximeter. Applicant’s mark, in contrast, is
proportionally much larger than the cited
knob. Furthermore, unlike the cited knob,
Applicant’s knob is featured in its
identifiable light cover.
As for the Schiller model [which is
shown second from the left in the "fifth" row
from the top and which is] purported by the
Examining Attorney to carry a knob
configuration identical to Applicant’s, an
even cursory examination reveals that the
knob on the Schiller model ... is raised
beyond the surface of the monitor’s face and
is not substantially flush to the control
Ser. No. 74/418,140
11
panel. Although the knob appears to have a
small indentation on its surface, the knob
apparently can be manipulated by grasping the
edges of the knob in one’s fingers.
Additionally, the knob displayed on the
Schiller model is not featured in the
"identifiable light color" of Applicant’s
knob. Moreover, the Schiller knob lacks the
prominence of the overall design of the
Applicant’s knob.
We concur with the Examining Attorney, however, that
applicant’s control knob design is not inherently distinctive.
Under the test for inherent distinctiveness set forth in the
leading case of Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F.2d 1342, 196 USPQ 289, 291 (CCPA 1977), such design is nothing
more than a mere refinement of a common or basic design for
control knobs and therefore would not be immediately perceived as
a source indicator. The Examining Attorney, as stated in his
December 11, 1995 Office action, has made of record in this
regard various photographs, which were "taken at a couple of
local electronics stores," of a television set, a control device
and stereo equipment featuring, in each instance, "a round knob
with a small round indentation on the perimeter." This evidence
is sufficient to show, as maintained by the Examining Attorney,
that such a design "is a common knob design for electronic goods
in general." Moreover, not only are pulse oximeters, generally
speaking, electronic goods, but one of applicant’s competitors,
Schiller, utilizes in particular a control knob for its pulse
oximetry units which, when viewed straight on, is essentially
identical in appearance (including a lighter-colored tone or
shade than the background against which it is placed) to
applicant’s control knob design.
Ser. No. 74/418,140
12
While, admittedly, the Schiller knob configuration,
unlike applicant’s design, does not appear to be mounted
substantially flush to the control panel and, thus, applicant’s
design would seem to be unique or novel to a limited extent, the
fact that applicant’s design in such respect is the one and only
of its kind does not mean that it necessarily is inherently
distinctive. See, e.g., In re In re E S Robbins Corp., 30 USPQ2d
1540, 1542-43 (TTAB 1992) and cases cited therein. Instead, the
record demonstrates that a light-colored and flush-mounted design
for a circular control knob with a round recess on the outer
perimeter is basically a refinement of a common means for
adjustment of the settings of electronic equipment, including
those for pulse oximeters. In fact, as previously mentioned,
applicant’s competitor Schiller utilizes a control knob design
which, for practical purposes, is essentially identical in
appearance to applicant’s design. In view thereof, applicant’s
design would likely be perceived by prospective purchasers or
users of its goods as just a means for changing certain settings
on its pulse oximeters and would not be immediately regarded as
identifying and distinguishing the source of such goods. See,
e.g., In re Hudson News Co., 39 USPQ2d 1915, 1925 (TTAB 1996),
aff’d in decision without published opinion, 1997 U.S. App. LEXIS
15556 (Fed. Cir. June 12, 1997) [various blue trade dress motifs
for newsstand services not inherently distinctive since such are
"simply a mere refinement of a basic blue interior decorating
scheme"]; In re F.C.F. Inc., 30 USPQ2d 1825, 1828 (TTAB 1994)
[rose design packaging for cosmetics not inherently distinctive
Ser. No. 74/418,140
13
inasmuch as it "appears to be no more than a mere refinement of a
basic, relatively common and well-known form of decoration or
ornamentation for cosmetic packaging and would be so regarded by
the public"]; and Wiley v. American Greetings Corp., 226 USPQ
101, 103-104 (1st Cir. 1985) [red heart, permanently affixed to
the left breast of a teddy bear, not inherently distinctive (even
if unique) because it "is simply a mere refinement of a red heart
motif which is a commonly adopted and well-known means of
ornamentation for teddy bears, other stuffed animals and toys in
general].
To be registrable, therefore, applicant’s design must
be shown to have acquired distinctiveness. As support for its
alternative claim thereof, applicant notes that its "knob
configuration" is currently used on nine of its products9 and has
furnished a copy of an internal report showing the following
sales in the United States (as of its October 3, 1995 response)
since 1985:
Fiscal Year No. of Products Units
1985 1 2,038
1986 1 7,045
1987 2 13,992
1988 3 14,129
1989 3 15,395
1990 4 18,666
1991 5 17,088
1992 6 18,956
1993 7 18,053
1994 8 14,773
1995 9 15,446
1996 7 985

9 It would appear that the partial sales figures for fiscal year 1996
involve either a typographical error in the number of products bearing
applicant’s design or that only seven different models of products
have been sold as of the date the information was furnished.
Ser. No. 74/418,140
14
In all, applicant asserts that over 156,000 units have
been sold. Applicant has also submitted copies of two internal
documents showing that, in the 13 years from 1983 to 1996, it
expended approximately $21 million in promoting products which
feature its knob design. In addition, samples of applicant’s
advertising, as well as copies of brochures illustrating its
competitors’ goods, were submitted. Applicant maintains that its
advertising highlights its knob design through the use of special
lighting and photography techniques or by utilizing words and
arrows to point out such feature. Many of its products,
applicant additionally observes, use a dark or contrasting
background to display its knob design more prominently.
Representative excerpts from applicant’s advertising,
respectively bearing copyright dates of 1990, 1992 and 1995, are
reproduced below:
Ser. No. 74/418,140
15
The Examining Attorney, on the other hand, argues that
applicant’s evidence fails to establish acquired distinctiveness
inasmuch as "[t]here is no evidence to suggest any promotion or
perception of the subject knob design as a mark." While we
disagree in part with such contention since applicant, when it
first asserted its alternative claim of acquired distinctiveness
during the prosecution of this application in 1995, at least
arguably began to promote its knob design as a mark in its
advertising by referring, as shown in the last of the excerpts
illustrated above, to "The Nellcor knob for adjustment setting"
and by including the statement that "NELLCOR ... and the Nellcor
knob configuration are trademarks" of applicant, we nevertheless
agree with the Examining Attorney that applicant’s evidence is
not sufficient to demonstrate acquired distinctiveness for its
knob design.
Specifically, the sales figures submitted by applicant
lack context in that we have no idea how large the market for
Ser. No. 74/418,140
16
pulse oximeters is and, hence, what share thereof applicant
commands. While we realize that applicant’s goods form part of a
limited or niche market, there appear to be a fair number of
competitors in such marketplace, yet we have no idea as to the
size of applicant’s sales relative to those of other sellers of
pulse oximeters. Moreover, as discussed below, there is very
little evidence that applicant has continuously promoted its
design as a trademark for its goods. At most, therefore,
applicant’s sales figures can be said to demonstrate a growing
degree of popularity or commercial success for its products, but
such evidence alone does not demonstrate that applicant’s knob
design has become distinctive of its goods and thus functions as
a source indicator. See, e.g., In re Pingel Enterprise Inc., 46
USPQ2d 1811, 1822 (TTAB 1998) [general sales growth during 16-
year period does not suffice to establish that purchasing public
for motorcycle fuel valves has come to view petcock configuration
as a trademark]; In re Bongrain International (American) Corp.,
894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990) [growth in
sales may be indicative of popularity of product itself rather
than recognition of a term or design as denoting origin]; and
WLWC Centers, Inc. v. Winners Corp., 221 USPQ 701, 707 (M.D.
Tenn. 1983) [popularity in sales alone cannot establish secondary
meaning].
Similarly, while applicant’s advertising expenditures
might otherwise be an indication of its efforts to develop
distinctiveness for its knob design, the amount of such outlays
alone is not determinative of the success of those attempts.
Ser. No. 74/418,140
17
See, e.g., In re Pingel Enterprise Inc., supra [effectiveness of
promotional expenditures is significant rather than mere level
thereof]; In re Semel, 189 USPQ 285, 287 (TTAB 1975) ["in
evaluating the significance of advertising figures ..., it is
necessary to consider not only the extent of advertising but also
whether the use of the designation [or design] therein has been
of such nature as to create in the minds of the purchasing public
an association of the designation [or design] with the user
and/or his goods"] and Ralston Purina Co. v. Thomas J. Lipton,
Inc., 173 USPQ 820, 824 (S.D.N.Y. 1972) [promotional expenditures
indicate efforts to establish secondary meaning, but do not
determine the success thereof]. In this case, it appears that
not until sometime during the prosecution of this application in
1995 did applicant even arguably commence efforts to promote its
knob design as a mark. Prior thereto, there is an absence of any
advertising or other promotional material that even refers to
applicant’s knob design. The mere fact that applicant claims to
have utilized special lighting and photography techniques in its
advertising to illustrate the control knob on its pulse oximeters
in a prominent or noticeable manner does not mean that the design
of such knob would be regarded by purchasers or users of the
goods as a mark. Instead, applicant’s design appears in most of
its advertising of record merely as part of the illustration of
applicant’s products.
The sole indication that we have been able to find in
which applicant has arguably attempted to educate consumers to
view its design of a control knob as a mark is a relatively
Ser. No. 74/418,140
18
recent advertisement from 1995 in which, as mentioned previously,
applicant makes reference to "The Nellcor knob for adjustment
setting" and states, in exceedingly small print, that "NELLCOR
... and the Nellcor knob configuration are trademarks" of
applicant. Although we recognize that applicant appears to have
repeatedly designed various models of its pulse oximeters to
incorporate the particular control knob design which it seeks to
register, it does not appear from the record that applicant has
continuously promoted the design as a source indicator nor, until
a few years ago has it even made any minor effort to do so. The
purchasing public for applicant’s goods, seeing illustrations of
the products in applicant’s advertising, would regard the design
as simply part of the pictures of the goods and would not be
likely to notice applicant’s recent statements that the control
knob is a trademark for its pulse oximeters. See, e.g., In re
Pingel Enterprise Inc., supra at 1823 [depiction in advertising
of petcock configuration would be regarded by purchasers and
prospective consumers "as nothing more than a graphical
representation of applicant’s product"; it being unlikely that
such persons "would even take notice of or appreciate the
statements [in fine print] on applicant’s packaging and
installation instructions which claim that the appearance of its
product is a trademark for a motorcycle fuel valve and filter"].
Applicant, in summary, has not met its burden of establishing a
prima facie case of acquired distinctiveness.
Accordingly, in order to overcome the refusal, more
evidence than that which has been offered, including, in
Ser. No. 74/418,140
19
particular, representative advertising showing substantial
promotion of applicant’s control knob as a trademark for its
goods and customer recognition thereof, would be necessary in
order to demonstrate that the design which applicant seeks to
register has in fact acquired distinctiveness in the pulse
oximeter marketplace.
Decision: The refusal on the ground of de jure
functionality is reversed, but the refusal on the ground of lack
of distinctiveness is affirmed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board