Parkway Machine Corp.

Trademark Trial and Appeal Board

Apr 6, 1999

No. 74595979 (T.T.A.B. Apr. 6, 1999)

Paper No. 15
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 6,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Parkway Machine Corporation
________
Serial No. 74/595,979
_______
Maurice U. Cahn of Cahn & Samuels, LLP for Parkway Machine
Corporation.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney).
_______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On March 30, 1999 the Board issued a decision
affirming the refusal to register in this case. For the
reasons discussed below, the decision is hereby vacated.
On November 7, 1994, applicant, Parkway Machine
Corporation, filed the above-identified application to
register the mark shown below for coin-operated vending
machines.
Ser No. 74/595,979
2
After the Examining Attorney initially refused registration
on the basis that the proposed mark was merely a
configuration of the goods which was not inherently
distinctive, applicant submitted a response arguing that
applicant’s use for more than five years and three
declarations of applicant’s customers were sufficient to
present a prima facie case of acquired distinctiveness.
Each of these declarations referred to applicant’s Victor
88 machine, which is reproduced below:
Ser No. 74/595,979
3
As can be seen, however, this machine does not show
the asserted mark presented in the original drawing. The
Examining Attorney, in her next Office Action (August 22,
1995), did not point out this discrepancy. However, the
Examining Attorney did require applicant to submit a
description of the asserted mark and to present a three-
dimensional view of the product, displaying its asserted
mark in solid lines. Applicant complied by submitting the
following drawing:
However, it appears that Patent and Trademark Office
personnel placed this substitute drawing in the wrong file—
Serial No. 74/595,978, which covers a different
configuration for coin-operated vending machines.
Ser No. 74/595,979
4
Unfortunately, the Examining Attorney, who was
handling both cases, did not notice that the substitute
drawing for this case (Serial No. 74/595,979) presented a
different mark from that originally sought to be registered
herein. The Examining Attorney eventually issued a final
refusal and applicant appealed. Applicant’s brief, as well
as the Examining Attorney’s brief1 for this case each
reproduced the mark of the substitute drawing that was at
the time placed in the file for Serial No. 74/595,978. The
Board issued its decision herein on the basis of the mark
shown on the second page of the March 30, 1999 opinion,
which mark was the subject of the substitute drawing that
had mistakenly been placed in this file. As the result of
a telephone call from applicant’s attorney after the
release of our decision, the Board learned of these errors.
Accordingly, the files for Serial Nos. 74/595,978 and
74/595,979 have been reconstructed so that all papers
bearing the same serial number have been placed in the
appropriate file. This required moving the substitute
drawing and the Examining Attorney’s appeal briefs from one
file to the other. Because of the incorrect placement of
these papers in the wrong file, the decision of March 30,

1 The Examining Attorney’s brief for this application was at the
time filed in the wrong file, Serial No. 74/595,978.
Ser No. 74/595,979
5
1999 has been vacated, as noted previously, and the
following decision is substituted therefor:
This is an appeal from the Trademark Examining
Attorney’s final refusal to register the design depicted
below for “coin[-]operated vending machines.”2

2 Application Serial No. 74/595,979, filed November 7, 1994,
which alleges dates of first use as early as July 1, 1987. In
the application, applicant states that the dotted lines of the
drawing depict the position of the mark and do not comprise part
of the mark. Also, applicant states that its machines are
commonly known as “gumball machines.”
Ser No. 74/595,979
6
In an amendment, applicant describes its mark as follows:
The mark consists of the beveled facing
of a coin operated bulk vending machine
incorporating a coin receiving mechanism
and merchandise chute cover located
laterally from the coin receiving mechanism.3
Registration has been refused pursuant to Sections 1,
2, and 45 of the Trademark Act, 15 U.S.C. §1051, 1052, and
1127, on the ground that the design is not inherently
distinctive, and applicant’s evidence of acquired
distinctiveness is insufficient to permit registration.
Inasmuch as applicant has amended its application to seek
registration under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), and because applicant does not seriously
argue that the design is inherently distinctive, the only
issue herein is whether the design sought to be registered
has acquired distinctiveness.
In support of its claim of acquired distinctiveness,
applicant points to its use of the design for over five
years. In addition, applicant submitted three declarations

3 We note that the Examining Attorney, in certain instances, has
characterized applicant’s asserted mark as simply “beveled
facing.” Applicant takes issue with this characterization,
arguing that its asserted mark comprises not just beveled facing,
but a coin receiving mechanism and merchandise chute cover as
well. We recognize that applicant adopted the above description
of the mark after discussions with the Examining Attorney. In
any event, we have considered the asserted mark to include those
elements set forth in the description of the mark, i.e., the
beveled facing, a coin receiving mechanism and a merchandise
chute cover located laterally from the coin receiving mechanism.
Ser No. 74/595,979
7
of bulk purchasers of coin-operated vending machines. The
declarations are essentially identical and each declarant
states in pertinent part that:
I am fully familiar with the coin-operated
bulk vending machine industry and the coin-
operated bulk vending machines previously
made and sold by Victor Vending Corporation
and now made and sold by its successor,
Parkway Machine Corporation, doing business
as A & A Company under the designation
Victor and/or Victor 88, that the configuration
of the Victor 88 machine includes a unique
front base configuration where the front
plate includes a flat face with a textured
surface, a raised beveled coin mechanism
cover incorporating the same surface texture,
and a partially recessed merchandise chute
cover mounted to the side of the coin
mechanism cover.
. . . . .
By reason of the unique configuration of the
[applicant’s] Victor 88 machines and further
in view of the promotional materials and
advertising featuring the uniquely configured
machines, the configuration is distinctive
and has become synonymous with [applicant]
as the source of the machines and indicates
to me that coin-operated machines so
configured are manufactured by [applicant]
and originate with that company.
Further, in support of registration, applicant
submitted copies of three registrations which it owns
covering different configurations of coin receiving
mechanisms and merchandise chute covers; and a product
catalog which, in addition to depicting the design sought
Ser No. 74/595,979
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to be registered here, features a variety of applicant’s
different coin-operated vending machines with different
configurations of the coin receiving mechanism and
merchandise chute cover. Applicant maintains that the
purchasers of its products are bulk vending machine
operators and vending equipment distributors, who are
sophisticated purchasers, and thus less proof is required
to show acquired distinctiveness of the involved design.
Further, applicant argues that inasmuch as it has obtained
registrations covering other configurations, it is
desirable for the Office to avoid different and
inconsistent results in connection with its various
applications.
The Examining Attorney, on the other hand, argues that
because applicant’s design is typical of vending machines,
use of this design for five years and a mere three
declarations are insufficient to permit registration under
Section 2(f) of the Trademark Act. Further, the Examining
Attorney points out that applicant has failed to provide
sales and advertising figures to indicate the level of
exposure of its design to the relevant public. Nor,
according to the Examining Attorney, has applicant made of
record product literature or advertising wherein applicant
has encouraged purchasers to identify the design as a
Ser No. 74/595,979
9
trademark. Thus, the Examining Attorney contends that
prospective purchasers are not likely to view the beveled
facing on applicant’s machines as a trademark. In support
of the refusal, the Examining Attorney submitted evidence
of third-party use of similar product designs from on-line
catalogs of competitors which assertedly show similar
beveled facing used on coin-operated vending machines. Two
of those designs are reproduced below. (Others would not
adequately reproduce.)
Ser No. 74/595,979
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After careful consideration of the record and
arguments herein, we find that applicant’s evidence is
insufficient to permit registration. In particular, the
declarations fail to indicate what it is about the design
of applicant’s coin receiving mechanism and merchandise
chute cover that is particularly unique or distinctive. It
would have been helpful, for example, if applicant’s
declarations had indicated what particular feature or
features of the design is or are unique or unusual, as well
as what it is about these vending machines that signifies
origin in applicant. See, for example, In re Sandberg and
Sikorski Diamond Corp., 42 USPQ2d 1544 (TTAB 1996). Also,
the declarations are not representative of the relevant
class of purchasers as a whole, that is, bulk purchasers of
coin-operated vending machines, and vending equipment
distributors and retail outlets which purchase and/or use
vending machines.
With respect to the existence of applicant’s other
registrations, we note that those registrations depict
matter having different and arguably recognizable features
(e.g., octagonal coin receiving mechanisms) not present in
the instant application. Thus, these registrations are not
particularly probative of whether the design sought to be
registered here has acquired distinctiveness.
Ser No. 74/595,979
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Further, although this record does not contain any
examples of competitors using the exact configuration
applicant seeks to register, a particular configuration
does not become distinctive simply because no other
manufacturer uses that particular configuration. As stated
by the Board in In re S. Robbins Corp., 30 USPQ2d 1540,
1542 (TTAB 1992):
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
that it has an original, distinctive, and
peculiar appearance.”
In view of the relatively nondistinctive nature of the
asserted mark, we believe that the level of proof needed
for acquired distinctiveness is substantially higher than
if the features were more unusual in nature.
Further, applicant’s evidence of acquired
distinctiveness does not relate to the promotion and
recognition of the specific configuration sought to be
registered. As noted, the declarations of a small number
of bulk purchasers who allegedly associate this design with
applicant are not particularly probative, and the
advertising depicts a number of applicant’s various vending
machines with different coin mechanisms and merchandise
chute covers. Where as here, applicant uses a number of
Ser No. 74/595,979
12
different configurations of coin mechanisms and merchandise
chute covers, applicant’s evidence of acquired
distinctiveness must establish recognition of this
particular design with applicant.
Also, applicant has not promoted the asserted mark
herein as a trademark and does not mention or direct
attention to the asserted mark in its product catalogs.
While the design may appear in advertisements, there is
nothing to indicate that purchasers would view the features
in question as more than a part of the goods depicted. In
re Pingel Enterprises Inc., 46 USPQ2d 1811 (TTAB 1998).
Although applicant may want purchsers and prospective
purchasers to view the coin receiving mechanism and
merchadise chute cover as its trademark, there is simply no
reliable and probative evidence of the effectiveness of
applicant’s alleged efforts to promote recognition of these
features as its trademark. Finally, applicant has
submitted no sales and advertising figures from which we
might judge the level of exposure of applicant’s asserted
mark.
For the foregoing reasons, we find that the evidence
presented in this case is insufficient to permit
registration under Section 2(f).
Ser No. 74/595,979
13
Decision: The refusal to register is affirmed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board