Parkway Machine Corp.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 74595978 (T.T.A.B. Mar. 30, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,99
Paper No. 16
RLS/AKP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Parkway Machine Corporation
________
Serial No. 74/595,978
_______
Maurice U. Cahn of Cahn & Samuels, LLP for Parkway Machine
Corporation
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney)
_______
Before Simms, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Parkway Machine Corporation, a Maryland corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the asserted mark shown below
Ser No. 74/595,978
2
for coin-operated vending machines.1 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 a merchandise chute cover
located laterally from the coin
receiving mechanism.2
It is the Examining Attorney’s position that the asserted mark
is not inherently distinctive and that the evidence of acquired
distinctiveness is insufficient to permit registration.3 Because

1 Application Ser. No. 74/595,978, filed November 7, 1994, based upon
an allegation of use in commerce since at least as early as July 1,
1987. In the application, applicant stated that the dotted lines of
the drawing depict the position of the mark and do not comprise part
of the mark. Applicant’s machines are commonly known as “gumball
machines,” according to applicant’s attorney.
2 Although this description of the mark refers to a “beveled facing,”
no beveling appears in the drawing of the mark.
3 In the Examining Attorney’s final refusal issued March 3, 1997, the
Examining Attorney indicated that there were “two legal grounds” on
which this asserted mark had been refused: “(1) the proposed mark
appears to be de facto functional... and (2) the proposed mark is a
configuration of the goods which is not inherently distinctive.” In
her final refusal, however, she discussed these two “grounds” as well
as the alleged insufficiency of the evidence in support of the claim
of acquired distinctiveness. Her brief also addresses all of these
“grounds.” That an asserted mark, which is a product configuration
(or part thereof) or trade dress, may perform some function and
therefore be de facto functional is not a ground for refusal. Rather,
de jure functionality, where an asserted mark represents a superior
design essential for competition, is a proper ground for refusal. See
Section 2(e)(5) of the Trademark Act, 15 USC §1052(e)(5)(eff. Oct. 30,
1998). The differences between the concepts of de jure and de facto
functionality are discussed in a number of cases including the seminal
case of In re Morton-Norwich Products, Inc., 740 F.2d 1550, 213 USPQ 9
(CCPA 1982). The container in that case, for example, was de facto
functional because it performed the function of holding applicant’s
liquid product. Suffice it to say that any product or product
container that has utility may be considered to have a de facto
function.
Although the Examining Attorney at one time during the
prosecution of this case refused registration because the asserted
Ser No. 74/595,978
3
applicant has amended its application to one under Section 2(f)
of the Act, 15 USC §1052(f), and because applicant does not
seriously argue that the asserted mark is inherently
distinctive,4 we focus on the evidence and arguments relating to
acquired distinctiveness.
In support of registration, applicant relies upon the fact
that its asserted mark has been in use for over five years, and
applicant has submitted three declarations of bulk purchasers

mark was de jure functional, the Examining Attorney subsequently
withdrew that refusal.
4 For example, in applicant’s brief, 5, applicant states:
A further factor that is not in dispute and
supports acquired distinctiveness is that the
configuration at issue has been used for more
than five years by Applicant and Applicant’s
predecessor-in-interest. Applicant appreciates
that the length of use is not dispositive for
highly descriptive marks, but such evidence should
not be “undervalued” in support of registration...
In any event, as to the question of inherent distinctiveness, we have
in the past resolved such an issue by looking to the guidance of our
primary reviewing court. See, for example, In re Jon P. File, 48
USPQ2d 1363 (TTAB 1998), and In re Hudson News Co., 39 USPQ2d 1915
(TTAB 1996). In Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568
F.2d 1342, 196 USPQ 289, 291 (CCPA 1977), the Court looked to whether
the trade dress
was a “common” basic shape or design, whether it
was unique or unusual in a particular field, [or]
whether it was a mere refinement of a commonly-
adopted and well-known form of ornamentation for
a particular class of goods viewed by the public
as a dress or ornamentation for the goods[.]
Suffice it to say that, if we were to reach the issue of inherent
distinctiveness, applicant’s asserted mark cannot be considered
immediately recognizable as a distinctive way of identifying
applicant’s goods but is rather a common design or a mere refinement
of an ordinary coin mechanism and merchandise chute.
Ser No. 74/595,978
4
who are familiar with the coin-operated bulk vending machine
industry and with applicant’s coin-operated bulk vending
machines sold under the mark “Victor 77.” According to those
declarants, applicant’s machines include “a uniquely configured
coin mechanism cover and merchandise chute cover mounted side-
by-side which together establish the face of the forwardly
beveled front of the machine base.” These declarants further
state that, by reason of this configuration and in view of the
promotional materials and advertising featuring these machines,
“the configuration is distinctive and has become synonymous with
Parkway Machine Corporation as the source of the machines and
indicates to me that coin-operated bulk vending machines so
configured are manufactured by Parkway Machine Corporation...”
Further, in support of registration, applicant points to its
ownership of three other registrations covering different
configurations of coin mechanism covers and merchandise chute
covers.
Additionally, applicant has submitted a product catalog
which, in addition to machines bearing the asserted mark herein
sought to be registered, also portray a variety of its different
coin-operated bulk vending machines with different
configurations of the coin mechanism and merchandise chute
cover. Applicant notes that the consumers of its products are
bulk vending machine operators and vending equipment
Ser No. 74/595,978
5
distributors, who are sophisticated purchasers. Therefore,
according to applicant, less proof is required to show acquired
distinctiveness of the asserted mark. Applicant also argues, as
noted above, that it has obtained three registrations covering
slightly different configurations and that it is desirable for
the Office to avoid different and inconsistent results in
connection with its various applications.5
As noted, the Examining Attorney preliminarily took the
position that applicant’s coin mechanism and delivery chute
cover is not inherently distinctive because such design features
are typical of vending machines. Because the asserted mark is
something not ordinarily perceived as a trademark, the Examining
Attorney argues that prospective purchasers are not likely to
view the beveled facing front of applicant’s vending machines as
a trademark. According to the Examining Attorney, applicant’s
design is not highly unusual or extraordinary, but merely a
rectangular and square shape (unlike the hexagonal or octagonal

5 We note that the mark (shown below) reproduced on page two of
applicant’s main brief does not present the mark herein sought to be
registered. This appears to be an artist’s rendition of the Victor 77
rather than the Victor 88 machine shown in the drawing of this case.
(See discussion on pp. 7-9 of this opinion.)
Ser No. 74/595,978
6
designs of applicant’s existing registrations). Given the
prosaic appearance of this design, the Examining Attorney argues
that the evidence of a small number of people who assert that
they associate the alleged mark with applicant is insufficient
to permit registration under Section 2(f) of the Act. Further,
the Examining Attorney argues that applicant has submitted no
sales and advertising figures to indicate the level of exposure
of applicant’s asserted mark to the relevant public. Nor,
according to the Examining Attorney, does applicant’s product
literature mention or emphasize the asserted mark. According to
this record, applicant has made no effort to encourage the
relevant public to identify applicant’s asserted mark as a
trademark, the Examining Attorney argues. Rather, applicant’s
catalogs merely depict the product in photographs. Accordingly,
the Examining Attorney argues that potential purchasers are
likely to view the facing of applicant’s vending machines as
just part of those machines. The Examining Attorney has
submitted evidence of third-party use of similar product designs
from Web-site catalogs of competing manufacturers which
assertedly show similar beveled facings used on coin-operated
vending machines. Some of those designs are shown below.
(Others would not adequately reproduce.)
Ser No. 74/595,978
7
Upon careful consideration of this record and the
arguments, we believe that applicant’s evidence of acquired
distinctiveness is insufficient to permit registration.
First, applicant’s declarations are fatally flawed. All of them
refer to the “unique configuration of the…Victor 77 machines.”
…[T]he configuration of the Victor 77
machine includes a uniquely configured
coin mechanism cover and merchandise
chute cover mounted side-by-side which
together establish the face of the
Ser No. 74/595,978
8
forwardly beveled front of the machine
base.
However, the Victor 77 machine to which all the declarants refer
has a merchandise chute which is flush with the top of the coin
mechanism (see below)
and not lower than the coin mechanism, as in the instant
application. The “mark” of this application appears to be of
the model applicant calls “Victor 88.” See below.
Ser No. 74/595,978
9
The declarations, therefore, do not support registration of the
mark here sought to be registered, but rather a different
configuration of a coin mechanism and chute cover. We do not
address whether these declarations would be sufficient to
establish acquired distinctiveness of the design of the Victor
77 machine.
Aside from this serious problem, the declarations do not
note what it is about the design of applicant’s coin mechanism
and 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 its asserted mark is or are unique or unusual. See, for
example, In re Sandberg and Sikorski Diamond Corp., 42 USPQ2d
1544 (TTAB 1996).
The existence of applicant’s other registrations covering
different marks is largely irrelevant to the question of
acquired distinctiveness of the instant mark. We note that
those registrations depict matter having substantially different
and arguably recognizable features (e.g., octagonal coin
mechanisms) not present in the existing application.
Also, although it may be true that the record does not
contain any examples of competitors using the exact
configuration applicant seeks to register, a particular
configuration does not become distinctive merely because no
Ser No. 74/595,978
10
other manufacturer uses that particular configuration. In re E
S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992). As we stated
in that case, at 1542:
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.”
Because 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.
We find that applicant’s evidence of acquired
distinctivenes does not relate specifically to the promotion and
recognition of the specific configuration sought to be
registered. As indicated, the declarations of a small number of
bulk purchasers who allegedly associate this mark with applicant
are less than helpful, and the advertising only depicts
photographs of applicant’s various vending machines with
different coin mechanism and merchandise slot covers. In other
words, applicant does not use a single configuration of its coin
mechanism and merchandise chute cover in connection with its
bulk vending machines, but a number of different configurations.
Ser No. 74/595,978
11
Applicant has not promoted the asserted mark herein as a
trademark and does not mention the asserted mark in its product
catalogs. While the product design in question 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. See In re Pingel Enterprise Inc., 46 USPQ2d
1811 (TTAB 1998). Moreover, there is no evidence to support
recognition by the ultimate purchasers (rather than the bulk
purchasers or distributors of these goods) of these features as
an indication of origin. In this regard, what our primary
reviewing court stated in In re Water Gremlin Company, 635 F.2d
841, 208 USPQ 89, 91 (CCPA 1980), in the context of a holding of
functionality, is noteworthy with respect to applicant’s
asserted mark and its lack of distinctiveness:
On the other hand, a merchant who
wishes to set himself apart has no
dearth of means to do so. One who
chooses a commonplace design for his
package, or one different from
competitors only in essentially
functional features, even if he is the
first to do so, must expect to have to
identify himself as the source of goods
by his labelling or some other device.
Ser No. 74/595,978
12
Decision: The refusal of registration is affirmed.
R. L. Simms
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board