Parkway Machine Corp.

Trademark Trial and Appeal Board

Apr 6, 1999

No. 74595978 (T.T.A.B. Apr. 6, 1999)

Paper No. 16
RLS/AKP
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. 74/595,978
_______
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:
On March 30, 1999, the Board issued a decision
affirming the refusal of registration in this case. For
the reasons indicated below, that decision must be vacated.
On November 7, 1994, applicant, Parkway Machine
Corporation, a Maryland corporation, filed the above-
identified application to register the mark shown below:
2
for coin-operated vending machines. 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 77 machine, which is reproduced below:
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. 74/595,979, which covers a different
configuration for coin-operated vending machines.
4
Unfortunately, the Examining Attorney, who was handling
both cases, did not notice that the substitute drawing for
this case (Serial No. 74/595,978) 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. 74/595,979. The Board
issued its decision herein on the basis of the mark shown
on the first page of our March 30, 1999, opinion, which
mark was the subject of the substitute drawing that had
been mistakenly placed in this file. As the result of a
phone 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
drawings and the Examining Attorney’s briefs from one file
to the other. Because of the incorrect placement of these

1 The Examining Attorney’s brief for this application was at the
time filed in the wrong file, Serial No. 74/595,979.
5
papers in the wrong file, the decision of March 30, 1999 is
vacated and the following decision is substituted therefor:
Parkway Machine Corporation, a Maryland corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the asserted mark shown
below
for coin-operated vending machines.2 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

2 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.
6
laterally from the coin receiving
mechanism.3
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.4 Because 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,5 we focus

3 Although this description of the mark refers to a “beveled
facing,” no obvious beveling appears in the drawing of the mark.
4 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 mark was de jure functional, the Examining Attorney
subsequently withdrew that refusal.
5 For example, in applicant’s brief, 5, applicant states:
7
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

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...
(emphasis added)
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.
The “V” and eagle design on the chute cover are, of course,
inherently distinctive, but, although these features are shown on
the drawing, they are not described in applicant’s description of
the mark. While these elements themselves are registrable, the
mark presented for registration is the coin receiving mechanism
and merchandise chute cover. In view of our decision herein, the
“V” and eagle design would not be registrable unless the
description of the mark were modified to indicate that these
elements were the subject matter of this application and the
drawing was amended to show the coin mechanism and chute cover in
dotted or broken lines.
8
years, and applicant has submitted three declarations of
bulk purchasers 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 “unique 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
9
merchandise chute cover. Applicant notes that the
consumers of its products are bulk vending machine
operators and vending equipment 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.
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 designs of
applicant’s existing registrations). Given the prosaic
appearance of this design, the Examining Attorney argues
10
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.)
11
Upon careful consideration of this record and the
arguments, we believe that applicant’s evidence of acquired
distinctiveness is insufficient to permit registration.
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 the declarants had indicated what
particular feature or features of its asserted mark is or
are unique or unusual, and what it is about these machines
that signifies origin in applicant. See, for example, In
12
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
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
13
for acquired distinctiveness is substantially higher than
if the features were more unusual in nature.
Applicant’s evidence of acquired distinctiveness does
not relate 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.
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
and users (rather than the bulk purchasers or distributors
of these goods) of these features as an indication of
14
origin. See In re Paint Products Co., 8 USPQ2d 1863 (TTAB
1988). Although applicant may want purchasers and
potential purchasers to view the coin mechanism and
merchandise slot 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 might
judge the level of exposure of applicant’s asserted mark.
In summary, applicant has not met its burden of
establishing a prima facie case of acquired
distinctiveness.
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.
15
Decision: The refusal of registration is affirmed.
R. L. Simms
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board