Phoenix Trading Inc. dba Amercare Products, Inc.v.Loops, LLC

Trademark Trial and Appeal Board

Nov 15, 2012

No. 92051757 (T.T.A.B. Nov. 15, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 15, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Phoenix Trading Inc. dba Amercare Products, Inc.

v.

Loops, LLC
_____

Cancellation No. 92051757
_____

Rick Klingbeil of Rick Klingbeil PC for Phoenix Trading Inc. dba Amercare
Products, Inc.

Timothy W. Fitzwilliam of Lewis Kohn & Fitzwilliam for Loops, LLC.
_____

Before Quinn, Zervas and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Phoenix Trading Inc. dba Amercare Products, Inc. (petitioner) filed on
November 19, 2009, a petition to cancel three registrations owned by Loops, LLC
(respondent):
(1) Registration No. 3424838 (DESIGNED FOR PRISON SAFETY) for
“dental floss and toothbrushes,” issued May 6, 2008 on the
Supplemental Register;
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(2) Registration No. 3430304 for the trade dress shown below for
“toothbrushes,” issued May 20, 2008 on the Principal Register;

and
(3) Registration No. 3430305 for the trade dress shown below for
“toothbrushes,” issued May 20, 2008 on the Principal Register.1

Petitioner originally alleged a claim of mere descriptiveness against
Registration No. 3424838 pursuant to Section 2(e)(1) of the Trademark Act, 15

1 We note that the trade dress registrations are on the Principal Register without claims of
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), that
the examining attorney did not ask respondent for information, such as whether the marks
were the subjects of any patents (see TMEP §1202.02(a)(iv); 37 C.F.R. § 2.61(b)), and
neither application underlying the trade dress registrations includes patents or references
thereto. We also note that the trade dress registrations include multiple renditions of
three-dimensional marks absent permission from the Director. 37 C.F.R. §§ 2.52(b)(2) and
2.146(a)(5). In addition, the descriptions of the marks in the trade dress registrations do
not indicate what the broken or dotted lines represent, nor do they include the required
statement that the matter shown in broken or dotted lines is not part of the marks. 37
C.F.R. § 2.52(b)(4).

Cancellation No. 92051757

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U.S.C. §§ 1052(e)(1), and claims of de jure functionality and fraud against
Registration Nos. 3430304 and 3430305 pursuant to Sections 2(e)(5) and 14(3) of
the Trademark Act, 15 U.S.C. §§ 1052(e)(5) and 1064(3), respectively. The Board
dismissed the claim against the former on December 9, 2010, and the claims against
the latter on January 12, 2012. Therefore, the only remaining claims are
petitioner’s claims of functionality and fraud against the mark in Registration No.
3430304 (“the Registration” or “the Registered mark”). Because petitioner
presented no arguments in its brief regarding its fraud claim, we deem petitioner to
have waived this claim, and we have given it no further consideration. See TBMP
§801.01 (3d ed. 2012). We focus, as did the parties, on the functionality claim.
The Registration includes the following description:
The mark consists of a three-dimensional, overall
appearance of a toothbrush featuring a smoothly rounded
handle, having a top aspect which is generally barbell
shaped with the rear end portion being larger than the
front end portion and with a narrow intermediate portion
smoothly interconnecting both ends, and a side aspect
being slightly bowed and smoothly tapered toward its rear
end.
The specimens of use are reproduced below:

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Petitioner alleges that the Registration, “involves protection of trade dress
associated with the Loops Flexbrush flexible handled toothbrush,” which, in
general, “asserts protection of the three-dimensional, overall appearance of a
particular toothbrush design.” Pet. ¶20. Petitioner further alleges that the
Registration claims the following elements as protected trade dress: (1) a
toothbrush with a rounded handle, (2) a general barbell shape, and (3) bowed and
tapered sides all of which, according to petitioner, are described as de jure
functional in the specification and claims of respondent’s utility patent (Patent No.
7334286, “the Patent”). Pet. ¶¶21-24.
Respondent, in its answer, denied the salient allegations in support of the
claim of functionality, and specifically “denies that a flexible handled toothbrush is
a feature of the mark.” Ans. ¶20.
The Record
The record automatically includes the pleadings, and the application file for
Registration No. 3424304, which is the remaining subject of the petition for
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cancellation. Trademark Rule 2.122(b). Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352 (Fed. Cir. 2012). Petitioner also submitted, by notice
of reliance, respondent’s utility patent covering the product shown in the drawing of
the registration sought to be cancelled. Neither party took testimony or submitted
any other evidence.
Petitioner and respondent filed briefs.
The Mark and the Goods
There is no dispute that the Registered mark is a configuration of the goods,
i.e., toothbrushes. The drawing and description establish that the Registered mark
consists of the overall, three-dimensional appearance of a toothbrush with (1) a
rounded handle, (2) a general barbell shape, and (3) bowed and tapered sides.
Petitioner’s Standing
Standing is a threshold issue that must be proved by a plaintiff in every inter
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
Although petitioner did not offer any evidence regarding its standing, petitioner’s
standing is undisputed by respondent. In fact, citing to allegations made in
paragraph 8 of the petition for cancellation, respondent affirmatively states, in its
brief, that petitioner and respondent compete as vendors in the market for
providing toothbrushes and other oral hygiene items to prisons and other
correctional authorities. Def. Br. p.3. Accordingly, petitioner has standing. See
Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999); and Plyboo American, Inc. v.
Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999).
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Analysis
A product feature is functional and cannot serve as a trademark if “the
feature is essential to the use or purpose of the article or if it affects the cost or
quality of the article.” TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23,
58, 58 USPQ2d 1001, 1006 (2001) citing Qualitex Co. v. Jacobson Prods. Co., Inc.,
514 U.S. 159, 34 USPQ2d 1161, 1163-1164 (1995) (quoting Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). Functional matter cannot
receive trademark protection. At its core, the functionality doctrine serves as a
balance between trademark and patent law. As the Supreme Court explained in
Qualitex:
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.
It is the province of patent law, not trademark law, to
encourage invention by granting inventors a monopoly
over new product designs or functions for a limited time,
35 U.S.C. §§ 154, 173, after which competitors are free to
use the innovation. If a product’s functional features
could be used as trademarks, however, a monopoly over
such features could be obtained without regard to
whether they qualify as patents and could be extended
forever (because trademarks may be renewed in
perpetuity).
Qualitex Co. v. Jacobson Prods. Co. Inc., 34 USPQ2d at 1163.
We consider the following four factors in determining whether a product
design is de jure functional: (1) the existence of a utility patent that discloses the
utilitarian advantages of the design; (2) advertising by the defendant touting the
utilitarian advantages of the design; (3) the availability of alternative designs; and
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(4) facts pertaining to whether the design results from a comparatively simple or
inexpensive method of manufacture. In re Morton-Norwich Prods., Inc., 671 F.2d
1332, 213 USPQ 9, 15-16 (CCPA 1982); see also Valu Eng’g Inc. v. Rexnord Corp.,
278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).
Our determination of functionality is, at bottom, a question of fact that
depends on the totality of the evidence. Valu Eng’g Inc. v. Rexnord Corp., 61
USPQ2d at 1424 (Fed. Cir. 2002). Further, our primary reviewing court has
instructed that “[w]henever a proposed mark includes both functional and non-
functional features . . . the critical question is the degree of utility present in the
overall design of the mark.” In re Becton, Dickinson and Co., 675 F.3d 1368, 102
USPQ2d 1372, 1376 (Fed. Cir. 2012).
Petitioner’s remaining claim for cancellation rests entirely on the first
Morton-Norwich factor, namely, the existence of respondent’s Patent for a
“Toothbrush and Methods of Making and Using Same”. Neither party presented
evidence, and petitioner did not present any arguments, on the other Morton-
Norwich factors. Respondent, in its brief, argues that “it would be completely
illogical to believe that any advertising touting the utilitarian benefits of a three-
dimensional overall appearance to include an irregular barbell shape as described in
the ‘304 Mark would exist,” and the design does not result from a comparatively
simple or inexpensive method of manufacture. Resp. Br. p.7 (emphasis in original).
We therefore conclude that there is no advertising by the respondent touting the
utilitarian advantages of the design, and that the design does not result from a
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comparatively simple or inexpensive method of manufacture. While the background
section of the Patent discloses an alternative design of a toothbrush that can be
used safely in prisons, and we note respondent’s further argument in its brief that
“it would be illogical to suggest that any facts exist as to the unavailability of
alternative designs,” id., petitioner does not rely on this disclosure at any time in
this proceeding. Therefore, we do not have sufficient information to determine
whether the disclosure is probative. In light of the foregoing, we treat these three
factors as neutral. Our focus, therefore, is on the first factor.
The Supreme Court addressed the evidentiary value of a utility patent,
concluding that it:
has vital significance in resolving the trade dress claim.
A utility patent is strong evidence that the features
claimed therein are functional… Where the expired
patent claimed the features in question, one who seeks to
establish trade dress protection must carry the heavy
burden of showing that the feature is not functional, for
instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device.
TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1005.
In determining functionality, we may consider the claims and disclosures in
the patent. See In re Bose, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); and In re
Howard Leight Industries LLC, 80 USPQ2d 1507, 1511 (TTAB 2006).
The Patent Abstract describes a toothbrush:
wherein an elongated body has a bristle brush head
portion and a handle portion. The body is composed of
flexible material so that the handle portion can be
grasped in the hand of the user, and the user can flex the
elongated body into a substantially rigid position for teeth
brushing purposes.
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The “Field of the Invention” describes “such a toothbrush, which is compact in size
and may be safely used by prison inmates.”
The Patent includes the following seven drawings of the toothbrush:

The figures are described as depicting: “a plain view of the underside of a
toothbrush, which is constructed according to an embodiment of the invention” (Fig.
1); “a front end view of the toothbrush” (Fig. 2); “a rear end view of the toothbrush”
(Fig. 3); “a side end view of the toothbrush” (Fig. 4); “a plain view of the top side of
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the toothbrush of FIG. 1” (Fig. 5); and “reduced scale views similar to FIG. 4,
illustrating it in the process of being used” (Figs. 6 and 7).
According to the Patent, figures 1-5 of the drawings show:
[a] toothbrush 10, which may be constructed in
accordance with an embodiment of the invention. The
toothbrush 10 includes an elongated body 12 having a
bristle brush head portion 14 having a bristle brush 15
extending therefrom. The elongated body 12 includes a
handle portion 16 and a narrowed intermediate portion
18 integrally connecting the head portion 14 and the
handle portion 16.
Further, “[a]s best seen in FIG. 4, the body 12 has a slightly curved side edge or
curved aspect 27 between the head portion 14 and the handle portion 16, to help
facilitate the flexing of the body 12 by the hand of the user.”
The following explanation in the Patent divulges the utilitarian purposes of
respondent’s configuration of the goods:
Many conventional toothbrushes are designed with a
lengthy handle, usually with some ergonomic design, but
usually with an overall design to condition the user to
grasp the handle with the entire hand and bring the
entire stiff handled device to bear force and pressure on
the teeth and gums. Such operation may cause pain and
excessive wear and abrasion to teeth and gums. The
disclosed embodiment invention eliminates or lessens
much of those negative characteristics. The user of the
flexible handled toothbrush 10 can use much less force
and pressure on teeth and gums with a small amount of
pressure using the digit such as the thumb or index
finger, to guide the head portion 14. Such construction
tends to eliminate the use of the entire hand to
manipulate a long, stiff conventional handle that is
designed to be used with the entire hand and requiring
ergonomic design to lessen the negative features of having
to grasp with the entire hand a handle and twisting the
wrist. A conventional long handled toothbrush requires
twisting or manipulation of the hand and wrist. Whereas,
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the toothbrush 10 uses more manipulation of the digits
and less wrist action to place the flexible head portion 14
onto the teeth to be cleaned.
Further, the “Background Art” section describes the problem facing prisons
and other correctional facilities in “prevent[ing] the use of [an] otherwise safe device
as a weapon.” Many prison systems do not permit use of conventional toothbrushes
“because they may be fashioned into a pointed shaft or rod or otherwise used as a
shank for a sharp object such as a razor blade, which could be used to endanger
other inmates as well as security personnel.” The “Background Art” section further
describes respondent’s toothbrushes as a safer alternative to conventional
toothbrushes, because respondent’s toothbrushes use flexible material that is
difficult to fashion into a shank.
Petitioner argues that the Registered mark is de jure functional because the
scope of the Patent extends to the functional characteristics of (1) a rounded handle,
(2) a general barbell shape, and (3) bowed and tapered sides claimed in the
Registration. However, respondent posits that the “specific combination of all of the
features of the ‘304 Mark, functional and distinctive, is what the USPTO granted
[respondent] trade dress protection for, and not simply the three elements asserted
by [petitioner]”, and the “specific combination of all of the features” results in a non-
functional mark. Resp. Br. p.7. In support of this position, respondent points to the
three-dimensional, overall appearance of the Registered mark, and what it contends
is the “highly detailed” description of “a rear end portion being larger than the front
end portion,” specifically arguing that “while a barbell shape may have some
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functionality, an irregular, asymmetrical barbell shape cannot be related to
functionality in any way.” Id. p.6.
As the chart below makes clear, Claims 1 and 17 in the Patent claim the
essential features, and explain the utilitarian purpose, of the Registered mark,
including its three-dimensional, overall appearance:2
Registration Patent

Three-dimensional,
overall appearance of
a toothbrush

“A toothbrush comprising: an elongated body having
an enlarged smoothly rounded bristle brush head
portion and a handle portion the elongated body has a
top side and a bottom side, the elongated body has a
length along the longitudinal axis, a width along the
top and bottom side extending perpendicular to the
longitudinal axis and a thickness extended
perpendicular to the longitudinal axis between the
top and bottom side of the body;”

Rounded handle

“the handle portion being pliable and flexible along
its entire length and including an enlarged smoothly
rounded bulbous handle end portion to facilitate
handling of the toothbrush and … ”

General barbell
shape

“…a narrowed elongated intermediate smooth
continuous portion being composed of the pliable
flexible material to be limber in its unstressed
condition, and integrally connecting the enlarged
head portion and the enlarged handle end portion
substantially midway therebetween to facilitate
flexing of the toothbrush with one hand of an adult
user for stressing the pliable flexible material to
rigidify the body for teeth brushing purposes.”

Bowed and tapered
sides

“A toothbrush according to claim 1, wherein the body
has a curved edge extending between the brush head
and the handle portion.” [Claim 17]

2 All quotations in the chart are directly from Claim 1 in the Patent, unless otherwise
noted.
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“the thickness of the elongated body at the head
portion being tapered and increasing toward the
intermediate portion, and at the intermediate and
end portions being smoothly continuously tapered
and smoothly continuously decreasing toward a
narrowed tip of the end portion wherein the thickness
of the elongated body is greatest at the intermediate
portion;”

“wherein the flexibility of the material requires a
manually applied external force by the digit of the
hand of the user holding the toothbrush to flex the
handle portion substantially along its entire length to
make the body sufficiently rigid to facilitate use of the
toothbrush for teeth brushing purposes.”

“wherein the material of the body is sufficiently
flexible to enable the manually applied external force
to flex the handle portion into a smoothly rounded
shape.”

Ultimately, we find that the Patent discloses the utilitarian advantages of the
Registration, and claims the same, i.e., the overall combination of the rounded
handle, general barbell shape and bowed and tapered sides results in a toothbrush
that is safer than a conventional toothbrush for use in prisons and other
correctional institutions, and easier for the user to hold in one hand, thereby
enabling the user to clean his or her teeth more thoroughly and efficiently than
competing toothbrushes. Even assuming, arguendo, that the general barbell shape
is not functional, the Patent makes clear that utilitarian concerns dictate the
overall design of the Registered mark. See In re Becton, Dickinson and Co., 102
USPQ2d at 1376; Textron, Inc. v. U.S. Int’l Trade Comm’n, 753 F.2d 1019, 1025, 224
USPQ 625, 628-29 (Fed. Cir. 1985); In re Vico Prods Mfg. Co., 229 USPQ 364, 368
Cancellation No. 92051757

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(TTAB 1985). We are not persuaded by respondent’s argument that the “specific
combination of all of the features of the ‘304 Mark, functional and distinctive, is
what the USPTO granted [respondent] trade dress protection for, and not simply
the three elements asserted by [petitioner]”, and the “specific combination of all of
the features” results in a non-functional mark.” Claim 1 of the Patent claims each
of these three features.
As noted above, because neither party has made any evidence of record as to
two of the other three Morton-Norwich factors, and petitioner does not point us to
any alternative designs, we consider these factors neutral. In any event, as stated
previously, “a utility patent is strong evidence that the features claimed therein are
functional.” TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1005.
Thus, the existence of the Patent is highly probative, and weighs heavily in favor of
our finding that the Registered mark is de jure functional.
Decision: The petition for cancellation is granted. Registration No. 3430304
will be cancelled in due course.