The Oakland Corp.v.Nylok Fastener Corp.

Trademark Trial and Appeal Board

Nov 29, 1999

No. 91082061 (T.T.A.B. Nov. 29, 1999)

Hearing: Paper No. 175
January 14, 1999
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Oakland Corporation1
v.
Nylok Fastener Corporation
_____
Opposition Nos. 82,056; 82,057; 82,058; 82,059; 82,061;
82,082; and 82,179
_____
Thomas P. Liniak of Liniak & Berenato, LLC for The Oakland
Corporation.
Paul R. Vickrey and Dean D. Niro of Niro, Scavone, Haller &
Niro for Nylok Fastener Corporation
______
Before Hanak, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The Oakland Corporation has opposed the seven
applications owned by Nylok Fastener Corporation which are

1 In April 1998 opposer filed a motion to substitute ND
Industries as plaintiff, but on June 12, 1998 the Board denied
the motion because opposer submitted no documentary evidence of
any transfer of interest. In addition, there was inconsistent
use of the names “ND Industries,” and “ND Industries, Inc.” in
opposer’s motion paper.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
2
set forth below.2 All seven applications were filed seeking
registration on the Principal Register on June 1, 1987; all
seven include a statement that “the drawing is lined for the
color blue”; and applicant amended each of the applications
to seek registration under Section 2(f) based on a claim of
acquired distinctiveness.
(1) Ser. No. 73/663,7933 (2) Ser. No. 73/664,0454
(Opp. No. 82,056) (Opp. No. 82,057)

2 These seven opposition proceedings were consolidated by Board
orders dated July 6, 1990 and November 5, 1991.
3 In application Serial No. 73/663,793, the mark is described as
follows: “The mark is a patch of the color blue on a selected
number of threads of an internally threaded fastener, with the
blue patch extending less than 160 degrees around the
circumference of the fastener.” The claimed dates of first use
and first use in commerce are December 1971.
4 In application Serial No. 73/664,045, the mark is described as
follows: “The mark is a patch of the color blue on a selected
number of threads of an externally threaded fastener, with the
blue patch extending more than 90 degrees and less than 360
degrees around the circumference of the fastener.” The claimed
dates of first use and first use in commerce are October 1969.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
3
(3) Ser. No. 73/664,0835 (4) Ser. No. 73/664,0846
(Opp. No. 82,058) (Opp. No. 82,059)
(5) Ser. No. 73/663,7947 (6) Ser. No. 73/664,0488

5 In application Serial No. 73/664,083, the mark is described as
follows: “The mark is a patch of the color blue on a selected
number of threads of an internally threaded fastener, with the
blue patch extending more than 160 degrees around the
circumference of the fastener.” The claimed dates of first use
and first use in commerce are December 1971.
6 In application Serial No. 73/664,084, the mark is described as
follows: “The mark is a patch of the color blue on a selected
number of threads of an externally threaded fastener, with the
blue patch extending 360 degrees around the circumference of the
fastener.” The claimed dates of first use and first use in
commerce are October 1969.
7 In application Serial No. 73/663,794, the mark is described as
follows: “The mark is a pellet of the color blue on a portion of
a selected number of threads of an externally threaded fastener.”
The claimed dates of first use and first use in commerce are
December 1956.
8 In application Serial No. 73/664,048, the mark is described as
follows: “The mark is a pellet of the color blue on an
internally threaded fastener extending from the exterior of the
fastener to the interior surface of the fastener.” The claimed
dates of first use and first use in commerce are December 1956.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
4
(Opp. No. 82,061) (Opp. No. 82,082)
(7) Ser. No. 73/664,0859
(Opp. No. 82,179)
The identifications of goods in each of applicant’s
three applications depicting internally threaded fasteners
were published as “hex nuts, hex flange nuts, cap nuts and
bearing retaining nuts all made primarily of metal”; and the
identifications of goods in each of the four applications
depicting externally threaded fasteners were published as
“metal externally threaded fasteners, namely, screws, bolts,
studs and shafts and other specialty fasteners which are all
externally threaded.” On July 23, 1992, applicant moved to
amend the identifications of goods for the three
applications depicting internally threaded fasteners to
“prevailing torque locking fasteners, namely, hex nuts, hex
flange nuts, cap nuts and bearing retaining nuts primarily

9 In application Serial No. 73/664,085, the mark is described as
follows: “The mark is a strip of the color blue extending
perpendicular to a portion of a selected number of threads of an
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
5

externally threaded fastener.” The claimed dates of first use
and first use in commerce are December 1962.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
6
made of metal having a nylon locking element”; and to amend
the identifications of goods for the four applications
depicting externally threaded fasteners to “metal externally
threaded prevailing torque locking fasteners, namely,
screws, bolts, studs and shafts, and other specialty
fasteners having a nylon locking element.”10
By an order dated October 23, 1992, the Board deferred
a decision on applicant’s contested motion to amend the
identifications of goods until final decision or summary
judgment. Subsequently, on March 10, 1993, the Board
entered partial summary judgment in opposer’s favor that
applicant did not have substantially exclusive use of its
marks in commerce “as to the ‘broader identification of
goods set forth when the applications were published for
opposition.’”11 (We note that other companies, including
Long-Lok Fastener Corporation, SPS Technologies, Inc., Ajax

10 The Industrial Fasteners Institute (IFI), a trade association
of North American manufacturers of bolts, nuts, screws, rivets
and specialty formed parts publishes “An Introduction to Locking
Fasteners” which includes the following definition of “prevailing
torque”: “The torque necessary to rotate a fastener relative to
its mating component with the torque being measured while the
fastener is in motion and with zero axial load in the assembly.
Prevailing-on torque is the torque measured when the fastener is
being advanced toward its seated position. Prevailing-off torque
is the torque measured when the fastener is being removed.”
11 The Board denied opposer’s other motion for summary judgment on
the amended identifications of goods. Subsequently, in an order
dated August 23, 1996, the Board denied opposer’s third motion
for summary judgment, noting in footnote 3 that “applicant has
amended its identifications of goods to restrict them to
fasteners having nylon locking elements, thereby excluding Kel-F
elements.”
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
7
Metal Processing, Inc., and Loctite Corporation, filed
oppositions against various combinations of these seven
applications. All of those oppositions have been
dismissed.)
Opposer alleges in the notices of opposition that a
general practice of the many manufacturers of fasteners
which “has been very widely practiced for over 30 years” is
to apply a small patch of nylon “to the threads to cause the
[fasteners] to be locked to” the device with which it mates
(paragraph 5); that such fasteners are called ‘self-
locking,’ and the nylon added for self-locking purposes is
colorless if pigment is not added; that applicant’s asserted
mark is applied by adding a blue pigment to the nylon that
forms the nylon section; that opposer sells self-locking
fasteners and opposer also applies patches of nylon self-
locking material to the threads of fasteners owned by others
to their order; that opposer is likely to receive orders
from customers in the future specifying blue patches on
fasteners and if applicant obtains the registrations,
opposer would be damaged as it would be prevented from
filling such orders calling for blue sections; that it is
desirable to inspect self-locking fasteners after
manufacture but before they are sold, and these inspections
“can be more readily performed if a pigment is added to the
nylon which will contrast with the color of the fastener”
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
8
(paragraph 9); that blue is a suitable color for that
purpose as it is more readily visible than other colors;
that registrations to applicant would restrict opposer’s
right to use blue pigment to aid in inspections of the
fasteners; that fasteners with blue sections “have been used
in the past to indicate that the fasteners have threads and
dimensions conforming to metric system standards and to
differentiate such metric fasteners from those having
threads and dimensions conforming to different standards”
(paragraph 10); that “manufacturers of products using
fasteners have sometimes ordered fasteners with self-locking
members of different colors, including blue, each color
representing a different product on which the fastener is to
be used” (paragraph 10); that issuance of registrations to
applicant would restrict opposer’s ability to supply
fasteners having a blue patch for identification purposes;
that there are a large number of manufacturers of threaded
nuts and “many fewer colors which are suitable for coloring
self-fastening compounds to the threads of these fasteners”
(paragraph 12); and that registrations to applicant would
remove one of the colors from the public domain, restricting
the choice of colors available and reducing competition in
the industry.12

12 Opposition No. 82,082 did not include an allegation that nylon
added for self-locking purposes would be colorless if added
without a pigment; or an allegation that opposer also applies
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
9
Opposer, in view thereof, specifically states that its
grounds for the oppositions are: (1) applicant’s applied-for
marks are functional; and (2) applicant’s applied-for marks
have been used by a number of manufacturers for many years,
such that they have become generic, so that any rights of
applicant have been abandoned, and the applied-for marks
have no secondary meaning.13
In its answers applicant admits that nylon added for
self-locking purposes would be colorless if added without a
pigment,14 but otherwise denies the salient allegations of
the notices of opposition.15
The record consists of the pleadings; the files of the
seven involved applications; thirty-nine16 trial testimony
depositions,17 with exhibits (totaling approximately 4500

pellets of nylon self-locking material to the threads of
fasteners owned by others to their order. Also, opposer’s
allegation refers to a widely-practiced general practice of many
manufacturers of fasteners having been done for “many years,”
(rather than “30 years” as stated in the other cases).
13 In the Board order dated August 23, 1996, opposer’s allegations
of likelihood of confusion with two third-party registrations
were stricken from this consolidated case.
14 Inasmuch as such was not alleged in Opposition No. 82,082,
applicant did not admit same in that opposition.
15 In the Board order dated August 23, 1996, applicant’s
affirmative defenses of laches, estoppel, acquiescence and
unclean hands were stricken from this consolidated case as
inapplicable.
16 The testimony transcripts taken in this consolidated case
consist of 2 employees of opposer, 2 employees of applicant, 1
employee of applicant’s subsidiary Aerospace Nylok Corporation, 2
survey experts, and the remainder are of people employed by
manufacturers/distributors/processors/customers in the fastener
industry.
17 The transcript of the testimony of John Mack Bourdelais was
submitted by applicant in an inappropriate format. Specifically,
there were four pages of testimony per one letter-size page.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
10
pages of transcripts with about 250 exhibits); and sixteen
notices of reliance (including thousands of documents, and
several thousand pages of transcripts from depositions taken
in 1990 in lawsuits between the parties in the U.S. District
Court for the Eastern District of Michigan, Civil Action
Nos. 89 CV 71969 and 89 CV 71153, and one deposition taken
in 1988 in a lawsuit between the parties in the U.S.
District Court for the Northern District of Illinois, Civil
Action No. 88 C 7715).18 (For a detailed description of the
evidence of record in this consolidated case, see pages v-
viii of opposer’s brief; adopted by applicant in its brief
at unnumbered page 2 of its “table of contents”.19)

Although the Board considered the testimony, this format is not
acceptable as all transcripts are to be filed with the Board in
the format of one page of testimony per one letter-size page.
See, e.g., Trademark Rule 2.123(g)(1), which relates to trial
transcripts.
18 Applicant’s December 24, 1997 notice of reliance under
Trademark Rule 2.122(f) included 25 court deposition transcripts,
six of which (John Balderson,, Henry Jackson, Rudolph Petric,
Carlene Watts, Jack J. Zucker, and Richard B. Wallace) were
duplicates from the ten court deposition transcripts relied on by
opposer in its October 20, 1997 notice of reliance under
Trademark Rule 2.122(f). A party should not separately put into
the record material which has already been made part of the
record.
19 The Board notes that opposer’s description of the record
referenced only thirteen notices of reliance filed by the
parties. Opposer did not include its October 20, 1997 notices of
reliance (i) “on pleadings, orders, and interrogatory responses
from prior litigation between the parties pursuant to stipulation
between the parties” and (ii) “under 37 CFR § 2.120(j)(3)”; and
applicant’s December 24, 1997 notice of reliance “on documents
produced by The Oakland Corporation pursuant to stipulation of
the parties.”
The Board notes that applicant has marked two separate exhibits
with numbers 24, 25, 26, and 27. Because the similarly numbered
exhibits are different documents, the Board was able to ascertain
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
11
Both parties filed briefs on the case20 and were
represented by counsel at an oral hearing held before the
Board.
Essentially all of the testimony transcripts made of
record herein included objections by counsel. None of the
objections were preserved by either party by raising same in
their briefs on the case. See TBMP §718.04. Therefore, in
accordance with Board practice and procedure, the objections
raised by the parties during the depositions need not be
ruled on by the Board.
Twenty-eight of the thirty-nine trial testimony
depositions, many of the exhibits, and large portions of the
material submitted under the sixteen notices of reliance,
were submitted as confidential.21 Thus, the Board is

the appropriate exhibits to which the involved witnesses were
referring. (footnote continued)
Finally, the Board also notes that applicant’s exhibit Nos. 44-
48 were not included in applicant’s notebook of exhibits, but the
documents comprising those exhibits were of record in applicant’s
December 24, 1997 notice of reliance on documents produced by
opposer; and opposer’s exhibit No. 143 was not included in
opposer’s notebook of exhibits, but the documents comprising that
exhibit were of record in opposer’s October 20, 1997 notice of
reliance on documents produced by applicant. In each of these
instances, the Board has prepared photocopies to replace the
exhibits which were not included in the respective exhibit
notebooks.
20 Two briefs on the case were filed by each party, one with the
confidential portion redacted, and a separate copy without the
confidential portion redacted.
21 Both parties’ attorneys are advised that this practice violates
Trademark Rule 2.27 which provides that applications and all
Office proceedings related thereto are available to the public,
with the exception of appropriate confidential material. See
Trademark Rule 2.27(e). We note that the better practice for
both parties with regard to the deposition transcripts, exhibits
and notices of reliance would have been to submit the
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
12
severely limited in our discussion of the specific facts in
this consolidated case. Suffice it to say that many
specific facts of record (which were designated as
confidential and cannot be set forth in this opinion), as
well as the overall testimony (much of which was designated
as confidential and cannot be quoted), present a
significantly more compelling case in support of our
decision than this opinion otherwise conveys.
We would be remiss if we did not comment on the record
in and the history of this case. The oppositions were filed
on February 8, 1990, and continued until the oral hearing
was held on January 14, 1999. The Board is an
administrative tribunal of the Patent and Trademark Office
(Department of Commerce) empowered to determine the right to
register. See Sections 17, 18, 20 and 24 of the Trademark
Act. The Board has no authority to determine the right to
use, or the broader questions of infringement or unfair
competition. See TBMP §102.01. In light of our limited
jurisdiction, it is appropriate to point out, as we did
several years ago in the case of American Speech-Language-
Hearing Association v. National Hearing Aid Society, 224
USPQ 798, 800 (TTAB 1984), that: “It is inconceivable to
the Board that the issues raised by this petition for

confidential pages separately under seal, leaving the remaining
portion of the evidence as non-confidential, as provided in
Trademark Rule 2.27(e). See TBMP §416.06.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
13
cancellation warrant a record of this size and it is
unconscionable that such a proceeding should go on for
almost ten years from the time the petition for cancellation
was filed.” We strongly reiterate that comment with respect
to this consolidated opposition proceeding.
Despite the long history and the voluminous record in
this consolidated case, the only issues to be determined by
the Board are the following: (1) whether the seven applied-
for marks (the color blue in a nylon patch, pellet or strip
on threaded fasteners), when applied to “prevailing torque
locking fasteners, namely, hex nuts, hex flange nuts, cap
nuts and bearing retaining nuts primarily made of metal
having a nylon locking element” and to “metal externally
threaded prevailing torque locking fasteners, namely,
screws, bolts, studs and shafts, and other specialty
fasteners having a nylon locking element” are de jure
functional, and (2) if not, whether such marks have acquired
distinctiveness so as to be registrable on the Principal
Register under Section 2(f).
Opposer bears the burden of proving its claim that the
marks are de jure functional by a preponderance of the
evidence. See Brunswick Corp. V. British Seagull Ltd., 35
F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied,
115 S.Ct. 1426 (1995); and Yamaha International Corp. v.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
14
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988).
Applicant carries the burden of proving its asserted
claim of acquired distinctiveness. “The burden of proving
secondary meaning is on the party asserting it, whether he
is the plaintiff in an infringement action or the applicant
for federal trademark registration.” 1 Gilson, Trademark
Protection and Practice, §2.09, at 2-72 (1987), quoted in
Yamaha v. Hoshino, supra at 1006.
According to the record, there are many types of
fasteners which are utilized in a wide variety of end-
uses.22 Fasteners used in situations which expose them to
vibration, stress, temperature extremes and other such
situations are susceptible to loosening. These situations
call for a locking (or self-locking) fastener.
Self-locking fasteners are used in both military and
commercial applications, and specifically in industries such
as the following: automotive, aerospace, electronics, lawn
and garden machinery, appliances, outboard marine, and
recreational products such as ski bindings, skateboards, and
bicycles. There are several types of locking fasteners,

22 The parties have not argued, nor do we find, that the Fastener
Quality Act of 1990 (Public Law 101-592), as amended, effective
June 8, 1999 (Public Law 104-113 and Public Law 105-234), is
relevant to our decision on the question of the registrabiltiy of
the involved marks. However, this record is clear that there is
generally a paperwork trail for fasteners for “traceability”
purposes.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
15
including those with chemical adhesives, Kel-F23
thermoplastic material, or nylon locking elements. The
specific locking element needed on fasteners for a
particular situation is generally included in the order for
the fasteners requested by the end-use customer, and it is
often based on the specifications set forth by the end-use
company’s engineer. The end-use customer generally orders
fasteners from a manufacturer or distributor, with
relatively few orders placed directly with processors.
A nylon locking element is made in patch form by
spraying it onto the threads of the fastener, in pellet form
by drilling a hole into the fastener and press fitting a
nylon plug into it, and in strip form by drilling a slot
into the fastener and press fitting a nylon strip into it.
Nylon patch, pellet or strip element fasteners can be used
for temperatures up to 250ÛDQGWKH\FDQEHUHXVHG
(adjusted) multiple times.24
Locking fasteners comprise a small portion of the
overall fastener industry, and the nylon locking elements
obviously are only a portion thereof.

23 From the record, it appears that Kel-F is a trademark of
Minnesota Mining and Manufacturing. (Opposer’s exhibit No. 80
and applicant’s exhibit No. 4)
24 Kel-F material is applied in strip or pellet form, is more
expensive than nylon locking elements, is used for higher
temperature requirements than nylon, and is generally not
reusable. Chemical adhesives are sprayed onto the threaded
fastener in a patch configuration, and are generally not reusable
once the fastener is in place.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
16
We emphasize that since 1993 this case has involved
only nylon locking elements in patch, pellet and strip form
on metal prevailing torque fasteners, specifically
externally threaded screws, bolts, studs, shafts and
specialty fasteners, and internally threaded hex nuts, hex
flange nuts, cap nuts and bearing retaining nuts.25
Opposer and applicant are direct (and fierce)
competitors in the fastener business. They are the two
largest of about six or seven companies which process self-
locking fasteners with nylon locking elements.26 (Weaver-
assistant to the president of opposer corporation-dep., pp.
334-335.) The majority of both parties’ customers are
either manufacturers, or distributors of fasteners, with far
fewer direct, or end-use, customers. When nylon processing
is requested, then either the customer supplies the
fasteners and the processor processes them by adding a self-
locking material, or the processor both purchases the
fasteners and processes them for the customer.
Upon receipt of an order, whether it comes to the
manufacturer or distributor (who in turn orders from the

25 Applicant offered such limiting amendments to the
identifications of goods in each of its seven applications on
July 23, 1992, and summary judgment was entered against applicant
on the broader identifications of goods in the Board order dated
March 10, 1993. Interestingly, in applicant’s December 18, 1997
deposition of opposer’s president, Richard M. Wallace, the
witness did not seem to be aware of the exact nature of the
limitations applicant made to its identifications of goods in its
seven involved applications. (Dep., p. 22).
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
17
processor), or even the occasional end-use customer (who
orders directly from the processor), inquiry is not
generally made as to why a customer requested a particular
type or size of fastener or any other aspect of the
specification. However, if an order is unclear or includes
some inconsistency (e.g., requests two different types of
locking elements for a singe fastener), then presumably the
customer would be contacted to clarify the order.
Opposer’s predecessor was founded in 1955 (primarily as
a processor of fasteners for the automotive industry).
Opposer began selling nylon pellet fasteners in 1956, nylon
patch fasteners in 1969, and nylon strip fasteners in 1986.
Opposer began selling nylon locking elements in the color
yellow in 1957, and opposer continues to process the vast
majority of its nylon self-locking elements in yellow. In
fact, if a customer requests nylon patch, pellet or strip in
a color other than yellow, opposer attempts to convince the
customer to accept nylon elements in yellow, and opposer
charges a higher price for running a different color.
Applicant’s history also goes back to the mid-1950s
(having been founded primarily as a processor of fasteners
for the aerospace industry). Applicant first sold nylon
pellet fasteners in 1961, nylon patch fasteners in the early
1970s, and nylon strip fasteners in the 1960s. From 1954 to

26 Both parties also process Kel-F material, and chemical
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
18
1992 applicant sold over two billion units, which
constitutes millions of dollars in sales. Virtually all of
applicant’s nylon patch, pellet and strip locking elements
for fasteners have been produced in the color blue.27 If a
customer requests nylon patch, pellet or strip in a color
other than blue, applicant likewise attempts to convince the
customer to accept its normal colored nylon, and applicant
also charges a higher price for running a different color.
It is clear that processors of nylon locking elements
for fasteners have an economic incentive to use primarily
one color for this nylon because to change the pigment
powder for coloring the nylon requires shutting down the
machinery, cleaning it and setting up another color,
resulting in downtime and additional manufacturing cost.
Fasteners with nylon patch, pellet or strip locking
elements (for temperatures reaching 250Û)DKUHQKHLWPD[LPXP
which are ordered for the military, must meet the primary
government specification (MIL-F-18240). While the

adhesives.
27 The Board notes that in applicant’s July 21, 1993 answers to
opposer’s interrogatory Nos. 1 and 2, applicant defined the term
“blue” as used in its involved applications, in part, as: “The
color blue has the property of reflecting light of a particular
wavelength. The color blue is one of the primary colors and it
is also a distinct color of the spectrum. Nylok’s use of the
term ‘blue’ in its trademark application is no different from the
plain an [sic] ordinary meaning of the term in everyday
language.” Applicant identified the shades of blue it intends to
be covered by the term “blue” in its applications, in part, as
“all colors included within these limits (from the previously
stated range of Munsell colors) as well as all reasonable
equivalents and expansions thereof.”
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
19
percentage of nylon fasteners ordered under this military
specification is very small, nonetheless, for those which do
come under this specification, the manufacturer/processor is
required to produce the nylon patch, pellet or strip locking
elements in the color designated for that company (e.g.,
blue is assigned to applicant, yellow is assigned to
opposer, red is assigned to Aerospace Nylok Corporation--a
subsidiary of applicant, and green is assigned to Long-Lok
Fastener Corporation).28
On the commercial side, the Industrial Fasteners
Institute (IFI) publishes voluntary standards for prevailing
torque locking fasteners (IFI 124) as well as for chemical
adhesive locking fasteners (IFI 125).
A mark which constitutes a configuration of the goods
or their packaging is de jure functional if the
configuration of the product or container embodies a feature
which is superior to other available designs and thus
provides a competitive advantage to the user. See In re
Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9
(CCPA 1982). Functionality standards are equally applicable
when determining whether a color for which registration is

28 This military specification has existed for several decades,
and has been revised several times. The assignment of color is
not new, but for some years more than one company was approved to
produce a single color. The latest revision cancelled all
previous color assignments and required one color per
manufacturer. The 1989 revision allowed companies to deplete
existing stocks. However, there is no evidence that any
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
20
sought is de jure functional. See Brunswick Corp. v.
British Seagull, supra.
We note that the situation now before us is not that of
a color applied as the uniform color of the product itself
(e.g., gold/green color of a dry cleaning press pad as in
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
115 S.Ct. 1300, 34 USPQ2d 1161 (1995); pink insulation as in
In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ
417 (Fed. Cir. 1985); and a black outboard motor as in
Brunswick Corp. v. British Seagull, supra). Rather, this
consolidated case involves color applied to a product in a
defined design. See 1 J. McCarthy, McCarthy on Trademarks
and Unfair Competition, §7:45 (4th ed. 1999). In any event,
there is no question that color may be the subject of a
trademark. But, if the color is de jure functional, it is
not registrable as a trademark. See Qualitex v. Jacobson,
supra.
In this case opposer contends that the color blue in
nylon patch, pellet or strip locking elements of fasteners
is de jure functional because of the competitive need of
other fastener processors to make those nylon locking
elements in any color, including blue. Specifically,
opposer contends that customers of opposer and other
fastener processors sometimes demand the nylon locking

processors had existing stocks of any color other than their
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
21
element in blue; that blue shows up better than other colors
for purposes of the visual inspection of whether a nylon
locking element is on the fastener (e.g., brass, silver and
chrome plated fasteners all contrast better with blue than
with yellow or black); that blue is often used to indicate
metric fasteners or to indicate different size fasteners
(length or diameter); that applicant itself uses different
shades of blue to distinguish between Kel-F thermoplastic
products it processes and the blue nylon elements it
processes; that certain end users have adopted policies
utilizing or prohibiting certain colors for their own
purposes (e.g., some witnesses, albeit none from General
Motors, testified that at least for a time General Motors
did not allow red because they used that color to indicate a
rejected part); and that because there are only limited
colors that fall into the ‘better’ category for use on the
involved products, the color depletion theory prohibits
registration.
The record shows that use of the color blue to identify
metric fasteners came into practice in the 1970s, but such
practice involved use of the color of the plating on the
entire fastener rather than on the nylon locking element
itself. Further, even some of opposer’s witnesses testified
that when color coding to differentiate metric from inch

primary color.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
22
fasteners, customers used colors other than blue for metric.
(See the testimony of e.g., Deborah Lee Douglas, general
manager and purchasing manger, Northwestern Industrial
Division of Distribution Dynamics, Inc.--customer ordered
red to indicate metric; and Harrington Moore, president,
Harrington Moore, Inc.--customer ordered yellow to indicate
metric.) Moreover, it appears that metric fasteners are now
marked in some manner on the head of the fastener, and that
coding them by color has long since died in practice.
Further, there is certainly no convincing evidence that
color is or must be used on nylon locking elements in patch,
pellet or strip form to identify and differentiate between
sizes of fasteners (diameter and/or length), or that even if
color is so used, that it must involve blue. There is
limited evidence of a few customers who requested two
separate colors (not necessarily including blue) to
differentiate sizes for their own purpose, whatever that may
have been. But these situations are so minuscule in terms
of the amount of total product involved as to be
insignificant. Opposer has not proven that producers of
self-locking fasteners have a competitive need to use the
color blue for the nylon locking element to differentiate
either metric from inch or to indicate various fastener
sizes.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
23
Likewise, with regard to opposer’s allegation that
there is a need to use blue because its visibility makes it
one of the “best” or “better” colors for seeing the nylon
locking element is simply not established on this record.
Rather, many witnesses testified that on those occasions
when orders do include a specified color, there is not
necessarily any follow up to ascertain why a customer wanted
a particular color. Generally, the only follow up on
specific color requests is to determine if the customer can
be convinced to allow processing the nylon element in the
primary color used by the involved processor. It is true
that some witnesses testified that some colors are better in
terms of being easily visible in contrast to the fastener
itself (i.e., blue, green or red) while other colors are not
as highly visible (e.g., silver, black). But this testimony
does not prove that the color blue must be available to all
processors as a color for the involved nylon locking
elements in order for opposer (and others) to remain
competitive. Moreover, frequently the witnesses simply
represented that individual’s personal preference in color,
and/or named many colors as being “visible.”
There is no question that Kel-F thermoplastic material
has been produced by applicant as well as other companies in
the color blue, and also that chemical adhesives are applied
by several companies in a variety of colors, including blue.
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
24
Further, it is difficult to tell Kel-F material from nylon
by visual inspection only, but some witnesses did testify
that they could distinguish the products by touch. There is
conflicting testimony as to whether chemical adhesives can
be distinguished from nylon by visual inspection only.
However, some witnesses testified that chemical adhesives
are distinguishable from nylon on visual inspection only
because the adhesives are thinner in application. Although
there is conflicting testimony, we find on this record that
generally neither Kel-F material nor chemical adhesives
serves the same function, nor are they confused in the
industry with nylon locking elements. Even though at least
some companies produce all three products, the products do
not realistically compete and are not confused in the
marketplace.
The traditional color depletion theory does not apply
to prevent registration of applicant’s marks in this case.
Opposer has not proven that a blue color in the nylon
locking element in patch, pellet and strip form is used by
relevant purchasers to distinguish metric or different size
fasteners, or that the color blue is necessary as a “better”
color in terms of visibility on the fastener, or that
customers demand a color, including blue, for any functional
purpose on the involved goods. Cf. Kasco Corp. v. Southern
Saw Service, Inc., 27 USPQ2d 1501 (TTAB 1993).
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
25
To the contrary, this record shows that most customers
seeking fasteners with nylon locking elements do not usually
demand a color at all, nor do they even care about the
particular color of the locking element. They are more
concerned with the performance of the product. When a
customer does request a specific color nylon patch pellet or
strip element, the processor generally attempts to convince
the customer to accept the color primarily run by that
processor.
Finally, as additional evidence that there is no
competitive need for processors to use the color blue for
these goods, even opposer once indicated that the use of
multiple colors for these goods was “of little importance”
in their current business. Opposer ran an advertisement
titled “ND Patch®...a coat of many colors!” (applicant’s
exhibit 27—Weaver dep.) in which the background color is
yellow with the exception of a blue square in the upper
right portion of the page, and within the square are various
externally threaded fasteners showing different colors
thereon. The text reads, in part, as follows:
What color would you like? Customers
sometimes ask for our self-locking 90Û
Patch or 360Û5LQJ3DWFKLQDFRORURWKHU
than its traditional yellow color.
Regardless of color, the popular ND Patch
process makes your fasteners self-locking
and self-sealing while leaving them fully
adjustable and reusable....And it’s QPL-
18240 listed. (Emphasis in original)
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
26
A complaint was made to opposer by a manufacturer (who
opposer alleges was made aware of the ad by applicant)
regarding the reference in the ad to QPL-1824029 when
opposer is only approved on that list for yellow.
Thereafter, Richard M. Wallace, president of opposer, sent
an in-house memo dated March 24, 1993, in which he stated,
inter alia, that “[w]hile this is of little importance to
our current business, it is impossible to know what the
future has in store...all parts processed per MIL-F-18240
must be done in or [sic] assigned yellow color.” (Emphasis
in original). (Applicant’s exhibit No. 28)
The voluminous record before us does not establish that
registration of the color blue for applicant’s nylon patch,
pellet and strip locking elements is prohibited based on
competitive need. See Brunswick Corp. v. British Seagull,
supra. The color blue for a nylon patch, pellet or strip
does not serve a functional purpose that must be available
to all nylon processors in order for companies in this
industry to effectively compete. Rather, the record is
replete with evidence that competing fastener processors
produce their nylon patch and/or pellet and/or strip nylon
locking elements in primarily a single color (e.g., opposer
in yellow, applicant in blue, Ajax Bolt and Screw in pink,
Aerospace Nylok Corporation--applicant’s subsidiary--in

29 QPL is an acronym for the “qualified products list” which
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
27
red); that they have done so for many years (in some cases
for decades); and that there is significant recognition of
this practice in the industry.
We find, therefore, that the seven applied-for marks
are not de jure functional.30
Turning then to the question of whether the marks in
the applications have acquired distinctiveness, we initially
note that since there are seven separate applications,
opposer has argued that applicant’s utilization of
collective sales and advertising figures and other
collective evidence does not establish secondary meaning for
each of the seven marks separately. We acknowledge that
much of applicant’s evidence of acquired distinctiveness was

refers to products qualified under the military specification.
30 Opposer argues that in the federal civil actions between the
parties, applicant “incredibly agreed to an Order entered on
March 6, 1992 that gave up any right or remedy based upon
infringement of its alleged blue trademarks” from the date of a
prior Consent Judgment order (May 29, 1991) to the date the
Patent and Trademark Office renders a decision on the
registrability of these marks. Opposer further argues that
applicant has thus “voluntarily forfeited any common law
trademark rights” it had previously alleged. (Opposer’s brief, p.
17, emphasis in original). Applicant contends that it did not
consent or acquiesence to opposer’s use of the color blue for the
involved goods, nor did it agree to anything amounting to an
absolute forfeiture of its rights. Rather, applicant asserts
that it simply delayed its right to pursue relief against
opposer. We agree with applicant. Opposer’s interpretation
takes the consent to an illogical extreme; and we disagree with
opposer that the case of Mine Safety Appliances Company v. The
Electric Storage Battery Co., 405 F.2d 901, 160 USPQ 413 (CCPA
1969) requires a different result herein. We also believe that
opposer’s interpretation of the consent order would certainly
discourage settlement of cases before the District Courts. (With
regard to other parties, applicant points out that it has
successfully taken action against several other entities to
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
28
commingled. We also acknowledge that the record shows that
applicant sells far more externally threaded fasteners than
internally threaded fasteners, and that applicant sells more
90ÛWRÛQ\ORQSDWFKHOHPHQWVWKDQÛQ\ORQSDWFK
elements, and more nylon patch elements than nylon strip
elements. However, based on the overall evidence, including
testimony and other evidence (e.g., advertising and
brochures of numerous fastener companies--including that of
both opposer and applicant), we find that in this particular
industry it is common to advertise the various types of
nylon locking elements (patch, pellet, and strip) together;
it is common to advertise the different available locking
elements offered by a company (e.g., adhesive, Kel-F, and/or
nylon) together; and it is common for processors of these
nylon locking elements to produce primarily only one color.
We want to make plain that we are convinced on the record
before us that applicant has met its burden of proving
acquired distinctiveness for each separate application.31

protect its blue trademark, especially subsequent to the case of
Qualitex v. Jacobson, supra.)
31 Following the Board’s March 10, 1993 order (entering summary
judgment against applicant on the original identifications of
goods, and denying summary judgment on the amended
identifications of goods), opposer filed a petition to the
Commissioner requesting that the denial of summary judgment be
reversed or alternatively that the seven applications be remanded
to the Examining Attorney for ex parte review of the showings of
acquired distinctiveness. On April 26, 1994 the Commissioner
denied the petition explaining that review of a Board decision on
a summary judgment motion is not reviewable by the Commissioner.
As to applicant’s alternative request that the applications be
remanded to the Examining Attorney, the Commissioner explained
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
29
The reality is that blue has been applicant’s primary color
for nylon locking elements in patch, pellet and strip form

that in an inter partes proceeding before the Board the
application is not remanded, but rather issues relating thereto
are determined by the Board from the trial evidence pursuant to
Trademark Rule 2.133(a).
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
30
for decades and fastener manufacturers and/or distributors
and/or other processors recognize this.
The testimony shows that applicant has sold a
prevailing torque self-locking fastener with a blue-colored
nylon element since the mid 1950s (the patch was first
developed and used on externally threaded fasteners); and
that it has advertised and promoted its blue-colored nylon
locking elements since that time. Applicant has made of
record catalogs, brochures and/or advertisements going back
to 1970 which have a background color, printed words, and
applicant’s nylon locking element, all in blue (e.g.,
applicant’s exhibit Nos. 53-55); and there are recent
advertisements which likewise emphasize the color blue, and
are titled “True Blue.” (Applicant’s exhibit Nos. 17-18).
Applicant established significant sales (in dollars and
in units), as well as substantial advertising and
promotional expenditures.32
Of most importance on the question of acquired
distinctiveness is the purchasing public’s perception and
understanding of the applied-for mark. In this case, the
record is clear that blue is perceived as identifying the

32 Applicant’s vice president of administration, and director,
Sharon Easton, provided sales figures for blue nylon locking
elements for 1954-1997, and advertising figures for 1987-1997.
Applicant’s exhibit Nos. 49, 50 and 51. (Opposer’s assistant to
the president, Mickey Weaver, provided opposer’s sales figures
for blue nylon for pre-1982, and 1982-1992. Opposer’s exhibit
No. 124.)
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
31
source of applicant’s nylon locking elements. Even several
of opposer’s witnesses recognized blue as identifying the
source of the goods, and most of those specifically
recognized the source as applicant. See, e.g., the
following testimony:
(1) Thomas J. Waller, Jr., president, Hi-Tech
Fasteners (distributor of fasteners for the
electronics industry), 18 years experience in the
fastener industry, pp. 35-36;
(2) Thomas T. Turner, branch manager, Alatec Products
(distributor of fasteners for the aerospace
industry), 23 years experience in the fastener
industry, pp. 23-24, 101, 107;
(3) Randy Ammon, president, Long-Lok Fasteners
Corporation (processor of fasteners), 29 years
experience in the fastener industry, pp. 77, 102;
(4) Bryan Wayne Huey, president B & L Bolt Company
(distributor of fasteners in the appliance,
furniture, manufactured goods industries), 21
years experience in the fastener industry, pp. 22-
23;
(5) Stephen Smith, vice president marketing, The
Bradley Group (processor of chemical adhesives to
fasteners for automotive, computer, farm
vehicles), 26 years experience in the fastener
industry, pp. 42-44; and
(6) Norman D. Young, assistant general manager, Komar
Screw Corporation (manufacturer and distributor of
fasteners for the small motor market-small
appliances, commercial trailers), 30 years
experience in the fastener industry, pp. 17, 23,
37-38.
Even opposer’s president, Richard M. Wallace,
acknowledged (reluctantly) that applicant runs primarily
blue nylon locking elements and opposer runs primarily
yellow. (Wallace dep., pp. 62-63)
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
32
Not surprisingly, applicant’s witnesses (except the
survey witness, and opposer’s president) each testified that
he or she associates a particular color with an individual
processor, specifically including blue-colored nylon locking
elements with applicant. Even after cross-examination where
opposer’s attorney pointed out there were some exceptions in
that applicant had processed nylon elements in colors other
than blue and that other companies had processed nylon
elements in blue, applicant’s witnesses’ testimony
essentially remained that they associated color with the
manufacturer or processor, and specifically that blue
identified applicant as the source of the goods.
Also, during rebuttal opposer took the testimony of
four people involved in the business of making nylon collar
ring inserts (full 360ÛFLUFXPIHUHQFHIRUORFNQXWV
Without a lengthy explanation, suffice it to say that these
goods do not compete with nylon locking elements in patch,
pellet or strip form. In fact, opposer’s rebuttal witnesses
testified that color is used to identify the source of nylon
collar ring insert locknuts (yellow for Abbott Interfast,
blue for Industrial Nut Corporation, green for Greer Stop
Nut Incorporated, and purple for Continental Aero); that
several of these companies have federal registrations for
their claimed color for locknuts; and that nylon ring collar
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
33
inserts and nylon patch, pellet and strip elements do not
compete as they are used for different situations.
Opposer has shown incredible perseverance, involving
examination and scrutiny of thousands of individual orders,
invoices and other documents, and taking the testimony of
many witnesses, in its effort to show that blue-colored
nylon locking elements have been ordered from companies
other than applicant, and that applicant has produced nylon
locking elements in colors other than blue. But these
exceptions (both applicant’s production of non-blue nylon
locking elements, and other processors’, including
opposer’s, production of blue nylon locking elements)
clearly do not represent the general practice in the
relevant industry; and in fact, each number is an
insignificant fractional percentage of the total number of
nylon locking elements involved.
Besides being very insignificant in total amount
involved, many of the exceptions to applicant’s production
of non-blue colored nylon locking fasteners are fully
understandable in the business world. For example, when
applicant acquired Aerospace Nylok Corporation it then
produced primarily red nylon elements through that company,
and applicant continues to do so; and when applicant
acquired Torkon Fastener Corporation it produced primarily
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
34
plum colored nylon elements for those customers for a few
years until that was phased out.
Opposer’s evidence that applicant produces different
colored locking elements for other uses, e.g., a nylon
locking element in the color orange (sold under the mark
Nytemp) for applications where temperatures reach 450Û
Fahrenheit, Kel-F thermoplastic material, and a line of
chemical adhesive coatings in different colors does not
negate applicant’s trademark in blue-colored nylon locking
elements in patch, pellet and strip form. This is so
because, as explained above, on the record before us it
appears that the scientific properties and capabilities of
nylon, chemical adhesives, Kel-F thermoplastic material, and
other locking materials are not interchangeable and the
industry and the customers are aware of that and will act
accordingly. That is, different fasteners and different
locking elements perform separate and distinct functions of
which the relevant purchasers are aware, and, therefore, the
various types of locking fasteners generally do not directly
compete and are not confused in the marketplace.
Opposer, perhaps based on its fierce business
competition with applicant, has simply researched hundreds
if not thousands of individual orders, invoices, etc., in
order to find the very few exceptions to applicant’s use of
blue for these goods. Opposer has shown that the paperwork
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
35
in the fastener processor business is not perfect, and that
applicant, opposer and other processors have processed
extremely small amounts of nylon locking element fasteners
in colors other than the primary or traditional color
provided by that company. Nonetheless, there is ample
evidence (such as testimony of recognition by many
witnesses, including some of opposer’s own witnesses) that
applicant’s use of the color blue as described and as used
on the specific goods identified in applicant’s seven
applications has been substantially exclusive, and that the
color blue on these goods has acquired distinctiveness and
is thus recognized as identifying the source of the goods.
In sum, applicant has established by a preponderance of
the evidence (considered in its entirety) that it has had
substantially exclusive and continuous use of the color blue
for the patch, pellet, and strip nylon locking element on
the involved fasteners for decades; that applicant’s sales
account for the vast majority of blue nylon locking elements
on the market and in fact the amount not produced by
applicant is but a fractional percentage; that applicant has
expended substantial sums on advertising and promoting the
color blue for nylon locking elements for decades; that it
has accomplished huge sales both in terms of dollars and
number of units; that the relevant purchasers, as well as
competitors, recognize the color blue for these nylon
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
36
locking elements on these goods as identifying the source of
the goods (and usually they specifically recognize blue as
identifying applicant as the source); and that for the small
segment of this market calling for compliance with the
military specification, applicant has been assigned the
color blue and, in the most recent revision, applicant is
the sole company assigned the color blue. See Section 2(f)
of the Trademark Act; and Yamaha v. Hoshino, supra.
Applicant has also submitted the testimony, as well as
a report, from Sarah Parikh, applicant’s survey expert.
Opposer, through the testimony of its expert, Dr. Robert
Sorensen, has criticized the survey as to the methodology,
validity and reliability thereof. (For example, opposer’s
expert witness criticized the use of a telephone survey in
the circumstances of this case, the identified companies
used as the population, inadequate screening questions,
leading questions, and faulty final calculations due to
ambiguous wording.) Dr. Sorensen found the survey “cannot
be relied upon as valid evidence in helping to resolve the
issues of secondary meaning...” (Sorensen declaration,
paragraph 54--opposer’s exhibit No. 182); and he also stated
“that [applicant’s] survey seriously falls short of
relevance and validity, and therefore cannot be relied upon
in evaluating the claims of Nylok concerning blue as a
trademark...” (Sorensen declaration, paragraph 64--opposer’s
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
37
exhibit No. 182). In its brief on the case, opposer argues
that the survey is fatally flawed and unreliable, and
“[a]ccordingly, little or no weight should be given to
[applicant’s] survey, except to demonstrate that many in the
industry are confused as to the meaning of the terms
‘prevailing torque locking’, ‘patch’, ‘pellet’, ‘strip’
and/or ‘nylon’.” While we agree with some of opposer’s
specific concerns about the design, implementation and
interpretation of the survey, we need not reach this matter
because we find that applicant has established secondary
meaning for its seven involved marks without needing to rely
on its survey.33
Finally, opposer’s argument that it is entitled to
prevail because applicant engaged in inappropriate conduct,
including witness tampering, concealment of applicant’s
survey witness, and concealment of facts during the ex
parte prosecution of the applications, is not supported by
the evidence.
Decision: The oppositions are dismissed, and the

33 Surveys are not required in Board proceedings. As the Board
has noted: “We appreciate the significant financial cost of
surveys. Moreover, we obviously recognize the limited
jurisdictional nature of Board proceedings, wherein only rights
to registrability, not use, are determined.” See Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d 1423,
1435-1436 (TTAB 1993).
Opposition Nos. 82056; 82057; 82058; 82059; 82061; 82082 & 82179
38
applications will proceed to issuance under Section 2(f) of
the Trademark Act.
E. W. Hanak
G. D. Hohein
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal