Tomima L. Edmark

Trademark Trial and Appeal Board

Jun 10, 1999

No. 75059147 (T.T.A.B. Jun. 10, 1999)

Hearing: Paper No. 13
May 28, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 10, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tomima L. Edmark
________
Serial No. 75/059,147
_______
Anna R. Conyers of Baker & Botts, L.L.P. for Tomima L.
Edmark
Jeri J. Fickes, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Tomima L. Edmark has applied to register, pursuant to
the provisions of Section 2(f), the following configuration
as a trademark for a “hair loop tool used for hair
styling.”1 The application includes the following
description: “The mark consists of the configuration of a
Ser No. 75/059,147
2
hair styling tool composed of a plastic loop attached to a
straight handle.”
A final refusal of registration issued pursuant to
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. 1051,
1052 and 1127, on the ground that the proposed mark is de
jure functional.2
Applicant filed the instant appeal. The case has been
fully briefed, and both applicant and the Examining
Attorney were present at an oral hearing before the Board.

1 Application Serial No. 75/059,147, filed February 16, 1996,
asserting first use in May 1992 and first use in commence in June
1992.
2 On October 30, 1998, the Trademark Act was amended to list
functionality as a specific ground for refusal. See Section
2(e)(5), "comprises any matter that, as a whole, is functional."
Although the amendment does not affect our analysis herein,
because the statute was amended after the application was
examined and the appeal was briefed, we have referred to the
statutory ground for refusal as indicated by the Examining
Attorney.
The Examining Attorney had originally also refused registration
on the ground that the proposed mark was not inherently
distinctive. When the Examining Attorney accepted applicant’s
Section 2(f) claim, this refusal was withdrawn. Accordingly, the
issue of the distinctiveness of applicant’s mark is not before
us.
Ser No. 75/059,147
3
Applicant seeks registration for the configuration of
a hair styling tool. The hair tool itself is used,
essentially, to invert a ponytail, and thereby create
different hair styles. According to applicant’s literature
and instructional videos, the tool is drawn part way
through the ponytail, the hair of the ponytail is then
passed through the loop of the tool, and the tool is then
pulled through the hair to invert the tail of hair. The
configuration, as shown by the drawing and the specimens,
consists of a single piece of material (which, in fact, is
plastic), with a teardrop-shaped loop at one end of a flat
straight handle, and a pointed tip at the other end of the
handle. The loop portion of the tool is slightly smaller
in length as compared with the handle.
A configuration is considered de jure functional, and
therefore not registrable, if it is so utilitarian as to
constitute a superior design which others in the field need
to be able to copy in order to compete effectively. In re
Edward Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999); see
also, In re Teledyne Industries, Inc., 696 F.2d 968, 217
USPQ 9 (Fed. Cir. 1982); In re Morton-Norwich, Inc., 671
F.2d 1332, 213 USPQ 9 (CCPA 1982). Evidentiary factors
which are useful in demonstrating such de jure

Ser No. 75/059,147
4
functionality include the existence of a utility patent;
whether the applicant touts the utilitarian advantages of
the design through advertising; the availability of
alternative designs; and whether the design results from a
comparatively simple or cheap method of manufacturing the
article. In re Morton-Norwich Products, Inc., supra.
In this case, there is no evidence that applicant
touts the utilitarian advantages of the design. In this
connection, we have given no weight to the Examining
Attorney’s speculation that advertising touting the
utilitarian advantages of the design might exist.
There is also no evidence that applicant’s design
results from a comparatively simple or cheap method of
manufacturing the article. We agree with the Examining
Attorney, however, that applicant is in the best position
to provide this information, and it would have been helpful
if applicant had provided information about the method of
manufacture of its own product and, if possible,
information about how such tools are generally
manufactured, rather than simply stating that it has no
information about other companies’ manufacturing methods
and costs. See In re EBSCO Industries Inc., 41 USPQ2d
1913, 1915 (TTAB 1997), noting that applicant’s director
had submitted an affidavit stating that applicant’s lure is
Ser No. 75/059,147
5
made by injection molding of plastic, and there is no
appreciable cost difference in creating a mold for one lure
shape as opposed to another.
Although there is no evidence that applicant touts the
utility of its configuration in its advertising materials,
or that the configuration results from a cheaper method of
manufacture, the record does include a utility patent and
information with respect to alternative configurations.
Applicant owns a utility patent for a hair styling
tool. The illustration of the tool, which forms an
embodiment of the invention, is very similar to the
configuration sought to be registered. The illustration
shown in the patent and the mark shown in the trademark
application are depicted below.
The patent indicates the utilitarian advantages of
many of the features of the configuration which is the
subject of the trademark application. In particular, the
Ser No. 75/059,147
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patent describes a relatively elongate and inflexible probe
having a point at one end of the probe and a flexible loop
at the other. The patent indicates the advantages of these
features. For example, the patent states that “the point
allows the probe to be inserted to glide with little
friction through the hair, and without pulling excessively
on the hair itself.” As for the flexible loop, “the
flexibility of the loop allows it to flatten or deform as
it is pulled through the hair, yet rebound to its natural
ring shape.” “The deformation occurs in the flexing of the
material forming the loop, which allows the opening through
the loop to conform to the hair.”
We note that the patent shows the tool with a
cylindrical probe, and with the end of the probe extending
with a point somewhat into the loop, while the probe in the
mark sought to be registered is flat and while loop end of
the probe tapers, it ends at the beginning of the loop.
However, we do not regard these differences as indicating
that the configuration as a whole does not have a superior
utilitarian design. In fact, it appears that the
configuration shown in the trademark application is
superior to that shown in the patent illustration, in that
it does not have a pointed end extending into the loop,
thus avoiding the possibility of such an end catching in or
Ser No. 75/059,147
7
pulling excessively on the hair tail as it is pulled
through the loop. Further, because there is no pointed end
extending into the loop, the flat probe provides an
advantage over the cylindrical probe referred to in the
patent. If a cylindrical probe were to end at the loop,
instead of extending into the loop, it would appear that
the junction of the cylindrical probe with the loop would
narrow such that this would be a weak point and could snap
during use. It would also appear that to thicken the
junction to avoid this weakness would require greater
bulk/material, which in turn could increase manufacturing
costs. Thus, the use of a flat probe appears to provide
design advantages over a cylindrical probe.
Applicant has argued that her patent includes various
embodiments of the elements claimed in the patent, e.g.,
"the triangular point [at the tip of the probe" is only one
of many different types of equivalent points," brief, p.
11; the "cylindrical" probe would encompass a probe which
is tubular, triangular, spiral or other shape. This
argument is not persuasive. To the extent that applicant
asserts that the configuration does not represent a
superior design, but that alternative versions are covered
by the patent, as we pointed out above, the illustration in
applicant’s utility patent contains most of the elements of
Ser No. 75/059,147
8
the applied-for configuration as the preferred embodiment
of the claimed invention. Further, even if variations on
that preferred embodiment are encompassed by the patent,
there cannot be substantial variations from the
illustration. See In re Edward Ski Products Inc., supra.
The other Morton-Norwich factor on which evidence has
been submitted is the existence of other hair styling
tools. There is some confusion about the number of
alternative designs which are of record. Applicant asserts
that, allowing for duplicates, there are at least eleven
alternative designs which have been submitted, while the
Examining Attorney states that there are only nine. After
carefully reviewing the photographs of the various hair
styling tools, we agree with the Examining Attorney that
there are nine shapes which have been submitted.
Moreover, many of these shapes are mere variations of
each other. For example, three of the tools consist of an
open strand of plastic which must be hooked or held
together to form a loop through which the hair can be
pulled. These three tools are clearly not equivalent
alternatives to applicant’s tool; they would be harder to
use because, as the Examining Attorney points out, they
would have to be manipulated into closed shapes.
Ser No. 75/059,147
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Similarly, two of the other tools are essentially the
same elongated oval shape, with the only real difference
between them being that one probe has a pointed tip and the
other a blunt end. Three other tools have more complicated
loop shapes which appear to be more likely to catch the
tail hair, or at least be more difficult to maneuver. In
fact, there is only one tool which has the flexible loop
which is touted as an advantage in applicant’s patent
because it can "conform to the hair" and "deform under the
influence of external forces" as it is pulled through the
hair tail. That tool has a blunt, rather than pointed,
end, so it obviously does not have the utilitarian
advantage of applicant’s tool since the pointed tip,
according to applicant’s patent, allows the probe to be
inserted in the hair tail without pulling excessively on
the hair itself.
Thus, although there may be alternative shapes for
tools used to invert a tail of hair to create pleasing hair
styles, based on the present record we find that
applicant’s configuration is the best, or at least one of a
few superior designs. See In re Lincoln Diagnostics Inc.,
30 USPQ2d 1817, 1824-25 (TTAB 1994) and cases cited
therein.
Ser No. 75/059,147
10
In view of the utilitarian advantages of applicant’s
configuration, as shown by her patent, and the lack of
equivalent alternative designs, we find that applicant’s
configuration is de jure functional.
Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial and Appeal Board