Weldas Company, L.P.

Trademark Trial and Appeal Board

Sep 13, 2005

No. 76462561 (T.T.A.B. Sep. 13, 2005)

Mailed:
13 September 2005
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Weldas Company, L.P.
________

Serial No. 76462561
_______

Melvin K. Silverman of Melvin K. Silverman & Assocs., P.C.,
for Weldas Company.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Walters, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Weldas Company, L.P. (applicant) filed an application
to register the mark shown below on the Principal Register
for goods ultimately identified as “protective helmet pads
incorporating sweatbands therein for purposes of cooling,
anti-vibration and comfort” in Class 9.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76462561
2

The application was filed on October 28, 2002, and it
claimed a date of first use anywhere and a date of first
use in commerce of March 1, 1994. The application as
originally filed contains the following description of the
mark: “The mark consists of a rectangle having a generally
brown color and having a generally yellow linear strip
along one major base thereof. A pattern having the
appearance of stitching defines the periphery of the mark.”1
The examining attorney ultimately refused registration
on the grounds that the design is functional under Section
2(e)(5) of the Trademark Act (15 U.S.C. § 1052(e)(5)). In
addition, the examining attorney refused registration on
the ground that “the proposed mark is not inherently
distinctive and would not be perceived as a source
indicator of applicant’s goods.” Brief at 2. The
examining attorney explained that the “proposed mark is not
distinctive. The proposed mark is not unique or unusual

1 The lining appears to correspond to the standard color lining
for the colors brown and yellow that were set out in previous
USPTO rules. See 37 CFR § 2.52(e) (1997).
Ser. No. 76462561
3
for … protective helmet pads, it is a common basic shape or
design for such goods.” Final Office Action at 2.
After the examining attorney made the refusals final,
an “Examiner’s Amendment” was made and it inserted the
following statement in the record: “The lining shown in
the drawing is a feature of the mark and does not indicate
color.”
Applicant has sought review of the examining
attorney’s refusals.
We begin our discussion by reviewing the specimens of
record. The following is applicant’s specimen.

The enlargement of the bottom left hand corner reveals the
mark for which applicant seeks registration.
Ser. No. 76462561
4

Applicant’s helmet pads as used on liners are shown below.

We briefly address the examining attorney’s refusal on
the ground that the mark is de jure functional. The
examining attorney argues (Brief at 4) that the “record
consists of advertising literature from applicant’s website
[example below] and www.google.com that praised the design
advantages of its configuration.”

Ser. No. 76462561
5

However, we do not discern that the mark applicant is
applying for is the configuration of its goods. Once the
specimen is studied closely, the mark is not a depiction of
the product and it is clear that applicant’s mark is
exactly what appears in the drawing, i.e., a design
consisting of a rectangle with lining. However, in
response to the refusal, applicant argues that its “product
consists of several attributes which distinguish it from
others, i.e., stitching, use of Velcro, the shape of the
product, trade dress and other various distinctive
attributes. As such, the representation of the product
through a distinctive design is most capable of identifying
the source and distinguishing it from other sources.”
Brief at unnumbered page 4. It is not clear what relevance
these features of its product have to do with the
Ser. No. 76462561
6
registrability of its mark, which is merely a rectangle
design with lines. There is no evidence that applicant’s
product is a rectangle with lines, i.e., applicant’s mark
as it appears in the drawing and on the specimens is not a
representation of the product. To the contrary,
applicant’s product appears to be a solid color, and its
rectangular shape is longer and narrower than the rectangle
depicted on the lower left corner of the specimens and in
the drawing of the mark.2
In contrast, applicant’s specimens show the mark as
indicated earlier:

Therefore, we must reverse the refusal on the ground that
the mark is functional because there simply is no evidence
that the rectangle as shown above with lines is a depiction
of the product or that it is otherwise de jure functional.

2 Applicant also confusingly argues that “if one were to view the
mark without further description of the product, he or she would
probably not know what it is.” Brief at unnumbered page 3. It
is not clear why applicant’s design would have to be recognized
as anything other than what it is, i.e., a rectangle with lines.
Ser. No. 76462561
7
Next, we will address the issue of whether applicant’s
design mark is inherently distinctive inasmuch as applicant
seeks registration on the Principal Register.
[T]he question of inherent distinctiveness rests on
whether the public in the relevant market would view
Pacer’s adhesive container cap as a source-identifier.
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 210 [54 USPQ2d 1065] (2000) (stating that a
mark is inherently distinctive if its “‘intrinsic
nature serves to identify a particular source’”
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992)); Tone Bros., Inc. v. Sysco
Corp., 28 F.3d 1192, 1206 (Fed. Cir. 1994) (Trade
dress is inherently distinctive if it “is of such a
design that a buyer will immediately rely on it to
differentiate the product from those of competing
manufacturers”).

In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629,
1631 (Fed. Cir. 2003).
The Federal Circuit, the CCPA, and the board have
looked to the following factors to determine whether a
design is inherently distinctive:
1. Whether the design was “a ‘common’ basic
shape or design, whether it was unique or
unusual in a particular field,

2. 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 goods, or

3. whether it was capable of creating a
commercial impression distinct from the
accompanying words.”

Ser. No. 76462561
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Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977)(footnotes omitted).
See also Pacer Technology, 67 USPQ2d at 1631; In re Glaxo
Group Ltd., 53 USPQ2d 1920, 1922 (TTAB 2000) (“In cases
involving the alleged inherent distinctiveness of trade
dress, the Board has in the past looked to Seabrook”).
As used on the specimens, applicant’s mark is not a
simple background design. The case law suggests that
simple background designs, even if it is not a product
design, do not serve as inherently distinctive trademarks.
In re E.J. Brach & Sons, 256 F.2d 325, 118 USPQ 308, 310
(CCPA 1958) (“We do not think that the average consumer of
applicant’s product will regard its background frills and
curves as an unmistakable, certain, and primary means of
identification pointing distinctly to the commercial origin
of such product”); In re Anton/Bauer Inc., 7 USPQ2d 1380,
1383 (TTAB 1988) (Applicant’s parallelogram background
design not shown to have acquired distinctiveness); In re
Haggar Company, 217 USPQ 81, 84 (TTAB 1982) (Applicant’s
black rectangle with a serrated edge not inherently
distinctive but registrable under Section 2(f)).
However, applicant’s design is not a background
design. It is an independent feature on applicant’s
specimen that is set apart from anything else. Applicant
Ser. No. 76462561
9
has identified it with the TM symbol. In addition, the
design contains parallel lines and cross-hatching. Under
Seabrook Foods, there is no evidence that the mark as a
whole is a common basic design or a “mere refinement of a
commonly-adopted and well-known form of ornamentation.”
Furthermore, the mark as depicted on the specimen is
clearly capable of creating a commercial impression
separate and apart from any words on the specimen.
Therefore, the examining attorney’s refusal to register on
the ground that the mark is not inherently distinctive is
reversed.

Decision: The examining attorney’s refusals to
register are reversed.