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  • No drawing of a trademark is presented in true three-dimensional form.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Applicant makes too much of what the mark assertedly is not; and it is worth distinguishing here between the mark drawing, as an element of the application, and the mark itself. No drawing of a trademark that is the subject of an application for registration is presented in true three-dimensional form.
  • The fact that a drawing of a mark is in two dimensions will not preclude the mark from being refused as functional.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • The fact that a drawing of a mark is in two dimensions will not preclude the mark from being refused as functional. See In re Deister Concentrator Co., Inc., 289 F.2d 496, 129 USPQ 314 (CCPA 1961) (Mark described as a "substantially rhomboidal outline" "applied to the goods" by fashioning the ore concentrating and coal cleaning table in such shape refused registration as functional; depiction of mark in two dimensions by four lines forming a rhomboid); and In re North American Phillips Corporation, 217 USPQ 926 (TTAB 1983) (Mark described as a "triangularly shaped plate having smoothly rounded corners and having three circular openings therein" and which was a configuration of the face plate of an electric razor refused registration as functional; depiction of mark in two dimensions, as if viewed directly from the front, with no perspective of depth).
  • Even an application to register a configuration of a product depicts a mark in two-dimensional form, perhaps from a view that yields a perspective of depth, as in applicant's abandoned configuration application.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Even an application to register a configuration of a product depicts a mark in two-dimensional form, perhaps from a view that yields a perspective of depth, as in applicant's abandoned configuration application.
  • There is a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs and in various other ways as a mark for services.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • We do agree with applicant, however, that there is a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself (e.g., applicant's abandoned configuration application) and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services. The inquiry regarding functionality may need to be decidedly different in the latter set of circumstances and this opposition is therefore a case of first impression for the Board.
  • The existing law (including the Traffix test) for functionality is sufficient as to whether a two-dimensional drawing for services may be deemed functional.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Opposer has advanced some compelling arguments why applicant should not be permitted to register what is in essence the two-dimensional depiction of the formerly patented product that appeared in the patent itself, even for services. Nonetheless, we must balance against opposer's argument for the extension of existing case law on functionality what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three-dimensional product design is functional if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product") to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.
  • Dotted lines indicate that the subject matter so depicted is not claimed as a feature of the mark.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In the 942 application, the drawing shows the plug only, without a flange. The threaded lower portion of the plug is shown in dotted lines. Although the description of the mark does not mention the dotted lines, we conclude that the dotted lines indicate that the subject matter so depicted is not claimed as a feature of the mark. 37 C.F.R. § 2.52(b)(4). See also In re Controls Corp. of America, 46 USPQ2d 1308, 1312 (TTAB 1998); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983).
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In this case the description of the mark, in relevant part, states, "The dotted lines are not part of the mark but merely indicate the position of the mark relative to the overall product." The description of the mark states further, "The closure features a substantially hexagonal base and a butterfly-shaped handle/grip for turning the closure." This verbal description and the drawing lead us to conclude that the mark in the 343 application also includes both the hexagonal base and the butterfly-shaped grip. In re Controls Corp. of America, 46 USPQ2d at 1312.
  • Case Findings: A fairly accurate depiction of trade dress, registered as a logo, was not held functional.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Opposer does not directly rebut the argument in its reply brief, and that may be because there is no reported case law dealing with such a combination, i.e., a case involving a two-dimensional mark, not trade dress, and involving services, wherein the mark was held not a mark but, rather, functional. Cf. Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693, 193 USPQ 342 (D.N.J. 1977) (hereafter, Fotomat NJ). In the Fotomat NJ case, the district court, on plaintiff's motion for a preliminary injunction enjoining defendant from use of a logo and trade dress of a drivethrough kiosk providing various retail and photofinishing services, found that defendant had not rebutted the presumptive validity of plaintiff's registered logo, and granted the injunction as to defendant's logo, but the court also found that the plaintiff's kiosk trade dress was primarily functional and therefore denied the preliminary injunction as to defendant's use of its own kiosk. There are other cases brought by the Fotomat Corporation wherein its kiosk trade dress was found protectible rather than functional. See Fotomat Corp. v. Ace Corporation, 1980 U.S. Dist. LEXIS 16114, 208 USPQ 92 (S.D. Cal. 1980) and Fotomat Corp. v. Steven Cochran, d/b/a Quick Stop Photo, 437 F.Supp. 1231, 194 USPQ 128 (D. Kan. 1977).
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • The significance of these three cases, however, is not whether the kiosk trade dress was or was not held to be functional for services, but that even in the one case where the kiosk trade dress was held functional, a fairly accurate depiction of the kiosk, registered as a logo, was not held functional.
American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005) Grand Total
In re Controls Corp. of America, 46 USPQ2d 1308 (TTAB 1998) 1
In re Famous Foods Inc., 217 USPQ 177 (TTAB 1983) 1
In re North American Phillips Corporation, 217 USPQ 926 (TTAB 1983) 1
Fotomat Corp. v. Ace Corporation, 1980 U.S. Dist. LEXIS 16114, 208 USPQ 92 (S.D. Cal. 1980) 1
Fotomat Corp. v. Photo Drive-Thru Inc., 425 F.Supp. 693, 193 USPQ 342 (D.N.J. 1977) 1
Fotomat Corp. v. Steven Cochran, d/b/a Quick Stop Photo, 437 F.Supp. 1231, 194 USPQ 128 (D. Kan. 1977) 1
In re Deister Concentrator Co. Inc., 289 F.2d 496, 129 USPQ 314 (CCPA 1961) 1
Grand Total 2 5 7
No Statutes Listed.