Citable No. 45: TTAB Reverses 2(d) Refusal of Product Configuration Mark

The Board's 45th citable decision of 2006 involves a relatively rare Section 2(d) refusal of a product configuration mark. Applicant Homeland Vinyl sought to register on the Supplemental Register the product design shown immediately below as a trademark for "non-metal fence rails." The PTO refused registration on the ground of likelihood of confusion with another product design mark (shown next below) for the same goods. The Board reversed the refusal. In re Homeland Vinyl Prods. Inc., 81 USPQ2d 1378 (TTAB 2006).

Applicant's mark
Applicant's mark consists of "the configuration of a fence rail." The cited mark comprises not the entire fence rail, but "a configuration of the bottom portion of a fence rail bearing the exterior rounded shoulders and the recessed edges." Both fence rails include a longitudinal, recessed channel used to hold vertical bars, panels, or pickets. Each could be used as a top or a bottom rail, depending on the orientation.

The cited mark
Because the goods are identical, the Board assumed that they travel in the same channels of trade to the same classes of customers. Because fence rails "are not impulse purchases," the Board expected that purchasers would exercise "a relatively high degree of care in their purchasing decisions."

Turning to the marks, the Examining Attorney contended that, although registrant's mark was limited to a particular feature of the rail, consumers will view the goods in their entirety and will not be aware that registrant claims only a specific feature as a source indicator -- likening the situation to a word mark that contains disclaimed matter. He further maintained that, even focusing on the corresponding portions of the rails, the contours are "quite similar."

Applicant, of course, argued that the cited mark is limited to the rounded shoulders and recessed edges near the channel opening, whereas its own mark has a "linear diagonal line" and does not include a curved shoulder, nor any recesses. It also asserted that the fence rail field is crowded with designs, and that the cited design is therefore entitled to a narrow scope of protection.


The Board wisely observed that the marks are "not capable of being spoken" and therefore must be compared visually. But, the Board asked, "what is the 'entirety' of registrant's mark?" It rejected the Examining Attorney's disclaimer analogy, noting that for a word mark "such matter actually forms a part of the mark." The broken line portion of the cited mark, however, is not part of the mark -- indeed, it is expressly excluded from the mark. The Board therefore considered "only the flourish as registrant's mark, as it is shown in the registration, and [not] the overall product shape on which the mark might be used."

Under that approach, the Board found that "the visual differences in the marks are more significant than the similarities:"

"The overall impression of registrant's mark is soft, curved and rounded, and the overall impression of applicant's flourish is severe, angular and linear. Based on the total effect of the respective marks, rather than their individual features, we find that the difference in the marks are sufficient to distinguish them."

Finally, the Board noted that the registered mark is entitled to a narrow scope of protection in light of various design and utility patents in evidence that suggest that such ornamental designs on fence rails are "nor particularly unique or unusual," and therefore that purchasers "would be accustomed to making distinctions based on more subtle differences in the marks."

In light of this narrow scope of protection, the relative sophistication of purchasers, and the differences in the marks, the Board reversed the refusal to register.

TTABlog comment: I think the Board should have left out the part about the weakness of the registered mark. There was no evidence that the patented designs were on the market, and therefore no evidence that purchasers were "accustomed" to making distinctions based on more subtle differences. Clearly the marks were dissimilar, and there was no real need to add this point about the patent evidence.

Text Copyright John L. Welch 2006.