TTAB Upholds Failure-to-Function Refusals of "15" and "377" for Air Intake Filters
Finding that the proposed marks 15 and 377 fail to function as trademarks for "Machine part, namely, air intake filter element as a part for air compressors or blowers," the Board affirmed the USPTO's refusals to register under Sections 1, 2, and 45 of the Lanham Act. Reviewing the specimens of use, the Board agreed with Examining Attorney Michael L. Engel that the terms serve merely as model numbers for the goods, not source indicators. In re Solberg Mfg., Inc., Serial Nos. 88456014 and 88456147 (July 14, 2023) [not precedential] (Opinions by Judge Albert Zervas)
“It is well settled that terms used merely as model, style, or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., 12 USPQ2d 1748, 1749 (TTAB 1989). The central issue is consumer perception, and in resolving that issue the Board considers "the stylization of the display, the size of the proposed mark, and the physical location of the proposed mark on a specimen."
Applicant submitted three different specimens of use in each case. The numbers 15 and 377 appeared in plain font, sometimes with other text that was not part of the proposed marks. Although a shipping label may be an acceptable specimen of use, applicant's label (i) is in plain, black, simple font; (ii) is placed on a plain brown cardboard box without any description of the contents of the box, suggesting that the term is a model number for the goods; and (iii), the Board noted, "the 'TM' symbol does not transform any designation into a trademark." Moreover, "the messaging in Applicant’s website indicates that ['15' and '377' each] designates a model designation."
Applicant pointed to its prior registration for the mark "19," but it did not make the registration of record. In any case, the Board pointed out for the umpteenth time that it must decide each case on its own evidentiary record.
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TTABlogger comment: Do you think the applicant wants TM registrations so that it can try to hamper or stop competitors from using the numbers to sell parts that serve as replacements or substitutes for applicant's filters?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 7/21/2023
6 comments
6 Comments:
Nothing a little "white out" couldn't have fixed. Do they even sell white-out any more? Do people still type?
Personally, I submitted this comment by typing on a typewriter, then asking an intern to scan and upload it to the worldwide web
The Trademark Board is mixing up two different grounds for rejection: failure to function as a TM and descriptiveness with acquired distinctiveness. The T.T.A.B’s. own In re Dana precedent (that this case cites) does not say a designation used solely as a model indicator is never a trademark. The Dana precedent says it is descriptive and could be registerable if it has acquired distinctiveness. Does the T.T.A.B. plan to use “failure to function” as a fits-all-cases ground for refusal in all future cases?
I wonder, though, whether "failure to function" isn't a better fit than mere descriptiveness. What does the number "15" describe? The Board notes that the numbers would be registrable upon a showing of acquired distinctiveness.
I don't think the real-world line between model number and trademark is as bright as this decision might suggest. E.g., Porsche's model "911" roadster. See U.S. Reg. No. 2414167.
@Tom, the TTAB quotes in re Dana:
III. Failure to Function Refusal/Model Designation “It is well settled that terms used merely as model, style, or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., 12 USPQ2d 1748, 1749 (TTAB 1989).
Proof of acquired distinctiveness would overcome the stress on "merely".
And so failure to function and descriptiveness are not separate frameworks, but simply designations for marks at different points on the distinctiveness spectrum.
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