Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GREENHOUSE SYSTEMS, INC.
EDWARD C. CARSON, DBA EXC-CEL GREENHOUSE
Opposition No. 91,667
January 25, 1995
Before Simms, Seeherman and Hohein
Administrative Trademark Judges
By the Board:
R.L. Simms, E.J. Seeherman, G.D. Hohein
Administrative Trademark Judges
This case now comes up on the parties' cross-motions for summary judgment, and on applicant's motion in limine. For the reasons discussed below, applicant's motion in limine is denied, opposer's motion for summary judgment on its de jure functionality claim is granted, and applicant's motion for summary judgment is denied.
Applicant Edward C. Carson, dba Exc-Cel Greenhouse, seeks registration of the following design
as a trademark for goods identified as "greenhouses sold in kit form, primarily comprising tubular framing and poly rolls," in Class 19. [FN1] The application includes a description of the mark which states that "the mark consists of a configuration of a frame for a greenhouse." The application's method-of-use clause states that "the mark is used as a three-dimensional trademark embodied in the design of applicant's goods." Applicant claims that the design has acquired distinctiveness as a trademark under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f).
Registration has been opposed by Greenhouse Systems, Inc., which alleges that it has sold goods having substantially the same configuration as that depicted in the application drawing since 1987 or 1988. As grounds for opposition, opposer alleges that applicant is not the exclusive user of the design sought to be registered, and that the design is functional and incapable of functioning as a trademark. Opposer also asserts that applicant made certain misrepresentations to the Trademark Examining Attorney during ex parte prosecution of the application. [FN2]
Applicant filed an answer denying the salient allegations of the notice of opposition and asserting various "affirmative defenses." [FN3]
Applicant has filed a motion for summary judgment, by which he seeks summary judgment as to (a) his priority of use, (b) the absence of any "grounds for refusing applicant's application on the basis of any likelihood of confusion, mistake or deception," (c) opposer's failure and inability to establish a prima facie case of de jure functionality, and (d) applicant's exclusivity of use of the mark, in view of opposer's admissions that there are no third-party uses which are likely to cause confusion vis-a-vis applicant's mark. [FN4]
Opposer has filed briefs in opposition to applicant's motion for summary judgment and motion in limine, and has filed its own motion for summary judgment on the issues of (a) applicant's abandonment of the alleged mark, (b) applicant's lack of exclusive use of the alleged mark, (c) the de jure functionality of the alleged mark, (d) applicant's inequitable conduct during ex parte prosecution, and (e) applicant's failure to use the applied-for design as a trademark. [FN5] Applicant has filed a brief in opposition to opposer's motion for summary judgment.
APPLICANT'S MOTION IN LIMINE
*2 We turn first to applicant's motion in limine. By this motion, applicant asks the Board to prospectively exclude any evidence which might be presented by opposer at trial (or, presumably, in connection with a summary judgment motion or response), to the extent that such evidence is inconsistent with opposer's discovery responses, or consists of material opposer refused to provide during discovery due to relevancy or other objections, or consists of material opposer failed to produce in discovery on the ground that it was non-existent or unavailable. Applicant has set forth six categories of evidence to be excluded, and has identified particular document requests and interrogatories pertaining to each category. [FN6]
Applicant's motion in limine is denied. It is not the Board's practice to make prospective or hypothetical evidentiary rulings such as those requested by applicant, nor will the Board undertake to screen all of opposer's proffered evidence to see whether it might fall within one of applicant's suggested categories of excludable evidence. [FN7]
If applicant believes that specific evidence introduced by opposer in support of its summary judgment arguments is objectionable for any reason, including the reasons asserted in the motion in limine, applicant should have moved to strike or otherwise objected to such evidence after it was introduced, identifying the specific evidence objected to and the asserted basis for exclusion thereof. See, e.g., Presto Products Inc. v. Nice-Pak Products Inc., 9 U.S.P.Q.2d 1895 (TTAB 1988); JSB International, Inc. v. Auto Sound North, Inc., 215 USPQ 60 (TTAB 1982); Shoe Factory Supplies Co. v. Thermal Engineering Company, 207 USPQ 517 (TTAB 1980); Refreshment Machinery Incorporated v. Reed Industries, Inc., 196 USPQ 840, 842 at n. 4 (TTAB 1977).
Likewise, if applicant believes that opposer's discovery responses were insufficient or that opposer's discovery objections were unwarranted, applicant should have sought the relief the Board's rules specifically provide for such situations, namely, an order compelling discovery in accordance with Trademark Rule 2.120(e), and, if necessary, discovery sanctions (including the exclusion of evidence) under Trademark Rule 2.120(g) and FRCP 37(b)(2)(B).
Applicant filed its motion in limine seeking a prospective exclusion of evidence opposer hypothetically might offer. Applicant has not objected to any of the specific evidence actually presented by opposer, nor has applicant identified any of that evidence as being within any of the categories of excludable evidence set out in the motion in limine. Because applicant has not made any specific objections to any of the actual evidence submitted by opposer, the Board has considered all of that evidence in determining the parties' summary judgment motions.
DE JURE FUNCTIONALITY
*3 Next, we will consider opposer's motion for summary judgment on the issue of de jure functionality.
Initially, we note that summary judgment may be granted where there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). An issue is material when its resolution would affect the outcome of the proceeding under governing law. A fact is genuinely in dispute if the evidence of record is such that a reasonable fact finder could return a verdict in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
A product configuration which is so utilitarian as to constitute a superior design for its purpose, so that competitors need to copy it in order to compete effectively, is de jure functional, and unregistrable. See In re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817 (TTAB 1994). The mere fact that a product configuration has utility does not necessarily mean that the configuration is unregistrable; registrability depends upon the degree of its design utility. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
Factors which are relevant to the determination of whether a particular product design is de jure functional include (1) the existence of a utility patent that discloses the utilitarian advantages of the design, (2) advertising materials in which the originator of the design touts the design's utilitarian advantages, (3) the availability to competitors of functionally equivalent alternative designs, and (4) facts indicating that the design results from a comparatively simple or cheap method of manufacturing the product. See In re Morton-Norwich Products, Inc., supra.
In the present case, there is no genuine issue of material fact as to the first Morton-Norwich evidentiary factor. It does not appear from this record that applicant's greenhouse design configuration itself is the subject of a utility patent that discloses the utilitarian advantages of the design. [FN8]
Nor is there any genuine issue of material fact as to the second Morton-Norwich evidentiary factor, inasmuch as the record does not show that applicant has touted the utilitarian advantages of the greenhouse design in his advertising materials. [FN9]
As for the third Morton-Norwich evidentiary factor, i.e., the availability of functionally equivalent alternative designs, we find that no genuine issue of material fact exists. Applicant argues, in essence, that because there are competing gothic arch-style greenhouse designs on the market which are not visually "confusingly similar" to applicant's greenhouse design, there is no competitive need for others to use applicant's particular greenhouse design configuration in manufacturing and selling their own greenhouses. However, assuming arguendo that these "visually dissimilar" competing greenhouse designs are in fact functionally equivalent alternatives to applicant's design, we find that the number of such functionally equivalent alternative designs is limited, and, accordingly, that the existence of these other designs in the marketplace does not preclude a finding of de jure functionality in this case.
*4 These matters will be discussed more fully below. First, however, we shall review the undisputed evidence of record on this issue.
Opposer has submitted the affidavit (exhibit 3 to opposer's motion for summary judgment) of its expert Harold E. Gray, who holds a doctorate in Agricultural Engineering and has been employed, in academia and in industry, in the greenhouse field since 1948. According to Dr. Gray, a greenhouse is "a structure glazed with any light-transmitting material, providing an efficient growing and working area, with a framework to accommodate the glazing material so that it can protect the plants from the elements and support the external loads that might be applied." (Gray affidavit, p. 2.) There are two basic designs for greenhouses which use film plastics such as polyethylene, rather than glass, as the glazing material: "quonset hut" greenhouses, which are semi-circular in shape, and "gothic arch" greenhouses, which are comprised of vertical sides, sloping roofs, and peaked ridges. (Gray affidavit, p. 2.) The parties agree that applicant's greenhouse configuration is of the "gothic arch" type.
The evidence of record establishes, and the parties do not dispute, that gothic arch-style greenhouses such as applicant's are functionally superior in many respects to other styles of greenhouses, most notably quonset hut-style greenhouses. Applicant expressly asserts such superiority for his particular greenhouse design configuration in the patent for his tube bending apparatus (the '686 patent; see supra at footnote 6). [FN10]
The functional superiority of applicant's greenhouse design is apparent from an analysis of its individual design components. [FN11] In the application, applicant has not identified any particular elements of his greenhouse configuration as his mark, but rather claims trademark rights as to the overall design configuration. Applicant's "description of the mark" statement states that "the mark consists of a configuration of a frame for a greenhouse." However, opposer has made of record its Interrogatory No. 9, and applicant's response thereto:
INTERROGATORY NO. 9. Describe in detail the features of the design sought to be registered in application No. 74/073,302 which Applicant contends render the design capable of acting as a trademark.
RESPONSE TO INTERROGATORY NO. 9. Objection in that the Interrogatory seeks to dissect a miscellaneous design which should be properly considered for the total collective effect thereof. Notwithstanding such objection, in a good faith effort to advance discovery, Applicant regards certain distinguishing features of the subject miscellaneous design as including, but not limited to, the open and uncovered framework of interconnected straight and curved pieces, including the appearance of integrated wall and roof elements having curved bends interconnecting parallel, upright sidewalls with a generally, but not precisely, triangular shaped roof portion, and with parallel longitudinal interconnecting elements about at the apex and respective mid-roof locations of the roof, and with relative sidewall height and roof pitch relationships, and all collective features of the subject mark, substantially as shown in the drawing of the subject miscellaneous design mark.
*5 The undisputed evidence of record shows that the design of each of the specific "distinguishing features" identified by applicant is functional in nature. For example, the integrated, i.e., one-piece, sidewall/rafter construction advantageously lends itself to economically efficient production by repeated use of a tube bending apparatus such as applicant's patented tube bender, and, presumably, other tube benders as well. ('686 patent at column 4, lines 27-33.) [FN12] The vertical sidewalls are designed to maximize interior ceiling height adjacent to the sidewalls, resulting in more headroom for workers and more space for the placement of taller plants. ('686 patent at column 4, lines 25-26; Gray affidavit at p. 3.) The pitched, sloping roof is designed to allow snow to slide off the roof, thus preventing snow accumulation which may overload the structure. (Gray affidavit at p. 3.) The pitched roof also is an essential element of the "strong generally triangular-shaped structure" referred to in the '686 patent as being superior to other greenhouse shapes, e.g., quonset hut-type shapes. ('686 patent at column 4, lines 23-27.) At the peak of the roof, the bend in the tube is designed so as to be at a sharp enough radius to eliminate the flat surface common on the quonset hut-type design that accumulates snow, but not so sharp as to collapse the wall of the tubing during bending, thereby destroying its structural strength, or so sharp as to cause the poly film to crease, thereby restricting the free flow of air. (Gray affidavit at p. 2.) The vertical sidewalls and sloped roof are designed to allow for installation of a ventilation sash for natural ventilation, and also to reduce the opportunity for leakage. (Gray affidavit at p. 3.) The horizontal purlins extending along the peak of the roof and along the mid-roof locations are strategically placed to maintain the desired spacing of the rafters. (Gray affidavit at p. 3.)
Additionally, it is clear from the record that the specific design features identified by applicant in response to opposer's interrogatory are also found in the designs of competing greenhouses. The presence of these design features in the products of others is evidence that they are functional, and that they combine to form one of the few superior designs for greenhouses. See In re R.M. Smith, Inc., supra, 219 USPQ at 633. The configurations of several of those competing greenhouses, as depicted in opposer's Exhibit 2, are reproduced immediately below.
Applicant does not dispute that each of the individual design elements which comprise a gothic arch-type greenhouse design such as his, when considered separately, is functional in nature. Nor does applicant dispute the functional superiority of the gothic arch-type greenhouse design in general. Rather, applicant argues that his greenhouse configuration, when viewed in its entirety, is not de jure functional because there is no competitive need to copy the particular manner in which applicant has combined those individual functional design elements. Applicant contends that the other greenhouses depicted above are evidence that his competitors can design gothic arch-type greenhouses which are not visually confusingly similar to applicant's greenhouse, simply by varying one or more of those individual functional elements (such as the degree of the roof pitch), or by combining those functional elements in a different way than applicant has combined them. Applicant argues that these visually dissimilar gothic arch-type greenhouses are "alternative designs" under the third Morton-Norwich evidentiary factor, and that the availability of these alternative designs to his competitors precludes a finding of de jure functionality in this case.
*6 Applicant's argument is unpersuasive. In the first place, we find that the other gothic arch-type greenhouse configurations of record in this case are not "alternative designs" within the meaning of the third Morton-Norwich evidentiary factor. Rather, they are merely variations of a single basic design, i.e., the gothic arch-type greenhouse. See, e.g., In re Lincoln Diagnostics, supra, 30 U.S.P.Q.2d at 1824.
Applicant's basic premise is that these other greenhouse designs are "alternative" designs because they are not visually confusingly similar to applicant's design. However, even if applicant is correct in contending that his greenhouse design and these other greenhouse designs are not visually confusingly similar (a question we need not and do not decide), it does not follow therefrom that these other configurations are "alternative designs" within the meaning of Morton-Norwich, or that applicant's gothic arch-type greenhouse configuration is not de jure functional.
For example, in the R.M. Smith case, [FN13] the applicant's pistol-grip spray nozzle design configuration was found to be de jure functional, despite the existence of numerous visually distinguishable pistol-grip spray nozzles in the marketplace. The applicant had argued that although the competing spray nozzles may have included one or more of the individual functional design elements also found in the applicant's spray nozzle, none of the competing spray nozzles looked like applicant's spray nozzle when viewed as a whole, and that this visual dissimilarity and distinctiveness of the applicant's nozzle configuration vis-a-vis the competing nozzle configurations precluded a finding of de jure functionality. The Board, and the Court of Appeals for the Federal Circuit, rejected that argument. Applicant is making the same unpersuasive argument in this case.
Thus, competing design configurations are not "alternative designs" for purposes of an analysis of de jure functionality merely because they might be sufficiently visually dissimilar to avoid a finding of likelihood of confusion. Likelihood of confusion is irrelevant to the issue of de jure functionality. In re R.M. Smith, Inc., supra, 222 USPQ at 3. Accordingly, we find that the other gothic arch-type greenhouses of record in this case are not alternative designs within the meaning of the third Morton-Norwich evidentiary factor.
Furthermore, assuming arguendo that the other gothic arch-type greenhouses of record in this case are functionally equivalent alternative designs available to applicant's competitors, we find that the number of such alternative designs is quite limited. A finding of de jure functionality does not require a total elimination of competition. It is sufficient that the design applicant seeks to register is one of a few superior designs, or that the number of alternative designs is limited. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 5-6 (Fed.Cir.1985); In re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817, 1824- 25; In re Vico Products Manufacturing Co., 229 USPQ 364, 368 (TTAB 1985).
*7 As applicant has acknowledged, to create greenhouse designs which are visually dissimilar to applicant's greenhouse design, applicant's competitors must vary one or more of the individual design features, e.g., the sidewall height or roof pitch, which make up the basic gothic arch-type greenhouse design. However, it is intuitively obvious that there are only a limited number of variations in these design elements which maintain the functional advantages inherent in those design elements and in the overall gothic arch greenhouse design.
For example, a competitor might create a greenhouse configuration which is visually dissimilar to applicant's design by decreasing the sidewall height. However, if the sidewall height is decreased too much, the competitor loses the functional advantage deriving from straight vertical sidewalls, i.e., the maximized ceiling height adjacent to the sidewalls. Conversely, if the sidewall height is increased too much, either the roof pitch must be decreased (and the roof's snow-shedding capability compromised) in order to maintain the same overall building height and width, [FN14] or the building height and/or width must be increased to maintain the functionally advantageous roof pitch. Clearly, the competitor can increase or decrease the sidewall height or roof pitch only so much without either losing the functional advantages inherent in those design features or altering the overall width and/or height of the building.
In short, a competitor seeking to design and sell a gothic arch-style greenhouse of a particular overall width and height can, as a practical matter, use only a very limited number of relative sidewall height and roof pitch relationships. To allow applicant to register a design incorporating one of that quite limited number of relationships as a trademark clearly would hinder competition. See In re Lincoln Diagnostics Inc., supra, 30 U.S.P.Q.2d at 1824-25; In re Vico Products Manufacturing Co., supra, 229 USPQ at 368 (TTAB 1985).
In conclusion, we find that no genuine issue of material fact as to the third Morton-Norwich evidentiary factor exists. [FN15]
As for the fourth Morton-Norwich evidentiary factor (ease and economy of manufacture), the only evidence of record consists of certain statements made in applicant's '686 patent for his tube bending apparatus, and also certain undisputed assertions in Dr. Gray's affidavit. [FN16] In discussing the exemplary greenhouse which might be constructed using the tube bending apparatus (depicted in the patent as Fig. 1), the '686 patent states:
Additionally, the construction of greenhouse 10 advantageously lends itself to economically efficient production by repeated use of bending operations with an apparatus in accordance with this invention to fabricate virtually the entire support structure of the greenhouse.
*8 ('686 patent at column 4, lines 27-32.) Dr. Gray asserts in his affidavit (at page 2) that applicant's integrated (one-piece) sidewall/rafter design eliminates the need for connecting devices, thus reducing the total number and variety of components which must be fabricated as part of the greenhouse kit.
The Board finds that this evidence supports a finding of de jure functionality under the fourth Morton-Norwich evidentiary factor. The record does not reveal the existence of any genuine issue of material fact as to this evidentiary factor.
In short, the Board finds that, on the record before us, no genuine issue of material fact exists as to any of the four Morton-Norwich evidentiary factors.
Aside from the issues to be considered under the Morton-Norwich analysis, applicant contends that a genuine issue of material fact sufficient to preclude summary judgment is presented by opposer's advertisements for opposer's greenhouse, which applicant contends is "virtually identical" to applicant's greenhouse. Applicant argues that opposer's assertions in those advertisements that the subject greenhouse design is "attractive," "unique" and "exclusive" are evidence of the non-functionality of the design.
Our review of these advertisements in their entirety, however, leads us inescapably to a different conclusion than that urged by applicant. The references in the advertisements to the "unique" and "exclusive" nature of the design, and to the attractiveness of the appearance of the greenhouse, must be viewed in the context of the advertisements' overall emphasis on the functional advantages inherent in the design. For example, opposer makes the following assertions in its advertisements:
You will find all our new Atlas-A Greenhouses are designed for extreme snow and adverse weather conditions with up to 21 lbs. per square foot roof load ratings. The peaked roof easily sheds snow and reduces most condensation drippage, the side walls have maximum head room, construction is easy and the appearance of the Atlas-A is very attractive.
The unique ... designed bows, spaced 4' apart, plus (3) runs of purlins, (4) corner braces and our optional heavy duty cross trusses allows the frame to withstand up to 18 pounds of snow load per square foot ...
We believe that the only conclusion that could be reached by a reasonable fact finder examining these advertisements in their entireties is that the advertisements' references to the uniqueness and exclusivity of the design pertain to the functional aspects of the design. The single, incidental reference to the attractiveness of the appearance of the greenhouse, when considered in the context of the advertisements' overwhelming emphasis on the functional advantages of the design, is not sufficient to create a genuine issue of material fact. Moreover, the mere fact that a design is touted as "attractive" does not preclude a finding that the design is de jure functional.
*9 If these were applicant's advertisements for his admittedly "virtually identical" greenhouse, we would find that their touting of the functional advantages of this greenhouse design would weigh heavily in support of a finding of de jure functionality under the second Morton-Norwich evidentiary factor.
The Board also finds that no genuine issue of material fact is created by applicant's evidence that one of his competitors uses depictions of particular greenhouse configurations as part of its logos or trademarks. (Carson affidavit at paragraph 27, referring to the 1993-94 catalog of Stuppy Greenhouse Manufacturing, Inc., attached as Exhibit I to the Carson affidavit). Applicant correctly notes that Stuppy's use of a particular greenhouse configuration as part of its logo does not preclude others in the industry from manufacturing or selling greenhouses of such design. However, in this case, applicant is not seeking to register a mere depiction of its greenhouse design as part of a logo, but rather seeks to register the configuration itself as a trademark, and to thereby preclude others from manufacturing and selling greenhouses of this particular configuration. The fact that a third party might use a depiction of a greenhouse configuration as part of its logo has no bearing on this case, and fails to create a genuine issue of material fact on the issue of de jure functionality functionality.
Thus, contrary to applicant's contention that "the allegations of functionality are strongly contested on both sides, and therefore genuine issues of material fact clearly remain," the Board's careful review of the entire evidentiary record in this case fails to reveal the existence of any genuinely disputed issues of material fact on this issue which would require trial for their resolution.
We find that opposer is entitled to judgment as a matter of law on its de jure functionality ground of opposition. [FN17] Applicant's greenhouse design configuration is nothing more than a basic gothic arch greenhouse design which is dictated solely by function, whether viewed in terms of its individual design components or in terms of the combination of those collective features into the overall configuration depicted in the application drawing. The proposed mark is de jure functional and unregistrable as a matter of public policy, regardless of the purported existence of visual dissimilarities between applicant's greenhouse configuration and competitors' greenhouse configurations. See In re R.M. Smith, Inc., supra, 220 USPQ at 3. There are only a limited number of functionally equivalent alternative designs for a gothic arch-style greenhouse, and allowing applicant to register one of those designs as a trademark would hinder competition. See In re Lincoln Diagnostics Inc., supra, 30 U.S.P.Q.2d at 1824-25; In re Vico Products Manufacturing Co., supra, 229 USPQ at 368 (TTAB 1985).
*10 Because there are no genuine issues of material fact, and because opposer is entitled to judgment as a matter of law, opposer's motion for summary judgment on its de jure functionality ground of opposition is granted. See Fed.R.Civ.P. 56(c).
We decide the other issues presented by the parties' summary judgment motions as follows.
To the extent that opposer's motion for summary judgment seeks judgment on the issue of "third party use," the motion is moot, and we need not consider the parties' arguments thereon. We deny opposer's motion to the extent that it seeks summary judgment on the issues of "abandonment," "inequitable conduct," and "failure to use as a trademark," because opposer has not properly pleaded those claims as grounds of opposition, nor has opposer moved to amend its pleading to add those claims.
We deny applicant's motion for summary judgment on the issues of priority of use and the absence of likelihood of confusion. Opposer has not pleaded a Section 2(d) claim as a ground of opposition in this case, so priority of use and likelihood of confusion are irrelevant. Furthermore, neither applicant's asserted priority of use nor the alleged absence of likelihood of confusion is a legally sufficient defense to the grounds of opposition opposer has pleaded, particularly de jure functionality.
We deny as moot applicant's motion for summary judgment on the issue of the exclusivity of applicant's use of the proposed mark. This issue has been pleaded and argued in the context of applicant's Section 2(f) claim of acquired distinctiveness, i.e., whether applicant's use of the greenhouse design depicted in the application drawing has been "substantially exclusive" under 15 U.S.C. Section 1052(f). Opposer contends that third parties have marketed gothic arch-style greenhouses similar to applicant's, and that applicant therefore cannot claim "substantially exclusive" use of the design. Applicant contends that none of those third parties' greenhouses, when viewed in its entirety, is confusingly similar to applicant's greenhouse, and that applicant's claim of exclusive use of the particular design depicted in the application drawing therefore is valid.
We need not resolve this Section 2(f) dispute, in view of our finding that the proposed mark is de jure functional. It does not matter whether applicant's use of the proposed mark is exclusive, or whether his Section 2(f) claim was proper. Distinctiveness, including acquired distinctiveness under Section 2(f), is of no avail to counter a finding of de jure functionality. In re R.M. Smith, Inc., supra, 222 USPQ at 3.
We deny applicant's motion for summary judgment on the issue of functionality. In support of his motion, applicant argues that opposer has the burden of establishing a prima facie case as to the functionality of applicant's mark; that opposer's notice of opposition does not allege any facts or make any arguments that were not already considered by the Trademark Examining Attorney and found insufficient to warrant a de jure functionality refusal; that in view of this file wrapper history, and in view of applicant's motion in limine (which, if granted, would preclude opposer from presenting any additional evidence on the functionality issue), opposer cannot make out a prima facie case of functionality; and that applicant is therefore entitled to judgment as a matter of law.
*11 These arguments are not persuasive. Neither opposer nor the Board is bound by the Trademark Examining Attorney's ex parte determination on the issue of functionality. Furthermore, we have denied applicant's motion in limine. Our review of the entire record has resulted in a finding that applicant's proposed mark is de jure functional and hence unregistrable. Accordingly, applicant's motion for summary judgment on this issue is denied.
Finally, we find that none of applicant's pleaded affirmative defenses is legally sufficient to overcome opposer's valid claim of de jure functionality.
In summary, opposer's motion for summary judgment on the ground of de jure functionality is granted. Applicant's motion for summary judgment and motion in limine are denied. Judgment is hereby entered in favor of opposer, the opposition is sustained, and registration to applicant is refused.
FN1. Application Serial No. 74/073,302, filed June 27, 1990, alleging use in commerce since April 13, 1985.
FN2. The Board notes that these assertions by opposer regarding applicant's alleged misrepresentations to the Trademark Examining Attorney do not constitute a well-pleaded additional ground of opposition.
FN3. Applicant alleges the following as affirmative defenses: that applicant has priority of use; that third-party uses are not at issue in this opposition proceeding between opposer and applicant; that mere subsequent use of the design by others does not preclude issuance of a registration to applicant; that even prior use by others, if legally abandoned or not likely to cause confusion, does not preclude issuance of a registration to applicant; that applicant submitted sufficient evidence of acquired distinctiveness under Section 2(f) to the examining attorney to warrant registration, as evidenced by the approval of applicant's mark for publication; that applicant's credibility is not in question as to its Section 2(f) claim of exclusive use, because applicant disclosed to the examining attorney that opposer was making infringing use of the mark; that opposer's admitted use of the design is a copying of the design, and that copying is evidence of secondary meaning; that opposer is equitably estopped, by virtue of its copying of applicant's design, from asserting that applicant's mark does not function as a mark and has not acquired distinctiveness; and that opposer's copying of applicant's design equitably estops opposer from opposing issuance of a registration to applicant.
The Board notes that none of these alleged affirmative defenses, as pleaded, constitutes a legally sufficient defense to a valid claim of de jure functionality.
FN4. The Board notes that (a) and (b) above, i.e., priority of use and absence of likelihood of confusion, are not relevant to any of the pleaded grounds of opposition in this case. Opposer has not alleged that registration of applicant's mark is barred by Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
FN5. The Board notes that (a) and (e) above, i.e., abandonment and failure to use as a trademark, were not pleaded as grounds of opposition and thus may not serve as bases for granting summary judgment to opposer. See, e.g., Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986) and cases cited therein. Although applicant has objected to opposer's inclusion in its summary judgment motion of those unpleaded grounds, he has also submitted detailed arguments and evidence on the merits of those grounds. Opposer, however, has not moved to amend its notice of opposition to add these claims as additional grounds of opposition.
FN6. Applicant's six proposed categories of evidence to be excluded are (1) evidence, presumably on the issue of priority, as to any claim by opposer of activities undertaken prior to January 11, 1991, in view of opposer's statements in discovery that it was incorporated on that date, and has no related or predecessor company; (2) evidence encompassed by those of applicant's discovery requests to which opposer objected as being overly broad, or irrelevant; (3) evidence in support of any allegation of likelihood of confusion between applicant's applied-for mark and the greenhouse designs of opposer or any third party, in view of opposer's discovery statements denying the existence of such likelihood of confusion; (4) evidence on matters as to which opposer failed to provide documents or interrogatory answers on the ground that such documents did not exist or that such answers were not available or possible; (5) evidence which was not produced in discovery or was objected to on the ground that opposer had not yet prepared its case; and (6) any documentary evidence regarding the evolution, selection and design of opposer's goods which opposer failed to produce during discovery on the ground that it had been destroyed or lost.
FN7. Even if we were inclined to perform such a screening function, which we are not, we would be unable to do so on the record applicant has made. For example, category No. 5 of applicant's motion in limine reads as follows:
It was indicated in Opposer's responses to Production Request Nos. 1, 7, 9, 10, and 11, that Opposer objected because it had "not yet fully prepared its case" (see, for example, response to Production Request No. 1). As of this writing, by agreement, counsel for Opposer should be in the process of forwarding to the undersigned certain materials, including certain supplemented materials. Applicant hereby moves that Opposer be restricted from reliance on or use of any evidence and/or testimony beyond the scope of immediately forthcoming materials, including anticipated discovery likewise also still to be made concerning Production Request Nos. 5, 19, and 40, and Interrogatory Nos. 4, 5 and 6.
Applicant has not indicated, by motion or other objection, whether any of the evidence actually introduced by opposer is "beyond the scope of immediately forthcoming materials." Nor has applicant identified any of opposer's evidence as being within one of applicant's other proposed categories of excludable evidence.
FN8. However, applicant owns a utility patent for a tube bending apparatus, U.S. Patent No. 4,782,686, issued November 8, 1988 (hereinafter "the '686 patent"). Because it is not a utility patent for applicant's greenhouse design per se, the '686 patent is not evidence in this case under the first Morton-Norwich evidentiary factor. However, certain of applicant's statements in the '686 patent are relevant to the third and fourth Morton-Norwich evidentiary factors, and we have considered them in connection therewith. See discussion, infra, at pp. 11-13, 20.
FN9. However, we note that applicant has submitted copies of opposer's advertisements for opposer's allegedly identical greenhouse. Applicant contends that these advertisements create a genuine issue of material fact as to whether applicant's greenhouse design is de jure functional. We discuss this issue infra at pp. 21-22.
FN10. The '686 patent includes, as Figure 1 therein, an illustration of a greenhouse configuration identical to the configuration depicted on the drawing page of applicant's trademark application involved in this case. Figure 1 is said to illustrate an example of a structure which may be constructed with applicant's tube bending apparatus. Regarding this greenhouse configuration, applicant's '686 patent asserts as follows (at column 4, lines 23-32):
The resulting configuration of greenhouse 10 possesses advantages over some known shapes, e.g., such as quonset hut-type shapes, by maximizing ceiling height adjacent the sidewall members while providing a strong generally triangular-shaped structure. Additionally, the construction of greenhouse 10 advantageously lends itself to economically efficient production by repeated use of bending operations with an apparatus in accordance with this invention to fabricate virtually the entire support structure of the greenhouse.
FN11. In making such an analysis, we are mindful of the admonition of the Court of Appeals for the Federal Circuit that our determination of whether the applied-for mark is de jure functional should be based on an analysis of the design configuration depicted in the drawing in its entirety, and should not be based solely on a dissection of the design configuration into its component design features. In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9, 11 (Fed.Cir.1982); In re R.M. Smith, Inc., 219 USPQ 629, 631 (TTAB 1983), aff'd. 734 F.2d 1482, 222 USPQ 1 (Fed.Cir.1984). However, the Court has also recognized that it is not improper, and indeed is often necessary, to consider the functional aspects of the specific design elements which comprise the overall configuration as part of the determination of the de jure functionality of that design configuration. In re Teledyne Industries, supra, 217 USPQ at 11.
FN12. Opposer also argues in its brief that the integrated sidewall/rafter construction is functionally superior because it eliminates the need for protruding connecting devices, thereby reducing the risk that the poly film will be snagged or torn when it is stretched over the sidewalls and rafters. However, opposer has not submitted any evidentiary support for this contention, either in the Gray affidavit or otherwise.
FN13. In re R.M. Smith, Inc., 219 USPQ 629, 631 (TTAB 1983), aff'd. 734 F.2d 1482, 222 USPQ 1 (Fed.Cir.1984).
FN14. It is obvious that the width and height of a greenhouse are basic functional features of the greenhouse. They can affect considerations such as the amount and cost of materials needed to construct the building and the structural integrity of the building. The width and height of the greenhouse also might be necessarily predetermined by real estate considerations, such as the size of the lot on which the greenhouse is to be constructed, or height restrictions or other zoning requirements.
FN15. In re Weber-Stephen Products Co., 3 U.S.P.Q.2d 1659 (TTAB 1987), relied upon by applicant, is distinguishable from the present case. In that case, there was found to be no utilitarian or functional advantage to circular- shaped barbecue grills vis-a-vis square, rectangular, or any other shape of grill, so the existence in the marketplace of a variety of grill configurations supported a finding that the applicant's grill configuration was not de jure functional. In the present case, the undisputed evidence of record is that gothic arch style greenhouses in general, and applicant's gothic arch greenhouse in particular, are superior to other types of greenhouses, notably quonset hut style greenhouses. Additionally, applicant's reliance on In re Honeywell, Inc., 8 U.S.P.Q.2d 1600 (TTAB 1988) is misplaced. The findings in that case pertaining to the availability of alternative designs were based on the special circumstances and history of Honeywell's attempts to register its design configuration as a trademark. See 8 U.S.P.Q.2d at 1604. No such circumstances and history are present in this case.
FN16. In applicant's brief and also in his responses to office actions during ex parte prosecution of the application, applicant has asserted that applicant's integrated sidewall/rafter construction is more expensive to manufacture and more difficult and expensive to ship. These assertions are not supported by any evidence in the record.
FN17. Opposer's standing to bring this opposition is clear from the record. By its arguments and evidentiary submissions, applicant has admitted the accuracy of opposer's allegation in paragraph 1 of the notice of opposition that opposer is engaged in the sale of greenhouses having substantially the same design configuration as that for which applicant seeks trademark registration. See applicant's brief in response to opposer's motion for summary judgment, at pp. 5-6. Opposer possesses the requisite personal interest in the outcome of this proceeding to satisfy the requirements of standing. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).