Application of Honeywell, Inc.
| Citation | 532 F.2d 180 |
| Decision Date | 01 April 1976 |
| Docket Number | Patent Appeal No. 76-526. |
| Parties | Application of HONEYWELL, INC. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
LeRoy Rice, attorney of record, Minneapolis, Minn., for appellant. Molinare, Allegretti, Newitt & Witcoff, Chicago, Ill., of counsel.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Gerald H. Bjorge, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board ("board"), 187 USPQ 576 (1975), affirming, on the ground of functionality, the refusal of the Examiner of Trademarks to register appellant's asserted trademark for thermostats. We affirm.
The matter asserted to be a trademark is a portion of the configuration of a thermostat and, as set forth in the drawings accompanying the application to register,1 is shown below.
Appellant's amended application for registration states, in part:
The Trademark as used consists of the arbitrary and unique combination of an outer cover ring of a thermostat and a center disk positioned concentrically within said ring, said ring and disk comprising a portion of the configuration of a thermostat. Five specimens of the mark as actually used are presented herewith.
In an earlier appeal,2 this court held that the board erred, as a matter of law, in its reason for affirming refusal of the registration3 and remanded the case to the board since it had not expressed any views on the functionality reasoning relied upon by the examiner.
Appellant argues that its asserted trademark embraces solely the outer covering ring and the center portion, which it describes as an opaque "button." However, the solicitor supports the board's position that the application drawing shows the "oval sic: disk" to be transparent and to be included and that the specimens show it serving as a window through which a thermostat scale and a temperature setting scale are visible.
Considering the above-quoted portion of appellant's application and viewing the drawings and specimen of record, we are satisfied that a prima facie showing has been made that the transparent disk is included in the subject matter sought to be registered and that appellant has not rebutted that showing.4
Appellant argues that the transparent disk cannot function as a portion of a trademark because it is invisible to customers and potential customers. However, transparency is not invisibility.
Appellant argues further that, until the board decision on remand, the question of what constitutes the asserted trademark was never in issue. However, appellant did not request the board to reconsider its decision, much less cite this point as a basis for reconsideration.
Appellant states that it is agreeable to making a clarifying amendment to the description of the mark and to the filing of a statutory disclaimer if the examiner deems this necessary or desirable. However, the proper forum for such action is the Patent and Trademark Office — not this court. The suggestion simply comes too late in the prosecution of the application.
On the record before us, we believe the following portion of the board's opinion well states the basis for holding that the subject matter in appellant's amended application is not registrable:
What applicant is seeking to register is essentially a protective cover for a round thermostat device which is so arranged that the essential operating and temperature controlling and indicating mechanisms of the thermostat are visible to the operator. All of these characteristics are functional or utilitarian features of thermostat covers per se. The fact that both the cover and the thermostat are round does not detract from the functional characteristics thereof. In fact, it may add to the utilitarian aspects. There are only so many basic shapes in which a thermostat or its cover can be made ......
To continue reading
Request your trial
-
Time Mechanisms, Inc. v. Qonaar Corp.
...can be contained by housings of many different configurations. Id. at 223-24. Time points to the holding in In re Honeywell, Inc., 532 F.2d 180 (Cust.& Pat. App.1976), where the court denied the registration of a trademark for a portion of a configuration of a thermostat because those chara......
-
Fotomat Corp. v. Photo Drive-Thru, Inc.
...the depicted article. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-20, 59 S.Ct. 109, 83 L.Ed. 73 (1938); In re Honeywell, Inc., 532 F.2d 180 (Cust. & Pat.App.1976); Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 56 CCPA 1472 The reluctance to protect articles which are on the......
-
Eco Manufacturing LLC v. Honeywell Intern., Inc.
...issue and again denied registration, this time on the basis that the shape of the thermostat was functional. In re Honeywell Inc., 187 U.S.P.Q. 576, 579, 1975 WL 21267 (TTAB 1975). The TTAB What applicant is seeking to register is essentially a protective cover for a round thermostat device......
-
Kinark Corp. v. Camelot, Inc.
...The law reflects a similar consideration when the protectibility of physical features of products is in issue. In Application of Honeywell, 532 F.2d 180 (Cust. & Pat.App. 1976), the Court of Customs and Patent Appeals affirmed the rejection of an application for trademark registration of a ......