Kohler Co. v. Kogyo K.K., Opposition 91200146
| Decision Date | 13 December 2017 |
| Docket Number | Opposition 91200146 |
| Court | Trademark Trial and Appeal Board |
| Parties | Kohler Co. v. Honda Giken Kogyo K.K. |
Hearing: January 24, 2017
Kenneth R. Nowakowski of Husch Blackwell LLP for Kohler Co.
Vinita Ferrera of Wilmer Cutler Pickering Hale and Dorr LLP for Honda Giken Kogyo K.K.
Before Adlin, Heasley, and Larkin, Administrative Trademark Judges.
Table of Contents
4. Simple and/or Inexpensive Methods of Manufacture
Appendix
Honda Giken Kogyo K.K. ("Applicant" or "Honda") seeks registration on the Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the product configuration mark shown below for "engines for use in construction, maintenance and power equipment, " in International Class 7:[1]
(IMAGE OMITTED)
The mark is described in the application as follows:
The mark consists of the configuration of an engine with an overall cubic design, with a slanted fan cover, the fuel tank located above the fan cover on the right, and the air cleaner located to the left of the fuel tank. The air cleaner cover features a cube shape with beveled top outside edges, and a belt-like area on the lower portion of the cover encompassing the entire circumference and the top of the belt-like area is aligned with a rib of the fuel tank. The carburetor cover features four ribs along its outside edge and a receded area where control levers are located. The fuel tank is roughly rectangular. The engine features a beveling that runs around its top circumference.
Color is not claimed as a feature of the mark. Applicant has disclaimed the exclusive right to use "the design mark's purely functional components, namely levers bolts, nuts and caps."
Three companies, Cummins Inc. ("Cummins"), Briggs & Stratton Corporation ("Briggs & Stratton"), and Kohler Company ("Kohler" or "Opposer"), filed separate oppositions to registration of Applicant's claimed mark.[2] The Cummins opposition was dismissed and the Briggs & Stratton and Kohler oppositions were consolidated on February 9, 2012, with the Briggs & Stratton opposition designated as the "parent" case. Following the parties' submission of evidence and briefs, and shortly before the scheduled oral hearing, Briggs & Stratton and Applicant settled and stipulated to dismissal of Opposition No. 91200832 with prejudice. 226 TTABVUE 2.[3] The Board dismissed that opposition. 228 TTABVUE.
Kohler's Opposition No. 91200146 remains for decision. The case is fully briefed and the parties appeared at an oral hearing before the panel on January 24, 2017. We sustain the opposition on two of the four pleaded claims and do not reach the others.[4]
The prosecution history of the opposed application is lengthy. We describe it below in some detail because it bears on several issues in this opposition and because Applicant's evidence of acquired distinctiveness made of record during prosecution in support of its claim to registration under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), is automatically of record in this proceeding, subject to any objections. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). See also AS Holdings, Inc. v. H & C Milcor, Inc., 107 U.S.P.Q.2d 1829, 1831 (TTAB 2013) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 U.S.P.Q.2d 1626, 1628-29 (Fed. Cir. 2009)).
After Applicant filed its application, the Examining Attorney issued a first Office Action refusing registration on the ground that Applicant's claimed mark is a non-distinctive configuration of the goods that does not function as a mark under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1127.
Applicant responded by amending its application to seek registration under Section 2(f) of the Trademark Act, and made of record: (1) a declaration of Scott Conner, the Assistant Vice President of Applicant's subsidiary American Honda Motor Company, Inc. ("American Honda"), attesting to the sales of "GX engines" bearing the design shown in the application in the United States since 1984, [5] setting forth revenue and advertising figures for GX Engines and for products incorporating GX Engines, for periods between 2000-2006, and attaching brochures and photographs showing the design; and (2) 16 "Distributor Statement[s]" from distributors of the GX Engines.
The application was approved for publication, but the Examining Attorney then withdrew the application from publication and issued a second Office Action requiring Applicant to submit a description of the mark "to clarify what the applicant seeks to register." Applicant responded: Applicant submitted an amended drawing of its mark in which a portion was shown in dotted lines. The application was again approved for publication and subsequently published for opposition on March 25, 2008.
Four months later, the Commissioner for Trademarks notified the Examining Attorney of a Letter of Protest claiming that the matter presented for registration appeared to be functional, and that the Letter of Protest had been accepted by the Commissioner, who had determined that a clear error had been made in allowing publication. The Commissioner restored jurisdiction over the application to the Examining Attorney to take appropriate action on the Letter of Protest.
The Examining Attorney issued a third Office Action now refusing registration of Applicant's claimed mark under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), because it was a functional design for the goods. The Examining Attorney also requested that Applicant provide certain information and documentation regarding the claimed mark.
Applicant responded to the third Office Action by submitting declarations disputing the functionality of the GX Engine.[6] The Examining Attorney issued a fourth Office Action withdrawing the functionality refusal and requesting that Applicant provide a more detailed description of its mark. Applicant provided the following description of its mark in its response: The application was again approved for publication.
The application was again withdrawn from publication, however, and remanded to the Examining Attorney.[7] The Examining Attorney issued a fifth Office Action reinstating the functionality refusal, rejecting Applicant's evidence, and referring to three of Applicant's patents that had previously been made of record. The Examining Attorney noted that the mark might be registrable if Applicant limited its claimed mark to the following elements: "The overall 'cubic' look of the engine; the shape of the air cleaner housing; the design of the carburetor cover; the shape and size of the fuel tank; the combined and complementary shape of the fuel tank and air cleaner housing; and the positioning and orientation of the major engine components."[8] The Examining Attorney requested a new description of the claimed mark and an amended drawing.
Applicant responded by submitting a new description of its claimed mark in the...
To continue reading
Request your trial