2: '?* ;;.«r_*;=,e
`
`A0 440 (Rev. 06/12) Summons in a Civil Action
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`for the
`
`lggm ;,§,,,,..,.,,,.,,,,3,,, W
`
`Western District of Pennsylvania
`
`.
`Civil Action No. 12-1430
`
`) ) ) )
`
`)
`3
`
`)) ) ) )
`
`Adams Mfg. Corp,
`a Pennsylvania Corporation
`
`Plaintzflfiv)
`V,
`The Honorable David J. Kappos, in his capacity as
`Director of the United States Patent and Trademark
`Office
`
`Deféndanfls)
`
`SUMMONS IN A CIVIL ACTION
`
`T0: (Defendant's name and address) The Honorable David J. Kappos
`Office of th‘e General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) —-— or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) —-— you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintifFs attorney,
`whose name and address are:
`Lynn J, Alstadt
`Buchanan lngersoll & Rooney PC
`One Oxford Center
`301 Grant Street, 20th Floor
`Pittsburgh, PA 15219
`(412) 562-1632
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`IQ/O4Z20 l 2
`Date
`
`CLERK OF COURT
`
`
`
`

`
`A0 440 (Rev, 06/12) Summons in a Civil Action (Page 2)
`Civil Action No. 12-1430
`
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (1))
`
`PROOF OF SERVICE
`
`This summons for {name of individual and tizle, Ifany)
`
`was received by me on (date)
`
`C! I personally served the summons on the individual at (place)
`
`on (date)
`
`; or
`
`Cl 1 left the summons at the individual’s residence or usual place of abode with (name)
`
`on (date)
`
`, and mailed a copy to the individual’s last known address; or
`
`, a person of suitable age and discretion who resides there,
`
`D I served the summons on (name ofindividzml)
`
`designated by law to accept service of process on behalf of (name oforgzmizalion)
`on (date)
`
`; or
`
`3 I returned the summons unexecuted because
`
`3 Other (specijfv):
`
`, who is
`
`; or
`
`My fees are $
`
`for travel and S
`
`for services, for a total of $
`
`(me
`
`I declare under penalty of perjury that this information is true.
`
`. Date:
`
`Server ’s signature
`
`Prinfea'name and title
`
`Server '5 address
`
`Additional information regarding attempted service, etc:
`
`
`
`

`
`Case 2:12—cv-PLu.43O-MPK Document 3 Filed 10/05/12 Page 1 of 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`ADAMS MFG. CORP.
`
`a Pennsylvania Corporation
`
`Plaintiff,
`
`v.
`
`THE HONORABLE DAVID J. KAPPOS,
`
`in his official capacity as Director of the Unite
`States Patent and Trademark Office
`:
`Defendants.
`
`Case No. 2:l2—cv-1430-MPK
`
`DISCLOSURE STATEMENT
`
`Pursuant to Local Rule 7.1.] of the Western District of Pennsylvania and to enable
`
`Judges and Magistrate Judges to evaluate possible disqualification or recusal, the undersigned
`
`counsel for Adams Mfg. Corp. in the above captioned action, certifies that Adams Mfg. Corp
`
`does not have any parents, subsidiaries and/or affiliates that have issued shares or debt securities
`
`to the public.
`
`October 5, 20 l2
`
`/s/ Lynn J. Alstadt
`
`Lynn J. Alstadt
`Buchanan" lngersoll & Rooney PC
`One Oxford Centre
`
`301 Grant Street, 20th Floor
`
`Pittsburgh, Pennsylvania 15219
`
`Attorney for Plaintiff, Adams Mfg. Corp.
`
`

`
`Case 2:12-cv-Cli+30—MPK Document 1-1 Filed 10/03/12 Page 1 of 2
`
`CIVIL COVER SHEET
`MS“ W-1W)
`pers as re uired by law, cxccptas provided
`The IS 44 civil coversheet and the information contained herein neither re lace not so ptement thefiling and scrvioe ofplcadln s or other
`by lo¢.a_l mles ofcourt. This form, approved by the Judicial Corrferznca 0 the United (ates in September I974, is required for S15 use of e Clerk DfE0ut‘t for the purposc of initiating
`the ctvtl dockct sheet.
`[SEE lNS'I‘RUCl‘lONS ON THE REVERSE OF THF. FORM)
`
`I. (a) PLAINTIFFS
`Adams W9. Corp.
`
`y
`DEFENDANTS
`The Honorable David J. Kappos, in hls capacity as Director of the
`United States Patent and Trademark Oflice
`
`(b) County ofkosidence of First Listed Plaintiff‘ Butler County. PA
`(EXCEPT IN US. PLAINTIFF CASES)
`
`County ofResidence ot'First Listed Defendant
`(IN US. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CAMS. USETHE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE‘.
`
`
`
`c
`,
`l
`,
`'
`’
`Lynnlfi, Als§l%'3i7§tiéfi’élt3it° t’r‘tE‘e°?§ol‘i“'&7”t'25'l§’r’i‘é';l“l9l:°,"One Oxford Center, 301
`Grant Street, 20th Floor, Pittsburgh. PA 15219 (412) 5624632
`
`A
`“me” ‘"K“°“'"
`
`)
`
`I]. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`I3 1 US. Government
`Cl 3 Federal Question
`Plaintiff
`(U.S. Govcrmnent Not 3 Party)
`
`5 2 US. Government
`Dcrwdw
`
`C! 4 Dlvmity
`(Indicate Citizenship ot'Part.ies in ltcm ltl)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(rtacm “X” in One Box for rtumirr
`(For Diversity Casts Only)
`and On: Box for Dnkndzmt)
`PTF
`DEF
`PTF
`DEF
`0 l
`O l
`0 4
`G 4
`
`Citizen ofThis State
`
`lrumrporuted arPn'ncipa] Place
`ofausinas In This State
`
`Citizen ofatnotherstate
`
`D 2
`
`D 3
`
`Citizanorsubjed of:
`Forci C
`
`Cl 3
`
`D 3
`
`incorporated audPn'nciyaI Plane
`°fB"’i"'$ 1" A“°'h" Sm‘
`Foreign Nation
`
`[1
`
`5
`
`CJ 5
`
`0 6
`
`D 6
`
`D l 10 Insurance
`PERSONAL INJURY
`Cl 610 Agficulrure
`Cl 422 Appeal 23 USC 15!
`O 400 State Reappnrtiomtait
`
`
`D I20 Marino
`0 J10 Alrplant:
`D 362 Personal Injury v
`D 620 Other Food & Drug
`D 423 Withdrawal
`D 419 Antitrust
`
`U I30 Miller Act
`D 3l$ Aimlnna Product
`Med. Malpractice
`U 525 Drug Related Saintre
`28 USC 157
`CI #30 Banks and Banlting
`ofPropea1y 11 USC Sill
`Cl H0 Ncgntiablelztstrurnettt
`Liability
`D 365 Personal Injury -
`U 450 Commucc
`
`E! $30 Liquor Laws
`Cl 150 Rnoovery ofoverpayu-tent D 320 Assault. Lib:-.1 &
`Product Liability
`El
`-160 Deportation
`
`
`D 640 RR. & Truck
`El 320 Copyright:
`& Enforccmcntofludgrncnt
`Slander
`U 368 Asbestos Personal
`D 470 Racketncr Influenced and
`
`D 650 Airline Rags
`E! 830 Patent
`5 U1 luladicare Act
`0 330 Federal Emptoyerr
`lt1_jury?rodLLCt
`Corrupt Organizations
`E 840 Trademark
`D 152 Rccovuy of Defaultud
`Liability
`Liability
`Cl 660 Occupational
`1180 Consumer Credit
`[J
`
`Student Loans
`D 340 Marine
`PERSONAL PROPERTY
`Safety/Health
`Cl 490 Cableisal TV
`(Fatal, Votcrnns)
`U 345 Marine Product
`Cl
`370 Othzr Fraud
`0 690 Otltcr
`D 8l0 Snlectivo Servia:
`13 I53 Recovery ofovurpayment
`Usability
`0 37] Tnuh in Lending
`850 Sacun'ties/Cornmudities/
`of Veteran’: Benefit:
`O 350 Motor Vehicle
`D 330 Othar Personal
`0 710 Fair Labor Standards
`Exchange
`0 86l HIA ( l 395?!)
`
`0 lol) Stockholders‘ Suit:
`0 355 Motor Vehicle
`Property Damage
`D 875 Customer Challenge
`Act
`Cl 862 Black Lung (923)
`C) 390 Othct Contract
`Product Liability
`D 385 Property Dtzmagc
`D 720 Laborllvtgrnt. Rclntions
`I2 USC 3410
`0 863 DKWC/DlWW(405(g)]
`
`D 195 Contract Product Liability 0
`Product Liability
`0 730 Labor/Mgntrkcporting
`O 890 Other Stamtm-y Actions
`D 864 SSID Title XVI
`his:
`0 89! Agricultural Am
`D l96 Franc
`& Dixalosurv Act
`
`
`892 Ewnnmic Stabilization Au
`'‘7l?RBBER~ .
`‘
`
`
`
`
`
`44
`510 Motion: to Vacate
`Cl
`Cl 393 Enviromnnntal Matters
`U 210 Land Condemnation
`D 790 Other LaborI.itignt1'on
`D 870 Tax¢s(U.S. Plan’:-m't‘f
`Sentence
`or Defendant)
`El 894 Energy Allocation Act
`D 442 Employment
`D 220 Fonsclostua
`0 79l Empl. Rot. lnc.
`llnbcsr Corpus:
`[3 87! IRS-’l'lii.-rd Party
`['1 130 Ram Lease dz!‘-,i:ct-menr
`D 443 Housing!
`Security Act
`El 895 Freedom cflnfomtaaion
`
`
`
`530 Gut-tcml
`I
`26 USC 7609
`D 240 Torts to Land
`Amomtnodations
`Am
`I
`535 beau}: Penalty
` :Nt. f EN‘ Hill"
`Cl 444 Walfm
`C] 245 Tort Product Liability
`U 90(lAppvt.'.a.l ofF:c Determination
`
`
`I 46 Naturalization Application
`D 445 Arrux. w/Disnbilitics - I
`540 Mandamus & Otlwr
`D 290 All Other Real Propcrty
`Untlzr Equal Accra;
`
`
`‘I
`550 Civil Rights
`D 463 I-labeas Corpus -
`Employment
`to Justice
`0 446 Amzr. w/Disabilities - El 555 Prison Condition
`Alicn Detainee
`D 950 Constitutionality of
`0 465 Other ltnmigration
`Other
`State Statutes
`D 440 Otlmr Civil Rights
`Actions
`
`
`
`
`
`
`
`
`
`
`
`I
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`V; ORIGIN
`Ell Original_
`Proceeding
`
`A.%P°.3l1.9Dl.51fi0l
`.
`_.
`(P!2c:.=_t':»"X”t'nOncBe.\: Only.)
`5 :”"‘§f°’g?%_ll‘:m C] 6 Multidistrict Q 7 Q‘ 39 3°”
`D 4 Reinstated or Cl
`C] 2 Removed from
`C] 3 Remanded from
`'5 ‘C
`J agfée
`cfi-fl
`Litigation
`Rcopcncd
`State Court
`Appellate Court
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdiulioml statutes unless diversity):
`15 U.
`.
`~ 71 b 1
`VI’ CAUSE OF ACTION Brief description of cause:
`-
`De nov view f «,0 ‘II «I Trlal :I ;uo:. :0. 0 1' lSll'1
`vn. REQUESTED IN
`C! cnucx 11-‘ ms IS A cutss mnou
`DEMAND s
`CHECK YES onry ifdemanded In complaint:
`
`COMPLAINT:
`UNDER FAR-CR 23
`JURY DEMAND:
`it Yes
`D No
`
`VIII. RELATED CASE(S)
`IFANY
`
`(S
`
`}_
`_n,
`1
`.
`°""‘"‘“ °""
`
`JUDGE
`
`DOCKET NUMBER
`
`
`
`
`
`DATE
`
`
`
`10103/2012
`FOR OFFICE US ONLY
`
`
`
` _j.._——j
`RECEIPT 3!
`AMOUNT
`APPLYWG IFP
`JUDGE
`MAG, JUDGE
`
`

`
`Case 2:12-cv-O:r+30—MPK Document 1-1 Filed 10/Oo/12 Page 2 of 2
`
`JS 44AREVISED June, 2009
`IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`THIS CASE DESIGNATION SHEET MUST BE COMPLETED
`
`PART A
`
`() Pittsburgh) calendar.
`C) Johnstown
`(3 Erie
`This case belongs on the (
`1. ERIE CALENDAR -If cause of action arose in the counties of Crawford, Elk, Erie,
`Forest, Mckean. Venang or Warren, OR any plaintiff or defendant resides in one of said
`counties.
`2. JOHNSTOWN CALENDAR -15 cause of action arose in the counties of Bedford. Blair,
`Cambria, Clearfield or Somerset OR any plaintiff or defendant resides in one of
`said counties.
`
`I certify that the cause of action arose in
`3. Complete if on ERIE CALENDAR:
`
`County and that the
`resides in
`County.
`
`
`
`I certify that the cause of action arose in
`4. Complete if on JOHNSTOWR CALENDAR:
`County and that the
`resides in
`County.
`
`PART B (You are to check ONE of the following)
`
`
`
`.Short Caption
`1.(3 This case is related to Number
`2.C} This case is not related to a pending or terminated case.
`DEFINlTIONS OF RELATED CASES:
`CIVIL: Civil cases are deemed related when a case filed relates to property included in
`another suit or involves the same issues of fact or it grows out of the same transactions
`as another suit or involves the validity or infringement of a patent involved in another
`suit EMINENT DOMAIN: Cases in contiguous closely located groups and in common ownership
`groups which will lend themselves to consolidation for trial shall be deemed related.
`HABEAS CORPUS &CIVIL RIGHTS: All habeas corpus petitions filed by the same individual
`shall be deemed related. All pro se Civil Rights actions by the same individual shall be
`deemed related.
`
`PARTC
`I. CIVIL CATEGORY (Place x in only applicable category).
`Antitrust and Securities Act Cases
`Labor-Management Relations
`Habeas corpus
`Civil Rights
`Patent. Copyright, and Trademark
`Eminent Domain
`All other federal question cases
`FELA,
`including maritime.
`All personal
`and property damage tort cases,
`Jones Act, Motor vehicle, products liability, assault, deramation, malicious
`prosecution, and false arrest
`Insurance indemnity, contract and other diversity cases.
`Government collection Cases (shal; include HEW Student Loans (Education),
`V A Overpayment, Overpayment of Social security, Enlistment
`Dverpayment
`(Army, Navy, etc.},
`HUD Loans,
`GAO Loans
`(Misc. Typesh
`Mortgage Foreclosures,
`SBA Loans, Civil Penalties
`and Coal Mine
`Penalty and Reclamation Fees.)
`
`cooooooooo
`
`7"
`
`I certify that to the beat of my knowledge the entries on this Case Designation
`Sheet are true and correct
`
`Date:
`
`3.
`
`I
`
`’
`
`ATTORNEY AT LAW
`
`NOTE: ALL SECTIONS OF BOTH SIDES MUST BE COMPLETED BEFORE CASE CAN BE PROCESSED.
`
`

`
`Case 2:12-cv~L1430-MPK Document 1 Filed 10/03/12 Page 1 of 6
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICTIOF PENNSYLVANIA
`
`Adams Mfg. Corp.,
`a Pennsylvania Comoration
`
`Plaintiff,
`
`E
`
`CIVIL ACTION NO.
`
`v.
`
`The Honorable David J. Kappos,
`in his official capacity as Director of the United
`States Patent and Trademark Office
`
`Defendant.
`
`COMPLAINT FOR APPEAL AND DE NOVO REVIEW OF DECISION OF
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Plaintiff, Adams Manufacturing Corp., by and through its attorneys, alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action seeking judicial review of a final decision of the Trademark Trial
`
`and Appeal Board (“TTAB), an administrative agency of the United States Patent and Trademark
`
`Office (“USPTO”), under 15 U.S.C. § 107l(b)(1).
`
`2.
`
`On August 7, 2012, the TTAB affirmed a rejection of Application Ser. No.
`
`85/025,503. In doing so, the TTAB found that Plaintiff’ s product design is de jure functional,
`
`not inherently distinctive, and has not acquired distinctiveness.
`
`THE PARTIES
`
`3.
`
`Plaintiff, Adams Manufacturing Corp., (“Adams” or “Applicant”) is a
`
`Pennsylvania corporation having a principal place of business located at 109 West Park Road,
`
`Portersville, Pennsylvania 16051.
`
`

`
`Case 2:l2'CV'E(JL43O‘MPK Document 1 Filed 10/03/12 Page 2 of 6
`
`4.
`
`Defendant is the Honorable David J. Kappos, in his official capacity as Under
`
`Secretary of Commerce for Intellectual Property and Director of the United States and Patent and
`
`Trademark Dffice.
`
`,| []_I$ISDICTION AND VENUE
`
`5.
`
`This is an action for judicial review of a final decision of the TTAB under the
`
`Lanharn Act, 15 U.S.C. § 1051 et seq.
`
`6.
`
`This Court has original jurisdiction pursuant to 28 U.S.C. §§1331 and 1338 as it
`
`involves claims presenting federal questions under 15 U.S.C. § l071(b)(1) and 1121(a).
`
`7.
`
`Venue is proper in this district pursuant to 28 U.S.C. §§ 1361 and 1391(6)
`
`because the Plaintiff resides in this district, the action does not involve real property, and the
`
`defendant is an officer of the United States or any agency thereof acting in his official capacity.
`
`FACTUAL BACKGROUND
`
`8.
`
`Since around September, 1991, Adams has continuously used a design mark of
`
`two concentric rings, shown below:
`
`
`
`9.
`
`Adams’ mark consists of a three-dimensional configuration of two concentric
`
`rings on the outer surface of the cup portion of a suction cup.
`
`10.
`
`Broken lines in the figure depict the stem and outer edge of the suction cup to
`
`indicate the placement of the mark on the goods, and are not part of the mark.
`
`

`
`Case 2:l2—cv~'t»r430-MPK Document 1 Filed 10/03/12 Page 3 of 6
`
`11.
`
`On April 28, 2010, Adams filed Application Ser. No. 85/025,503 at the USPTO
`
`seeking registration of the design mark for use on and in connection with “plastic suction cups,
`
`not for medical purposes” in International Class 020.
`
`12.
`
`The Examining Attorney found no similar mark that would bar registration. In
`
`fact, the only similar registered mark is the single ring design which is the subject of Adams’
`
`U.S. Registration No. 3339265, shown here:
`
`
`
`13.
`
`However, the Examining Attorney refused Adams’ registration on the ground that
`
`I
`
`it is merely a three—dimensional configuration of a feature that fails to function as a mark.
`
`14.
`
`The Examining Attorney additionally refused registration on the grounds that the
`
`mark is a nondistinctive product design or design feature of the product that has not acquired
`
`distinctiveness pursuant to 15 U.S.C. §§ 1051-52 and 1127.
`
`15.
`
`The Examining Attorney relied on U.S. Patent No. 5,039,045 as the primary
`
`evidence to support his determinalon Lha- the design mark is functional,
`
`16.
`
`After the Examining Attorney made the refusals final, Adams appealed the
`
`Examining Attorney’s refusal to register Applicant’s two concentric rings.
`
`17.
`
`Oral argument in the appeal was held before a three-person panel of the TTAB
`
`Administrative Trademark Judges on April 17, 2012.
`
`

`
`Case 2:12—cv—tJi430—MPK Document 1 Filed 10/03/12 Page 4 of 6
`
`18.
`
`On August 7, 2012, the TTAB issued its decision, affirming the Examining
`
`Attorney’ s refusal to register the mark. A copy of the decision is attached as Exhibit A.
`
`19.
`
`Specifically, the TTAB found that based upon the record before it Applicant’s
`
`two concentric rings were functional and Applicant had failed to prove that the two concentric
`
`rings had become distinctive.
`
`20.
`
`The T1‘AB erred in its conclusions for at least two reasons.
`
`21.
`
`First, the two concentric rings shown above for which Applicant seeks registration
`
`are not essential to the use of suction cups and do not affect the cost or quality of the product
`
`when compared to many other suctions cups. Hence, the two concentric rings are not functional.
`
`22.
`
`Second, as shown by customer affidavits, the two concentric rings configuration
`
`has become distinctive of the goods/services through the Applicant's substantially exclusive and
`
`continuous use in commerce for at least five years immediately before the filing date of U.S.
`
`Trademark Application Ser. No. 85/025,503.
`
`23.
`
`The TTAB also improperly discounted the importance of Adams’ prior
`
`registration.
`
`24.
`
`Pursuant to 15 U.S.C. § l071(b)(l), and as a result of the TTAB’s erroneous
`
`decision to refuse registration of Adams’ mark, Adams is entitled to de novo review, based upon
`
`the evidence of record and any additional evidence to be introduced into the record of this
`
`matter.
`
`CAUSE OF ACTION
`
`1.
`
`Adams alleges and incorporates by reference each and every allegation in
`
`Paragraphs 1 through 24.
`
`

`
`Case 2:12-cv—L.t430—MPK Document 1 Filed 10/03/12 Page 5 of 6
`
`2.
`
`Adams is dissatisfied with the decision of the TTAB affirming the refusal of the
`
`Examining Attorney to register the two concentric ring configuration and its erroneous
`
`conclusion that Adams’ mark is functional and non—distinctive.
`
`3.
`
`The TTAB decision of August 7, 2012 should be reversed and vacated, and an
`
`order should be entered directing the USPTO to register Applicant’s two consecutive rings as a
`
`trademark on the Principal Register based upon U.S. Trademark Application Ser. No. 85/025,503
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Adams prays that this honorable Court grant Adams the following relief:
`
`A.
`
`That the Court reverse the TTAB’s August 7, 2012 decision in the matter of In re
`
`Adams Mfg. Corp. regarding Application Ser. No. 85/025,503 referenced herein, pursuant to 15
`
`U.S.C. § 107l(b);
`
`B.
`
`That the Court declare Adams is entitled to registration of the two concentric
`
`rings on the Principal Register based upon U.S. Trademark Application Ser. No. 85/025,503:
`
`
`
`C.
`
`That the Court order the USWO to register the two consecutive rings on the
`
`Principal Register based upon U.S. Trademark Application Ser. No. 85/025,503, pursuant to 15
`
`U.S.C. § 1119; and
`
`D.
`
`That the Court grant such other relief as it deems appropriate.
`
`

`
`Case 2:12—cv-L1-430-MPK Document 1 Filed 10/03/12 Page 6 of 6
`
`JURY DEMAND
`
`Adams hereby demands a trial by jury of all issues properly so triable.
`
`Dated: October 3, 2012
`
`Respectfully submitted,
`
`/s/Lygg J. Alstadt
`Lynn J. Alstadt
`PA I.D. No. 23,487
`BUCHANAN INGBRSOLL & ROONEY PC
`One Oxford Centre
`
`301 Grant Street, 20th Floor
`
`Pittsburgh, PA 15219—1410
`(412) 562-1632
`lynn.a1stadt@bipe.com
`
`Attorneysfor Plaintifi”
`
`

`
`Case 2:12~cv—O1~+dO-MPK Document 1-2 Filed 10/03/12 Page 1 of 26
`
`EXHIBIT A
`
`

`
`Case 2:12-cv—O11z+.3O-MPK Document 1-2 Filed 10/03/12 Page 2 of 26
`
`
`IS NOT A PRECEDENT
`OFTHETTAB
`
`
`
`TTHSIDPHQNDN
`
`
`
`Hearing: April 17, 2012
`
`Mailed: August 7, 2012
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`
`In re Adams Mfg. Corp.
`
`
`Serial No. 85025503
`
`
`Lynn J. Alstadt of Buchanan Ingersoll & Rooney PC tor Adams
`Mfg. Corp.
`James W. MacFarlane, Trademark Examining Attorney, Law
`Office 104 (Chris Doninger, Managing Attorney).
`
`
`Before Quinn, Grendel and Wolfeon, Administrative Trademark
`Judges.
`Opinion by wolfson. Administrative Trademark Judge:
`
`Applicant seeks registration on the Principal Register
`
`of the mark depicted below for “plastic suction Cups, not
`
`for medical purposes:"1
`
` _—_——
`
`‘ Application Serial No. 85025503, filed April 28, 2010, based on
`September 1991 as the date of first use of the mark and first use
`of the mark in commerce.
`The following description of the mark
`and color statements are in the record:
`“The mark consists of a
`three-dimensional configuration of a suction cup with two
`concentric rigne {sic} on the outer surface of the cup poriton
`[sic] of the suction cup.
`The broken lines depicting the stem
`and outer edge of the suction cup indictate [sic] placement of
`the mark on the goods and are not part of the mark. Color is not
`claimed as a feature of the mark.”
`
`

`
`Case 2:12-cv~041L+3O—MPK Document 1-2 Filed 10/03/12 Page 3 of 26
`
`Serial No. B5025503
`
`
`
`commerce for at least the five years immediately before the
`
`date of this statement.” Applicant also claims ownership of
`
`U.S. Registration No. 3339265.‘
`
`The examining attorney refused registration on the
`
`ground that the designation (the “concentric rings” design)
`
`is merely a three-dimensional configuration of a feature of
`
`the goods that fails to function as a mark. Trademark Act §
`
`2(e)(5), 15 U.S.C.
`
`§ 1052(e)(5).
`
`The examining attorney
`
`further refused registration on the grounds that the mark is
`
`a nondietinctive product design or design feature of the
`
`product that has not acquired distinctiveness, Trademark Act
`
`‘
`
`2, and 45, 15 U.S.C. §§ l0S1~1052, 1127, and noted
`
`that a showing of acquired distinctiveness, even one
`
`sufficient to overcome the nondistinctiveness refusal under
`__________________.
`
`2 Reg. No. 3339265 for the design mark:
`/.
`ll" ;
`
`for “plastic suction cups not for medical purposes";
`registered under Section 2(f) on November 20, 2007.
`-2-
`
`

`
`Case 2:12-cv-Ol=+-:.0—MPK Document 1-2 Filed 10/O3:/.LZ Page 4 of 26
`
`Serial No. 85025503
`
`functionality refusal.
`After the examining attorney made the refusals final,
`this Board. An oral hearing was held.
`
`applicant appealed to
`
`We affirm the refusals to register.
`
`Functionalitx
`§
`15 U.S.C.
`Section 2(e)(
`5) of the Trademark Act,
`l052{e)(S). provides that registration of a product design
`may be denied if it “comprises any matter that, as a whole,
`is functional-"
`A product feature is functional “if it is
`essential to the use or purpose of the article or if it
`affects the cost or quality of the article.”
`Inwood
`Laboratories,
`Inc. v.
`Ives Laboratories, Inc., 456 U.s. 844,
`See also, TrafFix Devices Inc.
`
`214 USPQ 1,
`4 n.10 (1982).
`v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001,
`734 F.2d 1482, 222
`
`1006 (2001); and In re R.M. Smith, Inc.,
`USPQ 1,
`3
`(Fed. Cir. 1984)
`(“De jure functionalitymmeans
`that the product is in its particular shape because it works
`better in this shape.").
`To afford registration to
`functional designs would inhibit legitimate competition by
`—reputationa1, or non-
`
`in effect granting a monopoly to a non
`
`source-identifying, feature of a product.
`S. 159, 34 USPQ2d 1161, 1163-64
`
`Qualitex Co. V.
`
`Jacobson Products Co., 514 U.
`(1995); In re Bose, 227 USPQ 1,
`
`(Fed. Cir. 1988)
`
`(“If the
`
`6
`
`-
`
`_ 3
`
`

`
`Case 2:12—cv-Oicsso-MPK Document 1-2 Filed 10/O3;/.LZ Page 5 of 26
`
`Serial No. 85025503
`
`feature asserted to give a product distinctiveness is the
`
`best, or at least one, of a few superior designs for its de
`
`facto purpose, it follows that competition is hindered").
`
`See also,
`
`In re Morton-Norwich Products, Inc., 671 F.2d
`
`1332, 213 USPQ 9, 12 (CCPA 1982); and Kistner Concrete
`
`Products,
`
`Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d
`
`1912, 1918-19 (TTAB 2011)
`
`(“The functionality doctrine is
`
`intended to encourage legitimate competition by maintaining
`
`the proper balance between trademark law and patent law.").
`
`The examining attorney argues that applicant's design
`
`is functional because the “concentric rings” design
`
`“diffuses light that passes through [the suction cup]
`
`to
`
`prevent the harmful effects of having sunlight focused on
`
`particular surfaces or objects."3 The examining attorney
`
`further argues that “[a]lthough there are other ways to
`
`diffuse light passing through a suction cup, applicant's
`
`design has certain advantages over alternative designs."‘
`
`Applicant concedes that the rings on the surface of the
`
`suction cup diffuse light. but argues that “the mark would
`
`be functional only if the rings are essential to achieving
`
`__.________.______,_
`
`3 Final Office action, January 11, 2011.
`‘ Id.
`
`

`
`Case_2:12-cv—Ol=;oO—MPK Document 1-2 Filed 10/O3:/.Lé Page60f26
`
`Serial No. 85025503
`
`light diffusion or the rings affect the cost or quality of
`
`the product. Neither factor is present here."5
`
`A determination of functionality generally involves
`
`consideration of the following factors (known as the Morton-
`
`Norwich factors):
`
`1. Whether a utility patent exists that discloses the
`
`utilitarian advantages of the design sought to be
`
`registered;
`
`2. Whether applicant's advertising touts the
`
`utilitarian advantages of the design;
`
`3. Whether alternative designs are available that serve
`
`the same utilitarian purpose; and
`
`4. Whether the design results from a comparatively
`
`simple or inexpensive method of manufacture.
`See Valu
`Engineering Inc. V. Rexnord Corp., 61 USPQ2d 1422, 1426
`
`(Fed. Cir. 2002), citing In re Morton-Norwich Products,
`
`Inc., 213 USPQ at 15-16.
`
`Accordingly, if the-concentric rings design is
`
`essential to the light-diffusing qualities of the suction
`
`cup,
`
`is less expensive to manufacture, or affects the
`
`quality of the product, registration of the design would
`
`__.____a__~____*__.__
`
`5 Response to Office action, November 5, 2010.
`
`_ 5
`
`-
`
`

`
`Case 2:12—cv—O1LrsO~MPK Document 1-2 Filed 10/03/12 Page 7 of 26
`
`serial No. 85025503
`
`hinder the legitimate right oE others to compete
`
`effectively.
`
`The Existence of a Patent
`“[T1he existence of a utility patent for the features
`for which trademark protection is sought is often critical
`to a determination that the features are functional."
`Kistner Concrete Products, 97 UsPQ2d at 1924 (evidence of
`utility patent accorded “heavy weight“).
`See also,
`In re
`Bose, 227 USPQ at 6
`(Board did not err in looking to patent
`disclosure); In re Charles N. Van Valkenburgh, 97 USPQ2d
`1757, 1759 (TTAB 2011), citing TrafFix Devices Inc., 58 USPQ
`2d at 1005 (“A prior patent, we conclude, has vital
`significance in resolving the trade dress claim.").
`Applicant's website includes a section entitled
`“Patents” that states:
`“Each Adams’ suction cup is
`protected by one or more of the following patents” and which
`lists nine utility and eight design patents.‘ Of these,
`the
`examining attorney has made Patent No. 5,039,045 for
`“suction cup for use in windows" and Patent No, 5,318,262
`for “multiple layer suction holder" of record,’ and
`
`_____.____.____.___________,_.
`5 At http://suctioncups.com. accessed August 17, 2010 and attached
`to Office action of August 18, 2010.
`’ Attached to Office action of August 18, 2010.
`The examining
`attorney also made of record Patent Nos. 7,621,649 (light
`distribution control type illuminator) and 7,377,661 B2
`(illuminated sink). While we have considered these patents,
`- 5
`_
`
`they
`
`

`
`Case 2:12-cv-OiL+«5O—MPK Document 1-2 Filed 10/Oi3t/iz Page 8 of 26
`
`Serial NO. 85025503
`
`applicant has made of record Design Patent No. Des. 340,181
`
`for “concentric rings."‘
`
`Patent No. 5,039,045 is particularly probative.
`
`It
`
`relates to “the field of transparent and translucent suction
`
`cups adapted to be mounted on window surfaces such as those
`
`found in an automobile" and describes a problem created when
`
`converging light rays pass through a typical suction cup:
`
`“the suction cup can under certain circumstances, act like a
`
`magnifying glass by converging the sun's rays at a single
`
`focal point," thereby causing damage to any material, such
`
`as fabric or upholstery, at the focal point. This problem
`
`is solved by providing “a ridge of plastic" along the outer
`
`rim of the suction cup-
`
`The light rays are redirected, and
`
`do not converge at a focal point.
`
`The patent claims an improved suction cup “comprising a
`
`plurality of surface deformations M such that light rays
`
`passing through said suction cup will not converge at a
`
`single focal point.” The preferred embodiment of this
`
`invention does not
`
`include multiple ridges, only a single
`
`ridge along the rim of the suction cup. However,
`
`the patent
`
`describes an alternate embodiment wherein “circular ridge
`
`_____.__n._______.._._________________________“_~m________
`
`are not probative of the issues at hand.
`Office action.
`3 see applicant's November 5, 2010 response.
`- 7 -
`
`See January 11, 2011,
`
`

`
`Case 2:12—cv-O14-o0~MPK Document 1-2 Filed 10/03hr Page 9 of 26
`
`Serial No. 85025503
`
`318 are [sic] provided on frustoconical section 316 of cup
`portion 314."’ This embodiment is shown by FIGS. 7 and 8:“
`
`3D
`
`F1_q.?.
`32
`
`34
`
`FIGS.
`
`7 and 8 illustrate a suction cup with four
`
`ridges.
`
`“As shown in FIG 8. ridges 313 scatter light rays
`
`330 such that a reduced portion of light rays 332 converge
`
`at focal point 340. Scattered rays 334 do not converge at
`
`focal point 340,
`
`thereby obtaining sufficient dispersion of
`
`proposed mark do not have to be identical for the patent to
`read on or apply to the proposed mark.”
`Valkenburgh, 97
`
`USPQ2d at l760—61.
`
`The applied—for design, having two
`
`concentric rings, or ridges,
`____________.________
`
`is encompassed by the patent
`
`lines 33-34.
`9 Patent No. 5,039,045 at column 3,
`“ Unlike a design patent,
`the figures appearing in a utility
`patent merely illustrate embodiments of the claimed invention.
`However,
`they “are part of the required disclosure of the
`invention."
`In re Pingel Enterprise Inc., 46 USPQ2d 1811, 1817
`n.8 (TTAB 1998).
`this embodiment is not, apparently,
`“ According to the patent,
`the most attractive. However, applicant's President and Chief
`Executive Officer, Mr. William E. Adams,
`indicates that suction
`cups having “projections of the surface of the suction cup" other
`than those of the preferred embodiment can be “equally or more
`attractive." Adams February 22, 2011, Dec., p. 3.
`-
`3 -
`
`

`
`Case 2:12—cv-01450-MPK Document 1-2 Filed 10/03}-i4 Page 10 of 26
`
`Serial No. 85025503
`
`claims.“ The existence of this patent is highly probative
`
`of the functional nature of applicant's design.“
`
`this patent claims a
`vTurning to Patent No. 5,318,262,
`suction cup made up of two or more layers that are attached
`to each other:
`a pliable bottom layer and a harder upper
`
`“shell” that fits over the bottom piece. When the suction
`
`mounting surface.
`
`The invention provides “maximum memory
`
`for improved surface contact,
`
`longer life and reduced cost."
`
`The patent describes several embodiments of the multiple
`
`layer suction holder; however, none of them appear to
`
`include concentric rings on the outer (“shell”) surface
`
`layer. Accordingly,
`
`this patent is not particularly
`
`probative.
`
`_..___._~______._______~
`” Specifically, claim 4 states, “said improvement comprising a
`plurality of surface deformations provided in said convex
`exterior surface of said cup portion such that light rays passing
`through said suction cup will not converge at a single focal
`point." We note that an alternate embodiment, which diffuses
`light by having “grooves” instead of “ridges” and which is shown
`in FIGS.
`5 and 6,
`is also encompassed by the claims, specifically
`claim 5.
`” In his February 22, 2011, declaration, Mr. Adam states that
`Patent No. 5039045 describes a modification to the suction cup
`that provides a “flange that extends out from the base of the
`head.
`Such a flange would create the double ring configuration
`similar [to the applied—for markl.” This modification does not
`appear to be represented by a drawing.
`The fact that Mr. Adams
`has identified this modification as creating a double—ring
`configuration does not mean that none of the other embodiments
`also creates a doub1e—ring configuration. Moreover,
`this
`modification is encompassed by claim 4.
`
`-9-
`
`

`
`Serial No. 85025503
`
`Applicant has made design patent Des. 340,181 of
`record. This patent claims “the ornamental design tor a
`
`suction cup” as shown:
`
`
`
`The court in Morton—Nbrwich stated that when a party
`
`owns a design patent,
`
`this “at least presumptively,
`
`indicates that the design is not de jure functional."
`Morton-Norwich, 213 USPQ at 11, n.
`3 (citations omitted).
`
`However,
`the “existence of a design patent, while some
`evidence of non—functionality,
`is not alone sufficient
`evidence.”
`In re American National Can Co., 41 USPQ2d 1841,
`1843 (TTAB 1997).
`See also,
`In re Caterpillar, Inc., 43
`
`USPQ2d 1335, 1339 (TTAB 1997)
`
`(“The fact that a
`
`configuration design is the subject of a design patent, as
`in this case, does not, without more, establish that the
`design is non-utilitarian and serves as a trademark."). Any
`
`design feature will be somewhat ornamental,
`
`just as any
`
`useful object will have some utilty; the questio