From: Sales, Heather
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`Sent: 10/4/2019 8:10:58 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 87555014 - 17905.2US01 - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 87555014.doc
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 87555014
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`Mark:
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`Correspondence Address:
` DANA P JOZEFCZYK
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` MERCHANT & GOULD PC
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` PO BOX 2910
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` MINNEAPOLIS, MN 55402-0910
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`Applicant: WCM Industries, Inc.
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`Reference/Docket No. 17905.2US01
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`Correspondence Email Address:
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` DOCKMPLS@merchantgould.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant, WCM Industries, Inc. (hereinafter “Applicant”) has appealed the Trademark
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`Examining Attorney’s refusal to register a three-dimensional product configuration of a bathtub
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`overflow drain cap (hereinafter “overflow cap” or “applied-for mark”)1 on the grounds of functionality
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`1 Applicant uses several alternative names for the mark it seeks to register, including an “overflow face plate” (see
`Applicant’s Specimen of Record), an “overflow drain cap” (see Applicant’s description of the mark), an “overflow
`plate cover” and “overflow cover” (see Applicant’s Patents and February 04, 2019 Request for Reconsideration, TSDR
`pp. 5-6), and an “overflow plate” (see May 13, 2019 Reconsideration Letter, TSDR pp. 4-5).
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`and non-distinctive product design within the meaning of Section 2(e)(5) of the Trademark Act, 5 U.S.C.
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`§1052(e)(5) and Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051-1052, 1127.
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`ISSUES
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`The three issues on appeal are: 1) Whether the applied-for mark, a three-dimensional product
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`configuration for the identified goods, is functional under Section 2(e)(5); 2) Whether the applied-for
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`mark is a distinctive product design under Sections 1, 2, and 45; and 3) Whether Applicant’s submitted
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`evidence, declarations and advertisements are sufficient to show acquired distinctiveness under Section
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`2(f).
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`STATEMENT OF FACTS
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`Applicant applied for registration on the Principal Register for a three-dimensional configuration
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`of, as described by Applicant as, “the elements of a bathtub overflow drain cap, namely, a cylindrical cap
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`with rounded edges, a smooth, flat face, and a smooth cylindrical sidewall that extends from the face at
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`a nearly perpendicular angle. The cylindrical sidewall has an elongated slot with rounded edges and the
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`slot is fully encompassed by the cylindrical sidewall” in International Class 11 for “Plumbing products,
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`namely, a bathtub overflow drain cap.” Color is not claimed as a feature of the mark. Registration was
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`refused under Trademark Act Section 2(e)(5) because the mark was found to be functional and under
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`Sections 1, 2, and 45 nondistinctive product design. Applicant’s submitted Section 2(f) claim of acquired
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`distinctiveness was also found insufficient. This appeal follows the Examining Attorney’s Final Refusal
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`dated November 19, 2018 and Denials of the Applicant’s Request for Reconsideration dated May 13,
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`2019 and June 03, 2019.
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`ARGUMENT
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`

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`I. APPLICANT’S MARK IS A FUNCTIONAL DESIGN OF THE GOODS PROVIDING IDENTIFIABLE
`UTILITARIAN ADVANTAGES TO USERS, AND THEREFORE, UNREGISTERABLE UNDER
`TRADEMARK ACT SECTION 2(E)(5).
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` mark that consists of a three-dimensional configuration of a product or its packaging is
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` A
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`functional, and thus unregistrable, when the evidence shows that the design provides identifiable
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`utilitarian advantages to the user; i.e., the product or container “has a particular shape because it works
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`better in [that] shape.” Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425
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`(Fed. Cir. 2002) (internal punctuation and citation omitted); see TMEP §1202.02(a)(iii)(A). For example,
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`design elements are functional if they are “essential to the use or purpose of the article or if it affects
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`the cost or quality of the article.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d
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`1161, 1163-64 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1,
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`4, n.10 (1982)).
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`Determining functionality normally involves consideration of one or more of the following
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`factors, commonly known as the “Morton-Norwich factors”:
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`(1)
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`The existence of a utility patent that discloses the utilitarian advantages of the product
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`or packaging design sought to be registered.
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`(2)
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`(3)
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`(4)
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`Advertising materials of the applicant that touts the utilitarian advantages of the design.
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`Facts pertaining to the availability of alternative designs.
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`Facts indicating that the design results in a comparatively simple or inexpensive method
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`of manufacture.
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`In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012)
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`(citing In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982));
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`TMEP §1202.02(a)(v).
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`A. Applicant’s Multiple Utility Patents Describe and Claim the Utilitarian Features/Characteristics
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`of the Overflow Cap
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`Applicant has secured multiple utility patents embodying the features of the proposed mark
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`such as the smooth, flat cylindrical face, sidewalls that extends from the face at a nearly perpendicular
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`angle and an elongated slot (also noted as “a cut out portion” and/or “fluid inlet port of the cap” in
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`Applicant’s patents). The patents include, but are not limited to:
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`• U.S. Patent No. 8769736 for Device for Concealing a Plate Associated with Overflow
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`Plumbing (November 15, 2017 Office Action, TSDR pp. 2-9 and May 15, 2018 Response to
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`Office Action, TSDR pp. 185-197),
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`• U.S. Patent No. 6637050 (November 15, 2017 Office Action, TSDR pp. 10-12),
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`• U.S. Patent No. 6073278 for Snap on Fluid Overflow Plate for Bathtubs (November 15, 2017
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`Office Action, TSDR pp. 13-15),
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`• U.S. Patent No. 0079654 for Device for Concealing a Plate Associated with Overflow
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`Plumbing (November 19, 2018 Office Action, TSDR p. 30-41), and
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`• U.S. Patent No. 9045886 for Overflow Plumbing Device for Concealing a Plate Associated
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`With Overflow Plumbing (and those Patents incorporated by reference therein) (November 19,
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`2018 Office Action, TSDR pp. 6-29 and May 15, 2018 Response to Office Action, TSDR pp.
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`198-221).
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`Statements in a utility patent application, the prosecution history of that application, or an
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`expired patent that refers to utilitarian advantages of the design features at issue are persuasive
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`evidence of functionality. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 32, 58
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`USPQ2d 1001, 1005-06 (2001); Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422,
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`1429 (Fed. Cir. 2002); Poly-America, LP v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1517-19 (TTAB 2017);
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`TMEP §1202.02(a)(v)(A).
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`Utility patents that claim more features than the applied-for configuration mark are relevant to
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`a functionality determination if the patent shows that the features claimed as a trademark are an
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`essential or integral part of the invention and have utilitarian advantages. TMEP §1202.02(a)(v)(A); see
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`In re Cabot Corp., 15 USPQ2d 1224, 1227-28 (TTAB 1990); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
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`532 U.S. 23, 31, 58 USPQ2d 1001, 1006 (2001). Lastly, a utility patent claiming the design features at
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`issue is strong evidence that those features are functional. TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
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`532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton, Dickinson & Co., 675 F.3d 1368, 1375,
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`102 USPQ2d 1372, 1377 (Fed. Cir. 2012); see TMEP §1202.02(a)(iv), (a)(v)(A).
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`In the present case, U.S. Patent No. US 8769736 is directed to “an overflow plate concealing
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`device for bathtubs that is associated with a plate of an overflow system of the bathtubs. This aspect of
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`the invention allows the overflow plate to be concealed to allow the user to alter the aesthetic
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`appearance of their bathtub or repair the same”, and indicates the following which describes the
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`functionality of the applied-for configuration:
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`• The over flow plate includes at least one opening that allows a fluid from inside the bathtub
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`to enter into the sleeve and overflow pipe when the liquid level in the bathtub reaches a
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`predetermined level. (November 15, 2017 Office Action, TSDR p. 6 ¶[45])
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`• One embodiment of the present invention is an overflow plate cover having an outer surface
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`with a wall extending therefrom. The wall includes an aperture that aligns with the fluid
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`opening of the overflow plate to maintain the fluid passage from inside the bathtub to the
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`overflow pipe. (November 15, 2017 Office Action, TSDR p. 6 [Field of Invention])
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`•
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`[T]he overflow plate cover 54 is associated with the retention plate 70 to conceal the overflow
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`plate. The retention plate 70 may include a lip 74, hooks, lugs, or other mechanisms that
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`cooperate with protrusions (now shown) located on the inner portion of the wall 62. Such
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`interconnection scheme is similar to that shown in U.S. Patent Application Publication No.
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`2004/0,117,907, which is incorporated by reference in its entirety herein. (November 15,
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`2017 Office Action, TSDR p. 8)
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`• The overflow plate cover is able to rotate relative to the retention plate. To ensure the fluid
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`passage is unobstructed, an aperture or cut out in the overflow plate cover wall is rotated and
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`positioned generally in line with the fluid opening of the overflow plate (November 15, 2017
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`Office Action, TSDR pp. 6-7 ¶[65])
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`• One skilled in the art will appreciate that the opening 66 may also be cut out similar to that
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`of the overflow plate opening 50 shown, thereby increasing the fluid flow capacity of the
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`overflow plate cover. (November 15, 2017 Office Action, TSDR pp. 7-8)
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`The claims in the Patent list:
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`•
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`[A]n overflow plate cover for interconnection to said retention plate, said overflow plate
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`cover having an outer surface with a wall extending therefrom with an opening therethrough
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`that is adapted to be aligned with the opening of the overflow plate to provide a continuous
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`fluid flow path from the inside the basin to the overflow system, the overflow plate cover
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`having an inner protrusion, wherein the lip interfaces with the inner protrusion. (November
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`15, 2017 Office Action, TSDR p. 9)
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`• The method of claim 8, wherein said overflow plate cover includes an outer surface with a
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`wall extending there from with an opening therethrough that is adapted to be aligned with
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`the fluid opening of the overflow plate to provide a continuous fluid path. (November 15,
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`2017, TSDR p. 9)
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`See also, Applicant’s utility Patent Pub. Nos. US 2012/0079654 DEVICE FOR CONCEALING A
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`PLATE ASSOCIATED WITH OVERFLOW PLUMBING (November 19, 2018 Office Action, TSDR pp. 30-41)
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`and U.S. Patent No. 9045886 OVERFLOW PLUMBING DEVICE FOR CONCEALING A PLATE ASSOCIATED
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`WITH OVERFLOW PLUMBING (November 19, 2018 Office Action, TSDR pp. 6-29) which also embodies
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`the applied-for mark and describes and claims the functional elements similar to the ‘736 Patent.
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`Additionally, Applicant has been granted a more recent utility patent embodying the applied-for
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`mark directed to a “[d]evice for providing improved drainage” which describes the functionality of the
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`applied-for configuration as follows:
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`•
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`In one aspect, the technology relates to an overflow assembly for a bathtub including: …an
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`overflow cover including at least one overflow opening and at least one vent opening defined
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`therein, wherein the overflow cover is configured to engage with the retainer nut and
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`substantially cover the first threaded section and the retainer nut.
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`• The overflow covers enable a flow rate of water exiting from the bathtub to be increased to
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`reduce flow rate restriction due to the buildup of air pressure within the overflow assembly.
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`The overflow covers include an overflow opening and a vent opening so that the air pressure
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`from inside the overflow assembly is allowed to equalize with the air pressure outside of the
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`overflow assembly without having to escape from the overflow opening.
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`• The overflow opening enables water to flow into the overflow elbow from the bathtub.
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`• The overflow cover defines an interior chamber that is sized and shaped so a first channel
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`•
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`•
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`may be defined between the elbow and the overflow cover.
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`[T]he overflow opening is a single opening positioned at the bottom of the overflow cover so
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`that as the water rises within the bathtub, the overflow opening enables the water to exit out
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`of the bathtub and reduce overflowing the bathtub.
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`In the example [FIGS. 5A-Ff], the overflow cover 156 is formed from a cylindrical body
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`200…the first end 202 is enclosed with a face 208…the face 208 does not have any mounting
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`holes defined therein. As such, the overflow cover 156 frictionally engages with the lugs on
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`the retainer nut so as to mount within the bathtub…. The vent opening 180 is configured to
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`be left substantially open when installed to provide the venting described herein.
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`The claims in the Patent list:
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`• An overflow assembly for a bathtub comprising: an overflow cover comprising at least one
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`overflow opening and at least one vent opening defined therein, wherein the overflow cover
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`is configured to engage with the retainer nut and substantially cover the first threaded section
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`and the retainer nut.
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`• An overflow cover comprising: a face; and an exterior wall extending from the face, wherein
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`the exterior wall is sized and shaped to receive and engage a retainer nut of an overflow
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`assembly, wherein an end of the exterior wall defines a mounting surface that is configured
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`to be positioned against a bathtub when the overflow cover is mounted over an overflow
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`port, and wherein, the at least one vent opening extends from the mounting surface to a
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`depth that is less than or equal to the offset distance.
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`• The overflow cover...wherein the at least one vent opening is completely defined by the
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`exterior wall.
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`U.S. Patent Pub. No. US 2018/0044899 DEVICE FOR PROVIDING IMPROVED DRAINAGE
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`(November 19, 2018 Office Action, TSDR pp. 42-62 and May 15, 2018 Response to Office Action, p. 303-
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`323).
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`Therefore, the function of Applicant’s applied-for product configuration is to prevent the water
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`level in a bathtub from overflowing in the event the faucet is inadvertently left in an open position, or if
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`the level gets too high when someone gets in and the water is displaced by way of a fluid flow path. The
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`elongated inlet/slot of the overflow cover facilitates the “increase[…] of the fluid flow capacity of the
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`overflow plate cover” and “..reduce overflowing the bathtub.” Applicant’s ‘736 and ‘899 Patent.
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`Further, as described and illustrated by Applicant’s patents, the applied-for product
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`configuration is typically mounted to a drain system for the tub by way of a mounting plate and is
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`secured to the mounting plate by screw/s, which requires tools. As a result, the smooth cylindrical face
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`of applied-for mark product configuration makes the installation easier, as it can then easily be installed
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`or removed without having to use special tools or fastening means such as screws. In fact, in the
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`background description of Applicant’s patent infringement case against IPS Corporation, the Federal
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`Court states that Applicant’s patents “generally describe improvements in bathtub overflow assemblies”
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`(referring to Applicant’s “Innovator” products which includes Applicant’s applied-for
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`mark/embodiments of the mark as discussed further below); “[t]ightening screws during installation
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`often left sharp burrs that could cut through skin”; and “[d]isassembling traditional overflows for testing
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`was also difficult”. WCM Industries, Inc. v. IPS Corporation, 16-2211, 3 (Fed. Cir. 2018). As such, the
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`smooth flat surface of the applied-for mark works better in this form over overflow caps with a hole/s
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`on the surface.
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`It is also clear by the record, an inlet/slot for water flow is an important segment of bathtub
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`overflow caps; and a cylindrical shape for an overflow cap is a common basic shape in the plumbing
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`industry because of its function to cover another cylindrical shape which covers a cylindrical shaped
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`drain pipe. See e.g., third-party evidence from https://www.ferguson.com, https://www.oatey.com, and
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`Applicant’s Patent Pub. No. US D665,062 BATHTUB OVERFLOW PIPE (November 19, 2018 Office Action,
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`TSDR pp. 63-72).
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`Although the above described Patents are not solely for the applied-for product configuration,
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`case law states a patent need not claim the exact product configuration for which trademark protection
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`is sought to prove functionality. See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at
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`1377 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 32-33, 34-35, 58 USPQ2d at 1005). In
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`In re Selig Sealing Products, Inc., Serial No. 86078062 (March 14, 2017) the Board affirmed the refusal
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`under Section 2(e)(5) even though Applicant argued that that none of the numerous utility patents
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`submitted relating seal technology claimed the features of Applicant’s pull tab container seal
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`configuration mark, similar to claims in this case. There, the Board stated that “even if there is no patent
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`that claims the exact configuration for which trademark protection is sought, ‘[s]tatements in a patent’s
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`specification illuminating the purpose served by a design may constitute equally strong evidence of
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`functionality.’ In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1432 (TTAB 2016) (quoting In re Becton,
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`Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377)” Id. at 7.
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`Moreover, the Board has time and again considered the overall design of a configuration and
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`Applicant’s utility patents to find product configurations functional in precedential decisions. See e.g., In
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`re Change Wind Corp., 123 USPQ2d 1453 (TTAB 2017) finding a design of a wind turbine de jure
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`functional because it was essential to the use or purpose of the product; In re Heatcon, Inc., 116
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`USPQ2d 1366 (TTAB 2015) where the Board found a configuration comprising an arrangement of various
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`components on a portable interface unit functional regardless of Applicant arguing its utility patents did
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`not show the arrangement of the components; In re UDOR U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009)
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`finding a round disk shape of a nozzle head to be “efficient, economical, and advantageous” based upon
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`Applicant’s competitors similarly shaped nozzles; and In re Rolf Dietrich, 91 USPQ2d 1622 (TTAB 2009)
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`where Applicant applied for a bicycle spoke design arguing it was not essential to anything having to do
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`with building a wheel for a bicycle or to how that wheel will perform, but the Board looked to the
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`multiple submitted patents relating to paired-spoke bicycle wheels to find that the design was dictated
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`by the underlying functional aspects of applicant’s wheels. And most recently the Board affirmed a
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`Section 2(e)(5) refusal of an umbrella in the precedential case In re OEP Enterprises, Inc., 2019 USPQ2d
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`309323 (TTAB 2019) where Applicant unsuccessfully attempted to focus on only a portion of the
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`umbrella (i.e., a mesh lower canopy of the umbrella) although the drawing applied for was the entire
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`umbrella. The foregoing illustrates that a utility patent that claims the product’s configuration’s features
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`or the specification of the patent/s will support a finding a functionality. See also In re Becton, Dickinson
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`& Co., 102 USPQ2d at 1377.
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`B. Applicant’s Product Advertisements, Statements, and Submitted Declarations Attributes
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`Superior Performance to the Overflow Cap
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`The Trademark Examining Attorney and Applicant submitted excerpts from Applicant’s
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`brochures, website, and third-party websites that contain photographs of the applied-for mark and
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`include claims of the benefits of the overflow cap. For instance, the described “elongated slot” allows
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`for an increase in fluid flow capacity. See, Applicant’s product advertisement touting this advantage of
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`the product configuration - “[h]igh-flow capacity of up to 14 gallons per minute-more than twice the
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`overflow capacity of traditional overflows” (May 15, 2018 Response to Office Action, TSDR p. 1038). As
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`well as, as the smooth flat face design for easy installation. See, September 13, 2018 Response to Office
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`Action, TSDR p. 1 stating “[a]s the improved functionality of Applicant’s overflow cap is popular amongst
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`consumers, consumers identify Applicant’s product by the unique design of the overflow cap and
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`associate the design with the ease of installation” (emphasis added).
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`Applicant’s own advertising that extols specific utilitarian advantages of the applied-for product
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`design or product packaging is strong evidence that the matter sought to be registered is
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`functional. TMEP §1202.02(a)(v)(B); see, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102
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`USPQ2d 1372, 1377-78 (Fed. Cir. 2012); In re Heatcon, Inc., 116 USPQ2d 1366, 1373 (TTAB 2015).
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`Applicant’s own product advertisements and third-party advertisements also tout the
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`advantages of the smooth, flat face and cylindrical sidewall that extends from the face at a near
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`perpendicular angle. To wit:
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`• http://watcomfg.com/watco/Brochure/SLASH_FLYER.pdf (May 13, 2019 Reconsideration
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`Letter, TSDR p. 3)
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`o
`
`o
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`o
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`o
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`o
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`“Slash installation time”
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`“Eliminates all screws”
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`“Eliminates dual inventory of one-and two-hole overflow plates”
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`“Eliminates labor”
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`“The overflow face plate is then snapped onto the specially designed points of the
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`star nut...[n]o time-consuming screws are needed! It’s a great patent-pending design
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`to simplify a better bath waste installation”
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`• http://watcomfg.com/Watco/Brochure/Contractor-591.pdf (May 13, 2019 Reconsideration
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`Letter, TSDR pp. 4-5)
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`o
`
`o
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`“Overflow plate snaps into place. No need to stock one-and two-hole plates.”
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`“In a short time, the job is finished. You save labor”
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`• https://hdsupplysolutions.com/p/watco-innovator-overflow-plate-conversion-kit-cp-
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`p642695 (May 13, 2019 Reconsideration Letter, TSDR pp. 6-7)
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`o
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`“Easily Converts 1-Hole Or 2-Hole Overflow Plates To Innovator Snap-On Overflow
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`Plate”
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`o
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`“Innovator Cover Plate Eliminates Screws And Is Self-Centering, Self-Aligning And Self-
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`Sealing”
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`• http://watcomfg.com/watco/Brochure/SPHCJun08.pdf - illustrating the applied-for mark
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`referenced as an “overflow plate or faceplate”. (May 13, 2019 Reconsideration Letter, TSDR
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`pp. 8-14) stating:
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`...the overflow plate just snaps on, no screws to deal with or tools required. It is
`easy, quick, trouble-free, and simple. Traditional one or two-screw overflow
`plates can easily be scratched with a screwdriver when installing the screws. This
`results in the need to replace the overflow plate, which can be very expensive,
`particularly with special finishes…Screws can be damaged when installing them
`with powered screwdrivers, which can leave a burr where children can injure
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`

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`themselves. Watco’s new snap-on over-flow plate eliminates all these potential
`and costly problems.
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`
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`Applicant’s applied-for overflow cap is predominately sold only with its internal component
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`parts and/or as part of Applicant’s patented plumbing systems, most often with their “Innovator®”
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`series. See, http://watcomfg.com/watco/Brochure/SPHCJun08.pdf illustrating the history of Applicant’s
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`family of products that utilizes the applied-for product design and describes the functional benefits such
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`products have for plumbers (May 13, 2019 Reconsideration Letter, TSDR pp. 8-14 and Response to
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`Office Action dated 05/14/18, TSDR p. 416). See also, https://fixmydrain.com/products/how-to-fix-
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`bathtub-drain-stopper?variant=15474675482693&utm_campaign=gs-2018-10-
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`22&utm_source=google&utm_medium=smart_campaign&gclid=Cj0KCQiAtbnjBRDBARIsAO3zDl-
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`3_FntIq9u8dBEY_9dEWgFw33Q_3msVBpelYbZoAt_-SGXFPaOi6UaAvnBEALw_wcB,
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`https://buyeagle.biz/products/innovator-snap-on-overflow-
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`plate?variant=18633114550329&gclid=Cj0KCQiAtbnjBRDBARIsAO3zDl9Dml97vpahS1sM0gzpdv3u3Xnu8i
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`un1LNp2osnkyd5UEvxFDXEvIcaAqK7EALw_wcB, and https://www.youtube.com/watch?v=qOAfzKCjafs
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`visually illustrating same (May 13, 2019 Reconsideration Letter, TSDR pp. 15-24).
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`Further, as demonstrated by Applicant’s brochure advertising a QuickTrim™ kit which utilizes
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`the overflow cap, the shape of the elongated slot in the cap acts in a functional manner. See
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`http://watcomfg.com/watco/Brochure/QuickTrimBrochure.pdf (May 13, 2019 Reconsideration Letter,
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`TSDR p. 25). Specifically, Applicant’s brochure states that there is “no reduction in flow rate”. The
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`brochure also mentions that the kit utilizing the applied-for mark “[e]liminates destroying the integrity
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`of your test”; and “[e]liminates labor required to remove and replace the strainer body”. See also, a
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`“March 26, 2018 Price List” provided by Applicant showing the applied-for mark stating same (May 15,
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`2018 Response to Office Action TSDR p. 400).
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`

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`Applicant’s submitted declarations focus solely on another utilitarian advantage, namely, the
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`design’s more appealing easy-to-use shape when it comes to installation:
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`“Installs in minutes” (May 15, 2018 Response to Office Action TSDR p. 1038),
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`“Snap on & off” - (May 15, 2018 Response to Office Action, Exhibit G, Woodford Declaration,
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`TSDR p. 1217),
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`“Snap on & off” - (May 15, 2018 Response to Office Action, Exhibit G, Zaleski Declaration,
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`TSDR p. 1221),
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`“Snap on, easy installation, in order to install you only need 3 parts…” - (May 15, 2018
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`Response to Office Action, Exhibit G, Arpin Declaration, TSDR p. 1243),
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`“Customers really like the snap on feature” – (May 15, 2018 Response to Office Action,
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`Exhibit G, Downing Declaration, TSDR p. 1435),
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`“Snap on quick install feature” - (May 15, 2018 Response to Office Action, Exhibit G, [name
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`and company illegible], TSDR p. 1483),
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`“Snap on & off” - (May 15, 2018 Response to Office Action, Exhibit G, Younggreen Declaration,
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`TSDR p. 1485), and
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`“No screws to handle, install, or lose…eliminates alignment problems and leaks” - (May 15,
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`2018 Response to Office Action, TSDR p. 1049).
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`Lastly, by Applicant’s own statements, the overflow cap was created with specific utilitarian
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`advantages in mind:
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`When WCM originally conceptualized the shape and form of its Overflow Cap
`Mark, the initial engineering work required to create a mold was significant. In
`particular, Applicant needed to create a mold that was able to be strong, but
`flexible enough to be able to snap it onto the nut, big enough to allow sufficient
`water to flow through it, but not too big that it would result in gaps around the
`edge caused by the curvature of the tub, and the side walls had to be deep
`enough to allow it to snap onto the nut and allow water to flow through it, but
`not too deep that it was aesthetically unpleasant. Presently, the cost that
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`

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`Applicant incurs manufacturing its overflow cap is similar to third parties that
`manufacture overflow caps composed of similar materials.
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`
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`May 15, 2018 Office Action, Declaration of Kevin G. Fink, TSDR p. 3 ¶5.
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`The Supreme Court has explained that “‘a product feature is functional,’” and cannot serve as a
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`trademark, “‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the
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`article.’” Qualitex, 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs, Inc., 456 U.S.
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`844, 850 no.10, 102 S.Ct. 2182, 72 (1982)). Even if a claimed trade dress does not satisfy the first test, “it
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`can still be functional if it is a ‘competitive necessity,’ that is, if its exclusive use ‘would put competitors
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`at a significant non-reputation-related disadvantage.’” Arlington Specialties, Inc. v. Urban Aid, Inc., 847
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`F.3d 415, 419 (2017)(quoting TrafFix Devices, 532 U.S. at 32-33, 121 S.Ct. 1255).
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`C. Applicant’s Statements Also Attributes Aesthetic Advantages to the Applied-for Overflow Cap
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`Applicant’s above statement describing its thoughts behind creating the applied-for mark points
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`out that Applicant considered both utilitarian advantages, as well as aesthetic advantages when designing
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`its overflow cover. As the multiple third-party websites2 illustrating same or similar overflow caps
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`demonstrates, the feature of a smooth round overflow cover (i.e., sans a screw hole) merely enhances the
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`attractiveness of the product, which is a competitive advantage over competitors and, thus, should remain
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`in the public domain. See In M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001),
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`wherein the Board found unregistrable three product configuration marks because they “would hinder
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`competition by placing competitors at a substantial competitive disadvantage.” Applicant itself states
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`“Applicant’s overflow caps snap on and off, making them easily interchangeable to match the decor of the
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`room”. September 13, 2018 Response to Office Action, TSDR p.1.
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`2 November 19, 2018, Office Action, TSDR pp. 2-5 and June 25, 2018 Office Action, TSDR pp. 9-19.
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`

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`The Board observed that a mark is aesthetically functional if there is a “competitive need” for the
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`feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed. Cir.
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`1994) (the color black for boat engines is functional because it has color compatibility with a wide variety
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`of boat colors and it makes the engines appear smaller); In re Florists’ Transworld Delivery Inc., 106
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`USPQ2d 1784, 1787 (TTAB 2013) (competitors need to use black packaging for flower arrangements in
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`order to convey an appropriate message or sentiment, and the exclusive appropriation of the color black to
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`single entity would severely limit the availability of appropriate color choices). Consequently, a round
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`overflow cover sans a screw hole is additionally aesthetically functional, and protecting such a design
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`feature is still prohibited from registration because the exclusive appropriation of that feature would put
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`competitors at a significant non-reputation related disadvantage. See Qualitex Co. v. Jacobson Prods. Co.,
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`514 U.S. 159, 34 USPQ2d 1161, 1165 (1995); TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.
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`23, 58 USPQ2d 1001, 1006-7 (2001). Therefore, to the extent applicant’s proposed mark includes aesthetic
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`features, they are function as well.
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`D. The Availability of Alternative Designs is Severely Limited
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`The Trademark Examining Attorney has made of record ample third-party examples of
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`competitors overflow caps similar or essentially identical to Applicant’s applied-for mark. Namely:
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`• https://www.us.kohler.com/us/pureflo-contemporary-push-button-bath-drain-
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`trim/productDetail/drains/429030.htm?skuId=414865
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`• http://bathroomsink.presimetrics.com/bathtub-drains-westbrass-d493chm-26-patented-
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`deep-soak-closing-no-hole-overflow-cover-for-full-and-partial-overflow-closure-polished-
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`chrome/
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`• https://www.danco.com/product/single-hole-overflow-plate-in-chrome/
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`• https://www.moen.com/products/Moen/Moen_Brushed_nickel_tubshower_drain_covers/
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`T90331BN
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`

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`• https://www.brasscraft.com/product/3-18-in-o-d-2/
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`• https://www.wayfair.com/home-improvement/pdp/k-4061-2bz-af-bgd-kohler-escale-
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`bathroom-sink-overflow-caps-koh13761.html
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`• https://www.kallista.com/bathroom/bathing/drains-overflows/perfect-cable-drain-trim-kit-
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`p21582-00-gn
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`• https://www.kingstonbrass.com/product/kingston-brass-dtt101/
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`• http://www.danze.com/lift-and-turn-conversion-kit/d490637bn/
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`• https://keeneymfg.com/featured_products/52-Quick-Cover-Up-Bath-Drain-Trim-Kit
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`• https://www.menards.com/main/plumbing/rough-plumbing/plumbing-installation-
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`repair/tub-drains-overflows-kits-accessories/plumb-works-reg-2-hole-chrome-bathtub-
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`drain-overflow-face-plate/cm2291chrome/p-1444433586401.htm
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`June 25, 2018 Office Action, TSDR pp. 9-20.
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`And while some overflow caps may deviate slightly in design, the Applicant’s multitude of
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`patents prevent its competitors from using a potentially superior design. In other words, the Applicant’s
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`comp