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`This Opinion is Not a
`Precedent of the TTAB
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`Mailed: August 14, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Amanda Field d/b/a Republic Yoga
`_____
`
`Serial No. 87562426
`_____
`
`
`Leela Madan of Madan Law PLLC,
`for Amanda Field d/b/a Republic Yoga.
`Saima Makhdoom, Trademark Examining Attorney, Law Office 101,
`Ronald R. Sussman, Managing Attorney.
`_____
`
`
`Before Mermelstein, Pologeorgis and Hudis,
`Administrative Trademark Judges.
`
`
`Opinion by Hudis, Administrative Trademark Judge:
` Amanda Field d/b/a Republic Yoga (“Applicant”) seeks registration on the
`
`Supplemental Register of the design mark described in the Application as “a
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`three-dimensional configuration of a triangular block which has beveled edges”
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`(“Applicant’s Mark”) in the form shown immediately below:
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`

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`Serial No. 87562426
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`for “yoga blocks” in International Class 28.1
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` The Examining Attorney refused registration under Trademark Act Sections 23(c)
`
`and 45, 15 U.S.C. §§1091(c) and 1127, on the ground that Applicant’s Mark, as applied
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`to the goods identified in the application, consists of a functional, and therefore
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`unregistrable, three-dimensional configuration of the goods.
`
`When the refusal was made final, Applicant appealed and requested
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`reconsideration. After the request for reconsideration was denied, the appeal was
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`resumed. Applicant and the Examining Attorney filed briefs. We affirm the refusal to
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`register.
`
`I. Background and Summary of the Record
` Applicant submitted the following specimen2 of use in connection with the
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`Application:
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`Applicant’s →
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`Goods
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`◄¬
`“Best Yoga Blocks
`Single Wedge $15
`Single Block $15
`Pair of Best Yoga Blocks Wedges $25
`
`
`
`Purchase online or in studio
` We are in beta phase so please
`don’t photograph or share online.
`However send pics and feedback
`to RepublicYogaStudios@gmail.com”
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`1 Application Serial No. 87562426 filed on August 9, 2017, under Trademark Act Section 1(a),
`15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere of June 2016 and
`first use in commerce since at least as early as July 22, 2017.
`2 Specimen submitted on August 9, 2017 at TSDR 1. Page references to the application record
`refer to the online database of the USPTO’s Trademark Status & Document Retrieval
`(“TSDR”) system. All citations to documents contained in the TSDR database are to the
`downloadable .pdf versions of the documents. References to the briefs on appeal refer to the
`Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket
`entry number; and coming after this designation are the page references, if applicable.
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`Serial No. 87562426
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` With the first Office Action, the Examining Attorney submitted the following
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`Internet evidence in support of the refusal:
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`1. A “Foam Yoga Wedge” of a third party offered for sale on the website YOGA
`DIRECT3;
`2. A “Hugger Mugger Cork Wedge” of a third party, as well as foam yoga wedges
`of other third parties, offered for sale on the AMAZON.COM website4;
`3. The results of a Google “yoga wedge exercise” images search disclosing
`numerous third party yoga wedges offered for sale on the website
`HEALIOHEALTH5;
`4. A “Wedge-Shaped Yoga Block” of a third party offered for sale on the website
`GAIAM6; and
`the website
`the practice of yoga on
`5. A blog posting regarding
`SUNSHINEYOGA.COM7 – with relevant passages stating as follows:
`Practicing yoga will eventually mean performing weight-bearing
`exercises where all of a person’s body-weight comes to rest on the
`hands or toes. … The yoga wedge was designed for the transition to
`these more difficult, weight bearing exercises by providing lift and
`support that allows users to add length and flexibility to their poses.
`… [W]edges are just one tool for ensuring good form. …
`
`Yoga practitioners often come into class suffering from some sort of
`joint or muscle pain they are hoping to work out. … A yoga wedge
`can be used to alleviate some of this pain by supporting the body’s
`weight without putting too much stress or pressure on the wrists.
`The wedge, utilized in this manner can provide stability to the pose
`and relieve some of the strain placed on joints like the wrist.
`
`Responding to the first Office Action, Applicant made the following Internet
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`
`
`
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`evidence of record:
`
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`3 Office Action of November 16, 2017 at TSDR 5-7.
`4 Id. at TSDR 8-15.
`5 Id. at TSDR 16-21.
`6 Id. at TSDR 22-23.
`7 Id. at TSDR 24-25.
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`

`

`Serial No. 87562426
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`1. Postings on Applicant’s REPUBLIC YOGA website describing several ways in
`which Applicant instructs yoga practices, with and without the use of a yoga
`block8 – with relevant passage stating as follows:
`BEST YOGA BLOCKS/Restorative Yoga - 50 minutes of deep
`relaxation and Yoga using the Best Yoga Blocks system. Targeting
`fascial release, foam rolling, and breath work to be included. Good
`for injured and those in pain.
`2. The results of a Google “yoga wedge” images search disclosing numerous third
`party yoga wedges offered for sale (URL and access date not provided)9;
`3. Postings on Applicant’s REPUBLIC YOGA website describing the philosophy of
`yoga and aspects of Applicant’s yoga business (access date not provided)10; and
`4. A listing, including pictures, of numerous third party yoga wedges offered for
`sale (URL and access date not provided)11
`With the Final Office Action, the Examining Attorney made the following evidence
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`Internet of record:
`
`1. Foam and cork yoga wedges third parties offered for sale on the website
`YOGAACCESSORIES.COM12;
`2. A blog posting regarding the practice of yoga on the website HUGGER MUGGER
`YOGA PRODUCTS titled “Use a Yoga Wedge in Dog Pose”13 – with relevant
`passages stating as follows:
`
`
`
`
`8 Office Action Response of May 16, 2018 at TSDR 12. Applicant’s webpage evidence
`submitted during prosecution includes the Internet URL to its source but not the access date;
`and sometimes neither information is provided. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d
`1031, 1039 (TTAB 2010) and In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018) (applying
`the Safer rule to evidence submitted by examining attorneys and applicants in ex parte
`cases); see also 37 C.F.R. § 2.122(e)(2) (internet materials admissible in inter partes
`proceedings if “the date the internet materials were accessed and their source (e.g., URL) are
`provided.”). However we are considering this evidence for whatever probative value it may
`have, since the Examining Attorney did not object to its admissibility. In re Mueller Sports
`Medicine, Inc., 126 USPQ2d 1584, 1586-87 (TTAB 2018).
`9 Id. at TSDR 13.
`10 Id. at TSDR 14.
`11 Id. at TSDR 15.
`12 Office Action of June 4, 2018 at TSDR 5-6.
`13 Id. at TSDR 7-13.
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`Serial No. 87562426
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`Bodyworkers tell me that they’re seeing increasing numbers of hand
`and wrist problems in people who practice yoga. … [T]he weight
`bearing can take a toll. … Wrist and hand problems arise because we
`often let our weight collapse into the heels of our hands. … I … like
`using a yoga wedge (in cork or foam) to train my students’ hands to
`take the weight evenly.
`
`***
`I usually tell students, especially if they already are feeling strain in
`their hands and wrists, to practice with a yoga wedge for at least a
`few months. This gives them the time to build strength in their arms
`and train their hands so that when they stop using a wedge, healthy
`weight distribution will be a habit.
`***
`The yoga wedge is a great tool for teaching your arms how to build
`strength and stability.
`6. A blog posting titled “Yoga Wedges and Their Uses” regarding the practice of
`yoga on the website SUNSHINEYOGA.COM14 – with relevant passages stating as
`follows:
`Made from lightweight foam, the wedge is designed to provide
`stability and support so that yoga practitioners do not compromise
`the technique of each pose. The foam wedge, which is soft and
`scratch proof, has a tapered edge for better gripping and adjustable
`support.
`
`* * *
`A foam wedge provides users with one more way of reducing stress
`and improving support and posture, which is what yoga is all about.
`Made from lightweight, dense foam, the wedge is an inexpensive
`way to overcome pose difficulties and alleviate pain during sessions.
`As highly recommended as the yoga wedge is, users will still
`appreciate the support it provides after experimenting with one for
`the first time.
`7. A “Hugger Mugger Cork Wedge” of a third party, as well as foam yoga wedges
`of other third parties, offered for sale on the AMAZON.COM website15;
`
`
`14 Id. at TSDR 14-16. This is a fuller copy of the blog post that the Examining Attorney
`provided with the Office Action of November 16, 2017 at TSDR 24-25.
`15 Id. at TSDR 17-24. This appears to be the same (or a similar) product offering as what the
`Examining Attorney provided with the Office Action of November 16, 2017 TSDR 8-15.
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`Serial No. 87562426
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`8. The text (without the drawings) from U.S. Patent Appln. No. 12/011003
`(20090192028) filed January 24, 2008, titled “Yoga comfort System Wedge”16 –
`with relevant passages stating as follows:
`Abstract
`A yoga comfort system wedge is provided constructed of medium
`density, high quality, closed cell foam materials and adhesives
`comprised of layers and septums which create uniquely flexible
`prop. The construction forms a triangularly shaped yoga, fitness, or
`therapeutic device in the form of a flexible wedge which allows users
`to achieve or maintain certain poses, stretches, exercises or
`therapeutic positions while improving tactile comfort and aiding
`range of motion. Said device has advantages over traditional types
`of yoga, meditation, fitness, or therapy devices. The invention allows
`for users with specific physical limitations to comfortably modify
`and maintain desired poses or exercises which would not ordinarily
`be possible, while at the same time provides for the advanced user
`to practice their highly skilled activities with greater comfort and
`ease.
`Independent Claims:
`1. A yoga comfort system wedge in the preferred embodiment
`comprising a construction and fabrication of selected materials, size,
`shape, and two different angled surfaces, which provide tactile
`comfort and a flexible shape when used as a yoga prop.
`2. A yoga comfort system wedge in the preferred embodiment whose
`materials’ density and softness, coupled with its size, shape, and
`flexibility, provide tactile comfort and bodily placements not
`possible from yoga wedges or yoga blocks made of rigid materials or
`other types of props.
`
`
`
`16 Id. at TSDR 25-31. The manner in which the Examining Attorney procured and made of
`record the text (without the drawings) of this patent application was highly unorthodox.
`Having only the text, but not the drawings, of the cited patent makes our consideration of
`this evidence less than optimal; such that we cannot give the patent the full evidentiary
`weight it otherwise might deserve. In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1509
`(TTAB 2006) (“A prior patent … has vital significance in resolving the trade dress claim.”)
`(quoting TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005
`(2001)). Further, since “the Board does not take judicial notice of records residing in the
`Patent and Trademark Office[,]” In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB
`2016) (declining to give judicial notice of an issued U.S. patent), we cannot, and did not,
`procure a copy of the full patent from Office Records.
`
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`Serial No. 87562426
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`Background
`Embodiments of the present invention relate to apparatuses that
`constitute a yoga comfort system. More particularly, those
`embodiments relate to a yoga comfort system wedge.
`***
`Yoga assistance devices, called yoga props, such as blocks, wedges,
`bolsters, and folded blankets or mats are used to facilitate entrance
`into postures and to provide general cushioning and support.
`***
`[I]t is desirable to have a system of apparatuses that accommodates
`the user’s physical and/or health limitations, allowing the user to
`comfortably and conveniently maintain postures, as well as
`positions or exercises … One such apparatus is a yoga comfort
`system wedge.
`
`Summary of the Invention
`
`By design, yoga comfort system wedges are versatile therapeutic
`devices in that they can also be configured for use as a comfortable
`block or supportive bolster, expanding the versatility of a single yoga
`prop design. Using yoga comfort system wedges in lieu of various
`conventional yoga props simplifies the use and need for multiple
`yoga props.
`9. A blog posting entitled “How-To Guides for Well-being: Yoga Wedge: Uses” on
`the website ROLLINGS AND HARMONY17 – with relevant passages stating as
`follows:
`Yoga Wedges provide support in poses when we can’t quite get our
`hands or feet flat on tile floor. This is usually due to stiff ankles and
`wrists. By placing a yoga wedge under our hands and feet we improve
`our stability within the pose and it allows us to achieve proper
`alignment without undue stress and strain on those joints.
`10. The results of a Bing “what shape are yoga wedge” images search disclosing
`numerous third party yoga wedges made of cork or foam.18
` Requesting reconsideration in response to the Final Office Action, Applicant made
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`the following evidence of record:
`
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`17 Id. at TSDR 32-34.
`18 Id. at TSDR 35.
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`Serial No. 87562426
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`1. The results of a Google “yoga blocks” images search disclosing numerous third
`party yoga wedges offered for sale (URL, but not access date, provided)19;
`2. The results of a product search on the website ALIBABA disclosing numerous
`third party yoga blocks and wedges offered for sale (URL, but not access date,
`provided)20;
`In the Denial of Applicant’s Request for Reconsideration, the Examining Attorney
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`made the following additional evidence of record:
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`1. The text and drawings from U.S. Patent No. US9199113B1 issued December
`1, 2015, titled “Yoga Prop and Method of Use”21;
`2. A blog posting entitled “10 Creative Ways to Use Props in Your Practice” on
`the website YOGA JOURNAL22 – with the relevant passage stating as follows:
`Not only do props help you find more space, freedom and stability in
`your poses, they're also great teaching tools with endless uses if you
`get creative.
`3. The text and drawings from U.S. Patent No. US7318794B2 issued January 15,
`2008, titled “Yoga Blocks”23;
`4. The text and drawings from U.S. Patent Application No. US20120214653A1
`abandoned February 18, 2011, titled “Yoga Block”24;
`5. A blog posting entitled “Yoga Blocks, Bricks & Wedges – the What, How & Why
`...” on the website YOGA MATTERS25 – with the relevant passage stating as
`follows:
`The Yoga Matters Cork Wedge
`The cork wedge is designed with rounded edges for comfort and is
`perfect for supporting the heels in downward dog or placed under the
`wrists to ease any discomfort. It does this by changing the angle of
`the wrists, which changes the way weight is being distributed
`through your structure.
`
`
`
`19 Request for Reconsideration of December 4, 2018 at TSDR 9.
`20 Id. at TSDR 10.
`21 Refusal of Request for Reconsideration of December 27, 2018 at TSDR 4-9.
`22 Id. at TSDR 10-13.
`23 Id. at TSDR 14-19.
`24 Id. at TSDR 20-25.
`25 Id. at TSDR 26-28.
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`Serial No. 87562426
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`6. A blog posting entitled “How to Use a Yoga Brick” on the website LOVE TO
`KNOW.26
`II. Applicable Law and Discussion
`It is a bedrock principle of trademark and trade dress law that protection is not
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`given to product designs that are functional:
`
`The requirement of nonfunctionality in trademark and trade dress law
`is concerned with whether the particular shape or feature claimed to be
`a trademark or trade dress contributes to a utilitarian purpose.
`***
`There are two main rationales underlying the functionality bar …:
`
`(1) Implementation of a key principle of free competition in United
`States law: there is only one source of exclusive rights in functional and
`utilitarian features—utility patent law; and
`(2) Preserving free and effective competition by ensuring that
`competitors can copy features that they need to compete effectively.
`J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:63
`
`(5th ed. 2019).
`
` Functional matter is prohibited registration on the Supplemental Register27
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`under Trademark Act Section 23(c), 15 U.S.C. § 1091(c), which provides:
`
`For the purposes of registration on the supplemental register, a mark
`may consist of any trademark, symbol, label, package, configuration of
`goods, name, word, slogan, phrase, surname, geographical name,
`numeral, device, any matter that as a whole is not functional, or any
`combination of any of the foregoing, but such mark must be capable of
`distinguishing the applicant’s goods or services.
`
` There are two theories under which claimed trade dress can be denied trademark
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`protection as being functional. “Utilitarian functionality” considers whether a
`
`
`26 Id. at TSDR 29-33.
`27 See also Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5) (prohibiting registration on
`the Principal Register of matter which, “as a whole, is functional”).
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`Serial No. 87562426
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`product feature … is essential to the use or purpose of the article or if it affects the
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`cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
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`214USPQ 1, 4 n.10 (1982). “Aesthetic functionality” considers whether “a design’s
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`‘aesthetic value’ lies in its ability to ‘confe[r] a significant benefit that cannot
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`practically be duplicated by the use of alternative designs …’ The ‘ultimate test of
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`aesthetic functionality … is whether the recognition of trademark rights would
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`significantly hinder competition.’” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,
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`34 USPQ2d 1161, 1166 (1995) (quoting RESTATEMENT (THIRD) OF UNFAIR
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`COMPETITION § 17, Comment c, pp. 175-76 (1993)). Here, the Examining Attorney’s
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`refusal to register Applicant’s Mark on the Supplemental Register is grounded only
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`upon utilitarian functionality under the Inwood Labs test. Thus, we confine our
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`consideration to utilitarian functionality.
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` The determination of utilitarian functionality is a question of fact and depends on
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`the totality of the evidence presented in each case. In re Udor U.S.A. Inc., 89 USPQ2d
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`1978, 1979 (TTAB 2009). Key factors for assessing utilitarian functionality include:
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`(1) the existence of a utility patent that discloses the utilitarian advantages of the
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`design sought to be registered; (2) advertising by the applicant that touts the
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`utilitarian advantages of the design; (3) the availability of alternative designs; and
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`(4) whether the design results from a comparatively simple or inexpensive method of
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`manufacture. In re Becton, Dickinson & Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377
`
`(Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-
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`16 (CCPA 1982). There is no requirement that all four of the Morton-Norwich factors
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`Serial No. 87562426
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`weigh in favor of functionality in order to support a refusal under this doctrine. In re
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`N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006).
`
` Before we consider each of the Morton-Norwich factors in view of the evidence of
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`record, we pause to mention the Supreme Court’s discussion, in TrafFix, 58 USPQ2d
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`at 1006, of the third factor, the availability of alternative designs wherein the Court
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`said:
`
`It is proper to inquire into a “significant non-reputation-related
`disadvantage” in cases of [a]esthetic functionality, the question involved
`in Qualitex. Where the design is functional under the Inwood
`formulation there is no need to proceed further to consider if there is a
`competitive necessity for the feature[, and consequently] … [t]here is no
`need ... to engage ... in speculation about other design possibilities....
`Other designs need not be attempted.
` However, subsequent to TrafFix, our primary reviewing court, the Court of
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`Appeals for the Federal Circuit, in Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268,
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`61 USPQ2d 1422, 1427 (Fed. Cir. 2002), opined on whether the availability of
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`alternative designs remains a factor when considering whether a product design
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`should be granted trademark protection in view of utilitarian functionality
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`considerations:
`
`[W]e conclude that the [Supreme] Court merely noted that once a
`product feature is found functional based on other considerations [e.g.,
`the cost or quality of the device] there is no need to consider the
`availability of alternative designs, because the feature cannot be given
`trade dress protection merely because there are alternative designs
`available. But that does not mean that the availability of alternative
`designs cannot be a legitimate source of evidence to determine whether
`a feature is functional in the first place.
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`Serial No. 87562426
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`We therefore will consider whether alternative designs are available for the
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`“three-dimensional configuration of a triangular block which has beveled edges”
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`Applicant seeks to register as a trademark.
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`A. Whether a Utility Patent Exists that Discloses the
`Utilitarian Advantages of the Design Sought to be Registered
`
` Applicant contends that the product design sought to be registered has never been
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`covered by a utility patent.28 The Examining Attorney made of record: (1) the text
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`(without the drawings) from U.S. Patent Appln. No. 12/011003 (20090192028) titled
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`“Yoga comfort System Wedge” (the “‘003 Application”); (2) the entirety of U.S. Patent
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`No. US9199113B1 titled “Yoga Prop and Method of Use” (the “‘113 Patent”); (3) the
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`entirety of U.S. Patent No. US7318794B2 issued January 15, 2008, titled “Yoga
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`Blocks” (the “‘794 Patent”); and (4) the entirety of U.S. Patent Application No.
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`US20120214653A1 abandoned February 18, 2011, titled “Yoga Block” (the “‘653
`
`Application”).
`
` Neither the ‘113 Patent, the ‘794 Patent, nor the ‘653 Application is relevant,
`
`because each discloses entirely different structures than the product design now
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`before us. Our reading of the Abstract, Independent Claims, Background and
`
`Summary from the ‘003 Application indicates this patent application might have been
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`most relevant to our functionality analysis. However, since the Examining Attorney
`
`did not make the drawings of this patent application of record, and we do not take
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`judicial notice of the entire patent application, the most we can say is that the text of
`
`
`28 9 TTABVUE 11-12.
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`Serial No. 87562426
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`the patent application is only moderately informative as to the first Morton-Norwich
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`factor – which we treat as neutral.
`
`B. Whether Applicant’s Advertising Touts the Utilitarian
`Advantages of the Design Sought to be Registered
` While not made of record, Applicant’s Brief recites the following passage from
`
`Applicant’s website:
`
`Best Yoga Blocks Concept came out of a yoga teacher’s observing and
`adjusting individuals after a decade of teaching. She saw a need for a
`prop that was shaped like a triangle, rather than a rectangle –
`the common conventional yoga prop. The human body makes
`more triangular spaces than others, and in a variety of poses,
`there is a need to fill in that gap to stabilize joints and create a
`safe environment for supported yoga poses and practice. The
`wedge system is incredibly adaptable, and useful for more than just yoga
`poses. It is a design that crosses over into foam roller therapy,
`Myofascial release therapy, and physical therapy.29
` This quotation in Applicant’s Brief has no evidentiary value, except to the extent
`
`that it may serve as an admission against interest. Cf. Cai v. Diamond Hong, Inc.,
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`901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (citing Enzo Biochem, Inc. v.
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`Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney
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`argument is no substitute for evidence.”)).
`
` After providing this quotation from its website, Applicant then seeks to distance
`
`herself from the meaning of the text as mere puffery, citing In re Weber-Stephen
`
`Prods. Co., 3 USPQ2d 1659, 1665 (TTAB 1987). In Weber-Stephen, which we find
`
`inapposite, the Examining Attorney cited to portions of the applicant’s advertising
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`materials touting the utilitarian advantages of the round shape of applicant's grill
`
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`29 9 TTABVUE 11 (emphasis added).
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`Serial No. 87562426
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`bowl configuration sought to be registered. The Board, however, “[could not] say that
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`these statements necessarily indicate that the shape of applicant’s involved grill bowl
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`is functionally superior to other grill bowls which are round but which nevertheless
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`have shapes which differ from the shape of applicant’s grill bowl.” Id. Here, on the
`
`other hand, the quoted statement from Applicant’s website clearly touts the
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`functional superiority of a triangle shaped yoga prop over a rectangle – the common
`
`conventional yoga prop. This is more than mere puffery. It is Applicant describing in
`
`her own words the need for and uses of a triangular yoga prop.
`
`Additionally, we have considered the specimen submitted with the Application,
`
`describing Applicant’s product as “Yoga Blocks Wedges.” We further have considered
`
`a posting on Applicant’s website describing one of several ways in which Applicant
`
`instructs yoga practices with the use of a yoga block, as follows: “BEST YOGA
`
`BLOCKS/Restorative Yoga - 50 minutes of deep relaxation and Yoga using the Best
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`Yoga Blocks system. … Good for injured and those in pain.”
`
`Collectively, we find that Applicant’s advertising of its services touts the
`
`utilitarian advantages of a wedge yoga prop to stabilize joints and create a safe
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`environment for supported yoga poses and practice, and in the practice of yoga if the
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`person is injured or in pain. We thus weigh the second Morton-Norwich factor in favor
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`of a finding of utilitarian functionality.
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`C. Whether Alternative Designs are Available
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` Both Applicant and the Examining Attorney made of record third-party yoga
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`props in triangular (wedge), block and rectangular configurations, made of either
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`Serial No. 87562426
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`foam or cork. However, the several blog posts also made of record by the Examining
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`Attorney
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`from SUNSHINEYOGA.COM, HUGGER MUGGER YOGA PRODUCTS,
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`SUNSHINEYOGA.COM,
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`ROLLINGSANDHARMONY.COM
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`and
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`YOGAMATTERS.COM
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`particularly discuss the utilitarian usefulness of the wedge yoga prop design to help
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`yoga practitioners alleviate strain, pain, stiffness or discomfort in their wrists or
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`ankles, achieve pose stability and support, build arm strength, and train their hands
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`for proper weight distribution and improve posture.
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` Applicant argues that the third-party block and rectangular yoga props made of
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`record and which are “available in the marketplace … would achieve the same
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`‘function’ as Applicant’s design” or “that can be said to be functionally equivalent and
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`in the same price range as the Applicant’s yoga triangles.”30 Applicant does not
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`explain in its Brief how this functional design equivalence is achieved, nor does
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`Applicant provide any evidence to support its argument. In fact, as noted above,
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`Applicant’s advertising itself touts the advantages of the triangular shape in the
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`practice of yoga.
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` Based on the evidence made of record, we find that a yoga prop in the wedge shape
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`shown in the drawing of the Application provides superior utilitarian benefits in the
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`practice of yoga over block or rectangular shaped designs, and is certainly “essential
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`to the use or purpose of the article” under Inwood, 214 USPQ at 4 n.10. We therefore
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`weigh the third Morton-Norwich factor in favor of a finding of utilitarian
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`functionality.
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`30 9 TTABVUE 13-14.
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`Serial No. 87562426
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`D. Whether the Design sought to be Registered Results from a
`Comparatively Simple or Inexpensive Method of Manufacture
`In Applicant’s Brief, Applicant discusses the selling price points for yoga props as
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`
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`well as the acquisition costs for such items whether buying them in pairs or in bulk.
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`Applicant also discusses the large number of potential suppliers for these items and
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`the various materials from which yoga props can be made.31 Missing from Applicant’s
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`discussion is whether the wedge shape of its product (and proposed mark) “affects the
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`cost or quality of the article” under Inwood, 214 USPQ at 4 n.10. The Examining
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`Attorney does not discuss this Morton-Norwich factor at all. We therefore find the
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`fourth Morton-Norwich factor irrelevant to our analysis and treat it as neutral.
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`III. Conclusion
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` Because the Examining Attorney did not make the drawings of the ‘003 patent
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`application of record, it is unclear whether a utility patent or patent application
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`(active or expired) exists that discloses the utilitarian advantages of Applicant’s yoga
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`wedge design. Applicant’s advertising does tout the utilitarian advantages of the
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`wedge design, and there do not appear to be alternative designs available that would
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`work as well for the practice of yoga. There was no relevant evidence or argument as
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`to whether Applicant’s yoga wedge design results from a comparatively simple or
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`inexpensive method of manufacture. After considering each of the Morton-Norwich
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`factors in view of the evidence of record, we find that the Examining Attorney made
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`a prima facie showing that Applicant’s Mark is functional within the meaning of
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`31 9 TTABVUE 15-16.
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`Serial No. 87562426
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`Trademark Act Section 23(c), which Applicant did not rebut with the evidence and
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`argument Applicant submitted.
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` Decision: The refusal to register Applicant’s Mark on the ground of utilitarian
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`functionality is affirmed.
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