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`This Opinion is Not a
`Precedent of the TTAB
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`Mailed: July 11, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
`_____
`
`In re Don Emler
`_____
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`Serial No. 90688260
`_____
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`Thomas J. Romano of Kolitch Romano Dascenzo Gates LLC for Don Emler.
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`Rachel Arrison, Trademark Examining Attorney, Law Office 106,
`Mary Sparrow, Managing Attorney.
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`Before Shaw, Dunn and Thurmon, Administrative Trademark Judges.
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`Opinion by Thurmon, Administrative Trademark Judge:
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`_____
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`On May 13, 2024, the Board issued a final decision in this appeal, affirming the
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`refusal to register Applicant’s product design for lack of acquired distinctiveness. On
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`June 13, 2024, Applicant requested reconsideration, arguing that the Board also
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`should have ruled on the functionality refusal made by the Examining Attorney. In
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`the final decision, we noted that the Examining Attorney had refused registration on
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`two grounds, but we elected to affirm the lack of acquired distinctiveness refusal, a
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`decision that fully resolved the appeal before us.
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`Serial No. 90688260
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`Applicant does not dispute any of this and does not ask us to reconsider our
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`decision on acquired distinctiveness. Instead, Applicant now asks us to rule on the
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`functionality refusal, too. We decline to do so because our prior decision resolved the
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`appeal. Applicant explains that it has filed a new application, seeking registration on
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`the Supplemental Register. Such an application cannot be refused registration for
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`lack of acquired distinctiveness, Applicant explains, but can be refused registration
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`under Section 2(e)(5) if the design is functional. Request for Reconsideration at 3.
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`Applicant’s arguments are not persuasive.
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`While Applicant makes an accurate statement of the law concerning registration
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`on the Supplemental Register, it is asking the Board to issue an advisory opinion. We
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`have already decided the appeal of this application. Addressing the functionality
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`refusal at this point would not alter anything concerning the status of this
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`application. Indeed, Applicant implicitly concedes as much by arguing that having a
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`Board decision on functionality of its muffler design would aid in the prosecution of
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`the new application.
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`That may be true, but an advisory opinion on genericness might also aid in the
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`prosecution because an application seeking registration on the Supplemental
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`Register may be refused if the proposed mark is generic. Indeed, there are many other
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`issues that might arise in the prosecution of Applicant’s new application. If
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`Applicant’s new application is refused registration on the Supplemental Register, and
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`if Applicant appeals such a refusal, that will be the time for the Board to address such
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`refusal. We will not issue an advisory opinion on a matter that the Applicant believes
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`- 2 -
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`
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`Serial No. 90688260
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`might arise in connection with its new application. See Hall v. Beals, 396 U.S. 45, 48
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`(1969) (“The case has therefore lost its character as a present, live controversy of the
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`kind that must exist if we are to avoid advisory opinions on abstract propositions of
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`law.”); Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 878 (Fed. Cir. 2008) (“A party
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`may not obtain a declaratory judgment merely because it would like an advisory
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`opinion on whether it would be liable for patent infringement if it were to initiate
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`some merely contemplated activity.”); Sage Therapeutics, Inc. v. Sageforth Psych.
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`Servs., LLC, 2024 TTAB LEXIS 139, *42 (“But such analyses [of Section 18
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`counterclaims to restrict registrations that were not relied upon in the Board’s
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`decision on the primary claim] would be effectively an advisory opinion on likelihood
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`of confusion, because no substantive consequence would flow from our conclusions.”).
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`The Board acted within its discretion in affirming one of the two refusals to
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`register. Applicant argues that the Board has treated functionality as a “threshold”
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`issue in precedential decisions. Perhaps a Board panel used that wording, but when
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`an appeal is issued involving two or more grounds for refusal, the Board need only
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`decide the issue(s) necessary for full resolution of the appeal. See In re La. Fish Fry
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`Prods., 797 F.3d 1332, 1336 (Fed. Cir. 2015) (“We do not need to reach the Board's
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`genericness determination because we hold that substantial evidence supports the
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`Board’s determination that Louisiana Fish Fry failed to show that FISH FRY
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`PRODUCTS has acquired distinctiveness.”); In re DTI P’ship LLP, 2004 TTAB LEXIS
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`158, *10 (“In view of our decision with respect to the Trademark Rule 2.61(b)
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`requirement, we deem the substantive Section 2(e)(1) mere descriptiveness refusal to
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`- 3 -
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`Serial No. 90688260
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`be moot. Applicant’s failure to comply with the Trademark Rule 2.61(b) requirement
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`is a sufficient basis, in itself, for affirming the refusal to register applicant’s mark.”);
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`see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1218 (JUne
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`2024) (“However, in certain circumstances after the Board has affirmed one
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`requirement or refusal it will not reach any further requirement or refusal.”).
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`The Board’s discretion works both ways. That is, the Board may address multiple
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`refusals when a panel feels such treatment is appropriate, but the Board also has the
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`discretion to decide only the refusal(s) needed to resolve the appeal. In this appeal,
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`the Board exercised its discretion and resolved the acquired distinctiveness refusal,
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`without reaching the functionality refusal. We appreciate Applicant’s concern that its
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`new application might be refused on functionality grounds, but we (the Board) will
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`not issue decisions based on refusals that might arise in a newly-filed application.
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`The Request for Reconsideration is denied.
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`- 4 -
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