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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DURAMAX MARINE, LLC,
`
`Opposer,
`
`v.
`
`R.W. FERNSTRUM & COMPANY,
`
`Applicant.
`
`\/\/\./\/\/\./\/\/a
`
`Opposition No. 119,899
`
`APPL|CANT'S OPPOSITION TO OPPOSER'S MOTION FOR
`SUMMARY JUDGMENT AND CROSS MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`Introduction
`
`Applicant R. W. Fernstrum & Company (hereinafter "Fernstrum") filed an application to
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`register the logo shown below for use in connection with the "manufacture of marine heat
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`exchangers to the order and specification of others.“
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`H:=65:?037:1!‘so
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`Opposer Duramax Marine, LLC (hereinafter "Duramax") filed a Notice of Opposition on
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`the grounds that the Fernstrum logo is merely descriptive and that it is functional. Fernstrum
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`denied the salient allegations in the Notice of Opposition and, on September 14, 2000, filed a
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`I
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`The mark sought to be registered is not an actual representation of a marine heat
`exchanger but is rather an artist's rendition which suggests the product to one familiar
`with marine heat exchangers.
`(Sean Fernstrum Dep., p. 35,
`line 6 to p. 36,
`line 22
`(Exhibit A); Todd Fernstrum Dep., p. 31, line 23 to p. 32, line 11 (Exhibit B); Dale Gusick
`Dep. p. 16, lines 5 — 23 (Exhibit C); Frank Bjorkman Dep., p. 29, lines 2 -11 (Exhibit D)).
`
`

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`

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`1'
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`,
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`-T.r::i
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`A
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`.
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`6
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`D
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`Motion for Judgment on the Pleadings and/or Summary Judgment. As grounds for its motion,
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`Fernstrum asserted the following:
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`5;’
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`(1)
`
`(2)
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`the Duramax' pleading fails to set
`granted; and,
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`forth a claim for which relief can be
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`Duramax is estopped from opposing the registration of Fernstrum's mark due to
`the parties’ prior execution of a "Settlement And Mutual Release Agreement".
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`in its April 26, 2001 Order, the Board denied Fernstrum's motion for summary judgment
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`on the ground that Fernstrum "has not established that there is no genuine issue of material fact
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`that opposer is estopped from bringing this proceeding" but granted the motion to dismiss,
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`allowing Duramax to amend its pleading "to sufficiently allege in its notice the grounds of
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`descriptiveness or lack of acguired distinctiveness." (Emphasis added). (April 26, 2001 Order, p.
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`8). On May 25, 2001, Duramax filed an Amended Notice of Opposition.
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`In the Amended Notice
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`of Opposition, Duramax alleged that the Fernstrum logo is merely descriptive and that it
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`is
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`functional. Duramax did g_o_t allege that the Fernstrum logo lacked acquired distinctive as
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`directed in the April 26, 2001 Order.
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`The parties have now completed discovery. One day prior to the opening of its
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`testimony period, Duramax filed its motion for summary judgment on the ground of functionality
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`and lack of acguired distinctiveness (even though lack of secondary meaning was not a pleaded
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`ground).
`
`ll.
`
`Facts
`
`Clarification Of The Record
`
`Duramax introduced its "Undisputed Facts" with an irrelevant and inaccurate history of
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`the competition between the parties.
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`It is unfortunate when one party launches an ad hominem
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`attack on the other as Duramax has done here. This fictional account is an attempt to color
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`Duramax as the aggrieved party. Fernstrum cannot permit
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`this highly improper and false
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`characterization to stand unchallenged. in order not to belabor the point, Fernstrum will merely
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`reference three of Duramax' misstatements (from a host of egregious misrepresentations by that
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`A.
`
`Duramax Mischaracterizes The Events In The New Orleans Litigation.
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`On page 6 of its Memorandum, Duramax incorrectly stated the following:
`
`After Fernstrum presented its case and prior to either Donovan
`Marine or East Park were [sic]
`to present their cases, Judge
`Lemmon instructed Fernstrum to attempt to settle the litigation.
`Fernstrum had settlement meetings with Donovan Marine, East
`Park and Duramax Marine since it failed to meet its burden of
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`proof on any of its claims and counterclaims.
`
`Well before Fernstrum completed the presentation of its case and testimony, the parties
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`entered negotiations to resolve the trade dress issues being litigated. Since Fernstrum was still
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`at the beginning portion of its case, Duramax could not legitimately conclude that Fernstrum
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`failed to meet its burden of proof.
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`Indeed, had Fernstrum failed to meet its burden of proof,
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`Donovan Marine and East Park Radiator could have - - and would have - - moved for a directed
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`verdict. Moreover, had Fernstrum failed to meet its burden of proof, there would have been no
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`reason for Donovan Marine, East Park Radiator and Duramax to even negotiate a settlement.
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`Obviously, had Fernstrum failed to meet its burden of proof, Duramax would never have agreed
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`to change the shape of its product.
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`Simply put, Duramax has not been forthright
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`in its
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`description of the New Orleans trade dress litigation.
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`B.
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`Duramax Did Not Negotiate In Good Faith
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`On page 7 of its Memorandum, Duramax reveals its true commercial nature in explaining
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`how it "duped" Fernstrum during settlement negotiations:
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`Although the parties to the settlement agreement agreed that
`Fernstrum could file a new application to register its trademark
`logo featuring its one-piece keel cooler in a two-dimensional
`design format,
`there was nothing agreed to or provided in the
`settlement agreement to preclude the filing and prosecution of an
`opposition to such a trademark logo.
`
`

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`f. ..x
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`Thus, while Fernstrum was working to resolve the litigation, Duramax was scheming as
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`how to renege on its promises.
`
`For Duramax to imply that it was merely "crafty" in its
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`negotiations is hardly an example of commercial integrity or good faith negotiations, nor is it an
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`approach that should be glorified, dignified or extolled.
`
`C.
`
`Duramax Ceased Using Its "Best By Test" Claim Rather
`Than Disclose The Scientific Basis For The Claim
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`On October 17, 2000, Fernstrum filed a false advertising claim under Section 43(a) of
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`the Lanham Act challenging the Duramax "Best By Test" advertising claim. Because the federal
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`court had scheduled trial more than a year in the future, Fernstrum moved to dismiss the civil
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`action - - without prejudice - - so that it could pursue its false advertising claim in the National
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`Advertising Division of the Council of Better Business Bureaus (hereinafter the "NAD"). The
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`NAD could decide the case within two months! Despite Duramax’ opposition, the federal court
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`recognized the value in proceeding before the NAD and granted Fernstrum's motion allowing it
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`pursue the same claim in that forum.
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`In response to the complaint filed in the NAD - - and
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`recognizing that it would fail to substantiate its false advertisement - - Duramax withdrew its
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`improper "Best By Test" advertisement.
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`(Duramax Exhibit 16). To suggest that it halted that
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`false advertisement simply because it had somehow outlasted its useful life is an imaginative,
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`yet frivolous, explanation for its conduct.
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`Indeed, Fernstrum firmly believes that the present
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`proceeding is but a retaliatory action by Duramax arising from its ire in having to withdraw its
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`advertisement.
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`Ill.
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`Legal Argument
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`A.
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`Oggosition To Duramax‘ Motion For Summary Judgment.
`
`1.
`
`Secondary Meaning.
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`Duramax is required to present a prima facie case that Fernstrum's mark has not
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`acquired distinctiveness. Yamaha International Corporation v. Hoshino Gakki C0,, Ltd., 840
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`F.2d 1572, 1576 (Fed. Cir. 1998)(Yamaha must present facts or argument to convince the
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`

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`.
`.
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`W Board that applicant has not met
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`its burden of showing acquired distinctiveness). As
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`demonstrated below, Duramax has not met its burden of producing sufficient evidence (it
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`5'3" produced none) or argument (it asked the Board to make improper inferences) whereby the
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`Board could conclude that Fernstrum has not met
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`its own burden of showing acquired
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`distinctiveness.
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`In light of Duramax‘ failure to submit a prima facie case, the Board should grant
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`summary judgment in favor of Fernstrum?
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`a.
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`Sorenson Survey.
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`Duramax argued that the survey filed by Fernstrum was improper, misleading, and false.
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`(Duramax Brief, p. 17). There is nothing improper, misleading, or false about the Fernstrum
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`survey. That survey is presented in Duramax Exhibit 9 and it specifically explains its purpose,
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`how it was conducted and its results:
`
`I.
`
`BACKGROUND AND PURPOSE OF THE STUDY
`
`trademark
`the
`concerning
`arisen
`has
`A question
`i.e., rectangular
`significance,
`if any, of certain visible elements,
`tubing, or a marine keel cooler manufactured by R. W. Fernstrum
`& Company ("Fernstrum")
`in connection not only with
`its
`
`instructions regarding how Duramax should amend its
`Despite the Board's explicit
`pleading "to sufficiently allege in its notice the grounds of descriptiveness or lack of
`acguired distinctiveness", Duramax did not allege that
`the Fernstrum logo lacked
`acquired distinctiveness.
`(April 26, 2001 Order, p. 8). Duramax simply never asserted
`lack of secondagy meaning as a ground for opposition.
`Yamaha International
`Corporation v. Hoshino Gakki C0,, Ltd., supra at 1577 (when registration is sought under
`Section2(f), the only issue relating to the proposed mark is acquired distinctiveness,
`descriptiveness "is a nonissue"). Duramax may argue that Paragraph No. 14 is its
`averment
`that
`the Fernstrum logo lacks secondary meaning.
`To the extent
`that
`Paragraph No. 14 is comprehensible, Duramax alleged,
`in essence, that there is a
`difference between the specimens of
`record in the application (i.e.,
`the pictorial
`representatives of a marine heat exchanger) and the products marketed by Fernstrum
`and another manufacturer.
`In view of the ease in which Duramax could have added the
`phrase "and such mark lacks acquired distinctiveness" to the end of paragraph No. 12,
`Fernstrum should not be required to divine the meaning of what is supposed to be a
`"short and plain statement".
`Trademark Rule 2.104. Duramax was
`previously
`instructed to amend its pleading and only its own stubborness prevented it from clearly
`and concisely asserting lack of secondary meaning as a ground for opposition.
`Accordingly, Fernstrum objects to any attempt by Duramax to amend its Notice of
`Opposition at this late date.
`
`

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`application for federal trademark registration, but also in certain
`pending civil actions involving Fernstrum. .
`.
`
`
`
`The salient purpose of this study was three-fold:
`
`To learn whether or not and, if so, to what extent,
`(1)
`members of the defined relevant population identify and associate
`the appearance of the Fernstrum keel cooler tubing with a single
`particular source;
`
`If so, to ascertain what company source and brand
`(2)
`identifications, if any, are made in any source attributions offered
`by members of this population on the basis of seeing unlabelled
`untitled photographs of the tubing portion of the Fernstrum keel
`cooler; and
`
`if any, explanations these
`To determine what,
`(3)
`respondents offer for the source and brand identifications they
`make when they see the Fernstrum keel cooler tubing.
`(Exhibit 9, p. 0086). The results of the survey demonstrated that 54.7% of the respondents
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`identified the tubing with one company and that 95.3% of the respondents who identified one
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`company, identified Fernstrum as that company.
`
`(Exhibit 9, p. 0100).
`
`Duramax now argues that the survey results are invalid because the photographs did not
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`include the headers. Presumably, Duramax is arguing (without any factual basis) that if the
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`headers had been shown, fewer persons would have identified the products in the photographs
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`as Fernstrum products. Because there is no evidence supporting its position, Duramax is
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`asking the Board to make an improper inference to that effect.3 Accordingly, the Sorenson
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`survey is admissible to demonstrate that the mark sought
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`to be registered has acquired
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`secondary meaning.
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`In deciding a motion for summaryjudgment, the evidence must be viewed in a light most
`favorable to the nonmovant (i.e. Fernstrum) and all reasonable inferences must be
`drawn in its favor (i.e., had the headers been shown even more respondents would have
`associated the product with Fernstrum). Cope/ands’ Enterprises, Inc. v. CNV, Inc., 945
`F.2d 1563, 1566 (Fed.Cir. 1991). Moreover, since Fernstrum was the only company
`using rectangular headers for the previous fifty years,
`it
`is far more likely that the
`inclusion
`of
`those
`headers would
`have
`increased,
`not
`decreased,
`the
`
`recognition/association responses in favor of Fernstrum.
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`

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`2.
`
`Fernstrum Has Been Using The Mark For Over Fifty Years.
`
`"Fernstrum has been actively advertising its GRIDCOOLER keel cooler for over 50
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`years.
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`In a great many advertisements, Fernstrum shows pictures of its keel cooler." (Duramax
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`Brief, p. 11-12). See Duramax Exhibit 18 (representative samples of Fernstrum advertising
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`featuring the mark sought to be registered). The mark sought to be registered has been used
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`since at least as early as 1955. (Paul Fernstrum Dep., p. 114, lines 9 to 17 attached as Exhibit
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`E). The Fernstrum logo is generally used in connection with the mark FERNSTRUM
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`GRIDCOOLER or the term "Engineered Keel Cooling" to create an association between the
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`logo and Fernstrum.
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`(Bjorkman Dep., p. 11, lines 17 to 21).
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`A keel cooler is not a consumer product.
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`it is sold exclusively to shipbuilders and ship
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`owners with rigorous cooling requirements. Fernstrum annually spends in excess $120,000 in
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`advertising primarily in trade publications and at trade shows. That figure does not, however,
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`include salaries for the staff at trade shows, payments to manufacturers‘ representatives and
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`distributors, any advertising conducted by the manufacturers‘ representatives and distributors,
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`and personal sales calls. (Sean Fernstrum Dep., p. 128, line 12 to p. 129, line 18; p. 93, line 11
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`to p. 95 line 13).
`
`As evidenced by its fifty years of "phenomenal" success,
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`the mark sought to be
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`registered has come to be uniquely and exclusively associated with Fernstrum.
`
`(Paul
`
`Fernstrum Dep., p. 12,
`
`lines 1 — 4; Bjorkman Dep., p. 48,
`
`lines 14 — 22). Duramax had
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`presented no evidence to rebut or challenge that conclusion.
`
`3.
`
`Ownershig Of Registration No. 2,357,354
`
`Fernstrum is the owner of U.S. Trademark Registration No. 2,357,354 comprising in part
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`the design of a keel cooler that is virtually identical to the mark sought to be registered for an
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`"external cooling system for marine engines, namely, heat exchangers." (Exhibit F). Neither
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`Duramax nor any other competitor has opposed the registration of that mark - — nor have they
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`

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`In appropriate cases (such as here), ownership of one or
`sought to cancel that registration.‘
`more prior registrations of the same mark may be accepted as prima facie evidence of
`distinctiveness. The drawings of the keel coolers in both registrations are the same. The mark
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`in Registration No 2,357,354 is used to identify and distinguish marine heat exchangers while
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`the mark sought to be registered is used to identify and distinguish the custom manufacture of
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`marine heat exchangers. Accordingly, Registration No. 2,357,354 is prima facie evidence that
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`Fernstrum's mark has acquired secondary meaning.
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`In view of the foregoing, Duramax has not met its burden of presenting a prima facie
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`case that Fernstrum is not entitled to registration. Therefore, summary judgment should be
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`granted in favor of Fernstrum on the issue of secondary meaning.
`
`B.
`
`Functionality
`
`1.
`
`Burden Of Proof.
`
`As with secondary meaning, Duramax is required to present a prima facie case that the
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`mark sought to be registered is functional. Textron,
`
`Inc. v. United States International Trade
`
`Commission, 753 F.2d 1018, 1025 (Fed.Cir. 1985) ("an applicant for trademark protection has the
`
`burden to prove that a design is nonfunctional, once a prima facie case of functionally is made by
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`an oggonent.")(emphasis added); In re Teledyne Industries,
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`/nc., 696 F.2d 968, 971 (Fed. Cir.
`
`1982)
`
`A product feature is functional only if "it is essential to the use or purpose of the article or if it
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`affects the cost or quality of the article:
`
`that is, if exclusive use of the feature would put competitors
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`at a significant non-reputational-related disadvantage." Qualitex Co. v. Jacobson Products Co.,
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`514 U.S. 159, 165 (1995).
`
`Registrability depends upon the degree of utility and whether
`
`Duramax was aware of this registration, as evidenced by its own reference to the
`registration in its opposition to Fernstrum's previous Motion for Summary Judgment.
`
`

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`competition is hindered. The mere fact that a product configuration has utility does not make it
`unregistrable.
`In re Morton—Norwich 671 F.2d 1332, 1340, 213 U.S.P.Q. 9 (CCPA 1982);
`Greenhouse Systems, Inc. v. Carson, 37 U.S.P.Q.2d 1748, 1751 (T.T.A.B 1995). Thus, the issue
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`before the Board is whether the registration of Fernstrum's two-dimensional
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`logo will hinder
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`competition. As demonstrated below, Duramax presented n_o evidence regarding the effect on
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`competition by the registration of Femstrum's mark. Therefore, the Duramax motion must be
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`denied.
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`2.
`
`Controlling Authority.
`
`In determining whether a configuration is dejure functional (whether the configuration of the
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`article sought to be registered is a superior design and, therefore, should not be exclusively
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`appropriated by an applicant), there are four factors that this Board considers:
`
`(1) the existence of a utility patent that discloses the utilitarian advantages of the design;
`
`(2)
`
`advertising materials in which the originator of the design touts the utilitarian
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`advantages of the design;
`
`(3) the availability of functionally equivalent alternative designs; and
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`(4) facts indicating that the design results from a comparatively simple or cheap method of
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`manufacturing the product.
`
`In re Morton-Norwich Products, Inc., 213 U.S.P.Q. at 15. Each of these factors, as discussed
`
`below, supports Fernstrum, rather than Duramax, on the "functionality issue".
`
`3.
`
`There is No Utility Patent Disclosing The Utilitarian
`Advantages Of The Design Sought To Be Registered.
`
`Duramax completely ignores the fact that the mark sought to be registered is a stylized,
`
`two-dimensional logo used in connection with services relating to the custom manufacturing of
`
`marine heat exchangers - - i.e., a logo, rather than a product configuration. Fernstrum is not
`
`seeking to protect a product configuration, rather it is only seeking to register a stylized drawing of
`
`the product. Thus, Duramax erroneously argued that "[t]he keel cooler is the subject of U.S.
`
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`Patent No. 2,382,218" (hereinafter the ‘"218 Patent") (Duramax Exhibit 1, Dep. Ex. 61) and,
`therefore, concluded, ipso facto, that the mark sought to be registered "is, without question,
`functional." (Duramax Brief, p. 24). This is a material misstatement of both fact and law that
`
`blurs the difference between the expired patent and the service mark logo.
`
`Apart from the mischaracterization of the mark, the mere existence of the '218 Patent is
`
`not determinative:
`
`"[a] utility patent must be examined in detail to determine whether or not the
`
`disclosed configuration is really primarily functional orjust incidentally appears in the disclosures of
`
`the patent."
`
`1 McCarthy On Trademarks And Unfair Competition §7.89.1, p. 7-250 (4"‘ ed.
`
`2003); In re Morton-Non/vich Products, Inc., 671 F.2d 1332, 1341 (C.C.P.A. 1982)(a utility patent
`
`is evidence of functionality if the utilitarian advantages of the design sought to be registered are
`
`disclosed in the patent); Sunbeam Products, Inc. v. West Bend C0,, 123 F.2d 246, 256 n.20 (5”‘
`
`Cir. 1997);
`
`1 McCarthy On Trademarks And Unfair Competition § 7:89 (4"‘ ed. 1998).
`
`The mere fact that some feature is depicted or described in a utility patent does not
`
`automatically render it "functional". Many non-functional configurations are incidentally included or
`
`recited in utility patents. Sunbeam Products Inc. v. West Bend Co., supra; Black & Decker Inc. v.
`
`Hoover Service Center, 886 F.2d 1285, 12 U.S.P.Q.2d 1250, 1255 (Fed.Cir. 1989)(patent was not
`
`evidence that a product shape was dictated by utilitarian advantages because the patent did not
`
`relate to the shape of the product); Dogloo, Inc. v. Doskocil Manufacturing Company, 893 F.Supp.
`
`911, 35 U.S.P.Q.2d 1405, 1410 (C.D.Ca|. 1995)(since the patent did not claim any utilitarian
`
`advantages in the shape of the product, it was not probative of functionality). Indeed, it is only if the
`
`functional features of the product configuration themselves are described in the claims of a patent,
`
`is a utility patent "evidence" that the configuration is functional.
`
`The invention described in the '218 Patent "relates to improvements in heat exchangers,
`
`and more particularly, to a heat exchanger for water craft and vessels.''
`
`(Duramax Ex. 1, Col. 1,
`
`lines 1-3). The mark sought to be registered by Fernstrum is clearly not disclosed or displayed
`
`-10-
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`in the drawings of the '218 Patent. Thus, the evidence of functionality must be disclosed in the
`
`Claims of the '218 Patent. The patent concludes with 14 "claims" which identify the subject
`
`matter of the invention. 35 U.S.C. §112. The Board must interpret the Claims in the '218 Patent
`
`to see if they describe the mark sought to be registered. Claim construction, the interpretation
`
`of a patent claim to determine its proper scope and meaning,
`
`is an issue of law. Markman v.
`
`Westv/ew Instruments, lnc., 517 U.S. 370 (1996).
`
`In interpreting claims, a_ll the words must be
`
`given meaning. Texas Instruments Inc. v. U.S. International Trade Commission, 988 F.2d 1165,
`
`1171 (Fed. Cir. 1993).
`
`A claim typically contains three parts:
`
`the preamble, the transition, and the body. STX,
`
`Inc. v. Brine,
`
`Inc., 37 F.Supp.2d 740 (D.Md. 1999), affd. 211 F.3d 588 (Fed.Cir. 2000); 3
`
`Chisum On Patents §8.06[1][b](2002). The preamble is an introductory phrase that may
`
`summarize the invention,
`
`its relation to the prior art, or its intended use or properties.
`
`It is a
`
`limitation on the scope of the claim, if "the claim cannot be read independently of the preamble
`
`and the preamble must be read to give meaning to the claim or is essential to point out the
`
`invention." 3 Chisum On Patents §8.06[1][d](2002).
`
`Any terminology in the preamble that limits the structure of the
`claimed invention must be treated as a claim limitation.
`
`Manual Of Patent Examining Procedure §2111.02, p. 2100-49 (8”‘ ed. 2003). See, In re Stencil,
`
`828 F.2d 751, 754 (Fed.Cir. 1987).5
`
`The claim at issue in the Stencil case was a driver for setting a joint of a threaded collar.
`While the claim was not directly limited to the collar, the collar structure recited in the
`preamble did limit the structure of the driver.
`"[T]he framework — the teachings of the
`prior art -— against which the patentability is measured is not all drivers broadly, but
`drivers suitable for use in combination with this collar, for the claims are so limited." 828
`F.2d at 754. To paraphrase the Federal Circuit, the framework for patentability is not all
`heat exchangers, but heat exchangers in combination with marine hull structures
`because the claims are so limited. This is illustrated in the drawings in the '218 Patent.
`
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`‘
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`With these factors in mind, Fernstrum analyzes the claims in the '218 Patent. The
`
`flanalysis for Claim 1 is representative of Claims 1 — 13.
`1%?
`Claim 1
`
`Preamble
`
`In combination with a marine hull structure having a keel line, a
`heat exchanger extending longitudinally of said keel line,
`
`Body
`
`said heat exchanger comprising spaced headers secured to the
`hull [referring the marine hull structure in the preamble] and a
`plurality of flat heat conduction tubes rectangular in cross-section
`connecting and in
`communication with
`said headers
`said
`conduction tubes being located with the confines of said spaced
`headers.
`
`Claims 1 — 13 are [Q for a heat exchanger per se. These patent claims are
`
`specifically directed to a combination of the hull and the heat exchanger. The patentee did not
`
`refer solely to a heat exchanger; rather he specifically referenced the combination with the
`
`[EL Thus, the preamble is a limitation to the claim because it provides antecedents for the
`
`ensuing claim terms. C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1350 (Fed. Cir.
`
`1998). For example, in the body of the claim, the patentee stated that the headers of the heat
`
`exchanger were secured to the body of the hull - - again referencing "the hull'' as an essential
`
`element of the invention. Accordingly, Claims 1 — 13 in the '218 Patent do not read on the
`
`mark sought to be registered because that mark does not include the hull, nor do the claims
`
`encompass the shape of the product.
`
`Claim 14 is a little different.
`
`Claim 14
`
`Preamble
`
`in a marine craft,
`
`Body
`
`-12-
`
`

`
`a heat exchanger comprising header members spaced along the
`keel
`line of said marine craft
`[referring to the preamble],
`relatively flat heat conduction tubes connection said headers,
`threaded coupling nipples on each header for connection with a
`circulatory system of said marine craft, and inclined front and
`back walls on said headers extending fon/vardly and rean/vardly so
`that slip stream of said marine craft will be uninterrupted, said heat
`conduction tubes being rectangular in cross section with their
`sides of greatest width extending perpendicular to the bottom of
`said marine craft and arranged within the confines of said headers
`so as to be removed from the path of obstructions.
`
`As with Claims 1 — 13, Claim 14 is [191 for a heat exchanger per se. The patent claims
`
`are specifically restricted to a heat exchanger and a marine craft. The patentee did not refer
`
`simply to a heat exchanger; rather he referenced "a heat exchanger. .
`
`. spaced along the keel
`
`line of said marine craft", thereby making the marine craft an essential element of the claim.
`
`Thus, Claim 14 does not read on the mark sought to be registered because the mark does not
`
`include a marine craft, nor do the claims encompass the shape of the product.
`
`Consequently, the '218 Patent does not attribute any utilitarian advantage to the shape of
`
`the product. The Claims are silent in terms of configuring the product (except that the tubes
`
`have to be within the confines of the headers). This is further supported by the fact that keel
`
`coolers are not limited to one design, one size, or one shape.
`
`(Fernstrum's Fourth Set of
`
`Requests For Admission Nos. 78 — 80 attached hereto as Exhibit G).5 Marine heat exchangers
`
`may have oval headers, headers comprising tubes or pipes extending in and out of the vessel, or
`
`6
`
`Fernstrum served its Fourth Set Of Requests For Admission on November 15, 2001.
`Duramax failed to serve any responses. Pursuant to FED.R.ClV.P. 36(a), each matter
`for which an admission was requested and ignored is deemed admitted. These requests
`for admission were the subject of a telephone conference between Fernstrum and
`Duramax before the Board on January 8, 2002. The Board denied Fernstrum's motion
`to modify the November 29, 2001 Suspension Order ("opposer is not required to
`respond at this time to applicant's most recent discovery requests")(emphasis added).
`January 8, 2002 Order. Subsequently, in its February 5, 2003 Order, the Board held that
`"The parties are allowed THIRTY DAYS from the mailing date of this order to serve
`responses to any outstanding discovem reguests not already addressed in this order."
`Accordingly, Duramax was allowed until March 7, 2003 to serve its responses.
`its
`complete failure to serve any such responses results in "admissions" under Rule 36(a).
`
`-13-
`
`

`
`.
`
`f 2:!
`""A-A_.r-\..!-1-.’
`I‘:
`(Fernstrum's Fourth Set of Requests For
`fgbeveled headers such as those sold by Opposer.
`3:§Admission Nos. 83 — 85). Because Duramax can effectively market its keel cooler without
`rectangular headers, rectangular headers are clearly not essential to the design of a keel cooler.
`
`.
`
`(Fernstrum's Fourth Set of Requests For Admission No. 82).
`
`In view of the foregoing, there is simply no basis in fact or law upon which Duramax
`
`could properly have based its argument that the mark sought to be registered is disclosed in
`
`the '218 Patent. This Morton-Norwich factor weighs in Fernstrum's favor.
`
`4.
`
`Applicant Does Not Tout The Utilitarian Advantages Of
`The Design Sought To Be Registered Through Advertising.
`
`Duramax Exhibit 18 comprise representative Fernstrum advertising and promotional
`
`materials. There is absolutely nothing within these materials touting the utilitarian advantages of
`
`the logo:
`
`Document 000007 references reliability, seaworthiness, and ruggedness.
`
`Document 000011 references "Engineered Keel Cooling".
`
`Document 000021, 29, and 45 reference simplicity, dependability, and flexibility.
`
`Document 000024 and 31 reference fine materials, skilled craftsman, and thorough testing.
`
`Document No. 000057 and 64 are catalogs referencing the following features: "computer
`
`selected, completely assembled, and factory tested."
`
`Document Nos. 00071 — 83 are advertisements touting "Fernstrum Engineered Keel
`
`Cooling" and simple and dependable fresh water cooling.
`
`This Morton-Norwich factor strongly weighs in Fernstrum's favor.
`
`5.
`
`There Are Alternative Designs Available For Keel Coolers.
`
`Since the effect upon competition is the essential factor in determining whether the
`
`configuration of a product is functional,
`
`it
`
`is most significant that there are alternative designs
`
`available for keel coolers.
`
`In re Morton-Norwich Products,
`
`/nc., 213 U.S.P.Q. at 16. The most
`
`-14-
`
`

`
`\
`r .~=,
`
`E12-ficommon keel coolers are channels (half—tubes) welded to the hull of a vessel. (Fernstrum's Fourth
`\ kn
`
`T“'j§Set of Requests For Admission No. 81).
`
`
`Attached as Exhibits C and D to Fernstrum's Requests ‘for Admission Nos. 95 and 96 are
`
`true and accurate copies of the advertising brochure for the keel coolers of Walter Machine
`
`Company, Inc. and Johnson Rubber Company (a company "related" to Duramax itself).
`
`The Walter keel cooler is made of round tubing with spiral grooves.
`
`The spirals force the coolant flow to become turbulent, continually
`propelling and swirling the coolant against the inner wall of the tube,
`thereby greatly increasing heat
`transfer. The turbulating action
`makes WALTER TURBO TUBE much more efficient
`for heat
`transfer than smooth rectangular or round tube in which most of the
`coolant flows through the center of the tube without contacting the
`inner tube wall. Because TURBO TUBE is so efficient, a much
`more compact WALTER Keel Cooler can be used when compared
`with coolers using smooth rectangular or round tube.
`
`Exhibit C, page 3.
`
`Johnson Rubber Company also uses spiral tubing to ensure optimal cooling.
`
`Efficient Heat Transfer: The helical flow motion imparted to the
`coolant by the spiral configuration of Duramax tubing creates
`turbulence which greatly reduces heat
`transfer
`inefflciencies
`common to conventional smooth-wall tubing. Also, Duramax Spiral
`Tubes provide greater cooling surface area than plain tubing. As a
`result, Duramax Keel Coolers offer greater cooling efficiency than
`conventional straight tube systems and take less hull space for
`maximum cooling.
`
`Exhibit D, at 2.
`
`Attached are true and accurate copies of six patents for keel coolers illustrating alternative
`
`designs. (Bergsman Declaration attached as Exhibit H).
`
`In view of the foregoing, this Morton-Norwich factor favors Fernstrum.
`
`-15-
`
`

`
`6.
`
`The Mark Sought To Be Registered Does Not Result From A
`Comparatively Simple Or Cheap Method Of Manufacturing A
`Keel Cooler.
`
`The appearance of the mark sought to be registered does not translate into cost savings
`
`during the manufacturing process. Fernstrum's competitors assert that their keel coolers are more
`
`economical. Walter touts its keel cooling device as the "Most Economical Keel Cooler":
`
`Double Stem Models The low prices of our double stern coolers
`make them a very economical keel cooling system, especially when
`compared with box-type coolers.
`
`Exhibit C, page 6.
`
`Johnson Rubber Company also touts its keel cooler as being "Engineered For Fast
`
`Economical lnstallation." Exhibit D, page 8. Thus, the competition maintains that its products are .
`
`the most economical keel coolers on the market.
`
`In fact, Duramax has admitted that the process used for making its headers are more
`
`efficient,
`
`simpler, and less expensive that
`
`the process for making rectangular headers.
`
`(Fernstrum's Fourth Set of Requests For Admission Nos. 100 — 121).
`
`Since Duramax has not demonstrated that
`
`there is any manufacturing-cost benefit
`
`associated with Fernstrum's product with rectangular headers, this important Morton-Non