throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA811499
`
`Filing date:
`
`04/04/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91208865
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Pass & Seymour, Inc.
`
`MARK D GIARRATANA
`MCCARTER & ENGLISH LLP
`CITY PLACE I, 185 ASYLUM ST
`HARTFORD, CT 06103
`UNITED STATES
`mgiarratana@mccarter.com, dsilver@mccarter.com, dewen@mccarter.com,
`gpajer@mccarter.com, hartforddocketing@mccarter.com, shs-
`mith@mccarter.com
`
`Other Motions/Papers
`
`David Ewen
`
`dewen@mccarter.com, mgiarratana@mccarter.com, dsilver@mccarter.com,
`bbanjac@mccarter.com, hartforddocketing@mccarter.com
`
`/David Ewen/
`
`04/04/2017
`
`Notice of Corrective Filing 04.04.2017.PDF(27046 bytes )
`FINAL A.Ball Testimony Declaration 02.07.2017 w signature.pdf(3370529 bytes
`)
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Pass and Seymour, Inc.,
`
`Application Nos. 85/298,572,
`85/298,600, 85/298,606
`
`Opposer,
`
`v.
`
`Lutron Electronics Co., Inc.,
`
`Applicant.
`
`Mark: Product Configuration for Light
`Dimmer Switch
`
`Opposition Nos. 91208865 (parent),
`91212529, 91212524
`
`
`
`
`
`
`
`NOTICE OF CORRECTIVE FILING
`
`Opposer Pass & Seymour, Inc. (“Opposer”) submits this Notice of Corrective Filing to
`
`remedy an administrative error that occurred in Opposer’s filing of the “Testimony Declaration
`
`of Alan D. Ball, IDSA, Pursuant To 37 C.F.R. § 2.123(a)(1)” on February 7, 2017 (hereafter, the
`
`“Declaration”). D.E. # 47. Specifically, it has come to the attention of Opposer’s counsel that it
`
`inadvertently filed with the TTAB and served on Applicant an unsigned copy of the Declaration,
`
`rather than the signed version received from the Declarant at 5:01 pm that same day.
`
`Accordingly, Opposer now submits with this Notice the signed version of the Declaration. Save
`
`for the omission of the Declarant’s signature on Page 112, the Declaration previously filed with
`
`the TTAB and served on counsel for Applicant is identical to the Declaration submitted with this
`
`Notice.
`
`A copy of this Notice and a signed copy of the Declaration is being served upon
`
`Applicant’s counsel by email.
`
`
`
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`ME1 24551826v.1
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`

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`McCARTER & ENGLISH, LLP
`
`
`
`
`By: /Mark D. Giarratana/
`Mark D. Giarratana
`David Ewen
`McCarter & English, LLP
`City Place I, 185 Asylum Street
`Hartford, CT 06103-3495
`860.275.6700
`860.724.3397 (fax)
`mgiarratana@mccarter.com
`dewen@mccarter.com
`
`Daniel M. Silver
`McCarter & English, LLP
`Renaissance Centre
`405 North King Street, 8th Floor
`Wilmington, DE 19801
`302.984.6331
`dsilver@mccarter.com
`
`Attorneys for Opposer
`Pass & Seymour, Inc.
`
`
`
`
`
`
`
`
`
`Dated: April 4, 2017
`
`
`
`
`
`
`ME1 24551826v.1
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`2
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`

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`
`
`CERTIFICATE OF FILING AND SERVICE
`
`
`I, the undersigned, hereby certify that on April 4, 2017, a true and correct copy of the
`foregoing NOTICE OF CORRECTIVE FILING and all attachments thereto was filed with the
`Trademark Trial and Appeal Board via the ESTTA electronic filing system, was served upon
`Applicant’s attorneys of record via email at the addresses shown below:
`
`
`Nicole K. McLaughlin
`Duane Morris LLP
`30 South 17th Street
`Philadelphia, PA 19103
`215. 979.1191
`215.689.4934 (fax)
`NKMcLaughlin@duanemorris.com
`
`Patrick D. McPherson
`DUANE MORRIS LLP
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`pdmcpherson@duanemorris.com
`
`Paul C. Llewellyn
`Arnold & Porter Kaye Scholer LLP
`250 West 55th Street
`New York, NY 10019-9710
`212.836.8000
`212.836.8689 (fax)
`paul.llewellyn@apks.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/David Ewen/
`David Ewen
`
`
`
`
`
`
`
`
`ME1 24551826v.1
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`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Pass and Seymour, Inc.,
`
`Opposer,
`
`v.
`
`Lutron Electronics Co., Inc.,
`
`Applicant.
`
`Application Nos. 85/298,572,
`85/298,600, 85/298,606
`
`Mark: Product Configuration for Light
`Dimmer Switch
`
`Opposition Nos. 91208865 (parent),
`91212529, 91212524
`
`
`
`
`
`
`
`
`
`
`TESTIMONY DECLARATION OF ALAN D. BALL, IDSA,
`PURSUANT TO 37 C.F.R. § 2.123(a)(1)
`
`
`I, Alan D. Ball, declare and state as follows:
`
`1.
`
`I have been retained by McCarter & English LLP, attorneys for the Opposer, Pass
`
`and Seymour, Inc. (“P&S”), to provide opinions and testimony regarding U.S. Trademark
`
`Application Nos. 85/298,572, 85/298,600 and 85/298,606 submitted by Lutron Electronics Co.,
`
`Inc. (“Lutron”).
`
`2.
`
`This Declaration includes a statement of my opinions and the basis and reasons
`
`for them; the facts or data considered by me in forming them; any exhibits that will be used to
`
`summarize or support them; my qualifications, including a list of all other cases in which, during
`
`the previous four (4) years, I testified as an expert at trial or by deposition.
`
`I.
`
`BACKGROUND, EDUCATION, AND QUALIFICATIONS
`
`3.
`
`I am an industrial designer and inventor. I am the founder and president of
`
`A.B.I.D. Inc. (Alan Ball Industrial Design), a product design consulting firm. I have over 30
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`ME1 24182842v.1
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`
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`years of experience designing a diverse range of commercial products for clients ranging from
`
`start-ups to Fortune 500 companies. My experience includes, but is not limited to, the design of
`
`consumer and residential products, residential lighting products, power actuators, on/off
`
`switches, products that work with industry standards for light switches and outlets, medical
`
`products, computer products, industrial products, toys and games, sports equipment, wearable
`
`technology, pet products, exhibits, and retail displays. My expertise includes product design,
`
`human factors (ergonomics), mechanical engineering, CAD (computer aided design) expertise,
`
`graphic design, packaging design, design prototyping, and user interface design. I am a named
`
`inventor of 56 United States Design Patents and 11 United States Utility Patents. I am an active
`
`member of the Industrial Designers Society of America and other professional organizations.
`
`4.
`
`5.
`
`My C.V., as of February 1, 2017, is included as PX 1.1
`
`I have a Bachelors of Industrial Design (B.I.D.) from Syracuse University. This is
`
`a five-year program offered by the School of Visual and Performing Arts. The curriculum
`
`included art and design studio courses, math and physics courses, technology and engineering
`
`courses, marketing and business courses, and psychology/human factors courses. I minored in
`
`information science, having studied library science and survey methodology.
`
`6.
`
`I worked as an Industrial Design intern at Black and Decker in Bridgeport,
`
`Connecticut and IBM in Kingston, New York.
`
`7.
`
`For thirty (30) years I have worked as an Industrial Design consultant. During this
`
`time, I have worked as a full-time staff designer in a large consultancy as well as a freelance
`
`designer. I have founded two design consultancies, Altitude Inc. and A.B.I.D. Inc. and served as
`
`the managing director of a third, Ziba Boston LLC. I have managed large interdisciplinary design
`
`
`1 Citations to the exhibits attached to this Declaration are provided in the form “PX __.”
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`ME1 24182842v.1
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`teams as well as served as the sole designer on many projects. In my current position at A.B.I.D.,
`
`I provide traditional product-design services to clients, pursue my own product inventions and
`
`provide design expert-witness services.
`
`8.
`
`I possess many years of product design experience over a broad range of products
`
`including medical equipment, laboratory instrumentation, handheld computers, power tools,
`
`residential kitchen appliances, toys, electronic equipment, industrial products, sports equipment,
`
`and pet products. I have experience designing products that are manufactured by methods
`
`including plastic
`
`injection molding, sheet metal
`
`fabrication, stamping and
`
`forming,
`
`thermoforming, sewing, die casting, machining and rapid prototyping (3D printing) to name a
`
`few.
`
`9.
`
`In formulating my opinions and preparing this Declaration I have relied upon the
`
`documents and items listed in PX 2. I have also relied upon my training and experience and such
`
`other materials on which experts in this field normally rely. My citation to any particular
`
`document or item does not necessarily mean that document or item is the sole or primary source
`
`for the proposition for which it is cited.
`
`II.
`
`RELEVANT LEGAL PRINCIPLES
`
`10.
`
`I have relied on P&S’s counsel for the applicable legal standards in evaluating
`
`whether the design that is the subject of U.S. Trademark Application Serial Nos. 85/298,572,
`
`85/298,600 and 85/298,606 is functional. I reserve the right to supplement, amend and/or clarify
`
`my opinions and conclusions in the event of a change in the applicable law, change in my
`
`understanding of the applicable law or in the event that new or additional relevant information is
`
`brought to my attention.
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`ME1 24182842v.1
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`
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`11.
`
`I have been informed that Lanham Act § 2(e)(5), 15 U.S.C. § 1052(e)(5), bars
`
`registration of a mark or trade dress which “comprises any matter that, as a whole, is functional.”
`
`12.
`
`I have been informed that functional matter is not registrable even if it can be
`
`shown that the mark or trade dress has acquired distinctiveness.
`
`13.
`
`I have been informed that the United States Supreme Court has stated that a
`
`product feature is functional if that feature is essential to the use or purpose of the article or if it
`
`affects the cost or quality of the article. I have been informed that the Supreme Court’s
`
`formulation in the preceding sentence is referred to as the “Inwood formulation” or the
`
`“traditional rule” of functionality.
`
`14.
`
`I have also been informed that in assessing whether trade dress is functional, the
`
`Trademark Trial & Appeal Board and its primary reviewing court, the Federal Circuit Court of
`
`Appeals, apply what are commonly referred to as the four “Morton-Norwich factors.”
`
`15.
`
`I have been informed that it is not necessary for all four Morton-Norwich factors
`
`to weigh in favor of a finding of functionality for a design to be found functional.
`
`16.
`
`I have been informed that the first Morton-Norwich factor considers the existence
`
`of a utility patent disclosing the utilitarian advantages of the design sought to be registered. It is
`
`my understanding that the existence of such a utility patent is strong evidence that the features
`
`claimed therein are functional.
`
`17.
`
`I have been informed that the second Morton-Norwich factor considers
`
`advertising by the applicant that touts the utilitarian advantages of the design.
`
`18.
`
`I have been informed that the third Morton-Norwich factor considers facts
`
`pertaining to the availability of alternative designs. I have been informed that for an alternative
`
`design to be considered a Morton-Norwich alternative it must function equally well. I have also
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`ME1 24182842v.1
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`
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`been informed that where the design at issue is the best or one of a few superior designs
`
`available, this evidence will strongly support a finding of functionality.
`
`19.
`
`I have been informed that the fourth Morton-Norwich factor considers facts
`
`pertaining to whether the design results from a comparatively simple or inexpensive method of
`
`manufacture.
`
`20.
`
`I have also been informed that if functionality is established under the Inwood
`
`formulation, there is no need to consider whether there is a competitive need for the design or to
`
`separately consider the Morton-Norwich factors.
`
`21.
`
`I have been informed that a product design also may be denied trade dress
`
`protection on the ground of “aesthetic functionality” where the recognition of trade dress rights
`
`in a design would put competitors at a significant non-reputation-related disadvantage.
`
`22.
`
`I have been informed that functional features cannot form part of a trademark
`
`(i.e., they must be shown in broken lines or omitted entirely), and cannot serve as a basis for
`
`distinguishing two trademarks.
`
`III. U.S. TRADEMARK APPLICATIONS 85/298,572, 85/298,600 AND 85/298,606
`
`23.
`
`The three trademark applications at issue in this proceeding—Serial Nos.
`
`85/298,572, 85/298,600 and 85/298,606 (hereafter, the “‘572 application,” “‘600 application,”
`
`and “‘606 application,” respectively)—claim “a three-dimensional design for lighting controls,
`
`namely, electric light dimmers; fan speed controls.” Lutron sells the combined dimmer and
`
`switch under the trademark DIVA®, and therefore the design of the ‘572, ‘600 and ‘606
`
`applications is referred to herein as the “Diva design.” The applications depict different views of
`
`ME1 24182842v.1
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`
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`what appears to be the same design. The Diva design is shown in solid lines; the broken line
`
`illustrations are not part of the claimed mark.
`
`
`
`
`
`85298572
`
`85298600
`
`85298606
`
`
`
`Copies of the foregoing images are attached hereto as PX 3.
`
`24.
`
`The ‘572 application contains the following illustration of the Diva design. (PX 3
`
`at 1). It is a two-dimensional front plan or orthographic line drawing of a combination light and
`
`dimmer switch, without a cover plate:
`
`ME1 24182842v.1
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`
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`85298572 Drawing
`
`25.
`
`The ‘572 application also includes a specimen of the mark, attached hereto as PX
`
`4, which is a scanned product package of the Lutron DV-600P-WH light and dimmer switch:
`
`
`
`85298572 Specimen
`
`7
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`ME1 24182842v.1
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`
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`It is my understanding that Lutron describes the Diva design in the ‘572
`
`26.
`
`application as follows:
`
`“a two dimensional design for lighting and fan controls comprising
`the following combination of non-functional ornamental features
`depicted in the drawing for the application: a sleek uncluttered low
`profile, a symmetrical bezel surrounding a substantially rectangular
`first actuator where the bezel includes a vertically oriented track
`containing a substantially oblong second actuator, and a non-
`symmetrical flange on the right and left sides of the bezel.”
`
`(See PX 5, Lutron’s Second Supplemental Response to Opposer’s Interrogatory No. 2, at 4).
`
`27.
`
`I generally agree that this written description is consistent with the Diva design as
`
`depicted in the ‘572 application with a few exceptions. As I will explain in detail later, the Diva
`
`design is neither “non-functional” nor “ornamental.” Furthermore, it is not possible to determine
`
`whether the Diva design has a “low profile” from a single two-dimensional drawing of the front
`
`view. The descriptors “sleek” and “uncluttered” are qualitative and subjective, best determined
`
`by a consumer and not particularly helpful in describing the Diva design.
`
`28.
`
`The ‘600 application contains the following illustration of the Diva design. (PX 3
`
`at 2). It appears to be a three-dimensional right front isometric drawing of a combination light
`
`and dimmer switch without a cover plate. I use the word “appears” because I have not
`
`determined whether this view is a true isometric drawing or whether it is a perspective drawing
`
`with very little convergence. There is a portion of the left side bezel which is blocked from view
`
`by the protruding lower portion of the paddle or rocker switch (the terms “paddle” and “rocker”
`
`are synonymous and are used interchangeably in this Declaration):
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`
`
`
`85298600 Drawing
`
`
`
`29.
`
`The ‘600 application also includes a specimen of the mark, attached hereto as PX
`
`6, which is a photograph of the product:
`
`
`
`85298600 Specimen
`
`
`
`30.
`
`It is my understanding that Lutron describes the Diva design in the ‘600
`
`application as follows:
`
`ME1 24182842v.1
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`
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`
`
`lighting and fan controls
`“a three dimensional design for
`comprising
`the
`following
`combination of non-functional
`ornamental features depicted in the drawing for the application: a
`sleek uncluttered low profile, a symmetrical bezel surrounding a
`substantially rectangular first actuator where the bezel includes a
`vertically oriented track containing a substantially oblong second
`actuator, and the substantially rectangular first actuator presents a
`triangular shaped profile for the portion of the first actuator
`protruding above the bezel, and a flange extending from the left
`and right side of the bezel.”
`
`(See PX 5, Lutron’s Second Supplemental Response to Opposer’s Interrogatory No. 2, at 3-4).
`
`31.
`
`I generally agree that this written description is consistent with the Diva design as
`
`depicted in the ‘600 application with a few exceptions. As I will explain in detail later, the Diva
`
`design is neither “non-functional” nor “ornamental.” The Diva design does not have a
`
`particularly “low profile” compared to other decorator-style paddle switches on the market. The
`
`descriptors “sleek” and “uncluttered” are qualitative and subjective, best determined by a
`
`consumer and not particularly helpful in describing the claimed design.
`
`32.
`
`The ‘606 application contains the following illustration of the Diva design. (See
`
`PX 3 at 3). It appears to be a three-dimensional right front isometric drawing of a combination
`
`light and dimmer switch as it appears within a designer-style wall or cover plate. The wall or
`
`cover plate is shown in broken lines and therefore is not part of the claimed mark. I use the word
`
`“appears” because I have not determined whether this view is a true isometric drawing or
`
`whether it is a perspective drawing with very little convergence. There is a portion of the left side
`
`bezel which is blocked from view by the protruding lower portion of the paddle switch:
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`ME1 24182842v.1
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`
`
`85298606 Drawing
`
`
`
`33.
`
`The ‘606 application also includes a specimen of the mark, attached hereto as PX
`
`7, which is a photograph of the product mounted within a designer-style wall or cover plate:
`
`85298606 Specimen
`
`
`
`34.
`
`It is my understanding that Lutron describes the Diva design in the ‘606
`
`application as follows:
`
`lighting and fan controls
`“a three dimensional design for
`comprising
`the
`following
`combination of non-functional
`ornamental features depicted in the drawing for the application: a
`sleek uncluttered low profile, a symmetrical bezel surrounding a
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`
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`substantially rectangular first actuator where the bezel includes a
`vertically oriented track containing a substantially oblong second
`actuator, and the substantially rectangular first actuator presents a
`triangular profile for the portion of the first actuator protruding
`above the bezel.”
`
`(See PX 5, Lutron’s Second Supplemental Response to Opposer’s Interrogatory No. 2, at 3).
`
`35.
`
`I generally agree that this written description is consistent with the Diva design as
`
`depicted in the ‘606 application with a few exceptions. As I will explain in detail later, the Diva
`
`design is neither “non-functional” nor “ornamental.” The Diva design does not have a
`
`particularly “low profile” compared to other decorator-style paddle switches on the market. The
`
`descriptors “sleek” and “uncluttered” are qualitative and subjective, best determined by a
`
`consumer and not particularly helpful in describing the claimed design.
`
`36.
`
`I have carefully examined the three trademark applications, the illustrations and
`
`specimens contained within them, and Lutron’s descriptions of the Diva design. I have also
`
`examined the Lutron DV-600P-WH 600 W Single-Pole Preset Dimmer, whose package is shown
`
`as the specimen submitted with the ‘572 application. (See PX 4). The designs claimed as trade
`
`dress by the three trademark applications are all the same design—the Diva design—viewed
`
`from different angles and/or with or without the faceplate obscuring the flange extending from
`
`the left and right sides of the bezel.
`
`IV.
`
`FUNCTIONALITY OF LUTRON’S DIVA DESIGN
`
`37.
`
`It is my opinion that the Diva design that is the subject of the ‘572, ‘600, and ‘606
`
`applications, as a whole, is functional. Each feature of the Diva design described by Lutron is
`
`essential to the use or purpose of the product and affects the cost or quality of the product. The
`
`performance of the function is determined by the particular configuration of the features. A
`
`switch with a dimmer works best in the configuration of the Diva design shown in the ‘572,
`
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`‘600, and ‘606 applications, and registration of the Diva design would hinder competition. Each
`
`feature of Lutron’s Diva design, and the Diva design as a whole, is functional for the following
`
`reasons.
`
`38.
`
`The Diva design falls into the “designer-style” or “decorator style” category of
`
`wall switches, and this determines its basic size and need to work interchangeably with other
`
`“designer-style” switches. The primary purpose of a switch is to turn the lights on and off, and
`
`the most common “designer-style” on/off switch is a two-position paddle switch, with the up
`
`position being “on” and the lower position being “off.” This is similar to a traditional toggle
`
`switch (up for “on,” down for “off”), and is a universally intuitive design. The two-position
`
`paddle inherently displays the on/off state of the switch by its position, and does not require an
`
`additional indicator such as an LED.
`
`39.
`
`The secondary purpose of this switch is to progressively change the intensity of
`
`the lights (i.e., dim or brighten), and for this purpose, a secondary sliding dimmer control is
`
`integrated into the “decorator-style” switch bezel adjacent to the right of the on/off paddle. A
`
`sliding dimmer is progressive, with no set intervals or detents, and allows the user a wide range
`
`of control over the lighting intensity. Like the paddle switch, the sliding dimmer tab conveys the
`
`set dimming level through its position and does not rely on any additional indicator such as an
`
`LED array. The user typically does not change the dimming level of the lights as often as they
`
`turn the lights on and off, so the dimmer’s size is minimized as much as possible while
`
`maintaining usability. By minimizing the size of the dimmer as compared to the paddle, the
`
`on/off paddle can be larger, improving the usability of the switch.
`
`40.
`
`It is intuitive that the dimmer control be a vertical slide, with the highest lighting
`
`intensity at the top position, and lowest at the bottom, as in the Diva design. This is universally
`
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`how switches are understood to operate: up for “on” and down for “off.” A horizontal slider for
`
`dimming control would not be intuitive, or as intuitive as a vertical slider. For example, a user
`
`would not intuit whether to move the dimmer to the right or left to raise the light level.
`
`41.
`
`By separating the switching function and the dimming function, the Diva design
`
`allows the dimming level to be maintained when the switch is off. This is very helpful to the user
`
`who is interested in maintaining an optimal light intensity, and eliminates the need to reset the
`
`dimmer level each time the light is switched on.
`
`42.
`
`The dimmer control is to the right of the large on/off paddle switch because most
`
`of the population is right handed, and would use their most dexterous hand to set the dimmer.
`
`With the dimmer on the right side of the switch, it is more accessible from the right, and does not
`
`require a right-handed user to reach across the large paddle switch to set the dimming level with
`
`his or her dominant hand. Furthermore, on the right side, access to the protruding dimmer tab
`
`when at the top or bottom positions by a right-handed person is not diminished due to the
`
`protruding partition of the on/off paddle switch as it would be if on the left side.
`
`43.
`
`“Decorator-style” switches are generally symmetric within the wall plate aperture,
`
`creating a consistent uniform, simple and intuitive appearance. This is particularly important
`
`when multiple switches are ganged together in a single box and wall plate; a non-symmetrical
`
`switch would stand out as different and diminish the uniform appearance. A non-symmetrical
`
`switch that positions the paddle switch off center would stand out as different from conventional
`
`“decorator-style” switches, would appear unfamiliar to the user, and be less intuitive to operate.
`
`For at least these reasons, a non-symmetric switch is competitively disadvantageous. The
`
`claimed design is generally symmetric; the left and right sides of the switch bezel are the same
`
`ME1 24182842v.1
`
`14
`
`

`

`
`
`
`
`thickness. Only the dimmer track and tab are asymmetric, but they are small and subtle, well
`
`integrated into the switch bezel.
`
`44.
`
`Lutron has represented to the United States Patent & Trademark Office
`
`(“USPTO”) that the Diva design is covered by U.S. Utility Patent Nos. 6,005,308; 5,637,930;
`
`and 5,207,317 (hereafter, the “‘308 patent,” the “‘930 patent,” and the “‘317 patent,”
`
`respectively), each of which is discussed in detail below. (See PX 8, Response to Office Action
`
`dated June 1, 2012, Serial No. 85/298,572, at 2-3 & Exhibits C1-C4). During prosecution of the
`
`‘930 patent, Lutron submitted to the USPTO the Declaration of Woodie C. Flowers, Ph.D., under
`
`37 C.F.R. § 1.132 (the “Flowers Declaration”). (See PX 9). I have read the Flowers Declaration
`
`and I agree with Dr. Flowers’ analysis of the application that issued as the ‘930 patent and which
`
`disclosed and claimed the Diva design of the ‘572, ‘600, and ‘606 applications.
`
`45.
`
`I particularly agree with the following statement contained in the Flowers
`
`Declaration:
`
`“The simplicity and ease of use of the present invention is more
`than an extension of the prior art. On the contrary, it derives from a
`cogent interpretation of the user’s needs, and from an inventive
`application of technology to directly address the needs. The present
`invention achieves a strategic balance. The fundamental simplicity
`of a ‘big obvious button’ has been emphasized without hiding or
`disguising the dimmer function.”
`
`(PX 9 at ¶ 19). I note that at no point in the Flowers Declaration did Dr. Flowers mention any
`
`aspect of the design disclosed and claimed therein being “ornamental.”
`
`46.
`
`Lutron’s description of the Diva design is helpful in evaluating functionality. The
`
`following chart shows the common functional features in the descriptions of the Diva design,
`
`relative to the ‘572, ‘600, and ‘606 trademark applications:
`
`ME1 24182842v.1
`
`15
`
`

`

`
`
`
`
`‘572 application
`
`‘600 application
`
`‘606 application
`
`“a two dimensional
`design for lighting and
`fan controls
`comprising the
`following combination
`of non-functional
`ornamental features
`depicted in the
`drawing for the
`application:
`
`“a three dimensional
`design for lighting
`and fan controls
`comprising the
`following
`combination of non-
`functional
`ornamental features
`depicted in the
`drawing for the
`application:
`
`“a three dimensional
`design for lighting
`and fan controls
`comprising the
`following
`combination of non-
`functional
`ornamental features
`depicted in the
`drawing for the
`application:
`
`Feature to address
`for functionality
`
`None, although it will
`be shown that the
`described features are
`neither “non-
`functional” nor
`“ornamental.”
`
`a sleek uncluttered
`low profile,
`
`a sleek uncluttered
`low profile,
`
`a sleek uncluttered
`low profile,
`
`A sleek uncluttered
`low profile.
`
`a symmetrical bezel
`surrounding a
`substantially
`rectangular first
`actuator
`
`where the bezel
`includes a vertically
`oriented track
`containing a
`substantially oblong
`second actuator,
`
`
`
`a symmetrical bezel
`surrounding a
`substantially
`rectangular first
`actuator
`
`where the bezel
`includes a vertically
`oriented track
`containing a
`substantially oblong
`second actuator,
`
`and the substantially
`rectangular first
`actuator presents a
`triangular shaped
`profile for the
`portion of the first
`actuator protruding
`above the bezel,
`
`a symmetrical bezel
`surrounding a
`substantially
`rectangular first
`actuator
`
`where the bezel
`includes a vertically
`oriented track
`containing a
`substantially oblong
`second actuator,
`
`and the substantially
`rectangular first
`actuator presents a
`triangular profile for
`the portion of the
`first actuator
`protruding above the
`bezel.”
`
`and a non-symmetrical
`flange on the right and
`left sides of the
`bezel.”
`
`and a flange
`extending from the
`left and right side of
`the bezel.”
`
`
`
`
`
`ME1 24182842v.1
`
`
`
`
`
`16
`
`A symmetrical switch
`bezel surrounding a
`rectangular rocker or
`paddle switch.
`
`A switch bezel
`including a vertical
`dimmer actuator
`track containing an
`oblong dimmer
`actuator tab.
`
`The rocker switch
`presents a triangular
`profile for the portion
`of the rocker that
`protrudes above the
`bezel.
`
`The flange or
`shoulder on either
`side of switch bezel
`which has an
`interruption in its
`left-hand side making
`it non-symmetrical.
`
`
`
`

`

`
`
`
`
`47.
`
`The above chart shows that the combination of features comprising the Diva
`
`design in the ‘572, ‘600, and ‘606 trademark applications differs only by the presence or absence
`
`of features that I will demonstrate in this Declaration to be functional. I have examined and
`
`compared the drawings of the mark in each of the ‘572, ‘600, and ‘606 trademark applications.
`
`Each drawing is a representation of the same product, i.e., Lutron’s Diva Dimmer. The drawings
`
`differ from each other only by the presence or absence of features that are functional, e.g.,
`
`whether or not the flange or the triangular profile of the paddle switch is visible. In sum, the
`
`‘572, ‘600, and ‘606 applications do not depict different designs or different trademarks. It is my
`
`opinion that Lutron is seeking multiple registrations for the same design—the Diva design—and
`
`that Lutron should therefore be permitted to pursue only one of its applications for the Diva
`
`design.
`
`A.
`
`48.
`
`FUNCTIONALITY OF “A SLEEK UNCLUTTERED LOW PROFILE”
`
`According to Lutron’s Rule 30(b)(6) witness on the topic, everything shown in
`
`the image of the Diva design contributes to the appearance of this “feature,” and “it’s the overall
`
`combination of all of those elements.” (PX 10, Hanna Rule 30(b)(6) at 22:8-30:20).
`
`49.
`
`Accordingly, this description, if anything, describes the overall “look and feel”
`
`rather than a specific physical feature of the Diva design.
`
`50.
`
`The Diva design depicted in each application is for a “decorator-style” wall
`
`switch with a sliding dimmer. As stated above, the descriptors “sleek” and “uncluttered” are
`
`qualitative and subjective, best determined by a consumer and not particularly helpful in
`
`describing
`
`the Diva design. Nevertheless, assuming
`
`that the descriptors “sleek” and
`
`“uncluttered” have a settled meaning, it is my opinion that any decorator-style wall switch can be
`
`ME1 24182842v.1
`
`17
`
`

`

`
`
`
`
`described as having a “sleek uncluttered low profile.” Any design that did not have a “sleek and
`
`uncluttered low profile” would be at a competitive disadvantage in the marketplace.
`
`B.
`
`51.
`
`FUNCTIONALITY OF THE SYMMETRICAL SWITCH BEZEL
`SURROUNDING A RECTANGULAR PADDLE SWITCH
`
`The Diva design shown in all three applications has, in Lutron’s words, “[a]
`
`symmetrical bezel surrounding a substantially rectangular first actuator.” The bezel is shown
`
`below in red:
`
`
`
`
`
`
`
`‘572 bezel
`
`‘600 bezel
`
`‘606 bezel
`
`(See PX 11).
`
`52.
`
`The “symmetrical bezel surrounding a substantially rectangular first actuator” is a
`
`common characteristic of any decorator-style paddle switch. The outside dimension of the bezel
`
`is determined by the standardized decorator-style wall plate opening. This aperture shape is an
`
`industry standard and is often referred to as a decorator-style, as well as “Decora-style,” rocker
`
`style, or GFCI style switch/outlet. The word “Decora” is a registered trademark of the Leviton
`
`Company, who introduced the now-familiar paddle switch to the market in the 1970s.
`
`53.
`
`The “substantially rectangular first actuator” described by Lutron and seen in the
`
`trademark application drawings refers to the decorator-style paddle switch, i.e., a large rocker or
`
`ME1 24182842v.1
`
`18
`
`

`

`
`
`
`
`paddle switch designed to work with wall plates which conform to the ANSI/NEMA WD 6-2012
`
`standard (hereafter, the “NEMA Standard”) for “Rectangular Face Devices.” (See PX 12 at 5).
`
`These switches also conform to, and are depicted in, the NEMA Standard

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